Ex Parte Siegel

Board of Patent Appeals and Interferences

May 15, 2012

09817353 (B.P.A.I. May. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP S. SIEGEL
____________________

Appeal 2010-003503
Application 09/817,353
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003503
Application 09/817,353

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-9, 35-46. Claims 10-34 are withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We reverse.
THE INVENTION
Appellant claims methods for performing single-action returns of
remotely purchased items, (Specification 1:10-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for processing the returns of merchandise purchased
through the World Wide Web comprising:
receiving, from a consumer, an electronic request via a
computerized system associated with the consumer, the
electronic request requesting to initiate processing of one or
more items of merchandise purchased by the consumer in a
prior purchase transaction;
in response to receiving the electronic request from the
computing system associated with the consumer, gathering
transaction history data associated with the consumer from a
computerized database;
displaying the transaction history associated with the identified
consumer to the consumer on the computerized system
associated with the consumer, the transaction history
identifying a listing of merchandise associated with the
consumer;
in response to and after displaying the transaction history,
receiving an electronic selection, generated by the consumer on
the computerized system associated with the consumer, of a
particular item of merchandise within the listing of merchandise
in the displayed transaction history, the electronic selection
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comprising a click on the particular item of merchandise within
the list of merchandise and identifying the particular item of
merchandise for returns processing; and
in response to receiving the electronic selection comprising the
click on the particular item of merchandise within the list of
merchandise, initiating a returns process for the particular item
of merchandise selected by the consumer from the list of
merchandise purchased by the consumer in the prior purchase
transaction, the returns process initiated by a returns server.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Cybul US 6,246,997 B1 Jun. 12, 2001
Roman US 2002/0010634 A1 Jan. 24, 2002
Arganbright US 6,980,962 B1 Dec. 27, 2005

The following rejections are before us for review.
The Examiner rejected claims 1-2, 4-6, 9, 35-41 and 44-46 under 35
U.S.C. 103(a) as being unpatentable over Arganbright and Cybul.

The Examiner rejected claims 3, 7-8 and 42-43 under 35 U.S.C.
103(a) as being unpatentable over Arganbright in view of Cybul in
further view of Roman.

ISSUE
The issue of obviousness turns on whether Cybul, Arganbright or
Arganbright either, individually or in combination with each other, discloses
the claimed feature of in response to and after displaying the transaction
history, receiving an electronic selection, generated by the consumer on the
computerized system associated with the consumer, of a particular item of
merchandise within the listing of merchandise in the displayed transaction
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Application 09/817,353

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history, the electronic selection comprising a click on the particular item of
merchandise within the list of merchandise and identifying the particular
item of merchandise for returns processing; and
in response to receiving the electronic selection comprising the click
on the particular item of merchandise within the list of merchandise,
initiating a returns process for the particular item of merchandise selected
by the consumer from the list of merchandise purchased by the consumer in
the prior purchase transaction, the returns process initiated by a returns
server.
FINDINGS OF FACT

We find the following facts by a preponderance of the evidence:
1. This appeal relates to Appeal 2010-001041 (Ser. No.
10/750,935) decided May 1, 2012, and Appeal 2010-002655
(Ser. no. 10/712,216) which is presently before this Board.
2. Cybul discloses a list builder tool that makes available to
shoppers information on past on-line purchases as well as
purchases by the customer at a retail establishment (col. 4 ll.
25-35).
3. Cybul does not disclose whether its list has selectable links
which are clickable for selection or merely text information.
4. Arganbright discloses a product is selected for return when “a
user fills in a quantity 92 on product list 90. Upon selecting the
quantities for purchase for a plurality of products, the user can
then initiate the Add to Basket link 94, by double clicking a
mouse ...” (col. 48 ll. 33-38).
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5. Roman discloses selecting a product for return by the consumer
answering a series of questions about the product to be
returned, such as receipt number, consumer’s name, and
description of the product to be returned (para. [0015]).
6. The Examiner found that:
…Cybul teaches accessing or gathering previous
shopping history or transaction history data
associated with a consumer from a computerized
database (see at least Abstract, and col. 4 lines 40-
50); displaying the previous transaction or
shopping history via a web browser interface
where the previous shopping history is associated
with the consumer (see at least col.3 line 65-col. 4
lines 15); in response to displaying the transaction
history associated with the consumer, receiving an
electronic selection of a particular of at least an
item by the consumer using the browser interface,
the electronic selection comprising a click on the
particular item of merchandise and identifying the
particular item of merchandise (see at least col. 4
lines 25-35, consumer selecting previous shopping
history). It would have been obvious to one of
ordinary skill in the art at the time the invention
was made to incorporate the teachings of Cybul
into the disclosure of Arganbright in order to
provide the consumer with the option to return
items via internet or online.
(Answer 4-5).
ANALYSIS
Each of independent claims 1 and 46 require:
in response to and after displaying the transaction
history, receiving an electronic selection,
generated by the consumer on the computerized
system associated with the consumer, of a
particular item of merchandise within the listing of
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Application 09/817,353

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merchandise in the displayed transaction history,
the electronic selection comprising a click on the
particular item of merchandise within the list of
merchandise and identifying the particular item of
merchandise for returns processing; and
in response to receiving the electronic selection
comprising the click on the particular item of
merchandise within the list of merchandise,
initiating a returns process for the particular item
of merchandise selected by the consumer from the
list of merchandise purchased by the consumer in
the prior purchase transaction, the returns process
initiated by a returns server.

The Examiner found that Cybul discloses the click on feature at least
col. 4 lines 25-35. (FF 6).
However, we find that while Cybul discloses a “list builder tool” (FF
2), it merely collects past shopping history for a consumer and “imports that
data to the list builder’s on-line historical purchase list database” (FF 3).
Cybul is silent on a click on the particular item of merchandise in the
displayed listing of merchandise on the list, such that the electronic selection
identifying the particular item of merchandise for returns processing; and in
response to receiving the electronic selection comprising the click on the
particular item of merchandise in the listing of merchandise, initiating a
returns process for the particular item of merchandise selected by the
consumer from the list of merchandise purchased by the consumer in the
prior purchase transaction, the returns process initiated by a returns server.
This is a core issue and the Examiner must point to some concrete
evidence in the record in support of his conclusions. In re Zurko, 258 F.3d
1379, 1385 (Fed. Cir. 2001).
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Application 09/817,353

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We find that Arganbright offers no relief for the deficiency in Cybul
because in Arganbright, product identification is done by the user “entering
a plurality of information on the return form”, filling in a quantity number
next to an item, and then subsequently selecting an “Add to Basket” link (FF
4), thus requiring plural input steps for the selection, but not by initiating a
return process by the server using a click on the selected item.
We further find Roman discloses selecting a product, also not by
selecting it from a list, but instead by answering a series of questions about
information such as “receipt number, consumer’s name, phone number” and
so on (FF 5).
We thus find that none of the references relied on by the Examiner
discloses either separately or in combination the involved limitation, and
therefore reverse the rejection of independent claims 1 and 46 under 35
U.S.C. § 103(a). Since claims 2-9, and 35-45 depend from claim 1, and
since we cannot sustain the rejection of claim 1, the rejection of these
dependent claims likewise cannot be sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims the claims listed in the Rejection section above.

DECISION
The decision of the Examiner to reject claims 1-9 and 35-46 is
reversed.
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Application 09/817,353

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REVERSED

MP
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP S. SIEGEL
____________________

Appeal 2010-003503
Application 09/817,353
Technology Center 3600
____________________

Before: HUBERT C. LORIN, JOSEPH A. FISCHETTI and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003503
Application 09/817,353

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-9, 35-46. Claims 10-34 are withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We reverse.
THE INVENTION
Appellant claims methods for performing single-action returns of
remotely purchased items, (Specification 1:10-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for processing the returns of merchandise purchased
through the World Wide Web comprising:
receiving, from a consumer, an electronic request via a
computerized system associated with the consumer, the
electronic request requesting to initiate processing of one or
more items of merchandise purchased by the consumer in a
prior purchase transaction;
in response to receiving the electronic request from the
computing system associated with the consumer, gathering
transaction history data associated with the consumer from a
computerized database;
displaying the transaction history associated with the identified
consumer to the consumer on the computerized system
associated with the consumer, the transaction history
identifying a listing of merchandise associated with the
consumer;
in response to and after displaying the transaction history,
receiving an electronic selection, generated by the consumer on
the computerized system associated with the consumer, of a
particular item of merchandise within the listing of merchandise
in the displayed transaction history, the electronic selection
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Application 09/817,353

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comprising a click on the particular item of merchandise within
the list of merchandise and identifying the particular item of
merchandise for returns processing; and
in response to receiving the electronic selection comprising the
click on the particular item of merchandise within the list of
merchandise, initiating a returns process for the particular item
of merchandise selected by the consumer from the list of
merchandise purchased by the consumer in the prior purchase
transaction, the returns process initiated by a returns server.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Cybul US 6,246,997 B1 Jun. 12, 2001
Roman US 2002/0010634 A1 Jan. 24, 2002
Arganbright US 6,980,962 B1 Dec. 27, 2005

The following rejections are before us for review.
The Examiner rejected claims 1-2, 4-6, 9, 35-41 and 44-46 under 35
U.S.C. 103(a) as being unpatentable over Arganbright and Cybul.

The Examiner rejected claims 3, 7-8 and 42-43 under 35 U.S.C.
103(a) as being unpatentable over Arganbright in view of Cybul in
further view of Roman.

ISSUE
The issue of obviousness turns on whether Cybul, Arganbright or
Arganbright either, individually or in combination with each other, discloses
the claimed feature of in response to and after displaying the transaction
history, receiving an electronic selection, generated by the consumer on the
computerized system associated with the consumer, of a particular item of
merchandise within the listing of merchandise in the displayed transaction
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Application 09/817,353

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history, the electronic selection comprising a click on the particular item of
merchandise within the list of merchandise and identifying the particular
item of merchandise for returns processing; and
in response to receiving the electronic selection comprising the click
on the particular item of merchandise within the list of merchandise,
initiating a returns process for the particular item of merchandise selected
by the consumer from the list of merchandise purchased by the consumer in
the prior purchase transaction, the returns process initiated by a returns
server.
FINDINGS OF FACT

We find the following facts by a preponderance of the evidence:
1. This appeal relates to Appeal 2010-001041 (Ser. No.
10/750,935) decided May 1, 2012, and Appeal 2010-002655
(Ser. no. 10/712,216) which is presently before this Board.
2. Cybul discloses a list builder tool that makes available to
shoppers information on past on-line purchases as well as
purchases by the customer at a retail establishment (col. 4 ll.
25-35).
3. Cybul does not disclose whether its list has selectable links
which are clickable for selection or merely text information.
4. Arganbright discloses a product is selected for return when “a
user fills in a quantity 92 on product list 90. Upon selecting the
quantities for purchase for a plurality of products, the user can
then initiate the Add to Basket link 94, by double clicking a
mouse ...” (col. 48 ll. 33-38).
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5. Roman discloses selecting a product for return by the consumer
answering a series of questions about the product to be
returned, such as receipt number, consumer’s name, and
description of the product to be returned (para. [0015]).
6. The Examiner found that:
…Cybul teaches accessing or gathering previous
shopping history or transaction history data
associated with a consumer from a computerized
database (see at least Abstract, and col. 4 lines 40-
50); displaying the previous transaction or
shopping history via a web browser interface
where the previous shopping history is associated
with the consumer (see at least col.3 line 65-col. 4
lines 15); in response to displaying the transaction
history associated with the consumer, receiving an
electronic selection of a particular of at least an
item by the consumer using the browser interface,
the electronic selection comprising a click on the
particular item of merchandise and identifying the
particular item of merchandise (see at least col. 4
lines 25-35, consumer selecting previous shopping
history). It would have been obvious to one of
ordinary skill in the art at the time the invention
was made to incorporate the teachings of Cybul
into the disclosure of Arganbright in order to
provide the consumer with the option to return
items via internet or online.
(Answer 4-5).
ANALYSIS
Each of independent claims 1 and 46 require:
in response to and after displaying the transaction
history, receiving an electronic selection,
generated by the consumer on the computerized
system associated with the consumer, of a
particular item of merchandise within the listing of
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Application 09/817,353

6
merchandise in the displayed transaction history,
the electronic selection comprising a click on the
particular item of merchandise within the list of
merchandise and identifying the particular item of
merchandise for returns processing; and
in response to receiving the electronic selection
comprising the click on the particular item of
merchandise within the list of merchandise,
initiating a returns process for the particular item
of merchandise selected by the consumer from the
list of merchandise purchased by the consumer in
the prior purchase transaction, the returns process
initiated by a returns server.

The Examiner found that Cybul discloses the click on feature at least
col. 4 lines 25-35. (FF 6).
However, we find that while Cybul discloses a “list builder tool” (FF
2), it merely collects past shopping history for a consumer and “imports that
data to the list builder’s on-line historical purchase list database” (FF 3).
Cybul is silent on a click on the particular item of merchandise in the
displayed listing of merchandise on the list, such that the electronic selection
identifying the particular item of merchandise for returns processing; and in
response to receiving the electronic selection comprising the click on the
particular item of merchandise in the listing of merchandise, initiating a
returns process for the particular item of merchandise selected by the
consumer from the list of merchandise purchased by the consumer in the
prior purchase transaction, the returns process initiated by a returns server.
This is a core issue and the Examiner must point to some concrete
evidence in the record in support of his conclusions. In re Zurko, 258 F.3d
1379, 1385 (Fed. Cir. 2001).
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Application 09/817,353

7
We find that Arganbright offers no relief for the deficiency in Cybul
because in Arganbright, product identification is done by the user “entering
a plurality of information on the return form”, filling in a quantity number
next to an item, and then subsequently selecting an “Add to Basket” link (FF
4), thus requiring plural input steps for the selection, but not by initiating a
return process by the server using a click on the selected item.
We further find Roman discloses selecting a product, also not by
selecting it from a list, but instead by answering a series of questions about
information such as “receipt number, consumer’s name, phone number” and
so on (FF 5).
We thus find that none of the references relied on by the Examiner
discloses either separately or in combination the involved limitation, and
therefore reverse the rejection of independent claims 1 and 46 under 35
U.S.C. § 103(a). Since claims 2-9, and 35-45 depend from claim 1, and
since we cannot sustain the rejection of claim 1, the rejection of these
dependent claims likewise cannot be sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims the claims listed in the Rejection section above.

DECISION
The decision of the Examiner to reject claims 1-9 and 35-46 is
reversed.
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Application 09/817,353

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REVERSED

MP