Ex Parte Lundquist

Patent Trial and Appeal BoardAug 4, 2014

12778015 (P.T.A.B. Aug. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/778,015 05/11/2010 Steve Lundquist LUNQ 05145 C2US/P1007 5550 64458 7590 08/04/2014 Hemingway & Hansen, LLP 1700 Pacific Avenue Suite 4800 Dallas, TX 75201 EXAMINER OYEBISI, OJO O ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 08/04/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte STEVE LUNDQUIST ___________ Appeal 2012-003314 Application 12/778,0151 Technology Center 3600 ___________ Before ANTON W. FETTING, NINA L. MEDLOCK, and KEVIN W. CHERRY, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE2 Steve Lundquist (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–26, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellant’s claimed invention relates to systems for securely inspecting merchandise purchased online prior to the transfer of funds to the seller and completion of the online purchase (Spec. ¶¶ 2, 10). 1 Appellant reports that the real party in interest is the named inventor, Steve Lundquist (App. Br. 2). 2 Our decision references the Appellant’s Appeal Brief (“App. Br.,” filed November 7, 2011) and Reply Brief (“Reply Br.,” filed April 2, 2012), and the Examiner’s Answer (“Ans.,” mailed January 30, 2012). Appeal 2012-003314 Application 12/778,015 2 Claim 1, which is reproduced below (some paragraphing added), is representative. 1. A fraud prevention system for securely acquiring a remotely purchased item, said system comprising: a computer processor having at least one central processor unit a database memory and at least one input/output communication port for transmitting and receiving messages, said messages including a notification message that the purchased item was shipped by the seller, a notification message that the payment funds related to the purchased item were received at a payment escrow computer account, a notification message that the product is ready for a monitored inspection at an inspection location, and a notification that the purchaser has accepted or rejected the purchased item after the monitored inspection, said computer processor transmitting an instruction message instructing the escrow account to release the payment funds to the buyer or return the payment funds to seller after the inspection, said payment escrow account coupled to the fraud prevention system, having a processor, database memory and an input/output communication port for transmitting and receiving messages, said messages including the transmission of a notice of receipt of payment for the purchased item, the instruction to the payment escrow account to transfer payment funds to the seller if the buyer accepts the item or to refund the payment funds to the buyer if the buyer rejects the item, an inspection platform located proximate to said inspection location that supports the purchased item so the buyer can inspect the purchased item while being monitored and observed during a monitored inspection, Appeal 2012-003314 Application 12/778,015 3 said monitored inspection permits the buyer to confirm acceptability of the purchased item or reject the purchased item while not being given the opportunity to alter or swap the purchased item. (App. Br. 17–18, Claims App’x). Rejection Claims 1–26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Dutta (US 2002/0073049 A1, pub. June 13, 2002). SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). ANALYSIS Appellant argues claims 1–26 as a group (App. Br. 6). We select claim 1 as the representative claim, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). We are persuaded by Appellant’s arguments that Dutta does not disclose a “monitored inspection,” as recited in claim 1 (App. Br. 10–11; Reply Br. 2–4). The Examiner states that “[i]t would have been obvious to one of ordinary skill in the art, at the time of the invention to monitor the inspection personnel, inspecting on behalf of the buyer, since the inspection location is already equipped with [a] surveillance camera, in order to eliminate all potential types of fraudulent behavior” (Ans. 7). The Examiner, however, provides no citation in support of the statement that “the inspection location is already equipped with [a] surveillance camera,” and we have been unable to locate any such support. Thus, because Dutta does Appeal 2012-003314 Application 12/778,015 4 not disclose a monitored inspection and the Examiner’s reasoning regarding why monitoring would have been obvious is not supported by the record, we cannot sustain the rejection of claims 1–26. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). NEW GROUND OF REJECTION The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b): Independent claims 1, 9, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dutta and Battistini (US 6,087,927, iss. July 11, 2000).3 Dutta is directed to fraud prevention systems and methods for securely acquiring a remotely purchased item4 (Dutta, Abstract, ¶¶ 1, 11, 19, 70, Figs. 2A, 2B). Dutta discloses “a computer processor having at least one central processor unit a database memory and at least one input/output communication port for transmitting and receiving messages” (Dutta ¶¶ 20– 23). Dutta also discloses sending messages that include “a notification message that the purchased item was shipped by the seller” (Dutta, Fig. 2C, ¶¶ 31, 34, 36). Dutta also discloses sending messages that include “a 3 We apply the new ground to only the independent claims, and leave it to the Examiner to determine the patentability of the dependent claims in light of this new ground of rejection. 4 Claim 9 and 18 contain similar language to claim 1. We use the language of claim 1 as representative, and this analysis applies equally to the similar elements of claims 9 and 18. Appeal 2012-003314 Application 12/778,015 5 notification message that the payment funds related to the purchased item were received at a payment escrow computer account” (Dutta ¶¶ 31, 36, 61). Dutta discloses transmitting a notification message that the product is ready for an inspection at an inspection location (Dutta ¶¶ 31, 64–69). Dutta discloses transmitting a notification that the purchaser has accepted or rejected the purchased item after the inspection (Dutta ¶¶ 64– 69). Dutta discloses “transmitting an instruction message instructing the escrow account to release the payment funds to the buyer or return the payment funds to seller after the inspection” (Dutta ¶¶ 11, 64–66). Dutta discloses a “payment escrow account coupled to the fraud prevention system, having a processor, database memory and an input/output communication port for transmitting and receiving messages” (Dutta, Abstract, ¶¶ 11, 20–24, 31–35, 56–69). Dutta discloses the escrow service transmitting “a notice of receipt of payment for the purchased item” (Dutta ¶ 61). Dutta discloses “the instruction to the payment escrow account to transfer payment funds to the seller if the buyer accepts the item or to refund the payment funds to the buyer if the buyer rejects the item” (Dutta ¶¶ 64– 69). Dutta also discloses an “inspection permits the buyer to confirm acceptability of the purchased item or reject the purchased item while not being given the opportunity to alter or swap the purchased item” (Figs. 2A, 2B, 2C, ¶¶ 56–70). However, Dutta does not disclose that the inspection is “monitored,” as required by the independent claims. Dutta also does not explicitly disclose “an inspection platform located proximate to said inspection location that supports the purchased item so the buyer can inspect the purchased item while being monitored and observed during a monitored Appeal 2012-003314 Application 12/778,015 6 inspection.” As discussed above, Dutta does disclose the goods can be inspected by an inspection service (Dutta ¶¶ 61–69). Dutta also discloses that the inspection service can perform the inspection on behalf of the buyer (Dutta, Fig. 2C, ¶¶ 61–69). We find that the broadest reasonable interpretation of “buyer” in this claim limitation is not just limited to the person who purchased the item, but also includes the agents of that person who perform inspections on behalf of the buyer. Indeed, the Specification contemplates that the inspection can also include examination by “an expert to verify authenticity of the purchased item” (See Spec. 14, ll. 1–2). Moreover, there is nothing in the claim language that precludes this broad, but reasonable, interpretation. Thus, Dutta discloses an inspection by the buyer as recited in claim 1, but not that the inspection is monitored or that there is an “inspection platform” as recited in the independent claims. Battistini (which is of record in related Appeal No. 2012-007414) discloses a monitoring system for customers and employees of a business for security and other purposes (Battistini, col. 3, l. 56–col. 4, l. 14; col. 5, ll. 33–40; col. 7, ll. 1–10; col. 9, ll. 60–67; Fig. 2). Battistini discloses order taking stations including a monitored counter 68 for taking and receiving orders of goods (Battistini, col. 9, ll. 51–67, Fig. 1). We find that a person of ordinary skill would understand that the monitored counters of Battistini can serve as “an inspection platform located proximate to said inspection location that supports the purchased item so the buyer can inspect the purchased item while being monitored and observed during a monitored inspection,” because such counters are located within the business, can support purchased items, and include monitoring capabilities. Appeal 2012-003314 Application 12/778,015 7 We also find that it would have been obvious to a person of ordinary skill in the art at the time of the invention to combine the inspection system and methods of Dutta with the monitoring system and the monitored inspection platforms of Battistini. Specifically, we find that Dutta discloses that one of the objectives of its system is to reduce fraudulent behavior (Dutta, Abstract, ¶¶ 6, 9, 49, 50). We further find that Battisitini recognizes that monitoring enhances security (Battistini, col. 9, 61–62). We find that it would have been readily apparent to a person of ordinary skill that an additional way to reduce fraudulent behavior would be to monitor the inspection service employees as they perform the inspection on behalf of the buyer. We find that a person of ordinary skill would understand that monitoring the employees would provide the benefits of preventing the possibility of fraudulent behavior, such as the employee altering, swapping, or stealing the item. We also find that Dutta discloses that the inspection preferably takes place at the location where “the shipping party releases the goods, such as at a parcel company, an overnight delivery company, a general courier, or a private mailbox provider” (Dutta ¶ 51). Thus, it would further have been obvious and readily apparent to a person of ordinary skill to perform the monitored inspection on a monitored counter (or inspection platform) within the parcel company, such as that disclosed in Battistini, with the benefit of making the inspection easier for the inspector and the monitoring easier for those persons monitoring the inspection. Appeal 2012-003314 Application 12/778,015 8 DECISION The rejection of claims 1–26 under 35 U.S.C. § 103(a) as being unpatentable over Dutta is reversed. We enter a new ground of rejection of claims 1, 9, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Dutta and Battistini. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). REVERSED; 37 C.F.R. § 41.50(b) Klh 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1 7/31/2014, EAST Version: 3.1.3.1