Ex Parte SalonenDownload PDFPatent Trial and Appeal BoardFeb 23, 201512401392 (P.T.A.B. Feb. 23, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________ Ex parte JUKKA SALONEN ___________ Appeal 2012-004269 Application 12/401,392 Technology Center 3600 ___________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL C. ASTORINO, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Jukka Salonen (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–4, 6–11, and 13–20, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of delivering goods (Specification 1:3–4). 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed July 11, 2011) and the Examiner’s Answer (“Ans.,” mailed October 28, 2011). Appeal 2012-004269 Application 12/401,392 2 An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]. 1. Method for determining, using one or more processors, an end address of a customer for delivering goods, where the goods are delivered from a main system, via a subsystem, to the end address of the customer, the method comprising: [1] transmitting, using a processor, a multiple choice enquiry to the customer via telecommunications network using a short message (SMS) protocol; [2] receiving, using a processor, a reply to the multiple choice enquiry indicating the end address selected by the customer, said reply being sent via the telecommunications network using a short message (SMS) protocol; and [3] updating, using a processor, the end address Appeal 2012-004269 Application 12/401,392 3 for delivering the goods to the selected end address, wherein transmission of the multiple choice enquiry occurs prior to the goods being delivered to the subsystem. The Examiner relies upon the following prior art: Sone US 7,222,081 B1 May 22, 2007 Spiegel US 7,610,224 B2 Oct. 27, 2009 Boitet US 2009/0281929 A1 Nov. 12, 2009 Claims 1–4, 6–11, and 13–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sone, Spiegel, and Boitet. ISSUES The issues of obviousness turn primarily on whether it was predictable to apply Spiegel’s multiple choice enquiries and Boitet’s use of short message service communication to Sone’s address update. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Sone 01. Sone is directed to delivery scheduling systems, and more particularly, to a system and method for continuously monitoring Appeal 2012-004269 Application 12/401,392 4 and updating a delivery schedule, and notifying a customer of a scheduled delivery. Sone 1:7–10. 02. The delivery scheduling and updating system includes a delivery scheduling computer, a user computer, and a network linking the delivery scheduling computer to the user computer. The delivery scheduling computer electronically stores and updates delivery schedule information. Prior to a scheduled delivery, the delivery scheduling computer notifies the customer of an estimated time of the delivery via the user computer. If the customer desires to make a change to the delivery, such as the time of the delivery or the delivery location, the customer uses the computer to transmit a delivery change request. A set of user application modules associated with the delivery scheduling computer and the user computer allows the user to view the delivery notification and enter the delivery change request. Sone 2:33–38. 03. Sone includes an employee computer for receiving updated delivery schedule information from the delivery scheduling computer. The employee then makes deliveries according to the delivery schedule received. Upon completion of a scheduled delivery, the employee uses the employee computer to transmit a delivery completion message to the delivery scheduling computer. Sone 2:58–65. Appeal 2012-004269 Application 12/401,392 5 Spiegel 04. Spiegel is directed to ordering and delivering items, and more particularly to automatically assisting in delivering ordered items in an appropriate manner. Spiegel 1:27–30. 05. The user orders an item by using the automatically selected delivery address and other information associated with the automatically selected procurement option. Alternatively, the user can select another delivery address with a drop-down menu of procurement options for the user. Spiegel 6:1–7 (describing Spiegel Fig. 1A). Boitet 06. Boitet is directed to proactively monitoring the delivery of a package by a package delivery service provider, including intervening in certain circumstances. Boitet, para. 1. 07. Boitet maintains a portal—e.g., information gateway, allowing information to be reviewed, interrogated, presented, and responded to between various parties, thus allowing interaction between a customer and a customer service representative (“CSR”). Boitet, para. 14. 08. Boitet’s CSR accesses the PR (packages indicated as receiving proactive response treatment) system to ascertain the status of a particular case log. Boitet, para. 88. 09. Boitet’s CSR communicates with the customer via telephone, pager, email, or short message service. Boitet, para. 90. Appeal 2012-004269 Application 12/401,392 6 ANALYSIS We are not persuaded by the Appellant’s argument that Sone fails to describe a multiple choice enquiry or short message service. Br. 5. The Appellant’s contention does not persuade us of error on the part of the Examiner because the Appellant responds to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner applied Boitet to describe short message service and Spiegel to describe multiple choice enquiries. In fact, Appellant acknowledges that these references describe these limitations. Br. 5–6. Thus, Appellant’s main argument is that The mere fact that these separate features are known in the art separately is not sufficient to render the combination obvious. Nor is it sufficient to render the specific features of the claimed invention, which are more than the mere combination of the above three features, obvious. Although the transmission of information and/or notifications via a short message service may be known in the art such as suggested in Boitet, these SMS notifications are not designed to transmit and receive inquires, much less multiple choice inquires as claimed. Br. 7. Appellant presents no evidence to support the argument that SMS notifications are not designed to transmit and receive enquiries. Appellant’s attorney’s arguments in a brief do not take the place of evidence in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Meitzner v. Mindick, 549 F.2d 775 (CCPA 1977), cert. denied, 434 US 854 (1977), and In re Schulze, 346 F.2d 600, 602 (1965). Appeal 2012-004269 Application 12/401,392 7 The fact that Boitet describes using this service as one of several possible communication channels to interrogate a customer is sufficient to overcome this argument. In fact, Boitet’s use for this purpose is sufficient to show this channel was at least a predictable mechanism for conveying Sone’s address updates. As to Spiegel’s use of multiple choices in a query, Spiegel only exemplifies what everyone who ever used a computer interface already knows as to the notoriety of multiple choice enquiries. Thus, their use was also predictable. Nothing in the claim recites any implementation specifics that would make the use of SMS or multiple choices unpredictable. Claim 8 is argued in the same manner as claim 1 and the remaining claims are argued based on the patentability of claim 1. CONCLUSIONS OF LAW The rejection of claims 1–4, 6–11, and 13–20 under 35 U.S.C. § 103(a) as unpatentable over Sone, Spiegel, and Boitet is proper. DECISION The rejection of claims 1–4, 6–11, and 13–20 is affirmed. 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). AFFIRMED mls Copy with citationCopy as parenthetical citation