Ex Parte Cain et al

Patent Trial and Appeal Board

Apr 26, 2017

12968539 (P.T.A.B. Apr. 26, 2017)

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.
12/968,539 12/15/2010 Nelson Cain 46975-P031US 2546
61060 7590
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313-1851
EXAMINER
MOHAMMED, ASSAD
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
04/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lgopalakrishnan@winstead.com
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NELSON CAIN, RICK KODWEIS, and
CHRISTINE WHITES
Appeal 2014-006338
Application 12/968,539
Technology Center 2600
Before TERRENCE W. McMILLIN, KAMRAN JIVANI, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
According to Appellants, the claims are directed to a system and
method for monetizing telephone calls to disconnected business listings.
Abstract, Title.
Appeal 2014-006338
Application 12/968,539
Claim 1, reproduced below with some added formatting, is illustrative
of the claimed subject matter:
1. A method comprising:
developing a call profile for a call that has been identified
for intercept treatment, the call comprising a call from a caller to
a disconnected listing;
wherein the developing comprises accessing one or more
listing characteristics for the disconnected listing independently
of the caller;
selecting a targeted advertisement for the caller based at
least in part on the one or more listing characteristics for the
disconnected listing, the one or more listing characteristics for
the disconnected listing comprising at least one of a location of
a business associated with the disconnected listing and a business
category associated with the disconnected listing;
reporting to the caller regarding the disconnected listing,
the reporting comprising presenting the targeted advertisement
to the caller; and
wherein the targeted advertisement comprises an
alternative business listing based on the one or more listing
characteristics for the disconnected listing.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Taschereau
Chiu et al.
Pershan
Chayes et al.
Bookstaff
Jaschke
Oldach et al.
Ramaswamy et al.
Dalrymple et al.
US 2004/0076279 Al Apr. 22, 2004
US 2005/0163136 Al July 28, 2005
US 2006/010721 Al Sept. 1, 2005
US 2006/0253319 Al Nov. 9, 2006
US 7,187,761 B2 Mar. 6, 2007
US 2007/0130005 Al June 7, 2007
US 2009/0136018 Al May 28, 2009
US 2009/0210385 Al Aug. 20, 2009
US 2009/023/169 Al Sept. 4, 2009
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Appeal 2014-006338
Application 12/968,539
REJECTIONS
Claims 1—4 and 6—12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff and Taschereau.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, and Dalrymple.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, and Ramaswamy.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Ramaswamy, and Jaschke.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Ramaswamy, Jaschke, and
Chayes.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, and Oldach.
Claims 18, 20, 21, and 24—28 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bookstaff, Taschereau, and Chiu.
Claims 19 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Chiu, and Pershan.
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Chiu, and Dalrymple.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Chiu, and Jaschke.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Chiu, and Ramaswamy.
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Ramaswamy, and Jaschke.
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Appeal 2014-006338
Application 12/968,539
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Chiu, Ramaswamy, Jaschke, and
Chayes.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bookstaff, Taschereau, Chiu, and Oldach.
ANALYSIS
With regard to independent claim 1, the Examiner finds Bookstaff
teaches each of the limitations recited therein, but acknowledges that
“Bookstaff does not express teach business listings (listing characteristics
associated with a called number).” Final Act. 4—5 (citing Bookstaff, Fig. 6,
8:30-37, 10:15-22, 11:44-12:13, 13:49-58, 14:31^1). The Examiner cites
Taschereau for this limitation and finds “Taschereau further teaches a
system providing a listing of business after playing an advertisement for the
caller.” Id. at 5 (citing Taschereau 1255). Based on these findings, the
Examiner concludes
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify Bookstaff to
incorporate business listings for a particular business and
location. The motivation for the modification would be to
enable the system to provide business listings to the caller
based on the called number being disconnected. Thus, the
caller can obtain more business listings since the primary listing
is no longer in service. So the system will provide alternative
business listings based on the primary business listing (i.e.
pizza parlor, alternative listing (pizza hut, papajohns, dominos,
etc. . . .
Id.
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Application 12/968,539
Appellants dispute the Examiner’s findings and conclusion. App. Br.
1—17; Reply Br. 1—6. First, Appellants argue “[i]n contrast to Brookstaff,
[sic] the claimed targeted advertisement for the caller is selected based at
least in part on the one or more listing characteristics for the disconnected
listing independently of the caller.” App. Br. 7 (emphasis omitted). Second,
Appellants argue that Taschereau fails to cure the deficiencies of Bookstaff
because “[t]he advertisements of Taschereau are based on at least one of a
location of the requestor, a destination location related to the information
requested by the requestor, and the route taken by the requestor to reach the
destination location.” Id. at 8 (emphasis omitted). Third, Appellants argue
“the Examiner’s attempt to combine the teachings of Bookstaff with
Taschereau is based solely on an impermissible hindsight reconstruction of
the teachings of Bookstaff with the system for providing advertisements to
users based on a location of the user of Taschereau.” Id. at 9. Lastly,
Appellants argue “[t]o the extent that no advantages would be served by
combining the advertisements of Taschereau with the teaching of Bookstaff,
there is no motivation to combine Taschereau with Bookstaff for this or any
other purpose.” Id. at 10.
With respect to Appellants’ first and second arguments, we are not
persuaded because we concur in the Examiner’s findings. The Examiner
finds that Bookstaff teaches that an “advertisement is targeted based on call
features (i.e., business, location) which will provide information to the caller
when a call to the disconnected number is no longer in service.” Ans. 28
(citing Bookstaff, 11:44—12:13, 13:49—58, 14:31—41). We note that
Appellants’ arguments are not commensurate in scope with the scope of
claim 1. Claim 1 does not require that the listing characteristics are
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Appeal 2014-006338
Application 12/968,539
independent of the call, but rather, independent of the caller. We agree that
the cited teachings of Bookstaff teach or suggest call features that are
“listing characteristics for the disconnected listing independently of the
caller,” as recited in claim 1. Appellants’ second argument is unpersuasive
because the Examiner did not rely on Taschereau for this teaching. See id.
With regard to Appellants’ third argument, Appellants do not
sufficiently support this argument with citations to the record.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1313—1314 (CCPA 1971). Appellants’
argument does not persuasively demonstrate that the Examiner’s findings or
conclusion took into account knowledge that was beyond the level of
ordinary skill in the art at the time of the claimed invention or that either was
based solely on Appellants’ disclosure. As such, we are not persuaded by
Appellants’ third argument.
With regard to Appellants’ fourth argument, Appellants contend that
[Tjhere is no suggestion or hint in Taschereau that an
advertisement is “a targeted advertisement for the caller based
at least in part on the one or more listing characteristics for the
disconnected listing, the one or more listing characteristics for
the disconnected listing comprising at least one of a location of
a business associated with the disconnected listing and a
business category associated with the disconnected listing” as
recited in independent claim 1
and “[t]hus, Taschereau cannot remedy the deficiencies of Bookstaff noted
above.” App. Br. 10. This argument is foreclosed by KSR International Co.
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Appeal 2014-006338
Application 12/968,539
v. Teleflex Inc., 550 U.S. 398 (2007), in which the Supreme Court rejected
the rigid requirement of an explicit teaching or suggestion or motivation to
combine known elements in order to show obviousness. KSR Int’l Co., 550
U.S. at 415. The Court noted that an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 401. For this
reason, we are not persuaded by Appellants’ fourth argument.
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination of Bookstaff and Taschereau teaches or suggests the
limitations as recited in independent claim 1 and claims 2—4- and 6—12, not
separately argued. Therefore, we sustain the rejection of claims 1—4 and 6—
12 under 35 U.S.C. § 103(a) for obviousness over Bookstaff and Taschereau.
Independent claim 18 and dependent claims 5 and 13—17 and 19-34
are rejected over various combinations of Bookstaff, Taschereau, Chiu,
Pershan, Chayes, Jaschke, Oldach, Ramaswamy, and Dalrymple. With
respect to these claims, Appellants present arguments substantially similar to
arguments set forth above with respect to independent claim 1. See App. Br.
10-17. Thus, we sustain the 35 U.S.C. § 103 rejections of claims 5 and 13—
34 for substantially similar reasons.
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Application 12/968,539
DECISION
The Examiner’s rejection of claims 1—34 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).
AFFIRMED
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