Ex Parte Montemer

Board of Patent Appeals and Interferences

Jan 30, 2009

10448807 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte WILLIAM A. MONTEMER 8
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10
Appeal 2008-1639 11
Application 10/448,807 12
Technology Center 3600 13
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Decided: January 30, 2009 16
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Before MURRIEL E. CRAWFORD, DAVID B. WALKER, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
21
CRAWFORD, Administrative Patent Judge. 22
23
DECISION ON APPEAL 24
STATEMENT OF THE CASE 25
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 26
of claims 2 and 3. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 27
Appellant invented a method for providing advertising opportunities 28
in directory assistance systems (Specification [0003]).29
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Claim 2 under appeal reads as follows: 1
2. A method of generating a list of phone 2
numbers substantially in real time in response to a 3
directory assistance request from a telephone 4
customer using a computer network comprising; 5
maintaining a database including a plurality 6
of directory listings, wherein each listing is 7
associated with a referral phone number, at least 8
one keyword and a bid amount a directory listing 9
owner is willing to pay for a single telephone 10
referral; 11
receiving a directory assistance request in 12
the form of at least one received keyword from the 13
customer using an interactive voice recognition 14
computer application; 15
identifying the directory listings having at 16
least one matching keyword generating a match 17
with the received keyword; 18
ordering the identified directory listings into 19
a phone number results list in accordance with the 20
values of the bid amounts for the matching 21
keyword in the identified directory listings; and 22
creating an interactive voice selection menu 23
that relays to the telephone customer the identified 24
directory listings in the order of the phone number 25
results list. 26
27
The Examiner rejected claims 2 and 3 under 35 U.S.C. § 112, 28
second paragraph as being indefinite for failing to particularly point out and 29
distinctly claim the subject matter which Applicant regards as the invention. 30
The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as being 31
unpatentable over Cox and Davis. 32
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being 33
unpatentable over Cox and Davis and further in view of Gergic. 34
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The prior art relied upon by the Examiner in rejecting the claims on 1
appeal is: 2
Cox US 5,966,437 Oct. 12, 1999 3
Davis US 6,269,361 B1 Jul. 31, 2001 4
Gergic US 2002/0198719 A1 Dec. 26, 2002 5
6
ISSUES 7
Has Appellant shown that the Examiner erred in holding that the 8
recitation in claim 2 of “substantially in real time” is a vague and indistinct 9
measurement of time? 10
Has the Appellant shown that the Examiner erred if holding that the 11
subject matter of claims 2 and 3 is obvious because (1) neither Cox nor 12
Davis discloses the step of “creating an interactive voice selection menu that 13
relays to the telephone customer the identified directory listings in the order 14
of the phone number results list” and (2) there is no motivation or suggestion 15
to combine the teachings of Cox and Davis or to combine the teachings of 16
Cox, Davis, and Gergic. 17
18
FINDINGS OF FACT 19
Cox discloses a method of generating a phone number in response to 20
a directory assistance request from a telephone customer (col. 1, ll. 31 to 40 21
and col. 4, ll. 45 to 60). Cox discloses maintaining a database of directory 22
listings and providing a list of listings in response to a request in the form of 23
a keyword (col. 5, ll. 27 to 51). 24
Davis discloses a method of influencing the position on a search result 25
list generated by a computer network search engine (col. 1, ll. 1 to 4). Davis 26
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teaches that a user can search a term comprising a keyword to access a 1
website (col. 2, ll. 42 to 46). The owners of the web sites desire to increase 2
web site traffic in order to sell more products and/or services (col. 2, ll. 59 to 3
64; col. 3, ll. 62 to 67). Davis teaches that the higher the position on the 4
generated list, the higher the likelihood is of a referral (col. 4, ll. 3 to 5). The 5
position of a website on the list is determined by the value of bid amounts 6
made by the website owner (col. 5, ll. 26 to 57). 7
Gergic discloses the use of VoiceXML dialog components for 8
implementation of voice recognition systems (Abstract). 9
10
PRINCIPLES OF LAW 11
Indefiniteness 12
The second paragraph of 35 U.S.C. § 112 requires claims to set out 13
and circumscribe a particular area with a reasonable degree of precision and 14
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In making 15
this determination, the definiteness of the language employed in the claims 16
must be analyzed, not in a vacuum, but always in light of the teachings of 17
the prior art and of the particular application disclosure as it would be 18
interpreted by one possessing the ordinary level of skill in the pertinent art. 19
Id. 20
The Examiner's focus during examination of claims for compliance 21
with the requirement for definiteness of 35 U.S.C. § 112, second paragraph, 22
is whether the claims meet the threshold requirements of clarity and 23
precision, not whether more suitable language or modes of expression are 24
available. Some latitude in the manner of expression and the aptness of 25
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terms is permitted even though the claim language is not as precise as the 1
examiner might desire. If the scope of the invention sought to be patented 2
cannot be determined from the language of the claims with a reasonable 3
degree of certainty, a rejection of the claims under 35 U.S.C. § 112, second 4
paragraph, is appropriate. 5
Expressions such as “substantially” are used in patent documents 6
when warranted by the nature of the invention, in order to accommodate the 7
minor variations that may be appropriate to secure the invention. Such 8
usage may well satisfy the charge to “particularly point out and distinctly 9
claim” the invention, 35 U.S.C. § 112, and indeed may be necessary in order 10
to provide the inventor with the benefit of his invention. Verve, LLC v. 11
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002). In Andrew Corp. 12
v. Gabriel Elecs., Inc., 847 F.2d 819, 821-22 (Fed. Cir. 1988), the court 13
explained that usages such as “substantially equal” and “closely 14
approximate” may serve to describe the invention with precision appropriate 15
to the technology and without intruding on the prior art. The court again 16
explained in Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. 17
Cir. 2001) that “like the term ‘about,’ the term ‘substantially’ is a descriptive 18
term commonly used in patent claims to ‘avoid a strict numerical boundary 19
to the specified parameter,’” quoting Pall Corp. v. Micron Separations, Inc., 20
66 F.3d 1211, 1217 (Fed. Cir. 1995). 21
It is well established that when the term “substantially” serves 22
reasonably to describe the subject matter so that its scope would be 23
understood by persons in the field of the invention, and to distinguish the 24
claimed subject matter from the prior art, it is not indefinite. Understanding 25
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of this scope may be derived from extrinsic evidence without rendering the 1
claim invalid. 2
3
Obviousness 4
An invention is not patentable under 35 U.S.C. § 103 if it is obvious. 5
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1745-46 (2007). The facts 6
underlying an obviousness inquiry include: Under § 103, the scope and 7
content of the prior art are to be determined; differences between the prior 8
art and the claims at issue are to be ascertained; and the level of ordinary 9
skill in the pertinent art resolved. Against this background the obviousness 10
or nonobviousness of the subject matter is determined. 11
A combination of familiar elements according to known methods is 12
likely to be obvious when it does no more than yield predictable results. 13
KSR at 1739. As explained in KSR: If a person of ordinary skill can 14
implement a predictable variation, § 103 likely bars its patentability. For the 15
same reason, if a technique has been used to improve one device, and a 16
person of ordinary skill in the art would recognize that it would improve 17
similar devices in the same way, using the technique is obvious unless its 18
actual application is beyond his or her skill 19
On appeal, applicant bears the burden of showing that the Examiner 20
has not established a legally sufficient basis for combining the teachings of 21
the prior art. Applicants may sustain their burden by showing that where the 22
Examiner relies on a combination of disclosures, the Examiner failed to 23
provide sufficient evidence to show that one having ordinary skill in the art 24
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would have done what Applicants did. United States v. Adams, 383 U.S. 39, 1
50-52 (1966). 2
Teaching Away 3
A prior art's mere disclosure of more than one alternative does not 4
constitute a teaching away from any of these alternatives because such 5
disclosure does not criticize, discredit, or otherwise discourage the solution 6
claimed in the … application. See In re Fulton, 391 F.3d 1195, 1201 (Fed. 7
Cir. 2004); see also In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (“[A] 8
reference will teach away if it suggests that the line of development flowing 9
from the reference's disclosure is unlikely to be productive of the result 10
sought by the applicant.”). 11
ANALYSIS 12
We will not sustain the Examiner’s rejection of claims 2 and 3 under 13
35 U.S.C. § 112, second paragraph. In our view, the recitation in claim 2 of 14
the generation of the list of phone numbers “substantially in real time” is 15
definite and relates to the generation of the list in a time frame that is a slight 16
variation from real time, i.e., is not strictly, exactly in real time. 17
In regard to the rejection under 35 U.S.C. § 103, we are not persuaded 18
of error on the part of the Examiner by Appellant’s argument that neither 19
Cox alone nor Davis alone discloses the step of “creating an interactive 20
voice selection menu that relays to the telephone customer the identified 21
directory listings in the order of the phone number results list.” We are 22
likewise not persuaded of error on the part of the Examiner by Appellant’s 23
argument that at the time of the invention telephone directory listings as 24
disclosed in Cox were static rather than dynamic. The Appellant is arguing 25
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the separate teachings of Cox and Davis when the rejection is based on the 1
combined teachings of Cox and Davis. Nonobviousness cannot be 2
established by attacking the references individually when the rejection is 3
predicated upon a combination of prior art disclosures. See In re Merck & 4
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 5
We also are not persuaded by the Appellant’s argument that there is 6
no motivation to combine the teachings of Cox and Davis. Firstly, we agree 7
with the Examiner that the teaching in Davis that bids can be used to affect 8
the position on the list to thereby increase traffic on the website would have 9
motivated a person of ordinary skill in the art to modify the Cox method so 10
that advertisers could control their position on the list by bids. The 11
motivation for the combination of the Cox and Davis would have been to 12
provide a method for companies to control their position and thus provide a 13
way to increase the likelihood of receiving calls from the listing. 14
In addition, as the use of a bidding process to control the position on a 15
referral list was known in the field of website markets as is evidenced by 16
Davis, using this method in the telephone environment would be no more 17
than using a known method to produce a predictable result which is 18
sufficient to form the basis of an obviousness determination absent specific 19
motivation for the combination. 20
We do not agree with the Appellant’s argument that Cox teaches away 21
from the invention, because Cox teaches that the listing should be presented 22
alphabetically so as not to unduly favor a particular business. While Cox 23
teaches organizing the list alphabetically, it does not criticize, discredit, or 24
otherwise discourage organizing the list according to bids made. 25
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We are likewise not persuaded of error on the part of the Examiner by 1
Appellant’s argument that there is no motivation to combine the teachings of 2
Davis, Cox, and Gergic so as to include an interactive voice selection menu 3
that includes a Voice XML dialog. As Gergic teaches that such voice 4
selection menus are known in the art, providing such voice selection menu in 5
connection with a method as taught by the combined teachings of Davis and 6
Cox would have been no more than the predictable use of known devices to 7
achieve predictable results. 8
In view of the foregoing, we will sustain the Examiner’s rejection of 9
claims 2 and 3 under 35 U.S.C. § 103. 10
11
CONCLUSION OF LAW 12
On the record before us, Appellant has established that the Examiner 13
erred in rejecting claims 2 and 3 under 35 U.S.C. § 112, second paragraph. 14
On the record before us, Appellant has not established that the 15
Examiner erred in rejecting claims 2 and 3 under 35 U.S.C. § 103. 16
17
DECISION 18
The Examiner's rejection of claims 2 and 3 under 35 U.S.C. § 112, 19
second paragraph is not sustained. 20
The Examiner’s rejections of claims 2 and 3 under 35 U.S.C. § 103(a) 21
is sustained. 22
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 2
3
AFFIRMED 4
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hh 9
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