Ex Parte Pace et al

Board of Patent Appeals and Interferences

Jan 29, 2009

09782677 (B.P.A.I. Jan. 29, 2009)

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___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK C. PACE and THOMAS W. COOK
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Appeal 2008-5444
Application 09/782,677
Technology Center 3600
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Decided: January 30, 2009
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Before ANTON W. FETTING, DAVID B. WALKER, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark C. Pace and Thomas W. Cook (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-75, the only claims pending in the
application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).
We AFFIRM.

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The Appellants invented a two-way paging and rule-based scheduling system
(Specification 1: Field of Invention).
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. A system for providing service to customers at service locations,
each service location having a communication device adapted to
communicate one or more events pertaining to a service event for a
customer at the service location, the system comprising:
[1] a decisioning system
communicatively coupled to the communication devices to
receive the events,
the decisioning system scheduling a primary service attendant
from a plurality of service attendants
for servicing each event according to at least a value of the
customer at the service location that generated the event;
[2] a communication system
communicatively coupled to the decisioning system to transmit
a message to the primary service attendant selected for an
event,
the message indicating the service location at which the event is
to be serviced,
where the indicated service location is in a business
establishment; and
[3] a plurality of message receivers,
used by the service attendants,
the primary service attendant using a message receiver to
receive the message from the communication system.

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This appeal arises from the Examiner’s Final Rejection, mailed February 15,
2006. The Appellants filed an Appeal Brief in support of the appeal on August 10,
2006. An Examiner’s Answer to the Appeal Brief was mailed on October 27,
2006. A second Appeal Brief was filed on December 24, 2006.1 A Reply Brief
was filed on December 27, 2006.
PRIOR ART
The Examiner relies upon the following prior art:
Boushy US 6,003,013 Dec. 14, 1999
McDonough US 6,070,142 May 30, 2000
Acres US 6,257,981 B1 Jul. 10, 2001
REJECTIONS 8
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Claims 1, 2, 7-10, 12-14, 17-21, 23, 24, 29-32, 34-36, 39-43, 45-47, 52-61, 66,
68-71, and 75 stand rejected under 35 U.S.C. § 102(e) as anticipated by
McDonough.
Claims 3-6, 11, 22, 25-28, 33, 44, 48-51, 62-65, 67, 72, and 73 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over McDonough and Acres.
Claims 15, 16, 37, 38, and 74 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McDonough and Boushy.

1 Generic references to the Appeal Brief in this Decision refer to the December
24, 2006 filing.
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ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1, 2, 7-10, 12-14, 17-21, 23, 24, 29-32,
34-36, 39-43, 45-47, 52-61, 66, 68-71, and 75 under 35 U.S.C. § 102(e) as
anticipated by McDonough.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 3-6, 11, 22, 25-28, 33, 44, 48-51, 62-65,
67, 72, and 73 under 35 U.S.C. § 103(a) as unpatentable over McDonough
and Acres.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 15, 16, 37, 38, and 74 under 35 U.S.C.
§ 103(a) as unpatentable over McDonough and Boushy.
The pertinent issue turns on whether McDonough describes transmitting a
message to a service attendant, the message indicating the service location at which
the event is to be serviced, where the indicated service location is in a business
establishment.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
McDonough
01. McDonough is directed to a customer call center connecting any
customer to any sales and service resource through any access method at
any time from any customer location (McDonough 1:26-30).
02. Computer telephone integration (CTI) is a technology platform that
merges voice and data services at the functional level and combines
voice and data to form a foundation to support business applications,
seamlessly combining functions from both the telephony world and the
computing world (McDonough 1:43-49).
03. McDonough describes applying CTI to business establishments.
Businesses also benefit from the use of CTI. For example, the benefits of
CTI to business includes prompter and more accurate response to
inquiries, orders, and service requests, personalized attention and
efficient problem resolution, improved customer and prospects access to
information about new products and services, increased number of
services available and extended hours of operation (McDonough 2:33-
39).
04. Upon obtaining all relevant available requirements information
McDonough’s routing application accesses resource profiles to find
resources with the appropriate skills. A specific resource will then be
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selected based on resource availability, skill profiles, and load balancing
(McDonough 8:5-10).
05. McDonough’s routing engine notifies the voice response unit (VRU)
with the appropriate call treatment and routing authorization once a
resource is selected. The VRUs then send the call to determine the
appropriate employee and phone (McDonough 8:22-26).
06. As a contact progresses, the VRU, the employee workstation, the web
server, and other devices continually interact with a context manager.
Contacts may be transferred between resources many times during the
course of a call and this transfer activity is coordinated by the context
manger and the routing engine (McDonough 8:48-56).
07. McDonough’s routing rules are the step-by-step instructions which
combine the routing components to identify what resource will receive a
particular contact. Skills based routing methodology uses the skills and
experience of each resource. The skills and experience of each resource
is then matched against the requirements and characteristics of a
particular contact to assign any type of sales and service resource to the
contact. Contacts can be assigned to any resource that has the skills
required for the contact (McDonough 11:65 – 12:7).
08. To remain competitive, businesses must retain their most profitable
customers and pro-actively increase customer profitability. McDonough
does this by segmenting customers and allocating resource levels to each
to so as to deliver the desired customer experience (McDonough 12:33–
38).
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09. Customers are routed to specially trained cross-sale specialists and/or
customer interaction technology resources may be directed to issue cross
sell messages to a customer when unique cross-sale opportunities are
identified (McDonough 12:46-52).
Acres
10. Acres is directed to contolling gaming devices interconnected by a
network (Acres 1:11-13).
Boushy
11. Boushy is directed to systems for tracking customer activity (Boushy
1:16-17).

Facts Related To The Level Of Skill In The Art
12. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent arts of systems analysis and programming,
decision systems, and customer support systems. We will therefore
consider the cited prior art as representative of the level of ordinary skill
in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (“[T]he absence of specific findings on the level of skill in the art
does not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”) (quoting
Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985).
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Facts Related To Secondary Considerations
13. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.
PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily).
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
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Claim Preamble

“[A] claim preamble has the import that the claim as a whole suggests for it.”
Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d
615, 620 (Fed.Cir. 1995). If the claim preamble, when read in the context of the
entire claim, recites limitations of the claim, or, if the claim preamble is “necessary
to give life, meaning, and vitality” to the claim, then the claim preamble should be
construed as if in the balance of the claim. Kropa v. Robie, 187 F.2d 150, 152
(CCPA 1951). “If, however, the body of the claim fully and intrinsically sets forth
the complete invention, including all of its limitations, and the preamble offers no
distinct definition of any of the claimed invention's limitations, but rather merely
states, for example, the purpose or intended use of the invention, then the preamble
is of no significance to claim construction because it cannot be said to constitute or
explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999).

Anticipation
"A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987). "When a claim covers several structures or compositions, either generically
or as alternatives, the claim is deemed anticipated if any of the structures or
compositions within the scope of the claim is known in the prior art." Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The identical invention must be
shown in as complete detail as is contained in the ... claim." Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). The elements must be arranged
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as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Obviousness

A claimed invention is unpatentable if the differences between it and the
prior art are “such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art.”
35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1729-30
(2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR, 127 S.Ct. at 1734. “The combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
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“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
Claims 1, 2, 7-10, 12-14, 17-21, 23, 24, 29-32, 34-36, 39-43, 45-47, 52-61, 66, 68-
71, and 75 rejected under 35 U.S.C. § 102(e) as anticipated by McDonough.
The Appellants argue these claims as a group.
Accordingly, we select claim 1 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that McDonough anticipated claim 1 (Answer 3-5). The
Appellants contend that McDonough does not describe dispatching a service
attendant to a location in a business establishment where a customer is located
(Brief 8: First full ¶). In particular, the Appellants contend that McDonough
provides service at remote rather than business locations (Brief 8: Bottom ¶).
The Examiner responds that the Specification does not define a business
establishment, and that the claim only calls for an indicated service location being
a business establishment in any event. The Examiner found that the indication of a
service location occurs in a customer call center in McDonough and that a
customer call center is itself a business establishment (Answer 17-18). The
Appellants contend McDonough’s customers are not in the call center (Reply Br.
1:¶ I); the Examiner is misconstruing the claim limitation (Reply Br. 3:¶ II); and
McDonough does not dispatch service attendants (Reply Br. 5: ¶ III).
We agree with the Examiner. There is no contention regarding whether
McDonough describes the required decisioning system to schedule staff for
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servicing events, communication system for transmitting messages to the staff, and
message receivers to receive the messages and McDonough clearly describes these
limitations (FF 04 - 09). Independent claim 1 requires transmitting a message to a
service attendant, the message indicating the service location at which the event is
to be serviced, where the indicated service location is in a business establishment.
The remaining independent claims 23, 45, 46, and 75 have similar limitations.
McDonough describes a call center where customers call and are connected to
any service resource required (FF 01). Thus, the service location, which is simply
the location at which service occurs, is where the service resource is applied. As
the Examiner found, in a call center, a service resource is applied electronically
within the call center, and a call center is a business establishment. McDonough’s
service resources are thus the service attendants as claimed that receive messages
via McDonough’s routing system to respond to a particular customer contact
within the call center.
Further, the nature of services in a call center is that service is done by
telecommunication. Telecommunication transmits information between where a
service provider is located and a customer is located, and thus service is performed
at both the service provider and customer locations simultaneously. Therefore,
service is provided at both the call center and at the customer site in McDonough.
Also, McDonough also describes how some of the customers are themselves
located at business establishments (FF 03).
As to customers being in the service location, only the claim preamble recites
this, and whether customers are at a service location does not affect the structure in
the apparatus claims or the steps in the method claims. Thus, customers within a
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service location are mere field of use limitations afforded no patentable weight.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
Finally as to dispatching of service providers, the word dispatch is not found in
any of the claims, but McDonough’s routing system performs the dispatching of its
service resources (FF 04).
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1, 2, 7-10, 12-14, 17-21, 23, 24, 29-32, 34-36, 39-43, 45-
47, 52-61, 66, 68-71, and 75 under 35 U.S.C. § 102(e) as anticipated by
McDonough.
Claims 3-6, 11, 22, 25-28, 33, 44, 48-51, 62-65, 67, 72, and 73 rejected under
35 U.S.C. § 103(a) as unpatentable over McDonough and Acres.
These claims introduce requirements regarding the attributes of a customer, for
which the Examiner applied Acres. The Appellants argue that these claims are
patentable for the same reasons as claim 1 (Appeal Br. 10: ¶ II), which we found
unpersuasive supra. The Appellants also contend there is no motivation to modify
McDonough because McDonough’s call center would not be used to dispatch
service attendants (Appeal Br. 12: ¶ IV). The Examiner responds that the claims
do not have a limitation of dispatching service attendants (Answer 19).
We agree with the Examiner. None of the claims recite dispatching. The
Appellants agree with this, but argue that the claim features enable dispatching
(Reply Br. 5-6: ¶ III). This argument is simply not commensurate with the breadth
of the claims. The claims do not require dispatching.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 3-6, 11, 22, 25-28, 33, 44, 48-51, 62-65, 67, 72, and 73
under 35 U.S.C. § 103(a) as unpatentable over McDonough and Acres.
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Claims 15, 16, 37, 38, and 74 rejected under 35 U.S.C. § 103(a) as unpatentable
over McDonough and Boushy.
These claims introduce gaming machine limitations for which the Examiner
applies Boushy. The Appellants argue that modifying McDonough according to
claim 1 would destroy a fundamental principal of McDonough, viz. connecting
service providers via a call center (Appeal Br. 11: ¶ III). The Appellants go on to
elaborate that their claims require dispatching. Thus, this is a repetition of the
argument regarding dispatching that we found unpersuasive supra. The Appellants
have not sustained their burden of showing that the Examiner erred in rejecting
claims 15, 16, 37, 38, and 74 under 35 U.S.C. § 103(a) as unpatentable over
McDonough and Boushy.
CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1, 2, 7-10, 12-14, 17-21, 23, 24, 29-32, 34-36, 39-43, 45-
47, 52-61, 66, 68-71, and 75 under 35 U.S.C. § 102(e) as anticipated by
McDonough.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 3-6, 11, 15, 16, 22, 25-28, 33, 37, 38, 44, 48-51, 62-65,
67, and 72-74 under 35 U.S.C. § 103(a) as unpatentable over the prior art.

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DECISION
To summarize, our decision is as follows:
• The rejection of claims 1, 2, 7-10, 12-14, 17-21, 23, 24, 29-32, 34-36, 39-43,
45-47, 52-61, 66, 68-71, and 75 under 35 U.S.C. § 102(e) as anticipated by
McDonough is sustained.
• The rejection of claims 3-6, 11, 22, 25-28, 33, 44, 48-51, 62-65, 67, 72, and
73 under 35 U.S.C. § 103(a) as unpatentable over McDonough and Acres is
sustained.
• The rejection of claims 15, 16, 37, 38, and 74 under 35 U.S.C. § 103(a) as
unpatentable over McDonough and Boushy is sustained.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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JRG
FENWICK & WEST LLP
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