Ex Parte Wiederin et al

Board of Patent Appeals and Interferences

Jun 11, 2009

09836589 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte SHAWN E. WIEDERIN, RICHARD G. MOORE, DURAISAMY 8
GUNASEKAR, GREGORY MUMFORD, LONNIE S. CLABAUGH, 9
JON ABEL, and KOLIN G. HOGUE 10
___________ 11
12
Appeal 2009-007311 13
Application 09/836,589 14
Technology Center 3600 15
___________ 16
17
Decided:1 June 11, 2009 18
___________ 19
20
Before HUBERT C. LORIN, ANTON W. FETTING, and 21
BIBHU R. MOHANTY, Administrative Patent Judges. 22
23
FETTING, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-007311
Application 09/836,589

2
STATEMENT OF THE CASE 1
Shawn E. Wiederin, Richard G. Moore, Duraisamy Gunasekar, 2
Gregory Mumford, Lonnie S. Clabaugh, Jon Abel, and Kolin G. Hogue 3
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 4
1-40, the only claims pending in the application on appeal. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
8
We REVERSE. 9
The Appellants invented a way to charge for directory assistance 10
services. This is done by tracking the number of directory listings that are 11
transmitted to and displayed on a client access device; and preparing billing 12
information based upon the number of directory listings (Specification 4:¶’s 13
[07]-[08]). 14
The Appellants’ invention permits the customer to select the desired 15
information based upon viewing a portion of the information. The capability 16
to view the information partially allows the customer to retrieve accurate 17
data that is reflective of the customer's, and to pay for only those selected 18
directory listings that are actually used (i.e., accessed and viewed). In this 19
manner, the third party data provider is only compensated for the listings 20
that are accessed and viewed by the customer (Specification 15-16:¶ [46]). 21
Thus, the Appellants’ invention selects multiple listings for display, each of 22
which has only partial information. The customer must select one or more 23
to view hidden information for each selected to find the entry desired. So 24
there is the additional step of selecting for more information beyond the 25
usual selecting for dialing in conventional directory assistance. 26
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Application 09/836,589

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An understanding of the invention can be derived from a reading of 1
exemplary claim 1, which is reproduced below [bracketed matter and some 2
paragraphing added]. 3
1. A method of charging for directory assistance services that 4
are provided over a packet switched network, the method 5
comprising: 6
[1] transmitting information associated with a plurality of 7
directory listings to a client access device over the packet 8
switched network in response to a query initiated by a 9
customer; 10
[2] in response to a selection of more than one of the directory 11
listings from the client access device, transmitting a plurality of 12
listing numbers to the client access device; and 13
[3] preparing billing information based upon a number of the 14
plurality of listing numbers transmitted to the client access 15
device. 16
17
This appeal arises from the Examiner’s Final Rejection, mailed 18
November 30, 2006. The Appellants filed an Appeal Brief in support of the 19
appeal on June 20, 2007. An Examiner’s Answer to the Appeal Brief was 20
mailed on November 13, 2008. A Reply Brief was filed on December 3, 21
2008. 22
23
PRIOR ART 24
The Examiner relies upon the following prior art: 25
Gerszberg US 6,052,439 Apr. 18, 2000 26
Shah US 6,212,506 B1 Apr. 3, 2001 27
Cox US 2002/0115431 A1 Aug. 22, 2002 28
29
Gale Group, BOC Expands Directory Options, 9 BOC Week (Jan. 30
1992) (hereinafter “Gale Group”). 31
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REJECTIONS 1
Claims 1, 5-9, 13-17, 21-25, 29-33, and 37-40 stand rejected under 35 2
U.S.C. § 103(a) as unpatentable over Cox, Gerszberg, and Gale Group. 3
Claims 2-4, 10-12, 18-20, 26-28, and 34-36 stand rejected under 35 4
U.S.C. § 103(a) as unpatentable over Cox, Gerszberg, Shah, and Gale 5
Group.2 6
7
ISSUES 8
The issue of whether the Appellants have sustained their burden of 9
showing that the Examiner erred in rejecting claims 1, 5-9, 13-17, 21-25, 29-10
33, and 37-40 under 35 U.S.C. § 103(a) as unpatentable over Cox, 11
Gerszberg, and Gale Group hinges on whether the references describe or 12
show that it was predictable to select more than one directory listing from a 13
client access device and transmit a plurality of listing numbers to the client 14
access device in response. 15
The issue of whether the Appellants have sustained their burden of 16
showing that the Examiner erred in rejecting claims 2-4, 10-12, 18-20, 26-17
28, and 34-36 under 35 U.S.C. § 103(a) as unpatentable over Cox, 18
Gerszberg, Shah, and Gale Group hinges on the first rejection. 19

2 The statement of the statutory basis for this rejection omits Gale Group
from the list of references upon which the rejection is based (Answer 7).
That same statement of statutory basis states that the references are applied
as they were in the first rejection, however, all of the claims in this rejection
depend from claims in the prior rejection. Gale Group was one of the
references applied in the prior rejection, and was therefore applied to all of
the claims from which the claims in this rejection depend. Thus, we take the
Examiner to have included Gale Group in this rejection as well, and its
omission is simply a typographic error.
Appeal 2009-007311
Application 09/836,589

5
1
FACTS PERTINENT TO THE ISSUES 2
The following enumerated Findings of Fact (FF) are believed to be 3
supported by a preponderance of the evidence. 4
Cox 5
01. Cox is directed to the provision of directory assistance services 6
to cellular telephone subscribers (Cox ¶ 0001). 7
02. In prior art directory assistance services, a customer dials an 8
operator and identifies the name and address of a party whose 9
telephone number is desired. The operator then locates the 10
number, using printed directories or a computer database, and 11
provides the number to the customer (Cox ¶ 0003). 12
03. In the prior art, after determining the telephone number desired 13
by the customer, rather than voicing it to the customer, the 14
directory assistance operator may initiate a call to the desired 15
party (Cox ¶ 0005). 16
04. Cox, rather than dropping all further involvement with the call, 17
continually monitors the connection established for a 18
predetermined dual tone multi-frequency (DTMF) signal issued 19
by the customer, such as that obtained by pressing the "*" button. 20
If such a signal is detected, the customer is transferred back to a 21
directory assistance operator, who can then provide whatever 22
further assistance is needed (Cox ¶ 0007). 23
05. The directory assistance service logs, in a billing database, 24
information identifying the customer, the destination number to 25
which the customer is connected, and the date, time and duration 26
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of the customer/destination number connection. This log of 1
information is periodically provided to the cellular carrier, 2
allowing it to bill the customer for the call connected by the 3
directory assistance operator and recoup the associated expense 4
(Cox ¶ 0008). 5
Gale Group 6
06. Gale Group is directed to describing how Southwestern Bell 7
was expanding the coverage for its multiple listing directory 8
assistance (Gal Group 1). 9
07. The technology allows customers to get more than the usual 10
two directory listings per call from directory assistance. In Texas, 11
beyond a customer’s monthly free-call or listing allowance, the 12
multiple listings are 30 cents for the first two listings, and 30 cents 13
for each additional listing (Gal Group 1). 14
Gerszberg 15
08. Gerszberg is directed to providing automated directory 16
assistance of telephone numbers over a local loop access 17
architecture (Gerszberg 1:6-8). 18
09. Gerszberg describes how a user initiates a directory assistance 19
transaction by pressing a soft-key on a vision phone/user interface, 20
and then verbally enters a directory assistance query. Gerszberg 21
then processes the natural language query, incorporates the street 22
address from which the directory assistance query was initiated, 23
searches the database, and prioritizes the search results. The 24
results are displayed on the video phone user interface as text 25
(Gerszberg 7:62-8:23). 26
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10. Gerszberg describes how the user is provided with the option of 1
selecting a listing from the search results to be automatically 2
dialed (Gerszberg 8:30-32). 3
Facts Related To Differences Between The Claimed Subject Matter And 4
The Prior Art 5
11. None of the references applied describes selecting more than 6
one directory listing from a client access device and transmitting a 7
plurality of listing numbers to the client access device in response. 8
Facts Related To The Level Of Skill In The Art 9
12. Neither the Examiner nor the Appellants has addressed the level 10
of ordinary skill in the pertinent arts of systems analysis and 11
programming, telephone systems, directory assistance systems, 12
directory assistance billing systems, or user interface design. We 13
will therefore consider the cited prior art as representative of the 14
level of ordinary skill in the art. See Okajima v. Bourdeau, 261 15
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific 16
findings on the level of skill in the art does not give rise to 17
reversible error ‘where the prior art itself reflects an appropriate 18
level and a need for testimony is not shown’”) (quoting Litton 19
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 20
(Fed. Cir. 1985)). 21
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Facts Related To Secondary Considerations 1
13. There is no evidence on record of secondary considerations of 2
non-obviousness for our consideration. 3
4
PRINCIPLES OF LAW 5
Obviousness 6
A claimed invention is unpatentable if the differences between it and 7
the prior art are “such that the subject matter as a whole would have been 8
obvious at the time the invention was made to a person having ordinary skill 9
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 550 10
U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). 11
In Graham, the Court held that the obviousness analysis is bottomed 12
on several basic factual inquiries: “[(1)] the scope and content of the prior art 13
are to be determined; [(2)] differences between the prior art and the claims at 14
issue are to be ascertained; and [(3)] the level of ordinary skill in the 15
pertinent art resolved.” 383 U.S. at 17. See also KSR, 550 U.S. at 406. 16
“The combination of familiar elements according to known methods is likely 17
to be obvious when it does no more than yield predictable results.” Id. at 18
416. 19
“When a work is available in one field of endeavor, design incentives 20
and other market forces can prompt variations of it, either in the same field 21
or a different one. If a person of ordinary skill can implement a predictable 22
variation, § 103 likely bars its patentability.” Id. at 417. 23
“For the same reason, if a technique has been used to improve one 24
device, and a person of ordinary skill in the art would recognize that it would 25
improve similar devices in the same way, using the technique is obvious 26
unless its actual application is beyond his or her skill.” Id. 27
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“Under the correct analysis, any need or problem known in the field 1
of endeavor at the time of invention and addressed by the patent can provide 2
a reason for combining the elements in the manner claimed.” Id. at 420. 3
4
ANALYSIS 5
Claims 1, 5-9, 13-17, 21-25, 29-33, and 37-40 rejected under 35 U.S.C. § 6
103(a) as unpatentable over Cox, Gerszberg, and Gale Group. 7
Claims 1, 9, 17, 25, and 33 are the only independent claims. Each of 8
these claims requires selecting more than one directory listing from a client 9
access device and transmitting a plurality of listing numbers to the client 10
access device in response. 11
The Examiner found that Cox described the directory assistance 12
process including display and billing, Gerszberg described displaying the 13
numbers, and Gale Group described multiple listings (Answer 4-5). 14
The Appellants contend that none of the references applied describes 15
selecting more than one directory listing from a client access device and 16
transmitting a plurality of listing numbers to the client access device in 17
response (Br. 13-15). 18
The Examiner responded 19
BOC "allows" customers to get more than the usual two 20
directory listings per call from the directory assistance. Two is 21
[a] multiple listing on top of allowing more than the initial two. 22
The examiner maintains that it is implied that if a user is 23
receiving two listings it is in response to some type of selection 24
by the user. The directory assistance would not send unwanted 25
to [sic.] listings to the user. 26
Answer 11. We disagree with the Examiner. 27
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None of the references applied describes selecting more than one 1
directory listing from a client access device and transmitting a plurality of 2
listing numbers to the client access device in response (FF 11). The 3
Examiner has not found otherwise, but instead found that there must have 4
been some selection. While we agree there must have been some selection 5
to receive the two listings, this is far from implying that such a selection was 6
from among other directory listings from the client access device, instead of 7
from asking for names from the operator. The Examiner’s rationale is that 8
in Gale Group, “[t]wo is [a] multiple listing on top of allowing more than the 9
initial two.” Id. It is unclear how the Examiner relies on this. If the 10
Examiner means to imply that the additional listings are selected from the 11
first set of listings, nothing in Gale Group states or implies this. Instead, 12
Gale Group simply describes increasing the number of entries that can be 13
retrieved to be more than two. 14
Each of the references states that selections of multiple numbers are 15
based on queries; the selection from among multiple numbers is of a single 16
entry rather than multiple entries. Cox describes conventional directory 17
assistance with a provision allowing the caller to recontact the operator (FF 18
01-04). Gerszberg describes displaying multiple numbers, but selecting one 19
from those numbers (FF 10). Gale Group describes customers getting 20
multiple listings, but again selecting only one (FF 06-07). 21
Thus, we conclude the Examiner has failed to present a prima facie 22
case. Since this issue is determinative, we need not reach the remaining 23
Appellants’ arguments. 24
Appeal 2009-007311
Application 09/836,589

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Claims 2-4, 10-12, 18-20, 26-28, and 34-36 rejected under 35 U.S.C. § 1
103(a) as unpatentable over Cox, Gerszberg, Shah, and Gale Group. 2
These claims depend from the independent claims in the prior 3
rejection and therefore incorporate the same limitations. Nothing in Shah 4
overcomes the omissions in the Examiner’s findings as to the independent 5
claims. Thus, the Examiner has failed to present a prima facie case as to this 6
rejection. 7
8
CONCLUSIONS OF LAW 9
The Appellants have sustained their burden of showing that the 10
Examiner erred in rejecting claims 1, 5-9, 13-17, 21-25, 29-33, and 37-40 11
under 35 U.S.C. § 103(a) as unpatentable over Cox, Gerszberg, and Gale 12
Group. 13
The Appellants have sustained their burden of showing that the 14
Examiner erred in rejecting claims 2-4, 10-12, 18-20, 26-28, and 34-36 15
under 35 U.S.C. § 103(a) as unpatentable over Cox, Gerszberg, Shah, and 16
Gale Group. 17
18
DECISION 19
To summarize, our decision is as follows: 20
• The rejection of claims 1, 5-9, 13-17, 21-25, 29-33, and 37-40 under 21
35 U.S.C. § 103(a) as unpatentable over Cox, Gerszberg, and Gale 22
Group is not sustained. 23
• The rejection of claims 2-4, 10-12, 18-20, 26-28, and 34-36 under 35 24
U.S.C. § 103(a) as unpatentable over Cox, Gerszberg, Shah, and Gale 25
Group is not sustained. 26
Appeal 2009-007311
Application 09/836,589

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REVERSED 2
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hh 9
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VERIZON 11
PATENT MANAGEMENT GROUP 12
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