Ex Parte Yeh et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11294459 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/294,459 12/06/2005 Yu Sung Yeh 2655-0149 5349
42624 7590 03/13/2012
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
4300 WILSON BLVD., 7TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
03/13/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte YU SUNG YEH and DARRYL SHEPERD
_____________

Appeal 2009-014184
Application 11/294,459
Technology Center 3600
______________

Before MURRIEL E. CRAWFORD, ROBERT E. NAPPI, and BIBHU R.
MOHANTY Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014184
Application 11/294,459
2

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 and 4.
We reverse.
INVENTION
The invention is directed to an integrated and interactive telephone
and computer communications system that also provides marketing
information to a user. Specification 1-3. Claim 1 is representative of the
invention and reproduced below:
1. A method for delivering a marketing message,
comprising the steps of:
receiving via internet demographic information corresponding to a
subscriber;
assigning to said subscriber a storage space, said storage space
configured to store a telephony-based personal message to said
subscriber;
assigning to said subscriber a telephone number corresponding to
said storage space such that said personal message corresponds to a
digitized voice message;
storing said telephony-based personal message in said storage
space;
delivering to said subscriber via telephone a marketing message
corresponding to said demographic information when said subscriber
accesses said personal messages via telephone; and
delivering to said subscriber said telephony-based personal
message.

REFERNCES

Marsh US 5,848,397 Dec. 08, 1998
Cohen, Danny, “A Voice Message System”, IFIP, 1981
Appeal 2009-014184
Application 11/294,459
3

REJECTION AT ISSUE
The Examiner has rejected claims 1 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Marsh in view of Cohen. Answer 3-41.

ISSUE
Appellants argue on pages 5 through 8 of the Brief2 and pages 2 and 3
of the Reply Brief that the Examiner’s rejection of claim 1 is in error.
Appellants’ arguments present us with the issue: is the combination of the
references improper as it changes the principle operation of the references?

ANALYSIS
We have reviewed Appellants’ arguments in the Brief, and we concur
with Appellants’ conclusion that the Examiner erred in combining Marsh
and Cohen as the proposed combination changes the principle operation of
Cohen. Claim 1 recites delivering to a subscriber via telephone marketing
messages corresponding to demographic information when the subscriber
access the personal messages by the telephone. The Examiner finds Marsh
teaches delivering marketing messages corresponding to the demographic
information when the subscriber access personal messages (via e-mail).
Answer 3. Further, the Examiner finds Cohen teaches integrating e-mail and
voice mail. Answer 3-4. We concur with these findings. However, as
argued by Appellants on page 8 of the Brief, Marsh teaches that the
advertisements are presented to the user (displayed) while the user is

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
October 8, 2008.
Appeal 2009-014184
Application 11/294,459
4

performing other activities and that a telephone interface cannot be used in
such a manner. We find this argument persuasive. The principle operation
of Marsh is to present users with advertisements while the user is operating a
device (computer) which is not connected to the data provider (server), see
for example col. 17, lines 15-23. We concur with Appellants that this
principle operation of Marsh would be destroyed by the combination as it is
not readily apparent nor has the Examiner identified how this operation is
incorporated into retrieving messages via the telephone. Accordingly, we
will not sustain the Examiner’s rejection of claims 1 and 4.

ORDER
The decision of the Examiner to reject claims 1 and 4 is reversed.

REVERSED

tj

2 Throughout this opinion we refer to Appellants’ Substitute Brief dated
December 8, 2008, and Reply Brief dated December 8, 2008.