Terraboost Media, LLC

Patent Trials and Appeals Board

Mar 22, 2022

2021005323 (P.T.A.B. Mar. 22, 2022)

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. 16/226,460 12/19/2018 Brian L Morrison TEBM-006US1 4240 165031 7590 03/22/2022 Quantum Patent Law Firm 2101 L Street NW Suite 800 Washington, DC 20037 EXAMINER PANDYA, SUNIT ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): contact@quantumpat.com hlee@quantumpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN L. MORRISON Appeal 2021-005323 Application 16/226,460 Technology Center 3600 Before BRANDON J. WARNER, MICHAEL L. WOODS, and LEE L. STEPINA, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-9. See Appeal Br. 16; see also Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Terraboost Media, LLC. Appeal Br. 2. Appeal 2021-005323 Application 16/226,460 2 CLAIMED SUBJECT MATTER The application is titled “Sales Representative Optimization System.” Spec. 1. Claims 1 and 5 are independent. See Appeal Br. 17-19 (“Claims App.”). We reproduce claim 1, below: 1. A salesperson optimization system comprising: a network including a server engine; at least one computing device including a global positioning system (GPS) to track a location of a salesperson; a dialing system; and a telemarketing system storing contact information of at least one lead and in communication with the dialing system and the at least one computing device via the network, wherein the dialing system is configured to contact the at least one lead when the at least one lead is within a given distance of the salesperson based on the GPS, and to notify the salesperson. Claims App. 17 (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hollatz US 6,333,980 B1 Dec. 25, 2001 Sacco US 2015/0019287 A1 Jan. 15, 2015 REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 1-3 102 Sacco 4-9 103 Sacco, Hollatz See Final Act. 2-5. Appeal 2021-005323 Application 16/226,460 3 ANALYSIS I. Claims 1-3 Anticipated by Sacco The Examiner rejects claims 1-3 as anticipated under 35 U.S.C. § 102 by Sacco. Final Act. 1. The disputed issue is whether Sacco discloses a “dialing system [] configured to contact the at least one [sales] lead when the at least one lead is within a given distance of the salesperson based on the GPS,” as recited in claim 1. Claims App. 17. “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, it is important to read the claims ‘in light of the specification.”’ Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir. 2017). Furthermore, “a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” mFormation Techs. v. Research in Motion Ltd., 764 F.3d 1392, 1398-99 (Fed. Cir. 2014) (citation and internal quotation marks omitted). 1. Examiner’s Rejection In rejecting independent claim 1, and its dependent claims 2 and 3, the Examiner finds that Sacco discloses the claimed salesperson optimization system comprising, inter alia, a dialing system and a telemarketing system storing contact information of at least one lead and in communication with the dialing system and the at least one computing device via the network, wherein the dialing system is configured to contact the Appeal 2021-005323 Application 16/226,460 4 at least one lead when the at least one lead is within a given distance of the salesperson based on the GPS, and to notify the salesperson. Final Act. 2-3 (citing in relevant part Sacco ¶¶ 37-73). The Examiner further finds that paragraph 53 of “Sacco disclose[s] sales leads associated with providers, within close proximity to the reference location” and paragraph 57 of “Sacco disclose[s] initiating a call to the lead, when the lead is within a given distance and notifying the sales person, as required by the claim language given [the] broadest reasonable claim interpretation.” Adv. Act. 2 (dated Jan. 21, 2021); see also Ans. 6 (explaining the same). In construing the claimed limitation, the Examiner determines that “automation of the calling system . . . [is] not recited in the rejected claims.” Ans. 7. 2. Appellant’s Argument Appellant contends that “Sacco does not contemplate a ‘dialing system’ ‘that is configured to contact the at least one lead when the at least one lead is within the given distance of the salesperson based on the GPS, and to notify the salesperson,’ as recited in Claim 1.” Appeal Br. 10. Specifically, Appellant argues The claimed language recites a cause-and-effect relationship in that “when” a condition is met or an event occurs (i.e., “the at least one lead is within a given distance of the salesperson based on the GPS”), the “dialing system,” i.e., the subject in this sentence, is “configured to contact the at least one lead.” Reply Br. 4. Appeal 2021-005323 Application 16/226,460 5 3. Analysis Appellant’s argument is persuasive of Examiner error. The Examiner erred in construing the limitation as not requiring automation of the dialing system. Ans. 7. The Examiner’s interpretation is overly broad as it fails to read the limitation in light of the Specification and ignores the plain meaning of the claim. Smart Sys., 873 F.3d at 1378. In doing so, the Examiner effectively reads-out any meaning to the requirement that “the dialing system is configured to contact the at least one lead when the at least one lead is within the given distance of the salesperson.” See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). Properly understood in context, the claim term “when” imparts structure to the configuration of the recited “dialing system.” Grammatically, the claim requires the following order: First, “the at least one lead is within a given distance of the salesperson based on GPS,” and second, upon the occurrence of the first condition, “the dialing system is configured to contact the at least one lead.” See mFormation, 764 F.3d at 1398-99. This order is also consistent with the description of an operation of the invention as set forth in the Specification, namely, Figure 3 and its accompanying description. We reproduce Appellant’s Figure 3, below: Appeal 2021-005323 Application 16/226,460 6 Figure 3 of Appellant’s application “illustrates a flowchart of a method for a remote representative optimization system.” Spec. ¶ 16. In particular, the Appeal 2021-005323 Application 16/226,460 7 flowchart depicts, at step 1100, determining a remote user location with GPS, then, later at step 1300, executing a call to a client (i.e., the lead), then, at step 1400, notifying the remote user (i.e., the salesperson) of the lead. Id. ¶ 37. Turning to Sacco, Sacco discloses a system in which the salesperson selects “call indicator 222” to contact the lead. See Sacco ¶ 57. To illustrate, we reproduce Sacco’s Figure 2A, below: Figure 2A depicts a display (presumably from the salesperson’s smart phone) of sales leads in area 208. See Sacco ¶¶ 54, 104. “Check-in Appeal 2021-005323 Application 16/226,460 8 indicator 220 may be selected by a sales resource in order for the location based sales module 120 to log an activity indicating that the sales resource has personally visited the provider’s place of business.” Id. ¶ 56. Furthermore, Call indicator 222 may be provided, and selected by a sales resource wanting to call a contact associated with the sales lead. In some embodiments, the phone call may be initiated automatically following selection of call indicator 222. In some embodiments, a list of contacts associated with the sales lead may be presented to the sale resource for further selection. The outbound call may also be logged as an activity by the location base sales module 120, and associated to the sales lead in the promotional system. Other contact means may also be used after selection of the call indicator 222, such as, but not limited to a text message, an email, a push to talk request and/or the like. In some embodiments, a sales resource may be able to add new contact information and associated the contact information with a sales lead. Id. ¶ 57 (emphases added). From the above description, Sacco’s system simply provides information to the salesperson, and if the salesperson desires to contact the lead, the salesperson selects the “call indictor 222” button on the display of that salesperson’s phone. See id. Importantly, the salesperson decides whether to contact the sales lead. Id. If the salesperson does not select call indicator 222, the dialing system does not contact the lead, even if “the at least one lead is within a given distance of the salesperson based on the GPS.” Claims App. 17. Even if Sacco’s system provides “a list of sales leads in the geographical area . . . with providers in close proximity to the reference location” (Sacco ¶ 53), we do not find Sacco’s system as automatically Appeal 2021-005323 Application 16/226,460 9 configuring its dialing system to contact a sales lead when in close proximity of the salesperson. Because Sacco’s dialing system is not “configured to contact the at least one lead when the at least one lead is within a given distance of the salesperson based on GPS,” Sacco does not anticipate claim 1. Claims App. 17 (emphasis added); see Appeal Br. 9-11 (explaining the same); Accordingly, we do not affirm the Examiner’s rejection of claim 1, or of claims 2 and 3, which rely on the same flawed finding. II. Claims 4-9 Unpatentable Over Sacco and Hollatz In rejecting claims 4-9 as unpatentable under 35 U.S.C. § 103 over Sacco and Hollatz, the Examiner relies on the same flawed finding discussed above. See Ans. 8-9 (“The above limitations is [sic] disclosed by Sacco in 0057-0059, wherein Sacco states ‘Call indicator 222 may be provided, and selected by a sales resource wanting to call a contact . . . .’”). Additionally, and in the Final Office Action, the Examiner finds, in the alternative, that Hollatz teaches, “wherein the dialing system is configured to contact the at least one lead for the preferred salesperson to engage.” Final Act. 4 (citing Hollatz, cols. 5-7). This finding is in error, however, as Hollatz does not teach a “dialing system that is configured to contact the at least one lead,” as required in each of the independent claims 1 and 5. See Claims App. 17 (emphasis added). As pointed out correctly by Appellant, “the system in Hollatz . . . simply distributes incoming calls to agents and does not actively reach out to a lead by contacting the lead.” Appeal Br. 13 (emphasis omitted). Indeed, Hollatz discloses, “[a]n automatic call distributor 100 and method for selectively connecting incoming calls.” Hollatz, code (57) (emphasis Appeal 2021-005323 Application 16/226,460 10 added). Because Hollatz’s system merely connects incoming calls, it does not teach a “dialing system [] configured to contact the at least one lead,” as recited in each of independent claims 1 and 5. Claims App. 17-18 (emphasis added). Because neither Sacco nor Hollatz teaches or discloses “wherein the dialing system is configured to contact the at least one lead when the at least one lead is within a given distance of the salesperson based on the GPS, and to notify the salesperson” (claim 1) or “wherein the dialing system is configured to contact the at least one lead for the preferred salesperson to engage and notifies the preferred salesperson when contact to the at least one lead is successful” (claim 5), we reverse the rejection of claims 4-9 as unpatentable over Sacco in view of Hollatz. III. Conclusion We reverse the rejections of claims 1-9. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3 102 Sacco 1-3 4-9 103 Sacco, Hollatz 4-9 Overall Outcome 1-9 REVERSED