Ex parte Albertson

Board of Patent Appeals and Interferences

Sep 2, 1997

08061249 (B.P.A.I. Sep. 2, 1997)

Application for patent filed May 17, 1993. 1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID V. ALBERTSON
____________
Appeal No. 96-0667
Application 08/061,2491
____________
ON BRIEF
____________
Before HAIRSTON, KRASS and FLEMING, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-0667
Application 08/061,249
-2-
This is a decision on appeal from the final rejection
of claims 1 through 12, all of the claims pending in the
application.
The invention is directed to a communication system for
a pay telephone. More particularly, advertising materials for
selected business locations, along with toll-free telephone
numbers for those business locations, are located adjacent pay
telephones. Data is recorded regarding the use of such toll-free
telephone numbers and a statement is then sent to each of the
selected businesses for the cost of each telephone call, as well
as the cost of the toll-free service and the cost of advertising
associated with each pay telephone. In this manner, business
operators are provided with information concerning the cost and
effectiveness of advertising for each pay telephone so that less
effective pay telephone locations can be dropped or changes in
advertising materials can be made.
Claims 1 through 6 relate to pay telephones and claims
7 through 12 relate to "smart" pay telephones.
Representative independent claim 1 is reproduced as
follows:
1. A method of communication with a pay telephone
connected to selected business locations through a local
telephone carrier and a long distance telephone carrier:
assigning a separate 1+800-XXX telephone number to each business
Appeal No. 96-0667
Application 08/061,249
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location, placing the assigned telephone numbers on advertising
materials located adjacent the pay telephone and indicating to
the caller that telephone calls to the assigned telephone numbers
are free to the caller, recording the telephone calls of the
assigned telephone numbers by the long distance carrier,
monitoring and recording all telephone calls of the assigned
telephone numbers that are handled by the long distance carrier,
and accessing the recorded telephone calls and rendering a
statement to each selected business location for the cost of each
telephone call to each selected business location, cost of 1+800-
XXX service, and cost of advertising associated with each
selected pay telephone.
The references of record relied upon by the examiner
are:
Hird et al. (Hird) 4,933,966 Jun. 12, 1990
Smith et al. (Smith) 4,942,604 Jul. 17, 1990
Davis 5,272,748 Dec. 21, 1993
(filed May 21, 1991)
Claims 1 through 12 stand rejected under 35 U.S.C. 103.
As evidence of obviousness, the examiner offers Davis and Smith
with regard to claims 1 through 6, adding Hird to this
combination with regard to claims 7 through 12.
Reference is made to the brief and answer for the
respective details of the positions of appellant and the
examiner.
OPINION
We reverse.
The examiner employs Davis for the teaching of a pay
telephone having telephone numbers for business locations located
Appeal No. 96-0667
Application 08/061,249
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adjacent thereto. The examiner states [answer, page 3] that it
is "inherent" for the businesses "to be charged an advertising
fee for the numbers being attached to the telephone." However,
appellant challenges the examiner's allegation of "inherency," at
page 9 of the brief, stating that "[t]here are no advertising
fees in the prior art for signage [?] used with selected pay
telephone numbers." Since Davis speaks of "subscribing taxi
companies" [column 7, line 40], it is not unreasonable to assume
that these taxi companies pay for the privilege of advertising
their telephone number.
The examiner recognizes that Davis does not disclose
these telephone numbers as being of the toll-free variety or that
the cost of advertising will be added to the billing statement,
as claimed. However, the examiner contends [answer, page 4],
that it is "well known" to provide businesses with toll-free
telephone numbers and cites Smith for that proposition, adding
that it is an "inherent" feature to record the toll-free calls
for proper billing.
While we can agree with the examiner insofar as the
notoriety of providing businesses with toll-free telephone
numbers and of charging businesses for such service and for
advertising, the instant claims do not merely call for charging a
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Application 08/061,249
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fee for advertising. Rather, the claims require that the
statement rendered to the businesses include thereon "the cost of
each telephone call to each selected business location, cost of
1+800-XXX service, and cost of advertising associated with each
selected pay telephone" [emphasis ours]-claim 1; or "the cost of
each telephone call to the assigned telephone number from each
pay telephone for the cost of each telephone call and the cost of
advertising associated with each pay telephone" [emphasis ours]-
claim 7.
As recognized by appellant, at page 9 of the brief,
while businesses certainly have been charged for advertising and
for toll-free telephone service, the bill therefor included a
total charge for the service without regard to the particular
telephone from which the calls were made. As explained by
appellant, "[t]hese bills are not separated for selected pay
telephone locations with supporting statements for calls from the
selected pay telephone along with costs of advertising located
adjacent the selected pay telephone." As required by the instant
claims, the statement rendered according to the claimed method
includes, inter alia, the "cost of advertising associated with
each selected pay telephone." This is not taught or suggested by
the prior art of record.
Appeal No. 96-0667
Application 08/061,249
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While the examiner takes the position that billing the
cost of advertising associated with each selected pay telephone
is not a patentable distinction over the prior art because the
type of, or frequency of, billing is merely "a contractual
agreement set between two parties" [answer, page 4], we agree
with appellant that "[t]his is a process step defined in the
claims and not a contractual agreement" [brief, page 9].
Especially in view of any suggestion by the applied references to
render a statement regarding the cost of advertising associated
with individually selected pay telephones and in view of the
advantages obtained by the instant claimed invention in terms of
cost effectiveness information for business operators regarding
advertising at individual pay telephone locations, the examiner's
contention that the method of billing is simply an obvious
contractual agreement between parties appears to be founded on
impermissible hindsight employing appellant's disclosure as a
guide.
Hird is applied by the examiner with regard to claims 7
through 12 to show "smart" pay telephones and while we agree that
it would have been obvious to apply the teachings Davis and/or
Smith to "smart" pay telephones, Hird does not provide for the
deficiencies of Davis and Smith regarding rendering a statement
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showing the cost of advertising associated with each selected pay
telephone.
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Application 08/061,249
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Accordingly, the examiner's decision rejecting claims 1
through 12 under 35 U.S.C. 103 is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
ERROL A. KRASS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R, FLEMING )
Administrative Patent Judge )

Appeal No. 96-0667
Application 08/061,249
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Richard O. Bartz
Burd, Bartz & Gutenkauf
1300 Foshay Tower
Minneapolis, MN 55402