Ex Parte AsanoDownload PDFBoard of Patent Appeals and InterferencesMar 9, 201110206788 (B.P.A.I. Mar. 9, 2011) Copy Citation The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SHINTARO ASANO ____________ Appeal 2009-010018 Application 10/206,788 Technology Center 3600 ____________ Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-010018 Application 10/206,788 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-8, 10-12, 14-16, and 42. Claims 40, 41, 43 stand withdrawn (Answer 3, Appeal Br. 14). We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a system and method for processing product orders placed through a network. (Specification 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for processing a restaurant takeout order, for pickup by or for delivery to a consumer, said method comprising: receiving at a first entity over a first communications network an electronic request sent by a computer, said request to place a takeout order on behalf of the consumer; providing restaurant information to the consumer over the first communications network; receiving from the consumer over the first communications network an electronic order for a selected restaurant; formatting the electronic order into a text message in a form suitable for transmission over a second communications network; initiating a telephone call to the selected restaurant over the Appeal 2009-010018 Application 10/206,788 3 second communications network; at the selected restaurant, electronically determining whether the telephone call is from a number associated with the first entity; upon determining that the call is from a number associated with the first entity, automatically answering the telephone call at the selected restaurant to establish a call connection over the second network; transmitting the text message to the selected restaurant over the established call connection to place the takeout order with the selected restaurant; and at the selected restaurant, receiving the text message over the established call connection. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Cupps US 5,991,793 Nov. 23, 1999 Morris US 6,230,010 B1 May 8, 2001 Katseff US 2001/0028703 A1 Oct. 11, 2001 The following rejection is before us for review. The Examiner rejected claims 1-81, 10-12, and 14-16 and 42 under 35 U.S.C. §103(a) as being unpatentable over Cupps in view of Katseff. ISSUE The issue of obviousness turns on whether a person with ordinary skill in the art would understand that looking to Katseff and its teaching of 1 Claim 8 is not grouped in the rejection heading, but is nevertheless addressed in the body of the rejection (Answer 6). Appeal 2009-010018 Application 10/206,788 4 identifying and then automatically answering only desired calls specifically identified in a database of desired numbers, one would know to modify Cupps to cause the fax receiving device to answer only those transmission which are recognized as a desired number? FINDINGS OF FACT We find the following facts by a preponderance of the evidence: 1. We adopt as our own the Examiner’s findings as set forth on pages 4-7 of the Answer. 2. The Specification describes text messaging in the context of: Also, the text messaging provisions of order placement are less error prone and much more reliable as compared with spoken orders, particularly when dealing with lengthy alphanumeric part numbers. Text messaging eliminates mistakes associated with conversing in noisy environment and/or conversing with persons whose 30 ability to speak English is limited. (Specification 6:26-30). 3. The (Specification further describes that [T]he caller ID number or numbers for the network computer system are entered into the CPU. Upon receipt of each call, the CPU compares the caller ID information for the incoming call with the stored numbers. If the caller ID number matches a stored number, then the telephone line interface answers the call to receive the text message. (Specification 10:3-7). Appeal 2009-010018 Application 10/206,788 5 ANALYSIS We affirm the rejections of claims 1-8, 10-12, 14-16, and 42. Initially, we note that the Appellant argues claims 1-8, 10-12, 14-16, and 42 together as a group. Correspondingly, we select representative claim 1 to decide the appeal of these claims, remaining claims standing or falling with claim 1. Appellant argues Cupps is deficient because it involves a dedicated fax line for receiving messages in text form and: … one reason fax lines are set up – [is] to receive faxes without requiring intervention by the receiving party. Since facsimile machines do not require the intervention or involvement of a user, there is no issue that the fax transmission will disturb the called party. The called party is never expected to pick up the call to the facsimile machine. (Appeal Br. 8). We disagree with Appellant because to the contrary, a dedicated fax line insures that transmitted orders addressed to the fax line will get through without being blocked by a busy line caused by voice calls. Appellant admits that Cupps uses a second line for fax transmissions. (Appeal Br. 9). Thus, we find that the fax line in Cupps would be used exclusively in association with the facsimile machine 107 to receive transmissions for product orders to insure the unimpeded flow of business. Further, we find that a person with ordinary skill in the art looking to Katseff and its teaching of identifying and then automatically answering only desired calls specifically identified in a database of desired numbers, would know to Appeal 2009-010018 Application 10/206,788 6 modify Cupps to cause the fax receiving machine 107 to answer only those transmissions which are recognized as a desired number. The fact that Cupps also provides a back up line for follow-up calls is not grounds for error because the back up line would not eliminate the dedicated fax line, but only supplement it. Thus, Cupps does not actually teach away from every aspect of all of the remote ordering method. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As long as the combination is not directed to the discouraged aspects of the particular automated order taking method in Cupps, there is no teaching away. Appellant also argues the combination of Cupps and Katseff would result in “…calls from certain numbers would be automatically answered and put through to the speaker phone or headset hooked up to that line, thereby enabling the caller to speak with somebody at the restaurant.” (Appeal Br. 9). We disagree with Appellant because as found, supra, the proposed combination would cause only the recognized desirable call number to be answered and connected to the facsimile machine 107 which is capable of translating the machine-recognizable sounds into text, and not be answered by human intervention because the machine is connected to a dedicated fax line. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-8, 10-12, and 14-16 and 42 under 35 U.S.C. §103(a) as being unpatentable over Cupps in view of Katseff. Appeal 2009-010018 Application 10/206,788 7 DECISION The decision of the Examiner to reject claims 1-8, 10-12, 14-16, and 42 is AFFIRMED. AFFIRMED MP WILMERHALE/BOSTON 60 STATE STREET BOSTON MA 02109 Copy with citationCopy as parenthetical citation