Ex Parte Asano

Board of Patent Appeals and Interferences

Mar 9, 2011

10206788 (B.P.A.I. Mar. 9, 2011)

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

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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withdrawn (Answer 3, Appeal Br. 14).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
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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).
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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).
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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
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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.
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DECISION
The decision of the Examiner to reject claims 1-8, 10-12, 14-16, and 42 is
AFFIRMED.

AFFIRMED

MP

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