Ex Parte Callahan et al

Board of Patent Appeals and Interferences

Jun 30, 2008

09778311 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN CALLAHAN and DARYLE GIBBENS
____________

Appeal 2007-2170
Application 09/778,311
Technology Center 3600
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Decided: June 30, 2008
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kevin Callahan, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-19. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
The Appellants’ claimed invention is to a method and system for
scheduling an in-home appliance repair service via a computer network,
such as the Internet (Specification 1:7-9; 3:12-14). It is characterized by the
use of a “repair scheduling server execut[ing] a program which determines a
plurality of available repair time slots and transmits a list of choices to the
client device for display.” (Specification 3:17-20.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of scheduling an in-home
appliance repair service by a customer, the method
comprising the steps of:
receiving an appliance selection request
message at a server device from a client device via
a wide area network, the appliance selection
request message being indicative of a desire to
receive appliance selection data, the appliance
selection data facilitating selection of a first home
appliance by the customer;
transmitting the appliance selection data
from the server device to the client device via the
wide area network in response to receiving the
appliance selection request message;
receiving an appliance identifier at the

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Apr. 7, 2006), the Examiner’s Answer (“Answer,” mailed Apr.
21, 2006); and the Reply Brief (“Reply Br.,” filed May 30, 2006).
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server device from the client device via the wide
are network, the appliance identifier being
provided by the customer and distinguishing the
first home appliance from a second home
appliance;
receiving a geographical identifier provided
by the customer at the server device from the client
device via the wide area network;
determining at the server device multiple
available repair time slots based on at least one of
the appliance identifier and geographical identifier
provided by the customer;
transmitting data indicative of the multiple
available repair time slots from the server device to
the client device via the wide area network to
thereby allow the customer to select at least one of
the multiple available repair time slots; and
receiving time slot selection data at the
server device from the client device via the wide
area network, the time slot selection data
indicating a desire by the customer to have the first
home appliance repaired in the one of the multiple
available repair time slots selected by the
customer.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
• “KichenAid Appliance Diagnostic System,” archive.org website of
whirlpool.com (Jun. 26, 1997) [A].
• “KitchenAid Repair Service Locator,” archive.org website of whirlpool.com
(Jun. 26, 1997) [B].
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• Whirlpool website search engine, archive.org website of whirlpool.com (Jan.
17, 1999) [E].
• Whirlpool webpage of air conditioners hypertext links of specific models,
archive.org website of whirlpool.com (Apr. 29, 1999) [F].
• Whirlpool webpage “Service Matters,” archive.org website of whirlpool.com
(Jun. 26,1997) [G];
• Hickey, Kathleen, Right Place, Right Time, 260 Traffic World 47 (Nov. 1999)
[U1].
• PRNewswire, PointServe Launches Breakthrough On-Line Scheduling
Solutions to Dramatically Improve the Reliability of Home and Business-Oriented
Service Delivery Regional Rollout to Begin in Salt Lake City on Nov 1; National
Launch Slated for Early 2000 1 (Oct 1999) (ProQuest ID 45806204) [V1].
• Satran, Dick, Rocket Scientist tries improving service industry, Vancouver
Sun E2 (Oct 1999) (E2, ProQuest ID 08) [W1].
• Hall, John R., New Service Website Holds Promise for Contractors, Air
Conditioning, Heating & Refrigeration News 1 (Nov 1999) [X1].
• Francett, Barbara, An Exercise in Utility, Software Magazine 75 (June 1997)
[U2].
The following rejections are before us for review:
1. Claims 1-7 and 9-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over References A, B, E, F, G, U1, V1, W1, and X1.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
References A, B, E, F, G, U1, V1, W1, X1, and U2.

ISSUES
The first issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 1-7 and 9-19 as unpatentable over
References A, B, E, F, G, U1, V1, W1, and X1. This issue turns on whether
the prior art would have led one having ordinary skill in the art to a method
of scheduling an in-home appliance repair service by a customer comprising
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a step of
determining at the server device multiple available
repair time slots based on at least one of the
appliance identifier and geographical identifier
provided by the customer [and] transmitting data
indicative of the multiple available repair time
slots from the server device to the client device via
the wide area network to thereby allow the
customer to select at least one of the multiple
available repair time slots . . .
(claim 1).
The second issue before us is whether Appellants have shown that the
Examiner erred in rejecting claim 8 as unpatentable over References A, B, E,
F, G, U1, V1, W1, X1, and U2. This issue turns on how the first issue is
disposed.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).

The scope and content of the prior art
1. Reference A is a copy of a webpage from Whirlpool.com said to
be linked to an interactive application for diagnosing a problem
with an appliance.
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2. Reference B is a copy of a form on a webpage from
Whirlpool.com said to allow a customer to locate a service
provider near a specified zip code.
3. Reference E is a copy of a form on a webpage from Whirlpool.com
said to allow for searching key words.
4. Reference F is a copy of a webpage from Whirlpool.com listing
various appliances.
5. Reference G is a copy of a webpage from Whirlpool.com said to
have links to the “nearest” service providers.
6. Reference U1 is a copy of a document describing that “PointServe
offers web-enabled logistics software that helps move people
around.”
7. Reference V1 is a copy of a document describing that PointServe
provides on-line solutions to improve home and business-oriented
service delivery.
8. Reference W1 is a copy of a document describing that PointServe
will launch a site to let customers arrange and schedule home
services.
9. Reference X1 is a copy of an article about a service website.
10. Reference U2 is a copy of an article about how to deliver timely
field service to customers needing repairs through linking field
service professionals with centralized databases.
Any differences between the claimed subject matter and the prior art
11. The claimed invention combines in a single method steps
separately disclosed in the prior art. The claimed invention also
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employs a server to determine multiple available repair time slots
based on at least one of the appliance identifier and geographical
identifier provided by the customer and transmitting data indicative
of the multiple available repair time slots to a customer to select an
available repair time slot.
The level of skill in the art
12. Neither the Examiner nor Appellants has addressed the level of
ordinary skill in the pertinent arts of scheduling an in-home
appliance repair service by a customer via a computer network.
We will therefore consider the cited prior art as representative of
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985).
Secondary considerations
13. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
Rejection of claims 1-7 and 9-19 as unpatentable over References A, B, E, F,
G, U1, V1, W1, and X1.
The Appellants argue claims 1-7 and 9-19 as a group (App. Br. 3-11).
We select claim 1 (see supra) as the representative claim for this group, and
the remaining claims 2-7 and 9-19 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
The Examiner found that References A, B, and G (“Whirlpool.com”)
described all the limitation of claim 1 but the last three steps. (See Answer
6-8.) The Examiner found that the limitations of the last three steps of claim
1 were described in References U1, V1, and W1. (Answer 8-10.) The
Examiner determined that
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[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to
modify the teachings of Whirlpool.com regarding
providing appliance selection data over the internet
via a drop down box for customers to select and
provide appliance selection data from multiple
selections of appliance selection data, with the step
of determining, transmitting and receiving multiple
time slot selection data to and from customers over
the internet for scheduling an appliance repair, as
taught by PointServe, because it will improve
customer satisfaction with the home service
industry.

(Answer 11.)
The Appellants argued that the claimed combination is not disclosed
in the cited references. (App. Br. 6-7.) Specifically, the Appellants admit
that references U1, V1, and W1 (the “PointServe” references) disclose
“geographic information systems (GIS) routing capabilities” (App. Br. 7) but
argue that they are not disclosed as being used to “transmit[ ] data indicative
of the multiple available repair time slots from the server device to the client
device via the wide area network to thereby allow the customer to select at
least one of the multiple available repair time slots” (claim 1). (App. Br. 8.)
The Appellants also argued that, but for the use of hindsight, the
PointServe references fail to show a step of
determining at the server device multiple available
repair time slots based on at least one of the
appliance identifier and geographical identifier
provided by the customer [and] transmitting data
indicative of the multiple available repair time
slots from the server device to the client device via
the wide area network to thereby allow the
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customer to select at least one of the multiple
available repair time slots . . .
(claim 1). (App. Br. 9-11.) According to the Appellants, although the
“‘PointServe’ system allows Internet users to tap in directly and get access
to providers’ …. schedules, the ‘PointServe’ system nevertheless requires
that a user schedule a repair by doing a search and for potential open spaces
in a company’s … schedule for service people.” (Reply Br. 2.) Thus, the
Appellants argued that PointServe does not describe a method whereby a
“server” determines for the user multiple available repair time slots in which
to schedule a service provider.
We are not persuaded by the Appellants’ arguments.
Reference W1, for example, describes a site
allowing a consumer to arrange and schedule
service calls. The Appellants concede that the
“PointServe” system, considered alone or in
combination with “Whirlpool.com,” might
function to identify plural, potential service
providers that may be within a geographic region
or that may be qualified to work on a specified
appliance which provided service providers may
(or may not) have available repair time slots which
the user can then further manually search for, [but
that] “PointServe” does not disclose, teach, or
suggest the expressly claimed method in which a
server determines for the user multiple available
repair time slots … .”
(Reply Br. 3.) In other words, the Appellants agree that the claimed method
would have been obvious over PointServe (Reference W1) were the claimed
method to be drawn to a manual search for available time slots. In effect, the
Appellants are arguing the unobviousness of using a server to accomplish
what a manual search could do. However, it is generally obvious to
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automate a known manual procedure. Our reviewing court stated in
Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir.
2007) that one of ordinary skill in the art would have found it obvious to
combine an old electromechanical device with electronic circuitry
to update it using modern electronic components in
order to gain the commonly understood benefits of
such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost
. . . . The combination is thus the adaptation of an
old idea or invention . . . using newer technology
that is commonly available and understood in the
art.
Id at 1162.
Regarding the arguments that the claimed combination is not
disclosed in the cited references, in the KSR test, the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art.” In that regard, but for the
server, the Appellants have not challenged the Examiner’s contention that
the claimed elements are shown on the cited references. The question is
whether the claimed combination is more than the combination of the prior
art elements and their known functions. In that regard, no unexpected
results for the combination have been shown.
The rejection is sustained.

Rejection of claim 8 as unpatentable over References A, B, E, F, G, U1, V1,
W1, X1, and U2.
The Appellants have not specifically addressed the merits of this
rejection. It appears that the Appellants are relying on the arguments made
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with respect to the rejection of claims 1-7 and 9-19. Since we do not find
the Appellants’ arguments persuasive as to error in the rejection of those
claims, given nothing more in the way of argument, we do not find them
persuasive as to error in the rejection of claim 8.

CONCLUSIONS OF LAW
We conclude the Appellants have failed to show that the Examiner
erred in rejecting claims 1-7 and 9-19 under 35 U.S.C. § 103(a) as
unpatentable over References A, B, E, F, G, U1, V1, W1, and X1, and claim
8 under 35 U.S.C. § 103(a) as unpatentable over References A, B, E, F, G,
U1, V1, W1, X1, and U2.

DECISION
The decision of the Examiner to reject claims 1-19 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
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