Ex Parte Creamer et al

Board of Patent Appeals and Interferences

Apr 5, 2012

10741799 (B.P.A.I. Apr. 5, 2012)

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.
10/741,799 12/19/2003 Thomas E. Creamer BOC920030113US1 (017) 5597
46322 7590 04/06/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
AL AUBAIDI, RASHA S
ART UNIT PAPER NUMBER
2614
MAIL DATE DELIVERY MODE
04/06/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS E. CREAMER, PEEYUSH JAISWAL,
VICTOR S. MOORE, and SCOTT L. WINTERS
____________

Appeal 2010-002893
Application 10/741,799
Technology Center 2600
____________

Before JOHN A. JEFFERY, ERIC B. CHEN, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s non-final rejection of claims 1-13, all of the pending claims in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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THE INVENTION
Appellants’ invention relates to managing service delivery
instructions for telephone subscribers, particularly to managing service
delivery instructions based upon call processing provided in a public
switched telephone network. Spec. ¶ [0001].

Claims 1 and 8 are illustrative:
1. A method for managing delivery service instructions, the
method comprising;

prompting a customer through an established telephone
call to manage delivery instructions corresponding to a
previously ordered good or service without first prompting said
customer for identifying information; and

managing said delivery instructions without accessing
customer information derived through said phone call.

8. A machine readable storage having stored thereon a computer
program for managing subscriber services, the computer program
comprising a routine set of instructions which when executed by a
machine cause the machine to perform the steps of:

prompting a customer through an established telephone call to
manage delivery instructions corresponding to a previously ordered
good or service without first prompting said customer for identifying
information; and

managing said delivery instructions without accessing customer
information derived through said phone call.

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PRIOR ART
The Examiner relies on the following reference as evidence of
unpatentability:
Friedman US 2008/0294977 A1 Nov. 27, 2008
(hereinafter “Friedman ʾ977”)

EXAMINER’S REJECTIONS
The Examiner rejected claims 8-13 under 35 U.S.C. § 112, first
paragraph, for failure to meet the written description requirement. Ans. 3.
The Examiner rejected claims 1-6 and 8-13 under 35 U.S.C. § 103(a)
as obvious over Friedman ʾ977. Ans. 3-5.
The Examined rejected claim 7 under 35 U.S.C. § 102(e) as
anticipated by Friedman ʾ977. Ans. 6.

FINDINGS OF FACT
1. Friedman ʾ977 is a continuation of US application No. 10/647,
705, filed Aug. 25, 2003, now US Patent No. 7,370,076 (hereinafter
“Friedman ʾ705”).
2. Friedman ʾ705 is a continuation-in-part of US application No.
09/420,434, filed Oct. 18, 1999, now US Patent No. 6,965,912 (hereinafter
“Friedman ʾ434”).
3. Friedman ʾ705 discloses an automated fulfillment system that
enables gift cards to be embedded or sent along with personalized greeting
cards. See Abstract. An alternative embodiment uses an Interactive Voice
Response (IVR) system. Friedman ʾ705, col. 25, l. 46 – col. 26, l. 9. This
alternative embodiment is also described in Friedman ʾ977. Spec. ¶ [0144].
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4. Appellants’ effective filing date is December 19, 2003.

CONTENTIONS
The Examiner contends that Appellants’ claims 8-13 do not meet the
written description requirement because their Specification does not describe
“machine readable storage having stored thereon a computer program for
managing subscriber services.” Ans. 3 (emphasis original). Appellants
contend that claims 8-13 comply with the written description requirement
because their Specification adequately describes the invention as including a
computer program stored on a medium that can be read by a computer
system. Br. 5-6.
The Examiner contends that claims 1-6 and 8-13 are obvious over
Friedman ʾ977, and claim 7 is anticipated by Friedman ʾ977. Ans. 3-6.
Appellants contend that the prior art rejections of claims 1-13 over Friedman
ʾ977 are improper because certain portions of Friedman relied on by the
Examiner in the rejection are not prior art to their application. Br. 7-10.

ANALYSIS
The Written Description Rejection
Based on the record before us, we find error in the Examiner’s written
description rejection of claims 8-13. Those claims are directed to “[a]
machine readable storage having stored thereon a computer program for
managing subscriber services.”
The Specification, in a passage quoted by Appellants (Br. 6),
describes this aspect of the claimed invention as follows: “The present
invention can also be embedded in a computer program product, which
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comprises all the features enabling the implementation of the methods
described herein, and which, when loaded in a computer system is able to
carry out these methods.” Spec. ¶ [0038] (emphasis added). We agree with
Appellants that this description and the neighboring text adequately rebut the
Examiner’s conclusion that the written description requirement has not been
met for claims 8-13. This passage conveys with reasonable clarity to
ordinarily skilled artisans that the Appellants possessed a machine readable
storage having stored thereon a computer program for managing subscriber
services as claimed when the application was filed. See Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
The Examiner apparently takes the position that the term “machine” in
connection with “machine readable storage” in the preamble of independent
claim 8 is unsupported by Appellants’ originally-filed disclosure in view of
repeated references to a computer system which is said to be different than a
machine. See Ans. 6-8. Not only is this position unavailing for the reasons
noted above, but the term “machine readable storage” was recited in original
claims 8-13 -- claims that are as much a part of the original disclosure as the
Specification. See Ariad, 598 F.3d at 1349. The Examiner’s position is
therefore unpersuasive in light of this clear and unambiguous disclosure of
machine readable storage when the application was filed.
The Obviousness Rejection
The Examiner’s rejection of claims 1-6 and 8-13 under 35 U.S.C.
§ 103(a) was based upon a single reference: Friedman ʾ977. Ans. 3-5. The
Examiner found that each element of those claims was taught by Friedman
ʾ977, with one possible exception; the Examiner concluded that the claim
recitation of “prompting a customer through an established telephone call to
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manage delivery instruction” was not “specifically” taught by Friedman.
Ans. 4.
For this missing element, the Examiner relied upon the teaching, in
one embodiment of Friedman ʾ977, of using an IVR. See FF 3. The IVR in
Friedman connects the disclosed system to the traditional circuit-switched
telephone network. Friedman ʾ977 ¶ [0144]. The Examiner further noted
that prompting to enter “appropriate information” is taught in certain
embodiments of Friedman ʾ977. Ans. 4. The Examiner concluded that it
would have been obvious to use an IVR as taught by Friedman to “prompt a
customer or user to enter or respond to any type of information desired.” Id.
(emphasis original).
Appellants respond to the rejection by attacking the status of
Friedman ʾ977 as prior art. In particular, Appellants contend that the IVR
embodiment of Friedman ʾ977 was not present in Friedman ʾ434, and
therefore Friedman ʾ977 is not entitled to the October 18, 1999 filing date of
Friedman ʾ434 under 35 U.S.C. § 120 as to that disclosure. Br. 7-8.
Appellants further argue that the concept of prompting a customer
within an IVR system is “wholly absent” from Friedman ʾ912, as well as
from the August 23, 2002 provisional application (No. 60/405,510) cited in
Friedman ʾ977. Br. 9. Appellants conclude that “the earliest effective filing
date of Friedman [ʾ977] with respect to these alleged teachings is March 7,
2008 – again more than 4 years subsequent to the priority date of
Applicants’ invention.” Id.
The Examiner, however, notes that Friedman ʾ977 is also entitled to
the benefit of the August 25, 2003 filing date of Friedman ʾ076, which
indisputably contains the IVR embodiment. Ans. 8; FF 3. This date is
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before Appellants’ December 19, 2003 filing date, qualifying Friedman ʾ977
as prior art under 35 U.S.C. § 102(e) and § 103(a). And in further response
to Appellants’ contention that a teaching of prompting a customer in an IVR
system is “wholly absent” from Friedman ʾ434 and the provisional
application, the Examiner points to a description of various applications of
IVR in Newton’s Telecom Dictionary (6th ed. Aug. 1993). Ans. 8-9. The
Examiner concludes: “Thus, with the use of IVR, the caller or customer can
be prompted to enter any type of information.” Ans. 9.
The Appellants did not file a Reply Brief. Thus, the record does not
contain rebuttal evidence or argument to weigh against the Examiner’s
findings supporting the Examiner’s obviousness conclusion.
On this record, we see no error in the Examiner’s finding basing the
obviousness rejection on Friedman ʾ977 in view of the Examiner’s
undisputed findings that this reference is entitled to the benefit of the August
25, 2003 filing date of Friedman ʾ705. Nor are we persuaded of error in the
Examiner’s undisputed findings regarding Friedman’s teachings of
prompting noted above. We therefore find Appellants’ arguments
unpersuasive and find no basis to overturn the Examiner’s obviousness
rejection with respect to claims 1-6 and 8-13. We therefore affirm the
rejection under 35 U.S.C. § 103(a).

The Anticipation Rejection
Appellants’ argument in response to the anticipation rejection of claim
7 over Friedman ʾ977 reiterates that Friedman ʾ977 does not qualify as prior
art under 35 U.S.C. § 102(e) discussed above. For the reasons stated above,
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we are not persuaded by this argument and thus affirm the anticipation
rejection of this claim.

DECISION
The Examiner’s rejection of claims 8-13 under 35 U.S.C § 112 is
reversed.
The Examiner’s rejection of claims 1-6 and 8-13 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s rejection of claim 7 under 35 U.S.C. § 102(e) 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)(1)(iv).

AFFIRMED

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