Ex Parte Curtis

Board of Patent Appeals and Interferences

Mar 21, 2011

10255338 (B.P.A.I. Mar. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID C. CURTIS
___________

Appeal 2010-000538
Application 10/255,338
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.
Appeal 2010-000538
Application 10/255,338

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STATEMENT OF THE CASE
David C. Curtis (Appellant) seeks our review under 35 U.S.C. § 134
(2010) of the final rejection of claims 8-28. We have jurisdiction under 35
U.S.C. § 6(b) (2010).

SUMMARY OF DECISION
We REVERSE. 2

THE INVENTION
This invention is “a system and method for processing orders for
telecommunication services.” Specification [02].
Claim 8, reproduced below, is illustrative of the subject matter on
appeal.
8. A method of supporting the management of
telecommunication services for a service using
entity, comprising:
[A] accepting an order for specified
telecommunication services from the service using
entity;
[B] automatically retrieving a customer
service record (CSR) associated with the service
using entity from a current telecommunications
service provider;
[C] determining existing services of the user
from the CSR;
[D] utilizing a template repository to select a
telecommunications service model to provide the

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug. 20, 2008) and Reply Brief (“Reply Br.,” filed Dec. 16,
2008), and the Examiner’s Answer (“Answer,” mailed Jul. 10, 2009).
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specified telecommunications services ordered,
inclusive of telecommunication services that are
equivalents to the existing services;
[E] utilizing the template repository to
decompose the telecommunications service model
into sub-model components based upon which one
or more service providers are available to provide
service consistent with location of the service
using entity;
[F] utilizing template repository to create a
telecommunications design from the sub-model
components based on order rules of the one or
more service providers;
[G] creating a proposal for approval of the
service using entity from the telecommunications
design;
[H] if the proposal is approved by the
customer, then creating an order for the
telecommunications services; transmitting a
service request to the one or more service
providers via a network, wherein the service
request comprises an order for at least one of the
sub-model components reflected in the
telecommunications design; and
[I] tracking the service request based on
information received from the one or more service
providers via the network.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Courvoisier
Stiles
Lundy
US 5,943,412
US 6,219,692 B1
US 6,912,545 B1
Aug. 24, 1999
Apr. 17, 2001
Jun. 28, 2005
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Application 10/255,338

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Chen, Kong and Benain, SP-to-SP Service Ordering Specification and
its Implementation [Hereinafter “Chen”].
The Examiner took official notice that “it is old and well known to use
XML for communication over a network.” Answer 7. [Hereinafter
“Official Notice I”].
The Examiner took official notice that “the use of EDI for transfer of
documents is old and well known.” Answer 7 [Hereinafter “Official
Notice II”].

The following rejections are before us for review:
1. Claims 8-24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chen, Lundy, Official Notice I, and Official
Notice II.
2. Claims 14 and 18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chen, Lundy, Official Notice I, Official
Notice II, and Stiles.
3. Claims 25-28 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Chen, Lundy, Official Notice I, Official
Notice II, and Courvoisier.

ISSUE
The issue is whether claims 8-24 are unpatentable over Chen, Lundy,
Official Notice I, and Official Notice II. Specifically, the issue is whether
Chen teaches the steps of claim 8 designated B and C above. The rejection
of claims 14 and 18 under 35 U.S.C. §103(a) as being unpatentable over
Chen, Lundy, Official Notice I, Official Notice II, and Stiles and claims 25-
28 under 35 U.S.C. §103(a) as being unpatentable over Chen, Lundy,
Official Notice I, Official Notice II, and Courvoisier also turn on this issue.
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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) 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. Page 83, lines 13-14 of Chen states, “A service class-which
represents a subscribed service provided by the service provider
(SSP) to its customers (MSPs).”
2. Figure A on page 85 of Chen is reproduced below.

Figure A depicts a message diagram that “show[s] the sequence of
messages that implement an operation or transaction.” Chen 85:9-
10.
3. Figure 6 on page 86 of Chen is reproduced below.
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Figure 6 depicts a typical ordering scenario. Chen 86:14.

ANALYSIS
The rejection of Claims 8-24 under 35 U.S.C. §103(a) as unpatentable over
Chen, Lundy, Official Notice I, and Official Notice II
The Appellant and the Examiner dispute whether the cited portions of
Chen teach steps B and C of Claim 8. App. Br. 8-9, Reply Br. 4-6, and
Answer 3-4 and 9. We find that the cited portions of Chen do not teach
steps B and C. The Examiner cites “page 83, line 13; page 85, Fig. A,
second sequence: “Get customer profile”; “Get service list”; page 86, Fig. 6,
“Customer Record”” to teach limitation B and “page 83, line 13, page 85,
Fig. A third sequence: “Existing service list”” to teach limitation C. Answer
3-4.
As to page 83, line 13, the Appellant argues that “providing services
to end users on a subscription basis” (see FF 1) is insufficient to infer steps
B and C above. Reply Br. 4. We agree. We see nothing in Chen’s
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description on page 83, line 13 of a “subscription basis” to teach the act of
“automatically retrieving a customer service record [] associated with the
service using entity from a current telecommunications service provider”
and an act of “determining existing services of the user from the [customer
service record].”
As to Figure A, the Appellant argues that contrary to the Examiner’s
assertion (see Answer 9), Figure A describes sending a message to a
customer to acquire a profile, which may include an existing service list,
and not automatically retrieving the customer profile from a current
telecommunications service provider. Reply Br. 5-6. We agree that Figure
A depicts the second sequence and third sequence occurring between a
service provider and the customer. FF 2. Further, as to Figure 6, while the
ordering scenario does depict a customer record at the master service
provider (MSP), this also fails to teach the act required by steps B and C.
The Examiner relied upon the cited portions of Chen to teach the
limitation and includes no other explanation of why one of ordinary skill in
the art would have been led by the prior art to the steps at issue. The
Examiner has failed to establish a prima facie showing of obviousness in
rejecting claim 8.
Independent claims 15 and 23 both require a server that has software
for performing steps B and C at issue. Independent claim 19 recites a
method that includes steps B and C at issue. The Examiner relies upon the
same rationale used to reject claim 8 to reject claims 15, 19, and 23. See
Answer 3 and 5. For the same reason as discussed above with regard to
claim 8, we find the Appellant’s argument persuasive as to error in the
rejection of claims 15, 19, and 23.
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Accordingly, we find that the Appellant has overcome the rejection of
claims 8, 15, 19, and 23, and claims 9-14, 16-18, 19-22, and 24, dependent
thereon, under 35 U.S.C. §103(a) as unpatentable over Chen, Lundy,
Official Notice I, and Official Notice II.

The rejection of claims 14 and 18 under 35 U.S.C. §103(a) as unpatentable
over Chen, Lundy, Official Notice I, Official Notice II, and Stiles
This rejection is directed to claims dependent on claims 8 and 15,
whose rejection we have reversed above. We note that the Examiner did not
rely upon Stiles to cure the deficiency of Chen discussed above. See Answer
8. For the same reasons, we will not sustain the rejections of claims 14 and
18 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) ("[D]ependent claims are nonobvious if the independent claims from
which they depend are nonobvious.").

The rejection of claims 25-28 under 35 U.S.C. §103(a) as unpatentable over
Chen, Lundy, Official Notice I, Official Notice II, and Courvoisier
This rejection is directed to claims dependent on claims 8, 15, 19 and
23, whose rejection we have reversed above. We note that the Examiner did
not rely upon Courvoisier to cure the deficiency of Chen discussed above.
See Answer 8-9. For the same reasons, we will not sustain the rejections of
claims 25-28 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent
claims from which they depend are nonobvious.").

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DECISION
The decision of the Examiner to reject claims 8-28 is reversed.
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) (2010).

REVERSED

mls

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