Ex Parte Dresden

Patent Trial and Appeal Board

Jul 24, 2017

12899923 (P.T.A.B. Jul. 24, 2017)

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.
12/899,923 10/07/2010 SCOTT DRESDEN X-9282D 6770
24131 7590 07/26/2017
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, EL 33022-2480
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
boxoa@patentusa.com
docket @ paten tusa. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT DRESDEN
Appeal 2015-003401
Application 12/899,923
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Scott Dresden (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claim 10, the only claim pending in the application on
appeal.2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed March 5, 2013), the Examiner’s Answer (“Ans.,” mailed November 20,
2014), and Final Action (“Final Act.,” mailed August 6, 2012).
2 Claims 1, 2, 8, and 9 were cancelled in an amendment filed October 9,
2012, and entered by an Advisory Action mailed November 26, 2012.
Appeal 2015-003401
Application 12/899,923
The Appellant invented a mechanism to assist them in setting and
executing goals for profit and loss, both at a product and a global level, and
with the speed to make time-critical value decisions about customer
procurement purchases and product pricing. Specification 114.
An understanding of the invention can be derived from a reading of
exemplary claim 10, which is reproduced below (bracketed matter and some
paragraphing added).
10. A method for routing a customer call placed in response
to an advertisement, which comprises:
[1] placing an advertisement
including a telephone number on an Internet
and
enabling a customer to view the advertisement over the
Internet;
[2] placing a telephone call over the Internet,
wherein the telephone call is automatically placed over
the Internet
when the customer chooses the advertisement on the
Internet;
and
[3] routing the telephone call, with a routing device,
wherein the routing device provides instructions to a
routing database to route the telephone call to a particular
vendor
dependent on a bid made to a provider of the phone
number
2
Appeal 2015-003401
Application 12/899,923
The Examiner relies upon the following prior art:
Altberg
Moore
US 7,120,235 B2
US 7,200,566 B1
Oct. 10, 2006
Apr. 3, 2007
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Altberg and Moore.3
Claim 10 stands provisionally rejected under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as U.S. Patent Application No. 10/710,852.
The issues of obviousness turn primarily on whether the changing a
phone number dynamically, as in Altberg, is within the scope of call routing
in the claims.
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Altberg
01. Altberg is directed to performance-based advertising. Altberg
3 The rejections in the Final Action against the cancelled claims are now
moot.
ISSUES
FACTS PERTINENT TO THE ISSUES
1:12-13.
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Appeal 2015-003401
Application 12/899,923
02. Altberg describes pay-per-call performance based advertising.
In one embodiment, a unique telephone number is assigned to an
advertiser. An advertisement including the unique telephone
number or a reference to the unique telephone number is provided
on a media channel. Thereafter, telephone calls to the unique
telephone number are monitored, and an assortment of data
associated with the telephone calls is collected. The advertiser is
charged for telephone calls to the unique telephone number in
accordance with a predefined billing arrangement. Altberg 1:43—
52.
03. Each Altberg advertiser 16 has a web page 20 which in
accordance with the paid placement, and paid inclusion
advertising models, may be included in a results page of a key
word search initiated by a user of a client 10, which search is
performed by an online search engine 19. Based on the paid
placement, or the paid inclusion models, the web page 20 of an
advertiser 16 is included within a results page compiled by the
search engine 19 and sent via the communications path 12 to the
client 10 that initiated the search, so that the web page 20 may be
selected or viewed by a user of the client 10 that requested the
search. Altberg 2:54—64.
04. Altberg describes a non-web based communications path 22
provided by a conventional telephone network or Voice Over
Internet Protocol (VoIP) technology to couple a client through
switches of the network 14, and switches of a public telephone
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Appeal 2015-003401
Application 12/899,923
network, in a manner that does not require the advertisers 16 to
have a connection to the network 14. Altberg 3:29—37.
05. Altberg describes telephone number auto generation logic 56
that automatically generates a unique telephone number, maps the
unique telephone number to a vendor’s (Burt) actual telephone
number such that when the unique number is called, Burt's phone
rings, and associates the unique phone number with Burt's
advertisement. The telephone number may be an easily
recognizable 800 number, modified by a unique extension mapped
to Burt's business telephone number. For example, in one
embodiment, a number could be the number “1-800-YEL-
PAGES-1234.” The 1234 portion of the 800 number is the unique
extension that is mapped to Burt's telephone number so that when
a searcher calls the number 1-800-YEL-PAGES-1234, the call
will be automatically routed to Burt's telephone. Altberg 4:44—62.
06. Altberg describes an advertisement creation module 46 that
automatically inserts the unique telephone number assigned to
Burt directly into Burt's advertisement. Alternatively, click to call
logic 58 may be invoked in order to generate a button, or a
clickable telephone number, which is automatically inserted into
Burt's advertisement, so that when the button or telephone number
is selected or clicked by a user operating a client 10, a telephone
call is automatically initiated to Burt's telephone number. Altberg
4:63-5:4.
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Appeal 2015-003401
Application 12/899,923
07. Altberg describes smart connect logic 62 that allows automatic
routing of calls to various telephone numbers. For example, Burt
may include a primary telephone number, and one or more
secondary telephone numbers to be associated with his
advertisement. Thus, in one embodiment, the smart connect logic
62 first routes the call to Burt's primary telephone number, and if
no connection is achieved, then cyclically through Burt's list of
secondary telephone numbers, until a connection is achieved.
Altberg 5:16—24.
08. Altberg describes bid for placement logic 68 that, through the
user interface module 44, presents an option to Burt to choose to
be billed on a bid-for-placement basis. Altberg 5:41—45.
Moore
09. Moore is directed to facilitating commercial transactions, at
least in part through the use of electronic data processing and
communications systems including a mobile wireless device
which is associated with a consumer. Moore 1:7—11.
10. Moore describes offering a bid to a merchant over a phone.
Moore 9:64—10:2.
ANALYSIS
Claim 10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Altberg and Moore
We are not persuaded by Appellant’s argument that the teaching in
Moore is not related to the teaching in Altberg. Br. 5. Moore is only relied
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Appeal 2015-003401
Application 12/899,923
upon to show it was known to offer a bid to a merchant over a phone, not for
physical combination of systems. Further, Altberg describes advertising that
would lead to transactions such as in Moore.
We are not persuaded by Appellant’s argument that Moore would not
have suggested changing the way Altberg’s call is routed. Br. 6. Moore
describes calling a merchant who is selling a particular piece. The call
would necessarily be routed to that merchant. The claim recites “routing the
telephone call. . . dependent on a bid made to a provider of the phone
number.” The routing of a call to a merchant is dependent on the merchant
phone number, and a call to place a bid to that merchant is dependent on the
existence of the bid. Appellant contends that in Moore, once a call is placed,
the routing is fixed. Br. 7. The claim does not narrow the routing
implementation, and does not narrow or specify the manner, degree or
implementation of dependence. The claim only recites that the routing is in
some manner dependent on a customer placing a bid with a merchant.
Conventional dialing that routes a call after it is placed, based on the number
associated with such a merchant, is within the scope of the claim, as drafted.
Altberg goes further and modifies the phone number on the advertisement,
and then routes the call based on the physical phone number that the
modified number maps to. Thus, a customer placing a bid to a merchant, as
in Moore, in response to an ad, as in Altberg, would have the routing
changed to the real phone number.
We are not persuaded by Appellant’s argument that Moore would
render Altberg unsatisfactory for its intended purpose. Br. 8—9. This is a
variation on the previous argument, and contends that changing the number
would reach the wrong merchant. The response is the same, viz. that
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Appeal 2015-003401
Application 12/899,923
Altberg initially provides a phantom phone number that must be changed,
and, in any event, routing according to the number called is within the scope
of the claim as drafted, because routing in routing equipment depends on the
number for the routing.
We are not persuaded by Appellant’s argument that the improvement
is not the predictable use of the prior art elements. Br. 9—10. This is a
variation on the first argument that the references are different. The
references complement each other in that Altberg provides ads that lead to
transactions in Moore.
Claim 10 provisionally rejected under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent Application
Appellant does not contest this provisional rejection.
CONCLUSIONS OF LAW
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Altberg and Moore is proper.
The provisional rejection of claim 10 under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent Application is
uncontested, but it is a provisional rejection.
DECISION
The rejection of claim 10 is affirmed.
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Appeal 2015-003401
Application 12/899,923
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)(l)(iv) (2011).
AFFIRMED
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