Ex Parte Farris

Board of Patent Appeals and Interferences

Oct 4, 2002

08753197 (B.P.A.I. Oct. 4, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT D. FARRIS
____________
Appeal No. 2002-1422
Application No. 08/753,197
____________
ON BRIEF
____________
Before HAIRSTON, DIXON, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1, 2, 5-10, and 31-40. The appellant appeals
therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The appellant‘s invention concerns telephonic voice communication over the
Internet. A caller selects Internet routing by dialing a predetermined Internet prefix
(e.g., “*82”) followed by a destination’s telephone number. (Spec. at 14.) The
invention then provides directory assistance and call completion services to such
caller. The appellant asserts that these services are provided in a way that is
Appeal No. 2002-1422 Page 2
Application No. 08/753,197
“transparent” to the caller. (Appeal Br. at 2.) In other words, he explains, a caller who
has requested an Internet voice telephone connection may receive directory assistance
and call completion services in apparently the accustomed manner for access of the
services from a public switched telephone network. (Id.)
A further understanding of the invention can be achieved by reading the following
claim:
1. A system for providing a directory assistance call completion
service to a terminal, comprising:
a public switched telephone network (PSTN) communications
switching system providing switched communication services to said
terminal;
a directory assistance service system including a storage of
directory listings; and
a public packet data internetwork connected between the PSTN
and the directory assistance service system, said internetwork comprising
at least a portion of the Internet,
wherein in response to dialing of a directory assistance number on
said terminal, said PSTN (i) provides data identifying said terminal to said
directory assistance service system via the Internet, and (ii) establishes a
two-way communication link between said terminal and said directory
assistance service system via the Internet; and
wherein the directory assistance service system provides two-way
voice communication between said terminal and said directory assistance
service system via said communication link to (i) receive information from
said terminal identifying a station with which said terminal seeks to
establish a communications link through the Internet, and (ii) provide to
said terminal a directory number for said station.
Appeal No. 2002-1422 Page 3
Application No. 08/753,197
Claims 1, 2, 5-29, and 31-40 stand rejected under 35 U.S.C. § 103(a) as obvious
over U.S. Patent No. 4,959,855 (“Daudelin”) in view of U.S. Patent No. 5,608,786
(“Gordon”).
OPINION
Rather than reiterate the positions of the examiner or appellant in toto, we
address the main point of contention therebetween. Admitting “that Daudelin does not
teach a public packet data internetwork that comprises a portion of the Internet and is
connected between the PSTN and the directory assistance system,” (Examiner’s
Answer at 4), the examiner makes the following assertion.
[I]t would have been obvious . . . to apply Gordon's teaching in Daudelin's
system to use the Internet and access nodes in place of the voice and
data switching network 12 to connect the originating telephone network
(represented by local switch 30) to the destination telephone network
(represented by local switch 32) and to the directory assistance system 56
with the motivation being to reduce cost and expand system
reachability [sic].
(Id. at 5-6.) The appellant argues, "[t]here is no explanation given in the Examiner's
Answer of why the proposed modification of Daudelin's disclosed solution to this
problem, by somehow providing an Internet link, would have resulted in cost savings."
(Reply Br. at 4.)
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
Appeal No. 2002-1422 Page 4
Application No. 08/753,197
of making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
references must be thorough and searching.” McGinley v. Franklin Sports, Inc., 262
F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “This factual question . .
. [cannot] be resolved on subjective belief and unknown authority.” In re Lee, 277 F.3d
1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). “It must be based on
objective evidence of record.” Id. at 1343, 61 USPQ2d at 1434.
Here, the examiner fails to show objective evidence of the desirability of
replacing Daudelin’s “Voice and Data Switching Network,” Fig. 1, no. 12, with Gordon’s
“Global Internet System,” Fig. 5, no. 4, and “Access Node[s].” Id. at no. 6. Although the
latter reference does disclose that its “UniPost system . . . for providing a direct
telephone link using the data transmission network involving Internet,” col. 8, ll. 62-64,
“can thus provide [a] subscriber with a further cost advantage in completing his
international communications or other long distance communications,” col. 9, ll. 2-4, the
examiner proffers no evidence that Gordon’s UniPost system would provide such a cost
advantage when used to connect Daudelin’s “calling terminal 40,” col. 3, l. 67, with the
latter’s “directory assistance computer (DAS/C) 56. . . .” Col. 4, ll. 23-24. More
specifically, the examiner fails to show that connecting Daudelin’s calling terminal 40
Appeal No. 2002-1422 Page 5
Application No. 08/753,197
and DAS/C 56 would have required international or other long distance communication
so as to benefit from Gordon’s cost advantage. To the contrary, Daudelin discloses
that its “directory assistance service for local and remote numbers is provided from a
local source. . . .” Col. 5, ll. 17-18.
Furthermore, we do not understand the examiner’s assertion that his proposed
replacement would “expand system reachability [sic].” (Examiner’s Answer at 6.)
Regardless, such “[b]road conclusory statements . . . are not ‘evidence.’" In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(citing
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129,
1131 (Fed. Cir. 1993); In re Sichert, 566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA
1977)). Therefore, we reverse the rejection of claims 1, 2, 5-29, and 31-40.
CONCLUSION
In summary, the rejection of claims 1, 2, 5-29, and 31-40 under § 103(a) is
reversed.
REVERSED
Appeal No. 2002-1422 Page 6
Application No. 08/753,197
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
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