09575707 (B.P.A.I. Aug. 31, 2007)

Ex Parte Greenblatt

Board of Patent Appeals and InterferencesAug 31, 2007

09575707 (B.P.A.I. Aug. 31, 2007)

The opinion in support of the decision being entered today is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DAVID GREENBLATT ____________ Appeal 2007-1232 Application 09/575,707 Technology Center 2100 ____________ Decided: August 31, 2007 ____________ Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and ST. JOHN COURTENAY, III, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims 1, 3, 5, 7, 11, 13, 16, 20, 22, 23, and 28- 54, the only claims pending in this application. We have jurisdiction under 35 U.S.C. §§ 6(b), 134(a). Appeal 2007-1232 Application 09/575,707 INTRODUCTION The instant invention relates to connecting a computer user with an information provider over a digitized speech connection. By determining what information a computer user is viewing, the system determines a telephone number associated with that information. (Abstract.) Claim 5 is illustrative: 5. A computer-implemented method comprising: obtaining a Uniform Resource Locator stored in an address bar of a Web browser corresponding to a Web page being displayed to a user by the Web browser at a user-side; converting the Uniform Resource Locator, without user intervention, into a telephone number corresponding to a location at which a provider of the Web page can be contacted; and visually identifying, without user intervention, that the telephone number is known for the Uniform Resource Locator corresponding to the Web page being displayed to the user. The Examiner relies on the following prior art references to show unpatentability: Fedorov US 6,047,060 Apr. 4, 2000 Voit US 6,104,711 Aug. 15, 2000 Venkatachary US 6,212,184 B1 Apr. 3, 2001 DeGolia, Jr. US 6,411,615 B1 Jun. 25, 2002 Haitsuka US 6,505,201 B1 Jan. 7, 2003 The rejections as presented by the Examiner are as follows: 1. Claims 1, 3, 5, 7, 11, 13, 16, 20, 22, 23, 31-33, 40-45, and 49-54 are rejected under 35 U.S.C § 103(a) as unpatentable over Voit, Haitsuka, and DeGolia. 2 Appeal 2007-1232 Application 09/575,707 2. Claims 28-30 and 46-48 are rejected under 35 U.S.C § 103(a) as unpatentable over Voit, Haitsuka, DeGolia, and Venkatachary. 3. Claims 34-39 are rejected under 35 U.S.C § 103(a) as unpatentable over Voit, Haitsuka, DeGolia, and Fedorov. OPINION Voit teaches that Internet Domain Name System (DNS) servers normally translate textual domain names to numeric Internet Protocol (IP) addresses. Voit col. 1, l. 10 - col. 3, l. 13. Voit further teaches there existed a need to support two-way voice communication between personal computers (PCs) by integrating voice communication over the Internet with Advanced Intelligent Network (AIN) telephone networks. Id. col. 3, l. 14 - col. 4, l. 23. The rejection of instant claim 5 (Answer 5-6) relies on Voit (col. 4, ll. 29-30, col. 9, ll. 4-16, col. 10, ll. 9-20), describing a domain name server system that may return, in response to a name translation request or query from a PC, a telephone number as opposed to the prior art DNS servers that returned only IP addresses. Haitsuka describes monitoring the activity of a user on the Internet, which, as the Examiner finds (Answer 6), may include monitoring Uniform Resource Locators (URLs) in the address bar of a browser application. Haitsuka Abstract; col. 8, ll. 16-30. DeGolia teaches a system for enabling Data Network Telephony (DNT) communications through a WEB page, whereby the WEB server may download a module to a user’s computer to enable voice communications over the Internet (i.e., from IP address to IP address). DeGolia Abstract; col. 5, l. 51 - col. 6, l. 7; col. 7, l. 64 - col. 8, l. 8. The user may simply select a 3 Appeal 2007-1232 Application 09/575,707 link on the interactive WEB page to effect point-to-point voice communication with an agent of the WEB page provider. DeGolia col. 7, ll. 22-35; Fig. 3, element 63. The WEB server may be provided by a third party that contains WEB forms enabling customer/agent interaction through IP phone modules. DeGolia col. 8, ll. 41-44. The Examiner offers a rationale for combining the teachings of the three references to demonstrate that the subject matter as a whole of instant claim 5 would have been obvious to the artisan at the time of invention. (Answer 6-7; 12-13.) “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). In a rejection on obviousness grounds, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Instant claim 5 requires obtaining a URL stored in the address bar of a Web browser, which Haitsuka teaches. The claim goes on, however, to require that the address bar from which the URL is obtained corresponds to a Web page being displayed to a user. The URL is converted into a telephone number corresponding to a location at which the provider of the Web page -- i.e. the Web page that is being displayed to the user -- can be contacted. In our estimation, the rejection has not identified any reason that the artisan would have obtained the URL in the manner required by claim 5, when that URL is stored in the address bar corresponding to the Web page that is being displayed. Nor do we find any suggestion in the prior art 4 Appeal 2007-1232 Application 09/575,707 references that have been provided in support of the rejection. Haitsuka, for example, obtains the URL for the purpose of selecting advertisements to display on the local device. Haitsuka col. 5, ll. 53-67. While the teachings of the references at best might suggest obtaining advertising information that could include obtaining telephone numbers for entities related to the provider of the particular Web page being displayed, we find no suggestion for obtaining a telephone number for the provider of the displayed Web page. In the relied-upon prior art, the provider of the Web page (already) possesses a contact telephone number that can be displayed on the page rendered at the end user device (see, e.g., Haitsuka Fig. 7). The entity providing a Web page (e.g., DeGolia col. 8, ll. 41-44) would be presumed to know and provide a contact telephone number, if needed, within the Web page itself, with any kind of objective reading of the references. We thus agree with Appellant that the instant rejection of claim 5 can only be the product of improper hindsight reconstruction of the invention. Because the remaining independent claims (1, 11, 52, 53, and 54) contain similar limitations to those of claim 5 for which the rejection is deficient, we do not sustain the rejection of claims 1, 3, 5, 7, 11, 13, 16, 20, 22, 23, 31-33, 40-45, and 49-54 under 35 U.S.C § 103(a) as unpatentable over Voit, Haitsuka, and DeGolia. Nor do we sustain the § 103(a) rejection of claims 28-30, 34-39, and 46-48 because neither Venkatachary nor Fedorov as applied remedy the deficiencies in the rejection of the base (independent) claims. 5 Appeal 2007-1232 Application 09/575,707 CONCLUSION The rejection of claims 1, 3, 5, 7, 11, 13, 16, 20, 22, 23, and 28-54 under 35 U.S.C. § 103(a) is reversed. REVERSED tdl/ce DAVIDSON BERQUIST JACKSON & GOWDEY LLP 4300 WILSON BLVD., 7TH FLOOR ARLINGTON VA 22203 6