Ex Parte Heisinger

Board of Patent Appeals and Interferences

Apr 28, 2008

09545088 (B.P.A.I. Apr. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHARLES GILBERT HEISINGER, JR.
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Appeal 2007-2394
Application 09/545,0881
Technology Center 2100
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Decided: April 28, 2008
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Before JEAN R. HOMERE, JAY P. LUCAS, and SCOTT R. BOALICK,
Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

1 Application filed April 7, 2000. The real party in interest is Charles G.
Heisinger, Jr, the inventor.
Appeal 2007-2394
Application 09/545,088

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 36-40, 44, and 47-64, all the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellant's invention relates to telephonically selecting, addressing,
and distributing messages. In the words of the Appellant:
The present invention relates to a method and
system for retrieving information in response to
caller input from a telephone keypad and for
delivering the information to an address specified
by destination address information maintained
through an Internet website and stored in a
database, which is selected based on caller
identification provided electronically with the
inbound telephone call, and in a distribution means
specified by the caller.

(Spec. 1:22-29.)

Claim 36 is exemplary:
36. A method of addressing an electronic message,
comprising the steps of:

providing a first database containing stored
telephone numbers and user addresses for each of
the stored telephone numbers;

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Application 09/545,088

providing a second datable containing
identification codes and product information
corresponding to each of the identification codes;

receiving a telephone call from a user
including one of the identification codes;

identifying the received telephone number
from the telephone call;

retrieving the user address from the first
database by comparing the received telephone
number with the stored telephone numbers;

retrieving the product information
corresponding to the received identification code;

addressing the electronic message according
to the retrieved address; and

sending at least a portion of the retrieved
product information via the electronic message,
wherein the first and second databases are used to
create the electronic message.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bateman US 5,884,032 Mar. 16, 1999
Call US 5,913,210 Jun. 15, 1999
Applicant Admitted Description Prior Art, page 1, line 34 to page 2,
line 5 of the present Specification (APA).

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Application 09/545,088

Claims 36-40, 44, and 57-64 stand rejected under 35 U.S.C. § 103(a)
as being obvious over Bateman and Call.
Claims 47-56 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Bateman, Call, and the APA.

Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments that Appellant did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).2

ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a).

PRINCIPLES OF LAW
All timely filed evidence and properly presented arguments are
considered by the Board in resolving an obviousness issue on appeal. See In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. Id. at 1472.

2 Except as will be noted in this opinion, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims or related claims in each group. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).
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When that burden is met, the burden then shifts to the applicant to rebut. Id.;
see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding
rebuttal evidence unpersuasive). If the applicant produces rebuttal evidence
of adequate weight, the prima facie case of unpatentability is dissipated. In
re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in
view of the entire record. Id. However, on appeal to the Board it is an
appellant's burden to establish that the Examiner did not sustain the
necessary burden and to show that the Examiner erred.
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, 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 (Fed. Cir. 2006). "To
facilitate review, this analysis should be made explicit." KSR, 127 S. Ct.
at 1741. However, "the analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." Id. The Supreme Court cautioned that "[a]
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning."
Id. at 1742.
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Application 09/545,088

ANALYSIS
Appellant contends that the Examiner erred in rejecting claims 36-40,
44, and 47-64. Reviewing the record before us, we agree. In particular, we
find that Appellant has shown that the Examiner failed to make a prima facie
showing of obviousness with respect to claims 36-40, 44, and 47-64 as key
limitations of the claims were not shown to be in the cited prior art.
Therefore, Appellant has shown that the Examiner erred in rejecting claims
36-40, 44, and 57-64 under 35 U.S.C. § 103(a) as being obvious over
Bateman and Call and in rejecting claims 47-56 under 35 U.S.C. § 103(a) as
being obvious over Bateman, Call, and the APA.
With respect to independent claim 36, we agree with Appellant that
neither Bateman nor Call teaches or suggests the limitations of "retrieving
the user address from the first database by comparing the received telephone
number with the stored telephone numbers," "addressing the electronic
message according to the retrieved address," and "sending at least a portion
of the retrieved product information via the electronic message, wherein the
first and second databases are used to create the electronic message," as
claimed. (App. Br. 13-17.)
The Examiner found that the customer's PC 4 disclosed by Bateman
(Fig. 1 and col. 5, ll. 3-12) teaches the claimed first database containing
stored telephone numbers and user addresses for each of the stored telephone
numbers. (Ans. 3, 5.) The Examiner also found that the agent workstation
computer 18 disclosed by Bateman (Fig. 1 and col. 6, ll. 48-50) teaches the
claimed second database containing identification codes and product
information corresponding to each of the identification codes. (Ans. 3-4.)
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Next, the Examiner found that the inbound call processing capabilities
of the call center disclosed by Bateman (col. 8, l. 10 to col. 9, l. 47) teaches
the claimed limitation of retrieving the user address from the first database
by comparing the received telephone number with the stored telephone
numbers because "as calls from cld's [calling line identification, col. 9, l. 3]
come in the database can correlate the associated caller and URL, (see col. 9,
lines 21-32 and col. 9, lines 10-12)." (Ans. 4.) The Examiner found that
Bateman does not disclose sending at least a portion of the retrieved product
information by electronic message, where the first and second databases are
used to create the electronic message. (Ans. 4.) However, the Examiner
found that "Call discloses a method for sending at least a portion of the
retrieved user [sic, product] information via electronic message, and wherein
the first and second databases are used to create the electronic message (see
Call col. 7, lines 10-30)." (Ans. 4.)
Contrary to the Examiner's findings, however, Bateman does not teach
or suggest that the user address is retrieved from the first database (i.e., the
customer's PC 4) by comparing the received telephone number with stored
telephone numbers. Instead, Bateman teaches that, for inbound call
processing of an inbound call to the call center agent's workstation, "[t]he
CLID [Calling Line Identification] is transmitted over the telephone line and
the CLID box detects this and passes it to the agent's PC." (Col. 9, ll. 4-7.)
Then, "[s]creen pop software takes the telephone numbers provided by the
CLID box and looks up the corresponding customer records in a database."
(Col. 9, ll. 10-12.) As an alternative, a third party server can deliver the
CLID and/or customer relevant data to the agent's workstation. (Col. 9,
ll. 13-18.) Thus, in Bateman, the first database (customer's PC 4) is not used
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to retrieve a user address by comparing the received telephone number with
stored telephone numbers.
Call was cited for the teaching of an electronic message, and we find
nothing in Call to remedy the above noted deficiencies of Bateman. Thus,
neither Bateman nor Call, alone or in combination, teaches or suggests the
claimed limitation of "retrieving the user address from the first database by
comparing the received telephone number with the stored telephone
numbers."
Because neither Bateman nor Call teaches or suggests retrieving the
user address from the first database, they also do not teach or suggest the
claimed limitation of "addressing the electronic message according to the
retrieved address."
In addition, the portion of Call cited by the Examiner (col. 7,
ll. 10-30) discloses an SMTP forwarding agent to forward a received email
to another email address according to the product code. However, that
portion of Call does not teach or suggest "sending at least a portion of the
retrieved product information via the electronic message, wherein the first
and second databases are used to create the electronic message," as claimed.
Nor do we find such a teaching or suggestion anywhere else in Call or in
Bateman.
Therefore, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 36 under 35 U.S.C. § 103(a). Claims 37-40 and 44
depend from claim 36, and we find that the Examiner erred in rejecting these
claims for the same reasons as discussed with respect to claim 36.
Independent claim 57 recites, similarly to independent claim 36,
"retrieving the user information from the first database by comparing the
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received telephone number with the stored telephone number" and "wherein
the first and second databases are used to create the electronic message." As
discussed with respect to independent claim 36, we have found these
features to be lacking from Bateman and Call.
Furthermore, independent claim 57 recites "purchasing the product
with an electronic message based upon the user information retrieved from
the first database and the product information retrieved from the second
database." We do not find this feature to be taught or suggested by Call, as
asserted by the Examiner (Office Action mailed Aug. 2, 2004 at 7).
The portion of Call relied upon by the Examiner for support states that
"Internet Service Providers . . . may provide shared computer services which
interoperates [sic] with a reseller's inventory control system to provide
customers with the information they desire before and after making
purchases." (Call col. 12, ll. 36-40.) We do not find this, or any other
portion of the product code translator of Call, to be sufficiently detailed so as
to teach or suggest purchasing the product with an electronic message based
upon the user information retrieved from the first database and the product
information retrieved from the second database, as claimed. Bateman does
not remedy this deficiency of Call.
Therefore, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 57 under 35 U.S.C. § 103(a). Claims 58-64 depend
from claim 57, and we find that the Examiner erred in rejecting these claims
for the same reasons as discussed with respect to claim 57.
Independent claim 47 recites, similarly to independent claim 36, that
"the processor retrieves the user information from the first database by
comparing the received telephone number with the stored telephone
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numbers" and "wherein the first and second databases are used to create the
electronic message." As discussed with respect to independent claim 36, we
have found these features to be lacking from Bateman and Call. The APA
was cited for the teaching of an ANI (Automatic Number Identification) for
identifying the received telephone number from the telephone call (Office
Action mailed Aug. 2, 2004 at 8), and we find nothing in the APA to remedy
the above noted deficiencies of Bateman and Call.
Therefore, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 47 under 35 U.S.C. § 103(a). Claims 48-55 depend
from claim 47, and we find that the Examiner erred in rejecting these claims
for the same reasons as discussed with respect to claim 47.
Independent claim 56 recites, similarly to independent claims 36 and
47, "retrieving the user information from the first database by comparing the
received telephone number with the stored telephone numbers" and "wherein
the first and second databases are used to create the electronic message." As
discussed with respect to independent claims 36 and 47, we have found these
features to be lacking from Bateman, Call, and the APA.
Therefore, we conclude that Appellant has shown that the Examiner
erred in rejecting claim 56 under 35 U.S.C. § 103(a).

CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 36-40, 44, and 47-64.

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DECISION
We reverse the Examiner's decision rejecting claims 36-40, 44,
and 47-64.

REVERSED

gvw

KRAMER & AMADO, PC
1725 DUKE STREET, SUITE 240
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