Ex Parte Himmel et al

Board of Patent Appeals and Interferences

Mar 31, 2008

10047004 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARIA AZUA HIMMEL, HERMAN RODRIGUEZ,
NEWTON JAMES SMITH JR., and CLIFFORD JAY SPINAC
____________________

Appeal 2007-3455
Application 10/047,0041
Technology Center 2100
____________________

Decided: March 31, 2008
____________________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and JAY P. LUCAS,
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 16, 2002. The real party in interest is
International Business Machines Corporation of Armonk, N.Y.

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STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 44 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

Appellants’ invention relates to a method, system and computer
program for sending an Internet Universal Resource Locator (URL) to
customer by e-mail. In the words of the Appellants:
The present invention provides a method for a telephone system to
send an electronic message containing a Uniform Resource Locator
(URL) to a customer's address. The method includes receiving a
telephone call having a customer identification record including a
destination address, selecting one or more URL's to be sent to the
destination address, generating and sending an electronic message
containing the one or more selected URL's, to the destination address.
Preferably, the URL is selected to be responsive to an inquiry made
during the telephone call. The electronic message may contain
additional items other than the selected URL's, including, for example,
electronic coupons, an on-line trial subscription, user ID's, user
passwords, advertisements, sender information, or combinations
thereof, wherein the user ID's and user passwords are required by the
Websites having the addresses of the URL's. The method may further
include recording the one or more URL's into the bookmark section of
the communications terminal's browser.
(Spec., 2, l. 10+).

Claim 1 is exemplary:
1. A computer implemented method for providing a Uniform
Resource Locator (URL) to a customer, comprising:
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receiving a customer identification record including a destination
address associated with a communications terminal of the customer during a
telephone call with the customer;

selecting at least one URL to be sent to the destination address of the
customer; and

generating and sending an electronic message containing the at least
one URL to the destination address of the customer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Clapper US 2003/0026403 A1 Feb. 6, 2003
(filed Aug. 2, 2001)

Rejection:
Claims 1 to 44 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Clapper.
Groups of Claims:
Consistent with the arguments in the Brief, we consider the following groups
of claims.
Group I: Claim 1 is representative of claims 1, 18, and 31.
Group II: Claim 2 is representative of claims 2, 19, and 32.
Group III: Claim 3 is representative of claims 3, 20, and 33.
Group IV: Claim 11 is representative of claims 11 and 28.
Group V: Claim 13 is representative of claims 13, 30, and 43.
Group VI: Claim 14
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Group VII: Claim 17 is representative of claim 17 (claim 18, placed by the
Appellants in this group, was considered in Group I).
Group VIII: Claim 27

Appellants contend that the claimed subject matter is not anticipated
by Clapper for failure of that reference to recite claimed elements. The
Examiner contends that each of the groups of claims is properly rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
this opinion. Arguments which Appellants could have made but chose not to
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
We affirm-in-part.
ISSUE
The issue is whether Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 102(e). The issue turns on whether
all the claimed elements are present in the reference Clapper.

2 Appellants have not presented any substantive arguments directed
separately to the patentability of the dependent claims or related claims in
each group, except as will be noted in this opinion. In the absence of a
separate argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method, system and program (method) to
provide a URL to a caller to avoid his having to carefully write down that
web address during the phone call. (Spec., 1, l. 25). The method derives
from a caller’s caller ID information, or orally from the caller himself, a
destination address to send the URL by e-mail or by other electronic
messaging. (Spec., 2, l. 10).
2. Clapper teaches an improved telephone answering machine capable of
recording messages from a caller and sending them as audio files in an
electronic message to the user, for example, when he is away from the
house. (¶ [0020], [0022]). While the caller is leaving a message, the system
notes the caller’s caller ID information, goes out to the Internet and finds
information about the caller, such as his e-mail address, street address, URL
of his website, etc. (¶ [0021], [0026]). This information is included in the
electronic message to the user. (Id.).

PRINCIPLES OF LAW
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
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It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
However, our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).

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ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejection of Appellants’
claims under 35 U.S.C. § 102. The prima facie case is presented on pages 4
to 8 of the Examiner’s Answer.

In opposition, Appellants present a number of arguments. We will
address the arguments in accordance with the grouping defined above.

Group I: Claim 1 is representative of claims 1, 18, and 31.
Appellants argue that Clapper fails to disclose sending a URL to the
destination address of the customer. (Br., 6, bottom). In Clapper, the system
receives various information about the caller from the Internet during a
telephone call with the caller. (¶ [0021]). That information includes the
caller’s street address, e-mail address, and so forth. (Id.) This information
may also include the uniform resource locator (URL) of the caller’s website.
(¶[0026]). That information, including the URL, is sent electronically to the
caller. (Id.). While we recognize that the intent of the Appellants’ invention
is different from the purpose of the Clapper machine, we must read the
claims fairly and broadly at the USPTO, considering whether the claimed
elements are present in the reference. (See Philips cited above.) In
interpreting this claim, we note that the caller is read on the customer, who
may also be the owner of the device in Clapper. On that basis, we find that
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the Examiner has not erred in rejecting these claims under 35 U.S.C.
§ 102(e), and Appellants have not shown error in the Examiner’s rejection.

Group II: Claim 2 is representative of claims 2, 19, and 32.
Appellants argue that the claimed limitation wherein the electronic
message contains additional “items selected from an electronic coupon, an
on-line trial subscription …” is not disclosed in Clapper. (Br., 10, top). As
the coupon, subscription, advertisements are not functionally engaged in the
claim, we can equate them patentably with the other information that is
recited in Clapper as being sent to the owner. (¶[0022], [0026]). See In re
Ngai, cited above. We do not find that Appellants have shown that the
Examiner erred in rejecting these claims under 35 U.S.C. § 102(e).

Group III: Claim 3 is representative of claims 3, 20, and 33.
Appellants contend that the reference Clapper fails to disclose
“recording the at least one URL into a bookmark section of a browser in the
communications terminal.” (Br., 10, middle). We agree with Appellants,
and find that the rejection is improper with regard to these recited claims.

Group IV: Claim 11 is representative of claims 11 and 28.
Appellants contend that Clapper fails to disclose saving the
destination address as part of a caller ID within the telephone system. (Br.,
10, bottom.) In Clapper, ¶[0021], we notice a teaching of storing certain
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information, including the caller’s e-mail address, based on the caller ID
information derived from the phone call. We do not find that Appellants
have shown that the Examiner erred in rejecting these claims under 35
U.S.C. § 102(e).

Group V: Claim 13 is representative of claims 13, 30, and 43.
Although there is no antecedent basis in claim 13 for either the
merchant or his telephone system, we will, for the sake of judicial efficiency,
interpret the claim consistent with the independent parent claim. Appellants
contend that the menu of URLs mentioned in the claims are not recited in
Clapper. (Br., 11, middle). We agree with Appellants, and find error in the
Examiner’s rejection for that omission.

Group VI: Claim 14
Appellants contend that “Clapper does not disclose receiving the
destination address in any of the manners set out in claim 14”. (Br., 12,
middle). One of the claimed manners is to read the destination address (e-
mail address) derived from the caller ID. As mentioned above, the system of
Clapper uses the caller ID information to search the Internet to find the e-
mail address of the caller. (¶[0021]). Thus, we do not find that Appellants
have shown error with the Examiner’s rejection of claim 14.

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Group VII: Claim 17 is representative of claim 17 (claim 18, placed by the
Appellants in this group, was considered in Group I).
Appellants contend that the reference does not teach “receiving an e-
mail message containing the at least one URL from a telephone system of
the sender (claim 17)” (Br., 13, middle). Actually, Appellants are mistaken:
claim 17 does not recite “e-mail” but rather recites “an electronic message”.
¶[0026] of Clapper teaches a web page sent to the user of the system, who
may be the first party, which message includes at least one URL. The
destination address is provided by the system during a phone call from the
first party to the sender. (¶[0021]). Thus, we do not find that Appellants
have shown error with the Examiner’s rejection of claim 17.

Group VIII: Claim 27
Appellants contend that many of the elements of claim 27 are missing
from the reference Clapper, for example the interactive display (Br., 13).
We agree with Appellants, and do not sustain the Examiner’s rejection of
claim 27.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 3, 13, 20, 27, 30, 33, and 43. As
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claims 28 and 29 have the same limitations of parent claim 27, we find that
they were also rejected in error.
DECISION
The Examiner's rejection of claims 3, 13, 20, 27 to 30, 33, and 43 is
Reversed. The rejection of all other claims is Affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN PART

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