Ex Parte Salonen

Patent Trial and Appeal Board

Feb 23, 2015

12401392 (P.T.A.B. Feb. 23, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte JUKKA SALONEN
___________

Appeal 2012-004269
Application 12/401,392
Technology Center 3600
___________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
1

Jukka Salonen (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1–4, 6–11, and 13–20, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of delivering goods (Specification 1:3–4).

1
Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed July 11, 2011) and the Examiner’s Answer (“Ans.,” mailed October 28,
2011).
Appeal 2012-004269
Application 12/401,392

2

An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. Method
for determining,
using one or more processors,
an end address of a customer for delivering goods,
where the goods are delivered from a main system,
via a subsystem,
to the end address of the customer,
the method comprising:
[1] transmitting,
using a processor,
a multiple choice enquiry
to the customer
via telecommunications network
using a short message (SMS) protocol;
[2] receiving,
using a processor,
a reply to the multiple choice enquiry
indicating the end address selected by the
customer,
said reply being sent via the telecommunications network
using a short message (SMS) protocol;
and
[3] updating,
using a processor,
the end address
Appeal 2012-004269
Application 12/401,392

3

for delivering the goods
to the selected end address,
wherein transmission of the multiple choice enquiry
occurs
prior to the goods being delivered to the
subsystem.
The Examiner relies upon the following prior art:
Sone US 7,222,081 B1 May 22, 2007
Spiegel US 7,610,224 B2 Oct. 27, 2009
Boitet US 2009/0281929 A1 Nov. 12, 2009
Claims 1–4, 6–11, and 13–20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sone, Spiegel, and Boitet.
ISSUES
The issues of obviousness turn primarily on whether it was predictable to
apply Spiegel’s multiple choice enquiries and Boitet’s use of short message
service communication to Sone’s address update.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Sone
01. Sone is directed to delivery scheduling systems, and more
particularly, to a system and method for continuously monitoring
Appeal 2012-004269
Application 12/401,392

4

and updating a delivery schedule, and notifying a customer of a
scheduled delivery. Sone 1:7–10.
02. The delivery scheduling and updating system includes a delivery
scheduling computer, a user computer, and a network linking the
delivery scheduling computer to the user computer. The delivery
scheduling computer electronically stores and updates delivery
schedule information. Prior to a scheduled delivery, the delivery
scheduling computer notifies the customer of an estimated time of
the delivery via the user computer. If the customer desires to
make a change to the delivery, such as the time of the delivery or
the delivery location, the customer uses the computer to transmit a
delivery change request. A set of user application modules
associated with the delivery scheduling computer and the user
computer allows the user to view the delivery notification and
enter the delivery change request. Sone 2:33–38.
03. Sone includes an employee computer for receiving updated
delivery schedule information from the delivery scheduling
computer. The employee then makes deliveries according to the
delivery schedule received. Upon completion of a scheduled
delivery, the employee uses the employee computer to transmit a
delivery completion message to the delivery scheduling computer.
Sone 2:58–65.
Appeal 2012-004269
Application 12/401,392

5

Spiegel
04. Spiegel is directed to ordering and delivering items, and more
particularly to automatically assisting in delivering ordered items
in an appropriate manner. Spiegel 1:27–30.
05. The user orders an item by using the automatically selected
delivery address and other information associated with the
automatically selected procurement option. Alternatively, the user
can select another delivery address with a drop-down menu of
procurement options for the user. Spiegel 6:1–7 (describing
Spiegel Fig. 1A).
Boitet
06. Boitet is directed to proactively monitoring the delivery of a
package by a package delivery service provider, including
intervening in certain circumstances. Boitet, para. 1.
07. Boitet maintains a portal—e.g., information gateway, allowing
information to be reviewed, interrogated, presented, and
responded to between various parties, thus allowing interaction
between a customer and a customer service representative
(“CSR”). Boitet, para. 14.
08. Boitet’s CSR accesses the PR (packages indicated as receiving
proactive response treatment) system to ascertain the status of a
particular case log. Boitet, para. 88.
09. Boitet’s CSR communicates with the customer via telephone,
pager, email, or short message service. Boitet, para. 90.
Appeal 2012-004269
Application 12/401,392

6

ANALYSIS
We are not persuaded by the Appellant’s argument that Sone fails to
describe a multiple choice enquiry or short message service. Br. 5. The
Appellant’s contention does not persuade us of error on the part of the
Examiner because the Appellant responds to the rejection by attacking the
references separately, even though the rejection is based on the combined
teachings of the references. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The Examiner applied Boitet to describe short
message service and Spiegel to describe multiple choice enquiries.
In fact, Appellant acknowledges that these references describe these
limitations. Br. 5–6. Thus, Appellant’s main argument is that
The mere fact that these separate features are known in the art
separately is not sufficient to render the combination obvious.
Nor is it sufficient to render the specific features of the claimed
invention, which are more than the mere combination of the
above three features, obvious. Although the transmission of
information and/or notifications via a short message service
may be known in the art such as suggested in Boitet, these SMS
notifications are not designed to transmit and receive inquires,
much less multiple choice inquires as claimed.
Br. 7. Appellant presents no evidence to support the argument that SMS
notifications are not designed to transmit and receive enquiries. Appellant’s
attorney’s arguments in a brief do not take the place of evidence in the
record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); Meitzner v. Mindick, 549 F.2d 775
(CCPA 1977), cert. denied, 434 US 854 (1977), and In re Schulze, 346 F.2d
600, 602 (1965).
Appeal 2012-004269
Application 12/401,392

7

The fact that Boitet describes using this service as one of several
possible communication channels to interrogate a customer is sufficient to
overcome this argument. In fact, Boitet’s use for this purpose is sufficient to
show this channel was at least a predictable mechanism for conveying
Sone’s address updates. As to Spiegel’s use of multiple choices in a query,
Spiegel only exemplifies what everyone who ever used a computer interface
already knows as to the notoriety of multiple choice enquiries. Thus, their
use was also predictable. Nothing in the claim recites any implementation
specifics that would make the use of SMS or multiple choices unpredictable.
Claim 8 is argued in the same manner as claim 1 and the remaining
claims are argued based on the patentability of claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1–4, 6–11, and 13–20 under 35 U.S.C. § 103(a)
as unpatentable over Sone, Spiegel, and Boitet is proper.
DECISION
The rejection of claims 1–4, 6–11, and 13–20 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

mls