Ex Parte Stuart

Patent Trial and Appeal Board

Aug 18, 2016

11640651 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/640,651 12/18/2006
132862 7590 08/22/2016
Schwegman Lundberg & Woessner, P,A, I PayPal
P.O. Box 2938
Minneapolis, MN 55402
Erik Anderson Stuart
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.413US1 9042
EXAMINER
ROBERTS, BRIANS
ART UNIT PAPER NUMBER
2466
NOTIFICATION DATE DELIVERY MODE
08/22/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
slw@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK ANDERSON STUART
Appeal2015-004556
Application 11/640,651
Technology Center 2400
Before CARLL. SILVERMAN, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3---6, 9, 11-14, 17, and 19-26, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies eBay Inc. as the real party in interest. App. Br. 2.
Appeal2015-004556
Application 11/640,651
THE INVENTION
The disclosed and claimed invention is directed to a method and
system to route a VoIP call to a suitable provider of a type of service being
requested. Abstract, Fig. 4, Spec. i-f 32. Claim 1, reproduced below with the
relevant portions italicized, is illustrative of the claimed subject matter:
1. A call processing system comprising:
a pay per lead module, implemented using at least one
processor to-receive a request for a referral of a provider of a
service type, the request for the referral indicated by a voice over
Internet protocol (VoIP) call request;
a decision module, implemented using at least one
processor, to determine responsive to the VoIP call request and
based on selection criteria stored in a data structure associated
with an identification of a user, an identification of a suitable
provider of the service type, the decision module being to
determine the suitable provider of the service type utilizing
identification information associated with an initiator of the
VoIP call request; and
a call routing module, implemented using at least one
processor, to route a VoIP call to the suitable provider of the
service type.
REJECTION
Claims 1, 3---6, 9, 11-14, 17, and 19-26 stand rejected under pre-AIA
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Final Act. 2--4.2
2 The Examiner also rejected claims 3-9, 11-17, and 19-26 under pre-AIA
35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 4--7. The
Examiner withdrew the rejection in the Advisory Action after Appellant
amended the claims. Adv. Act. 2.
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Appeal2015-004556
Application 11/640,651
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are persuaded by Appellant's arguments regarding the pending claims.
Appellant argues the Examiner erred in finding the pending claims fail
to comply with the written description requirement. App. Br. 10-14; Reply
Br. 3---6. Appellant argues that, in light of at least paragraphs 20,3 32, and 36
of the Specification and Fig. 4, a person of ordinary skill in the art would
have understood that a suitable provider of the service type would be
selected utilizing identification information associated with an initiator of
the VoIP call request. Id.
The Examiner finds the Specification does not contain a written
description of "an identification of a suitable provider of the service type, the
determining utilizing identification information associated with the initiator
of the VoIP call request," as recited in claim 9, 17 and 23 or "an
identification of a suitable provider of the service type, the decision module
being to determine the suitable provider of the service type utilizing
identification information associated with an initiator of the VoIP call
request," as recited in claim 1. Final Act. 3--4; Adv. Act. 2; Ans. 2-7.
Section 112, first paragraph, requires that the specification contain a
written description of the claimed invention. 35 U.S.C. § 112, i-f 1. "[T]he
hallmark of written description is disclosure." Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written
3 With regard to claim 1, Appellant relies on paragraph 28 and original claim
8, instead of paragraph 20. App. Br. 13-14.
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Appeal2015-004556
Application 11/640,651
description requirement is met when the specification "conveys to those
skilled in the art that the inventor had possession of [and 'actually invented']
the claimed subject matter." Id. However, there is no requirement "that the
specification recite the claimed invention in haec verba." Id. at 1352.
A written description question often arises when an applicant, after
filing a patent application, subsequently adds "new matter" not present in the
original application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed.
Cir. 1991 ). When an applicant amends or adds claims during prosecution,
for example, the newly claimed subject matter must find written description
support in the original specification. Id.; see also Turbo Care Div. of Demag
Delavel Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed.
Cir. 2001 ). Without written description support, claims containing new
matter are properly rejected under§ 112. Ariad, 598 F.3d at 1348. This
required compliance with § 112 ensures that the applicant fully possessed
the entire scope of the claim as of the original filing date. Turbo Care, 264
F.3d at 1118.
Paragraph 32 of the Specification describes how a module can use a
business rule in order to select a provider for a VoIP call. Paragraphs 20, 28,
and 36 each describe how the business rules used to assign a call can include
using the buyer's/caller's identification information in selecting the proper
sales representative for the buyer based on, for example, the buyer's
participation in a preferred customer program. Although the Specification
does not contain the limitations of the claims in haec verba, we find that at
least those paragraphs of the Specification reasonably convey to those
skilled in the art that the inventor had possession of the subject matter at
issue as of the filing date.
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Application 11/640,651
Accordingly, based on the record before us, we do not sustain the
Examiner's rejection of claims 1, 3---6, 9, 11-14, 17, and 19-26 for failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
DECISION
For the above reasons, we reverse the Examiner's decisions rejecting
claims 1, 3---6, 9, 11-14, 17, and 19-26.
REVERSED
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