Ex Parte Stuart et al

Patent Trial and Appeal Board

Feb 5, 2014

11638035 (P.T.A.B. Feb. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIK ANDERSON STUART,
VALERIE K. SHIRK, and
JASON SCOTT STEINHORN
____________

Appeal 2012-000707
Application 11/638,035
Technology Center 3600
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Before HUBERT C. LORIN, ANTON W. FETTING, and
GAY ANN SPAHN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Erik Anderson, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-30. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

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Application 11/638,035
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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system comprising:
a communication module to receive a referral request;
a referral generator to respond to the referral request by
selecting a provider from a network of providers; and
a call module to initiate a voice over Internet protocol (VoIP)
call to contact the selected provider.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Van Der Linden

US 2007/0271110 A1 Nov. 22, 2007
The following rejection is before us for review:
1. Claims 1-30 are rejected under 35 U.S.C. §102(b) as being anticipated
by Van der Linden.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 28, 2011) and Reply Brief (“Reply Br.,” filed Jul. 13, 2011),
and the Examiner’s Answer (“Ans.,” mailed May 13, 2011).
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ISSUE
Does Van Der Linden describe, expressly or inherently, the subject
matter claimed?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellants argue claims 1-28 and 30 as a group (App. Br. 9-12).
We select claim 1 as the representative claim for this group, and the
remaining claims 2-28 and 30 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Claim 1 is directed to an apparatus. Because it is an apparatus, our
focus is on its structure. See Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover what a
device is, not what a device does.”)
As claimed, the apparatus comprises three elements: (a) a
communication module; (b) a referral generator; and (c) a call module.
We make three observations. First, the claim does not limit the three
elements in such a way that they are linked to each other. The claim
reasonably broadly covers an arrangement whereby the three elements
operate independent of each other. Second, none of these elements are
defined in structural terms. Rather, they are defined functionally; that is, in
terms of an action a corresponding element is to perform. Accordingly, the
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elements as claimed are reasonably broadly construed to cover any structure
so long as the structure can perform the recited functions. Third, there is an
underlying assumption in the discussions in both the Briefs and Answer that
the claimed “system” involves a computer. In point of fact, the claim makes
no mention of a computer and the Specification does not expressly limit any
element to implementation on a computer. However, in the case of the “call
module” which functions to “initiate a voice over Internet protocol (VoIP)
call,” a protocol that impliedly refers to communication over a computer
network, it is reasonable to broadly construe the “call module” element as
software.

Communication module.
As claimed, the module is a “communication module” and one that is
“to receive a referral request.” Thus, the “module” element has two
functions: (1) communicate and (2) receive a “referral request.” A “referral
request” is a type of information (see Figure 7 of the Specification) that is
best characterized as patentably inconsequential nonfunctional descriptive
material. See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential). Accordingly, the “communication module” as claimed is one
that communicates and receives information.
The Examiner cited Figure 1, item (24-1) of Van Der Linden, as
describing a communication module as claimed. Ans. 3. According to Van
Der Linden (p. 4, para. [0033]), item (24-1) is a “communication device[]”
with which users and advertisers “can communicate with each other.” The
fact that users and advertisers “can communicate with each other” by using
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item (24-1) means item (24-1) communicates and receives information. Item
(24-1) covers electronic devices (see p. 2, para. [0019]) and, given that the
claim term “module” is reasonably broadly construed as covering a software
program, item (24-1) is necessarily a module. Accordingly, Van Der Linden
expressly describes the “communication module” as claimed.
The Appellants argue that
The language cited by the Examiner to show the “referral
request” does not include the words “referral,” “request,” or the
phrase “referral request.” It is respectfully submitted that a
request to register is not the same as a referral request and that
the Examiner failed to show that Van Der Linden discloses a
“referral request” recited in claim 1.
App. Br. 11. These are not persuasive arguments.
Even though the exact wording of Appellants’ claim is not found in
the prior art, the claim remains anticipated by the subject matter disclosed
therein as discussed above. Anticipation “is not an ‘ipsissimis verbis’ test.”
In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S.
Int'l. Trade Comm'n., 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An
anticipatory reference … need not duplicate word for word what is in the
claims.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).
The difference between a request to register and a referral request is a
difference in the content of the information being communicated/received by
the module. There is insufficient evidence that this difference reflects a
functional or structural difference related to the module. Accordingly, the
argued-over difference is properly characterized as nonfunctional descriptive
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material which, as such, is not a patentably consequential difference. In re
Ngai, 367 F.3d at 1339. 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).

Referral generator.
As claimed, the “referral generator” is something that “respond[s] to
the referral request by selecting a provider from a network of providers.”
Claim 1. As previously construed, “the referral request” is information,
albeit information having a particular content. “A provider from a network
of providers” is, for the same reason, also information, albeit information
having another particular content. Accordingly, the “referral generator” is
something that responds to information by selecting other information.
The Examiner cited Figure 1, item (16-1) of Van Der Linden, as
describing a referral generator as claimed. Ans. 3. Item (16-1) is a
“computing device.” See p. 4, para. [0035]. Said computing device may be
equipped with a web page via which information can be entered and
depending on what is entered, a selection is made. The web page may
include a “hyperlink at the corresponding item, [from which] a user may
further specify a detailed description that may be interesting to a marketer.”
Id. at para. [0039]. Depending on the information specified, some marketers
may be interested and pursue a connection with the user. See, e.g., p. 6, para.
[0056]: “when a connection to the customer is selected by an
advertiser/marketer, the advertiser/marketer is authenticated before the
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system connects the advertiser/marketer to the customer.” In this way, Van
Der Linden’s computing device (web page) is something that responds to
user information (e.g., user information) by selecting other information (e.g.,
marketer information).
Accordingly, Van Der Linden describes the “referral generator” as
claimed.
The Appellants argue:
It is respectfully submitted that Van Der Linden does not
disclose responding to a referral request by selecting a marketer
from the one or more marketers (correlated with “providers” of
claim 1). It is also submitted that neither the operation of
providing information to marketers nor the operation of
identifying customers is the same as responding to a referral
request by selecting a provider from a network of providers, as
required by claim 1.
App. Br. 11.
The Appellants’ arguments are not persuasive. We do not see – and
the Appellants do not explain – the difference between a website that causes
some marketers to respond based on inputted user information as Van Der
Linden describes and the “referral generator” which “respond[s] to the
referral request by selecting a provider from a network of providers.” The
Appellants also argue “that neither the operation of providing information to
marketers nor the operation of identifying customers is the same as
responding to a referral request by selecting a provider from a network of
providers, as required by claim 1” (App. Br. 11), but do explain any
“structural” differences. As indicated earlier, the claim is directed to an
apparatus, not a method of operation. We are unable to discern any structural
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difference between the web page Van Der Linden describes and the “referral
generator” element of the claimed system.

Call module.
As claimed, the “call module” “initiate[s] a voice over Internet
protocol (VoIP) call to contact the selected provider.” Claim 1.
The Examiner cited Figure 1, item (20) and paragraphs [0019],
[0027], [0033] of Van Der Linden, as describing a call module as claimed.
Ans. 3.
The Appellants acknowledge that “Van Der Linden explains that
communication sessions may be established over the network 14 utilizing
VoIP -based technology” (App. Br. 12) but argue that “Van Der Linden does
not disclose that a VoIP call is initiated by the communications interface 20
[the element cited by the Examiner]” (Id.).
The argument is unpersuasive because, as the Examiner points out
(Ans. 8) and as quoted by the Examiner, Van Der Linden [0035] discloses:
In an alternative embodiment of the invention, a
computing device (e.g., advertiser computing device 16-1) and
a communication device (e.g., advertiser communication device
22-1) may be integrated as one device. Furthermore, it will be
appreciated by those skilled in the art that the network 14 may
be utilized for both data and communication session. For
example, in one embodiment of the invention,
communication sessions may be established over the network
14 utilizing VOIP-based technology (Voice over Internet
Protocol).
Italics added for emphasis. The fact that a communication session may be
established over the network utilizing VOIP-based technology necessarily
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means the device initiates a VoIP call in order to make contact.
For the foregoing reasons, we find that Van Der Linden describes the
subject matter claimed in claim 1. Because claims 2-28 and 30 stand or fall
with claim 1, the rejection of those claims is sustained for the same reasons.

Claim 29.
The Appellants rely on arguments made challenging the rejection of
claim 1. Those arguments were found unpersuasive. App. Br. 13.
The Appellants also argue that claim 29 is directed to “a machine
readable medium” which Van Der Linden does not describe. App. Br. 12-13.
We agree with the Examiner. Although the Van Der Linden elements
discussed above are separately disclosed, as the Examiner points out:
Van Der Linden clearly discloses a machine readable medium in, for
example, para [0077]
“While some embodiments of the invention have been
described in the context of fully functioning computers
and computer systems, those skilled in the art will
appreciate that various embodiments of the invention
are capable of being distributed as a program product
in a variety of forms and are capable of being applied
regardless of the particular type of machine or
computer readable media used to actually effect the
distribution.” (Emphasis added)
Ans. 10.

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DECISION
The decision of the Examiner to reject claims 1-30 is affirmed.

AFFIRMED

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