Ex Parte Yee

Patent Trial and Appeal Board

Mar 13, 2014

11835199 (P.T.A.B. Mar. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN YEE
____________

Appeal 2011-013172
Application 11/835,199
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jonathan Yee (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 19, reproduced below, is illustrative of the subject matter on
appeal.
19. A process for marketing insurance, said process comprising;
(a) electronically reading a telemarketing lead file comprising
consumer information including name, telephone number, and credit
card billing information at a telemarketing agency employing an
unlicensed telemarketing representative;
(b) operating an electronic outbound automated dialer from the
agency to call a consumer using the telemarketing lead file via a
processor;
(c) inquiring of the consumer’s interest, by the unlicensed
telemarketing representative, in at least one insurance product;
(d) obtaining an affirmative response from the consumer;
(e) passing the consumer to an electronic VRU having a
processor and being housed in a licensed agency while the unlicensed
telemarketing representative stays on the line to confirm the consumer
response before said agent disconnects;
(f) electronically interacting the VRU via its processor with the
consumer to close sale of the insurance product electronically using a
pre-approved script to produce substantially correct closed sale
information, wherein said script comprises a name confirmation script
element, a telephone confirmation script element, a date-of-birth
confirmation script element, a confirmation of insurance product

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jan. 10, 2011) and Reply Brief (“Reply Br.,” filed Jun. 20, 2011),
and the Examiner’s Answer (“Ans.,” mailed Apr. 18, 2011).
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script dement, an insurance product up-sell script element, and an
explanation of insurance product script element; and
(g) sending said closed sale information to a third party
administrator for policy fulfillment and billing administration.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Barry
Becerra
Anderson

US 2003/0069804 A1
US 2006/0116903 A1
US 7,280,651 B2
Apr. 10, 2003
Jun. 1, 2006
Oct. 9, 2007
The following rejection is before us for review:
1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barry, Becerra, and Anderson.

ISSUE
Did the Examiner err in rejecting the claims on appeal under § 103 as
being unpatentable over the cited prior art combination?

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
Claims 1 and 19, the independent process claims, are argued together.
Claim 13 is argued separately. App. Br. 8. The Appellant argued claims 1-
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12, 19, and 20 as a group. App. Br. 4-8. We select claim 19 as the
representative claim for this group, and the remaining claims 1-12 and 20
stand or fall with claim 19. 37 C.F.R. § 41.37(c)(1)(vii) (2007). The
Appellant argued claims 13-18 as a group. App. Br. 8-9. We select claim
13 as the representative claim for this group, and the remaining claims 14-18
stand or fall with claim 13. 37 C.F.R. § 41.37(c)(i)(vii).

Claim 19
The Examiner reasons that Barry discloses the claimed subject matter
and that
[a]lthough Barry does not specify that the product is insurance[,] it is
inherent since Barry can sell any product or service, in an effort to
have compact procession [sic, prosecution] the examiner has also
found an additional reference which expressly reads on [sic, the]
limitations. Becerra (US Patent Publication 2006/0116903) claims
insurance coverage (see Becerra, title)
Therefore it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify Barry by
adapting insurance as the product of Becerra.
It is clear that one would be motivated to provide increased
specification.
Ans. 4.
The Examiner also makes an additional point.
The examiner believes that the first three limitations are
inherent in Barry, Figure 1, "sales portion" in an effort to have
compact procession [sic, prosecution] the examiner has also found an
additional reference which expressly reads on [sic, the] limitations.
Anderson (US Patent 7,280,651) . . . .
. . . it would have been obvious to one of ordinary skill in the art at the
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time the invention was made to modify Barry by adapting sales
features of Anderson.
It is clear that one would be motivated to provide increased
operational efficiency.
Id.
Accordingly, the Examiner’s position is that the claimed subject
matter would have been obvious over (a) Barry and Becerra or (b) Barry,
Becerra, and Anderson; the former applies if the following limitations are
inherently disclosed by Barry, and the latter applies if not:
(a) electronically reading a telemarketing lead file comprising
consumer information including name, telephone number, and credit
card billing information at a telemarketing agency employing an
unlicensed telemarketing representative;
(b) operating an electronic outbound automated dialer from the
agency to call a consumer using the telemarketing lead tile via a
processor;
(c) inquiring of the consumer's interest, by the unlicensed
telemarketing representative, in at least one insurance product[.]
Claim 19.
The Appellant (App. Br. 4) challenges the rejection on the ground that
the Examiner is mistaken in finding that Barry discloses the claim
limitations:
A process for marketing insurance, said process comprising:
(a) electronically reading a telemarketing lead file comprising
consumer information including name, telephone number, and credit
card billing information at a telemarketing agency employing an
unlicensed telemarketing representative[.]
Claim 19. “[I]n Applicant’s view, a box labeled ‘sales portion’ does not
inherently teach anything other than the fact that something is being sold.”
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Reply Br. 2. The Appellant concedes that “Barry states in paragraph [0015]
that the ‘first steps involve the sales presentation and, if the customer
decides to order, collecting any information the selling agent needs to
actually process the order.’ [But] Barry does not disclose providing a
telemarketing lead file.” App. Br. 5.
Notwithstanding that the content of the “telemarketing lead file” as
claimed (i.e., “consumer information including name, telephone number, and
credit card billing information at a telemarketing agency employing an
unlicensed telemarketing representative” (claim 19)) is best characterized as
nonfunctional descriptive material and, as such, is patentably
inconsequential, the preponderance of the evidence must weigh in favor of
the factual finding that the prior art would have led one of ordinary skill in
the art to provide a “telemarketing lead file” as claimed.
An important first step in making that determination is to give the
phrase “telemarketing lead file” the broadest reasonable interpretation in
light of the Specification as it would be understood by one of ordinary skill
in the art at the time of the invention. In that regard, the Specification
describes a “telemarketing lead file” as
[t]he lead file can reside on any suitable media, including physical
media such as compact discs and digital media such as computer
information. The lead file can be transmitted and provided to the
telemarketing agency by any suitable means, including via regular
mail, email, and/or via the internet using well-known means such as
file-transfer-protocol (FTP).
Spec., para. [0012]. Given this description, the phrase “telemarketing lead
file,” is reasonably broadly construed to cover any practical media, including
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databases and even paper. Accordingly, the first step set forth in claim 19,
as reasonably broadly construed, encompasses electronically reading a
document with certain information on it – a step which could be performed
simply by reading a database or scanning a piece of paper.
Turning now to Barry, the mere disclosure of a “sales portion,” as in
Figure 1 of Barry, would appear to be insufficient as evidence to conclude
that, more likely than not, one of ordinary skill in the art would have been
led to provide a document with certain information as claimed. It may be
that it is well known that “[a]nyone in the industry would understand ‘sales
portion’ to include data information” (Ans. 6), but there is no rejection
before us for review that is based on a combination of Barry and what is well
known in the art. What is before us for review is a rejection over Barry and
Becerra (if electronically reading a document with information on it is
“inherent” in Barry) or over Barry, Becerra, and Anderson.
But Barry does not merely disclose the words “sales portion.” See In
re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that patents are
“relevant for all they contain”). Although not expressly mentioned by the
Examiner, we also draw attention to paragraphs [0014] and [0015] of Barry,
which explain more fully that
[A] sales agent follows a script when conducting a conversation with
a potential customer. The script is typically predefined, at least in part,
though the sales agent may be free to deviate from the script.
Typically, while conducting the call, the sales agent is interacting with
a computer that runs software to facilitate the telemarketing process.
The software may provide an on-screen script and may allow the sales
agent to enter details of the order, e.g., customer name, address, credit
card information, etc. Some or all of this information may be used
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later for purposes of fulfilling the order. . . .
The first steps involve the sales presentation and, if the customer
decides to order, collecting any information the selling agent needs to
actually process the order. The sales agent may use a script predefined
by the call center or the entity from which the offer originates.
In our view, the phrase “telemarketing lead file” reasonably covers what
Barry is disclosing, i.e., reading an “on-screen script.”
Furthermore, as the Examiner argues: “the examiner went so far as to
find each and every item of the applicants in Anderson Figure 4, item 402
contact database which is described in the spec to ‘include customer data
(e.g. telephone number, name and purchase information)’ (see Anderson
column 5 line 41-42).” Ans. 6. The Appellant has not responded to this
argument. Based on our review, the Examiner has correctly characterized
the scope and content of Anderson as disclosing a database comprising
customer data (including telephone number, name and purchase
information). See Anderson, col. 5, ll. 41-42. The phrase “telemarketing
lead file” reasonably covers what Anderson discloses.
For the foregoing reasons, the Appellant’s argument that “Barry does
not disclose providing a telemarketing lead file” (App. Br. 5) is unpersuasive
as to error in the rejection.
For essentially the same reasons, the Appellant further argues that
Barry does not disclose a method of contacting a consumer as claimed
(claim 19: “(b) operating an electronic outbound automated dialer from the
agency to call a consumer using the telemarketing lead file via processor”).
See App. Br. 5. But we find the argument unpersuasive as to error in the
rejection because, as explained above, paragraphs [0014] and [0015] of
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Barry disclose a sales agent interacting with a computer that provides an on-
screen script as part of a telemarketing process. The process may involve a
“script predefined by the call center.” This is suggestive of operating an
electronic outbound automated dialer from the agency to call a consumer
using the telemarketing lead file via processor.
Also, Anderson specifically discloses calling a potential customer
wherein the call is initiated by an “auto-dialing device,” i.e., automated
dialer. See Anderson, fig. 4 (element 404) and col. 1, ll. 51-53. The
Examiner made this point (see Ans. 4), but the Appellant does not appear to
have refuted it.
The Appellant further argues that Barry does not disclose steps (e) and
(f) – contrary to the Examiner’s finding. App. Br. 5-6. According to the
Appellant (App. Br. 6), the claimed “subject matter regarding transferring a
customer to a VRU and interacting with the consumer to close the sale” is
different from Barry in which “typically after a sales order is taken by
phone, the agent taking the order transfers the interested party to an outside
and independent agent where the customer is asked to repeat details of the
order.” Barry, para. [0003].
The argument is unpersuasive as to error in the rejection. At
paragraph [0015], Barry discloses transferring the customer to an
independent verifier after the sales order is taken and that the verification is
to include the customer’s “acceptance or rejection” of the offer.
Accordingly, the sale is not complete until the verification is performed and
the customer has accepted the offer. Barry discloses that the verification is
performed via a verifier server and is conferenced in to the phone call
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between the sales agent and the customer. Barry, para. [0020]. Finally,
Barry discloses the verification is to include questions related to the sales
order. See paras. [0017] and [0045]. We see no difference between what
Barry discloses and the claimed “subject matter regarding transferring a
customer to a VRU and interacting with the consumer to close the sale.”
The Appellant further argues that “[p]aragraph [0010] of Barry states
that conventional sales verification processes are frustrating for the customer
and the invention of Barry is an improvement over IVR technology. This
language of Barry expressly teaches directly away from using voice
recognition technology to interact with a customer as is claimed by the
Applicant.” App. Br. 6. There appears to be no difference between the
claimed VRU (voice response unit) and Barry’s IVR (interactive voice
response) system, structurally or functionally. The fact that Barry
acknowledges customer frustration in using such technology is insufficient
as a teaching away from the claimed invention. Cf. In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994) (“A known or obvious composition does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.”).
Finally, the Appellant argues that a “call center” as defined by Barry
is not the same as a third party administrator for policy fulfillment and
billing administration as claimed. App. Br. 7.
This argument is unpersuasive for the reasons given by the Examiner.
See Ans. 7.
The arguments challenging the rejection have been considered but
found unpersuasive as to error in the rejection.
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Accordingly, the rejection of claim 19, and claims 1-12 and 20 which
stand or fall with it, is sustained.

Claim 13
Claim 13 is drawn to an apparatus comprising:
 “an outbound automatic dialer programmed with a telemarketing lead
file containing consumer information;”
 “a connection unit to said dialer to permit an unlicensed human agent
to interact with a consumer;”
 “a VRU [voice response unit] located at a licensed agency
programmed with a preapproved script to close sale of an insurance
product and to produce substantially correct closed sale information;”
 “a VRU connection unit to permit the unlicensed human agent and the
consumer to connect to the VRU;” and,
 “an administrator connection unit to permit the VRU to connect with a
third party administrator for insurance product fulfillment and
billing.”
We understand the Appellant to be arguing that Barry fails to disclose
“a VRU located at a licensed agency programmed with a pre-approved
script to close sale of an insurance product and to produce substantially
correct closed sale information.” App. Br. 8-9 (emphasis added).
That Barry discloses an IVR (interactive voice response) system is not
in dispute. Also, there appears to be no difference between the claimed
VRU (voice response unit) and Barry’s IVR, structurally or functionally. If
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there is a difference, it is not apparent from reading the claim in light of the
Specification. Accordingly, the issue is over its location.
A difference in location, per se, is not normally patentably significant.
The arguments challenging the rejection have been considered but
found unpersuasive as to error in the rejection.
Accordingly, the rejection of claim 13, and claims 14-18 which stand
or fall with it, is sustained.

DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.

AFFIRMED

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