Ex Parte Berstis et al

Patent Trial and Appeal Board

Oct 31, 2012

11348900 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VIKTORS BERSTIS, CANDICE B. GILZEAN, and
SONIA M. GAILLARD
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Appeal 2010-0064341
Application 11/348,900
Technology Center 2100
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Before JEAN R. HOMERE, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is International Business Machines, Corp. (App.
Br. 2.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claim 1. (App. Br. 4.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method for expediting a customer’s navigation
of a menu tree options in a secure manner. (Spec. ¶ [0001], Fig. 4.) In
particular, the customer’s subscription information includes a number linked
to a spoken word or phrase stored in a database at the menu tree service
center. (Spec. ¶ [0049].) Upon authenticating the customer, a request
received therefrom is compared with a previous navigation record of the
customer in the provider’s database to thereby present the customer with an
appropriate menu tree portion as opposed to an entire menu tree. (Spec. ¶
[0035], Fig. 2.) After selecting an entry from the menu tree portion, the
customer utters the spoken word or phrase in response to the service
provider’s request for the customer number. Consequently, a customer
number associated with the spoken word is retrieved from the database and
sent to the service provider for further processing. (Spec., ¶¶ [0053-55].)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method of facilitating menu tree options, the method
comprising:
receiving from a customer, customer subscription data at a
menu tree service center prior to receiving a customer request from
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the customer, wherein the customer subscription data comprises at
least one linked customer number linked to a spoken word or phrase,
the linked customer number and spoken word or phrase stored on a
database at the menu tree service center;
receiving the customer request from a customer at the menu tree
service center, the customer request including a customer
identification;
determining one menu tree from a plurality of menu trees based
on the customer request, wherein each of the plurality of menu trees is
associated with a service provider;
determining at least a portion of the determined menu tree
based on the customer request, wherein the portion is further
determined based on at least one of a customer menu tree navigation
record and a predetermined menu tree provided to the menu tree
service center by the service provider and stored at the menu tree
service center server;
sending the portion of the determined menu tree to the customer
based on the portion;
receiving a response from the customer at the menu tree service
center based on the portion;
transmitting the response from the menu tree service center to
the service provider;
sending a service provider request for the linked customer
number to the customer via the menu tree service center;
receiving a verbal response from the customer at the menu tree
service center, wherein the verbal response comprises the spoken
word or phrase;
retrieving the linked customer number from the menu tree
service center server based on the verbal response; and
sending the linked customer number to the service provider.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Appeal 2010-006434
Application 11/348,900

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Barber US 6,088,435 Jul. 11, 2000
Gutzmann US 6,327,347 B1 Dec. 4, 2011
Partovi US 6,842,767 B1 Jan. 11, 2005

Rejection on Appeal
The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Partovi, Barber, and Gutzmann.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 9-13 and the Reply Brief, pages 1-5.
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that the combination of Partovi, Barber, and Gutzmann teaches or
suggests sending to a service provider a customer number linked to a spoken
word uttered by the customer, as recited in claim 1?
Appellants argue that the Examiner erred in finding that the
combination of Partovi, Barber, and Gutzmann teaches or suggests the
disputed limitations emphasized above. In particular, Appellants argue that
while Barber discloses that a customer may utter a telephone number in
interactive telephone networking equipment as a way to authenticate the
customer with the equipment, the spoken phone number is not subsequently
sent to a service provider after being uttered by the customer. (Reply Br. 3-
5.)
In response, the Examiner finds that Barber’s disclosure of a customer
uttering a phone number as identifier during an authentication process to
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gain access to a corresponding menu tree portion teaches the disputed
limitations. (Ans. 8-10.)
On the record before us, we find error in the Examiner’s findings and
ultimate conclusion of obviousness. We note at the outset, as set forth
above, that both Appellants and the Examiner agree that neither Partovi nor
Gutzmann teaches the disputed limitations. Therefore, the issue turns on
whether Barber’s teachings cure the noted deficiencies of the Partovi-
Gutzmann combination. Barber discloses a subscriber identifier consisting
of a number (e.g., phone number) or a set of alphanumeric characters that
can be spoken by the subscriber during authentication to gain access to a
menu portion in a multi-level menu arrangement of an interactive telephone
networking service. (Col. 3, ll. 5-10, col. 4, ll. 6-28.) We find that Barber
discloses, at best, the customer speaking an alphanumeric identifier, which is
linked to the consumer’s phone number, both of which are stored in the
database. While the subscriber identifier can be construed as a spoken word
associated or linked with the customer’s number in the system database, the
phone number is not sent to the service provider. Further, even if the phone
number itself were considered as the identifier, it would only be limited to
being spoken during the customer authentication, but would not be sent to
the provider thereafter. Therefore, we agree with Appellants that Barber
does not teach the disputed limitations. Because Appellants have shown at
least one error in the Examiner’s rejection of claim 1, we need not address
Appellants’ other arguments. It follows that Appellants have shown error in
the Examiner’s rejection of claim 1.
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DECISION
We reverse the Examiner’s rejection of claim 1.

REVERSED

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