Ex Parte Lipton et alDownload PDFPatent Trial and Appeal BoardDec 17, 201210772674 (P.T.A.B. Dec. 17, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/772,674 02/04/2004 Marc Ira Lipton A00362CON3 / 60027.5244US 5600 82866 7590 12/18/2012 AT&T Legal Department - HBH Attn: Patent Docketing One AT&T Way Room 2A-207 Bedminster, NJ 07921 EXAMINER SING, SIMON P ART UNIT PAPER NUMBER 2653 MAIL DATE DELIVERY MODE 12/18/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARC IRA LIPTON and GREGORY JOHN DUNNY ____________ Appeal 2010-006972 Application 10/772,674 Technology Center 2600 ____________ Before JOHN A. JEFFERY, BARBARA A. BENOIT, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 34-57. Claims 1-33 have been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention is directed to a system and method for ordering a telecommunication service during a telecommunication call, where Appeal 2010-006972 Application 10/772,674 2 prerecorded terms and condition messages are communicated to the individual and a reply message is received during the telecommunication call. See generally Abstract. As identified by Appellants in the Specification, the invention allows subscribers to order regulated telecommunication services without having to sign a service contract. Spec. p. 1, ll. 17-19; p. 8, ll. 9-12. Claim 34 is illustrative and is reproduced below, with key disputed limitations emphasized: 34. A system for providing a session for ordering a telecommunication service, the system comprising: a receiver associated with the telecommunication service to receive, during a telecommunications call, a reply message to a terms and conditions contract message regarding terms and conditions of a contract; a processor in communication with the receiver; a database in communication with the processor; and wherein the processor creates a record of the session in the database, wherein the database maintains a recorded audio representation of at least a portion of the telecommunication call which documents that an individual has affirmatively accepted the terms and conditions, wherein the terms and conditions are accepted without a service contract. THE REJECTION The Examiner rejected claims 34-57 under 35 U.S.C. § 103(a) as unpatentable over Edwards (US 5,819,029; issued Oct. 6, 1998) and O’Neil Appeal 2010-006972 Application 10/772,674 3 (US 5,887,253; issued Mar. 23, 1999). Ans. 3-6.1 CONTENTIONS The Examiner finds that Edwards discloses every recited feature of illustrative claim 34, except that Edwards is silent as to including the terms and conditions of a contract. Ans. 4. The Examiner relies on O’Neil as teaching this feature. Ans. 4. Appellants contend that neither Edwards nor O’Neil teach or suggest that terms and conditions of a contract are accepted without a service contract. App. Br. 3-4; Reply Br. 2-3. ISSUE Under § 103, has the Examiner erred by finding that the cited prior art, collectively, teach or suggest accepting the terms and conditions of a contract without a service contract? ANALYSIS As an initial matter, we note that both Appellants and the Examiner agree that the claimed limitation “without a service contract” means without an already existing contract or without signing a contract. App. Br. 4; Ans. 7; Reply Br. 2. With this claim interpretation and based on the record before 1 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed July 16, 2009; (2) the Examiner’s Answer (Ans.) mailed Nov. 27, 2009; and (3) the Reply Brief (Reply Br.) filed Jan. 19, 2010. Appeal 2010-006972 Application 10/772,674 4 us, we find the Examiner did not err in rejecting claim 34 as obvious. Namely, we are not persuaded by Appellants that the cited prior art fails to collectively teach or suggest accepting the terms and conditions of a contract without a service contract. Appellants first contend that both Edwards and O’Neil teach having a service contract in place, i.e. have an already existing contract, when terms are verified. App. Br. 3. And Appellants also assert that because “[t]he description of O'Neal is silent with regard to the terms and conditions being accepted without a service contract,” it does not teach the claimed limitation. App. Br. 4; see also Reply Br. 2-3. We disagree. As identified by the Examiner, O’Neil describes providing terms and conditions to a customer, recording response from the customer, and prompting the customer to accept terms and conditions for a cellular service, such as charges, payments, and other contract related provisions, without signing a service contract or without an existing contract. Ans. 4 (citing O’Neil col. 13, ll. 19-25.) While the cited passage may not expressly state that no contract already exists, the mere fact that the customer must respond to accept the terms and condition in order to receive the service at least teaches or suggests to a skilled artisan that no contract already exists. Moreover, O’Neil identifies that, after the acceptance of terms, a welcome letter will be generated and sent to the customer and that welcome letter may include a confirmation copy of the accepted terms and conditions. O’Neil, col. 14, ll. 54-57. Therefore, we agree with the Examiner that O’Neil Appeal 2010-006972 Application 10/772,674 5 teaches accepting the terms and conditions of a contract without a service contract. We also disagree with Appellants contention that Edwards cannot meet the claimed limitation “without a service contract” because Edwards “relates to a third party verification system of the service contract that’s [already] in place.” App. Br. 4. While Edwards generally teaches a third party verification system, Edwards also describes this verification may be simultaneous with the telemarketing sales call. Edwards, col. 12, ll. 27-29. In other words, the sale of the service and the verification of the sale occur at the same time during a single call. Id. Thus, as maintained by the Examiner, Edwards also teaches accepting a communication service without an already existing contract. Ans. 4 and 7. Accordingly, we sustain the rejection of claim 34; independent claim 46, which recites commensurate limitations; and dependent claims 35-45 and 47-57 not separately argued with particularity. CONCLUSION The Examiner did not err in rejecting claims 34-57 under § 103. ORDER The Examiner’s decision rejecting claims 34-57 is affirmed. Appeal 2010-006972 Application 10/772,674 6 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). AFFIRMED rwk Copy with citationCopy as parenthetical citation