Ex Parte Moore et al

Patent Trial and Appeal BoardAug 9, 2013

10975214 (P.T.A.B. Aug. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD G. MOORE, GUNA D. GUNASEKAR, PHILLIP E. LAWSON-SHANKS, and DARRYL W. SHAW ____________ Appeal 2011-003680 Application 10/975,214 Technology Center 2600 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and LORA M. GREEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1, 4-12, 15-23, 26-33, and 36-42 (App. Br. 2; Reply Br. 1; Ans. 2). Examiner rejected the claims under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The claims are directed to a method for providing directory services over a communication system including a data network and a telephony network; a computer-readable medium carrying one or more sequences of 1 The Real Party in Interest is Verizon Communications Inc. and its subsidiary companies (App. Br. 1). Appeal 2011-003680 Application 10/975,214 2 one or more instructions for providing directory services over a communication system including a data network and a telephony network; a system for providing extended directory services; and a device for accessing directory services supported by a communication system including a data network and a telephony network. Claim 1 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Claims 1, 4-12, 15-23, 26-33, and 36-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Uhlmann2 and Generous.3 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Uhlmann discloses that “[b]eing readily available for telephone contact has become increasingly important for a growing number of people … [who may have multiple telephone numbers and t]his requires a caller to know or look up multiple numbers and addresses, and frequently to make multiple calls in order to reach a person” (Uhlmann 1: ¶ [0004]). FF 2. To address the need to have access to multiple telephone numbers Uhlmann discloses that callers make use of a telephone “directory stored locally on a user’s telephone unit” or remotely, and suggests that a need exists “to combine the advantages of local directories with remote directories in the context of telecommunications” (id. at ¶¶ [0005]-[0009]). 2 Uhlmann, US 2003/0017824 A1, published January 23, 2003. 3 Generous et al., US 2002/0120697 A1, published August 29, 2002. Appeal 2011-003680 Application 10/975,214 3 FF 3. “In a particular embodiment, [Uhlmann suggests that] a user inputs a network address (e.g., a telephone number) into a telephony device,” which then “access[es] a local directory in an effort to locate a callee name” or a remote directory if the callee information is not found in the local directory. Once located, the callee information is returned to the user’s telephony device (i.e., on the same communication mode) such that “the user presses the talk button … to initiate the telephone call” (id. at 2: ¶ [0022] and 4: ¶ [0038]; see generally Ans. 4). FF 4. Examiner finds that Uhlmann does not suggest, inter alia, the delivery of, or forwarding, callee information via (1) a second communication mode or (2) concurrently through both a first and a second communication mode (Ans. 4-5). FF 5. Generous discloses that “[a]lthough a number of methods currently exist to deliver information, such as email, to a recipient, these methods suffer from a number of drawbacks. One of these drawbacks is a general difficulty in the sender knowing whether and when the intended recipient received the message” (Generous 1: ¶ [0006]). FF 6. Generous suggests “a high-performance message distribution engine for delivering large volumes of customized messages [from a sender to a recipient] via multiple delivery channels” (id. at [0008]; see Ans. 5). ANALYSIS Based on the combination of Uhlmann and Generous, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to forward “the directory information to the subscriber [as suggested by Uhlmann] according to the second communication mode … as taught by Generous … in order to provide a Appeal 2011-003680 Application 10/975,214 4 combination of multiple delivery paths for delivery [of] directory information simultaneously” (Ans. 5-6). We are not persuaded. As Appellants explain, Uhlmann suggests the delivery of directory information directly back to the user’s telephony device (App. Br. 10; FF 3). In contrast, Generous suggests the delivery of a user’s message to a recipient across multiple communication channels (App. Br. 9; FF 5-6). On balance, we are compelled to agree with Appellants’ contention that “the teachings of the references would not have suggested their combination” (App. Br. 10). “The mere fact that the telephony devices may each be configured to communicate with the network using different protocols does not lead to the conclusion or inference that the directory request and directory response [suggested by Uhlmann] would be transmitted over different communication channels” (Reply Br. 4). Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. at 421, 127 S.Ct. 1727. Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). On this record, Examiner failed to establish an evidentiary basis to support a conclusion that a person of ordinary skill in this art would combine Generous’ method of forwarding a message across multiple communication channels with Uhlmann’s method of returning directory information to a telephony device along the same communication channel the telephony device used to request the directory information. Appeal 2011-003680 Application 10/975,214 5 CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claim 1, 4-12, 15-23, 26-33, and 36-42 under 35 U.S.C. § 103(a) as unpatentable over the combination of Uhlmann and Generous is reversed. REVERSED cdc