Ex Parte Swick

Patent Trial and Appeal BoardDec 18, 2014

10449963 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/449,963 05/30/2003 Corvin F. Swick 41698-1095 7070 39600 7590 12/19/2014 SOFER & HAROUN LLP. 215 Lexington Avenue, Suite 1301 NEW YORK, NY 10016 EXAMINER AL AUBAIDI, RASHA S ART UNIT PAPER NUMBER 2652 MAIL DATE DELIVERY MODE 12/19/2014 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 CORVIN F. SWICK _________ Appeal 2012-008249 Application 10/449,963 Technology Center 2600 __________ Before ULRIKE W. JENKS, CHRISTOPHER G. PAULRAJ, and AMANDA F. WIEKER, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a method for providing an information assistance service. The Examiner rejected the claims on obviousness grounds. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellant identifies the Real Party in Interest as Grape Technology Group Inc. (see App. Br. 2). Appeal 2012-008249 Application 10/449,963 2 STATEMENT OF THE CASE Background “[T]he invention relates to a system and method for providing an information assistance service by a call center” (Spec. 1). According to the Specification: Information assistance is an extension of directory assistance. In addition to connecting a caller to a destination number, information assistance operators can provide concierge-type services such as a restaurant guide and reservation service, event ticketing and reservation service, hotel reservation and availability service, travel or flight reservation and ticketing services, ordering specific items such as flowers or food delivery, arranging transportation, and accessing entertainment guides. (Id.). The Specification describes a situation where: After the CSR [customer service representative] assists the caller with his or her customer service question, the CSR asks whether the caller needs any more assistance of any kind. If the caller does need information assistance, in the prior art the CSR would transfer the caller back to the information assistance service, handing the call off to another representative such as an operator, and the caller would request information assistance from the information assistance operator. To the caller, this process is ineffective, and requires being switched back and forth among several different operators or customer service representatives. (Id. at 2). The Claims Claims 1, 3–9, 11–16, and 18–21 are under appeal. Independent claim 1 is representative, and reads as follows: 1. A method for providing an information assistance service, comprising: Appeal 2012-008249 Application 10/449,963 3 receiving a call from a caller, wherein at least at some point during said call said caller makes a first customer service request and a second information assistance request; receiving said call at an information assistance service provider, and transferring said call to a customer service request service provider; receiving at said customer service request service provider a call from said information assistance service provider; providing to the caller information responsive to said first customer service request; at said same customer service request service provider, obtaining connection information concerning a destination party responsive to said second information assistance service request; and transmitting data from said customer service request service provider to the information assistance service provider, the data including at least the connection information and an instruction causing the information assistance service provider to connect the call to the destination party based on the connection information. The Rejection The Examiner rejected the claims under 35 U.S.C. § 103(a) as being unpatentable over Shaffer2 and Pines.3 FINDINGS OF FACT FF1. Shaffer teaches “[a]n apparatus and method [that] allow a telephone user to be automatically connected, in sequence, to multiple telephone numbers in response to a single directory assistance query. The user can elect to put all numbers retrieved by his request into a queue, or can queue a subset” (Shaffer, Abstract). FF2. Pines teaches a communication assistance system wherein: 2 Shaffer et al., US 5,943,410, issued Aug. 24, 1999. 3 Pines et al., US 6,970,548 B2, issued Nov. 29, 2005. Appeal 2012-008249 Application 10/449,963 4 It is contemplated in the current invention that System 2 shall be enabled to provide traditional directory assistance as well as enhanced traditional directory assistance which includes but is not limited to additional services such as: restaurant recommendations and reservations; movie times and ticket purchase; category searches; alternate language services, directions services, and preferred provider opportunities. (Pines, col. 14 ll. 45–52.) ANALYSIS The Examiner finds that “Shaffer teaches allowing a telephone user to place a directory service request, desiring multiple listings (i.e., more than one number),” and “allow[ing] the user to be automatically connected, in sequence, to multiple telephone numbers in response to a single directory assistance request” (Ans. 4; FF1). The Examiner acknowledges that “Shaffer does not specifically teach ‘a first customer request and a second information assistance request’,” but asserts based on Pines’ teaching of a communication assistance system and method (FF2) that [I]t would have been obvious to one of ordinary skill in the art at the time the invention was made to have the user submitting more than one request, one that is directed to a directory assistant and the other is directed to other services, as taught by Pines, into the Shaffer system in order to enhance and expand the services provided to the user by minimizing the time required for the user to obtain directory numbers and other services required. Also, having one single service request with multiple inquires/requests will provide both the caller and the directory service operator with speed and convenience. (Ans. 5.) The Examiner interprets claim 1 “as having one agent capable of handling customer service request and information assistance service request” (id.). Appeal 2012-008249 Application 10/449,963 5 We determine that the Examiner has not made a prima facie showing of obviousness. In particular, the Examiner has not identified any teaching or suggestion in the prior art for “transmitting data from said customer service request service provider to the information assistance service provider, the data including at least the connection information and an instruction causing the information assistance service provider to connect the call to the destination party based on the connection information” (Cl. 1; similar language appears in independent Cl. 7 and 16). We agree with Appellant that “the language of the claims (e.g. independent claim 1) does not allow for the interpretation of simply having one agent cable of handling customer service requests and information assistance requests as there are clearly defined steps of transferring calls between providers/operators” (Br. 16). Although it may have been obvious to have a single agent handle both the first customer service request and second information assistance request, the Examiner has not identified any basis on the record to conclude that it would have been obvious to transmit data from a customer service request provider to the information assistance service provider as required by the last clause of claim 1. See Rambus Inc. v. Rea, 731 F.3d 1248, 1257–58 (Fed. Cir. 2013) (“the obviousness inquiry centers on whether ‘the claimed invention as a whole’ would have been obvious”). Appeal 2012-008249 Application 10/449,963 6 We are therefore constrained to reverse the obviousness rejection based on Shaffer and Pines.4 REVERSED cdc 4 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014) (to be codified at 37 C.F.R. pt. 1), available at https://www.federalregister.gov/articles/2014/12/16/2014-29414/2014- interim-guidance-on-patent-subject-matter-eligibility.