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In re Greene

United States Court of Appeals for the Federal Circuit


December 6, 1999

IN RE LEONARD M. GREENE

(Serial No. 07/765,024)

Before Newman, Michel, and Gajarsa, Circuit Judges.

The opinion of the court was delivered by: Michel, Circuit Judge.

Leonard M. Greene appeals from the decision, dated January 21, 1999, of the Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences ("Board") in Appeal No. 94-3338 affirming rejection of all remaining claims of Patent Application No. 07/765,024, entitled "A Method and System for Concisely Registering Telephone Numbers, Postal Addresses, and Geographic Locations," as obvious under 35 U.S.C. § 103 (1994). We affirm.

BACKGROUND

Greene applied for a patent on September 24, 1991 for an invention he styles as an "improved telephone directory wherein the telephone number identifies the actual geographic location of the telephone and at the same time serves as an individual's or organization's postal address." Claims 1, 3, 5, 6, 9, and 10 are the only remaining claims.

The specification describes a system of assigning telephone numbers based on the individual's longitudinal and latitudinal coordinates. For example, an entity located at latitude 41ø 04.9 North and longitude 73ø 42.8 West, might receive a telephone number of (4173) 049428. The rationale given by Greene for the invention is that it would create a less voluminous telephone directory that still conveyed information about an individual's telephone number, address and geographic location. According to Greene's application, using fixed geographic coordinates as the address and as the telephone number eliminates the need for separate addresses in the directory. Thus, Greene alleges, the size of the directory would be reduced by up to 30 percent, while including additional information about the "precise global location of the entity. In addition, Greene's application indicates that the invention would facilitate locating an entity based on its telephone number.

Claim 5 illustrates the scope of the independent claims, 1, 5, and 9:

5. A method for registering telephone numbers and stationary geographic locations in a directory comprising the steps of:

identifying a plurality of named entities and the longitudinal and latitudinal coordinates which correspond to the stationary geographic locations of each of the named entities;

assigning a telephone number including at least a portion of the identified longitudinal and latitudinal coordinates of the stationary geographic location to each of the named entities;

organizing the named entities; and,

listing the organized named entities and telephone numbers associated therewith including at least a portion of the identified longitudinal and latitudinal coordinates of the stationary geographic locations in a directory whereby the telephone numbers indicate the geographic locations of each of the named entities. (Emphasis added).

The dependent claims, 3, 6, and 10 are best illustrated by claim 10:

10. A display . . . in which the organized list includes the postal address and the entities are listed in alphabetical order, and in which the phone numbers are the geographical locations and the addresses, the locations are the phone numbers and the addresses, and the addresses are the phone numbers and the locations.

The Examiner rejected all of Greene's pending claims as obvious over a prior patent, U.S. Patent No. 4,757,267 to Riskin ("Riskin"). The Riskin patent describes a system for re-routing calls placed to a central number to a dealership or supplier located near the caller. For example, a call to 1-800-FLOWERS would be routed to a participating florist close to the caller. Riskin identifies a caller's location using the National Plan Area ("NPA"), also known as the "area code" and the Central Office Code, or "exchange" ("NNX").

The NPA-NNX corresponds to a telephone subscriber's location by way of a "V-H" file provided by the Bell Communications Company. The V-H system is a complex transformation of latitude and longitude used by telephone companies to calculate the distance between a caller and the location called, for billing purposes. A particular NPA-NNX combination will correspond to a particular V-H geographic coordinate, which is the location of the telephone company central office. Thus, the Riskin patent requires the step of searching the V-H file based on the telephone number information. Once the V-H coordinate for a caller is identified via a search of the V-H file, the call can be routed to the closest dealer. This system contains a margin of error because the V-H coordinate assumes the caller is located at the telephone company central office for that exchange. The Riskin patent also describes a use of its system where calls are routed according to the caller's state or zip code rather the caller's NPA-NNX.

In addition to obviousness, the Examiner rejected claims 9 and 10 as not being directed to statutory subject matter.

The Board affirmed the Examiner's rejection of the claims as obvious but reversed the determination that claims 9 and 10 were not directed to statutory subject matter. It is from the Board decision on obviousness that Greene appeals.

This court has jurisdiction over this appeal under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

Greene argues that the Board committed a legal error in concluding that the claims at issue would have been obvious to a person of ordinary skill in the art at the time of the application filing date. According to Greene, the Board's reliance on Riskin fails to establish a prima facie case. He further asserts that despite its ultimate determination the Board made factual findings that Riskin is directed to a different problem, and that the prior art would not enable one to use the Riskin disclosure in the manner claimed in his application. In light of these findings, Greene argues, the Board's Conclusion that his claimed invention would have been obvious was in error.

We review the Board's ultimate legal Conclusion of obviousness de novo. See Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,1566, 1 USPQ2d 1593, 1596 (Fed. Cir. 1987). This legal Conclusion, however, rests on several factual findings, including among others, what a prior art reference teaches or suggests. See In re Lueders, 111 F.3d 1569, 1571, 42 USPQ2d 1481, 1482 (Fed. Cir. 1997). The factual findings of the Board are reviewed according to the highly deferential standards of review required by the Administrative Procedure Act ("APA"). See Dickinson v. Zurko, ____ U.S. _____, 119 S. Ct. 1816, 1823 (1999). As each finding challenged here is amply supported under any of the APA standards, we need not select among them to decide this appeal.

I.

Greene first argues that the PTO failed to meet its burden of establishing a prima facie case of obviousness. "A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art". In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (same); In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976) (same); see also In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (stating that an obviousness analysis requires that the prior art both suggest the claimed subject matter and reveal a reasonable expectation of success to one reasonably skilled in the art). The constituent factual findings for a prima facie case of obviousness are: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention. See Graham v. John Deere Co. 383 U.S. 1, 17 (1966).

Greene argues that the Riskin reference does not suggest combining a portion of the longitudinal and latitudinal coordinates to form a telephone number that identifies a geographic location and address. The Commissioner, however, notes that Riskin teaches using portions of an existing telephone number to determine the geographic location of a telephone. In addition, the Commissioner points out, Riskin discloses that the V-H data in the telephone company's file are derived from latitude and longitude. Accordingly, per the PTO, Riskin teaches that latitude and longitude information is imbedded in ordinary telephone numbers and thus a person of ordinary skill in the art would have known from Riskin's teaching that a telephone number can be used to determine a telephone's latitude and longitude. The Commissioner further argues that the information about the V-H system provided in Riskin would have suggested that using the latitude and longitude information directly would be simpler and less costly because it saved the extra step of converting the area code-exchange combination to the V-H file and then to latitude and longitude.

The Board made determinations about the state of the prior art, the ordinary skill in the art and what Riskin taught or suggested, finding that:

A person having ordinary skill in the art would understand from Riskin that existing ten-digit telephone numbers identify the location of a fixed-location telephone with a fairly high degree of precision. Riskin also teaches that the NPA-NNX number corresponds to a geographic location on a Cartesian grid, which in turn is a substitute for longitude and latitude. Riskin suggests the substitution of longitude and latitude for the V-H grid since they appear to be interchangeable . . . One would be further motivated to substitute the V-H coordinates for the NPA-NNX number since substitution would eliminate the need to look up the location separately. Each of these substitutions would simplify the telephone-location correspondence that is the focus of Riskin's invention. Such optimization would be within the routine skill of the art. Opinion of the Board, Appeal No. 94-3338 at pp.5-6 (emphasis added).

This court must give deference to the findings of fact made by the Board and can only overturn those findings if they are not based on substantial evidence. See Zurko, ___ U.S. at ____, 119 S. Ct. at 1823. "Substantial evidence is more than a mere scintilla . . . . [it is] such relevant evidence as a reasonable mind might accept as adequate to support a Conclusion." Consolidated Edison Co. v. National Labor Relations Board, 305 U.S. 197, 229, 59 S. Ct. 206, 217 (1938).

Greene has cited no evidence to contradict the Board's findings. Indeed, the Riskin patent clearly reveals that latitude and longitude are the basis for the V-H system and thus the NPA-NNX. Accordingly, Riskin expressly teaches using the NPA-NNX to identify the telephone's geographic location. Thus, there is ample evidence that Riskin teaches that latitude and longitude information is embedded in a telephone number and that a telephone number can be used to determine the caller's location, as called for in independent claims 1, 5, and 9.

Riskin, to be sure, does not explicitly suggest replacing the NPA-NNX with latitude and longitude. The information provided in Riskin about the V-H system, however, certainly does suggests that steps could be saved by using the latitude and longitude information directly rather than taking the extra steps of translating the information first to V-H and then to NPA-NNX. Cost and simplicity improvements are both factors that inherently motivate modification or combination of prior art references. See Motorola, Inc. v. Interdigital Tech. Corp.,121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489 (Fed. Cir. 1997). Thus, even though the Riskin patent does not explicitly discuss using latitude and longitude as a portion of the telephone number, the Board's finding that one of ordinary skill in the art would be motivated to create a system that includes a portion of the latitude and longitude information in a telephone number is well supported by the express disclosures in Riskin.

Greene further argues that had his claimed invention been obvious, Riskin would have used the simpler and less costly latitude and longitude system. Greene asks, "[h]ad it been obvious to a person of ordinary skill in the art, why then would Riskin choose a far more complicated system?" This is not a telling question in an obviousness inquiry. Obviousness does not require that the prior art explicitly teach the claimed invention, only that the claimed subject matter would have been obvious in view of the prior art to one skilled in the art. Riskin's failure to use the latitude and longitude system can be explained by a number of factors, independent of the obviousness of the subject matter. As discussed by the Board, replacing the current phone system with the numbering system proposed by Greene would not necessarily be desirable because it would entail significant conversion costs and would not provide services for mobile phones, unlisted phones and toll-free numbers. The Board correctly noted that an invention can be obvious without being desirable. Board Opinion at 6.

Accordingly, we hold that the Board did not err in finding that one of ordinary skill in the art would be motivated to optimize the utility of the telephone system in pinpointing a caller's location by substituting latitude and longitude for the current telephone numbering system.

II.

With regard to the dependent claims 3, 6, and 10, Greene argues that the requirement of a postal address, based on an entity's latitude and longitude, added in those claims, and specifically the requirement in 10 that the postal address and telephone number be identical, is not disclosed in, or suggested by, Riskin. The Commissioner argues, however, that the Riskin patent describes a correspondence between a telephone number and the geographic location of the telephone and teaches a correspondence between telephone number and zip code. Because the zip code can be likened to a postal address, and in some cases is a postal address, the Commissioner argues that a person of ordinary skill in the art would have deduced from Riskin that a telephone number corresponds to a zip code, which is part of a postal address. Thus according to the PTO, Riskin suggests that an entity's telephone number could be used as its postal address.

In reviewing claims 3, 6, and 10, the Board declared:

We have already found that the telephone/location number alone would have been obvious. Consequently, a telephone number according to claims, 1, 5, or 9 function as addresses [sic]. Whether they are sufficiently precise to function as a postal address depends on the granularity of the number. Board Opinion at 8. *fn1

In making its determination the Board found that the Riskin patent teaches a correspondence between zip code and telephone number. Indeed, the Riskin patent explicitly discusses the possibility of substituting zip code for telephone number in pinpointing a caller's location. U.S. Patent No. 4,757,267, Column 6, lines 50-66. Zip codes, as the Board noted, can serve as complete postal addresses in some cases. Thus, there is more than substantial evidence to support the Board's finding that the teachings in Riskin, in concert with the common knowledge of the zip code system, suggested or taught the use of a telephone number as a postal address. Accordingly, we hold that the Board's findings with regard to the dependent claims 3, 6, and 10 were based on substantial evidence and thus we do not disturb those findings.

Greene further argues that the Board found that Riskin was "directed at a different problem" than the Greene application and that "Riskin's granularity (1.5 miles) would not enable one to use the NPA-NNX as a postal address without additional adaptation." In light of these findings, Greene argues, the Board could not have properly found that the Riskin patent taught or suggested his claimed invention. Greene argues that because Riskin itself would not enable a person of ordinary skill in the art to use the disclosure in the manner he claims, the Board should not have concluded that the use in the manner he claims would have been obvious to one skilled in the art.

Whether a prior art reference "enables" a claimed use is not essential to a Conclusion of obviousness. Nor is use of a patent as a reference limited to what is described in the patent or to the problem that the cited patent is designed to address. Rather, references are "relevant for all they contain." In re Heck, 699 F.2d 1331, 1333, 216 USPQ2d 1038, 1039 (Fed. Cir. 1983).

Indeed, Greene does not argue that Riskin is not analogous prior art but only that it addressed a different problem. The need for adaptation of the reference, however, does not defeat obviousness, unless the adaptation is outside the skill or knowledge of one skilled in the art. Here, decreasing the granularity to produce a more exact location is an adaptation that is clearly within the skill or knowledge of one skilled in the art. The missing element, prior to the Greene application, was the desire to identify the postal address via phone number. (Given the relative efficiency of our current system of postal addresses, it is logical that no one would have attempted the costly redesign of the system, no matter how obvious or simplistic the solution.) Here Greene's proposed system was aimed at reducing the size of telephone directories, by removing the address line from the book. Greene's desire to reduce the directory size provided the motivation to decrease the granularity of the Riskin system. Thus, the very problem he was addressing provided the motivation to adapt Riskin.

For the reasons discussed above, we hold that the Board's Conclusion that Riskin does teach using a phone number to identify the location of a caller is based on substantial evidence. In addition we hold that the Board's finding that Riskin taught or suggested the use of the telephone number as a postal address is also based on substantial evidence. Thus, the PTO met its burden of establishing a prima facie case of obviousness for all of the independent and dependent claims.

III.

Once a prima facie case is made, the burden shifts to the applicant to present evidence of objective indicia of non-obviousness, such as evidence of commercial success, long-felt but unsolved needs, or failure of others. In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996). Greene presented no indicia of non-obviousness before the Board. Thus, it is upon the underlying factual findings about what is taught or suggested in Riskin and the extent of skill and knowledge in the prior art that the Board and this court must base their legal Conclusions about obviousness.

Obviousness is a question of law that is reviewed de novo by this court, but one based on fact. Greene does not argue, and we do not hold, that the Board incorrectly applied the law of obviousness to the underlying factual determinations. Greene essentially rests his case on deficiencies in the Board's fact finding. We conclude, however, that all findings are supported by at least substantial evidence.

CONCLUSION

Because we do not find factual or legal error in the Board's analysis, the decision of the Board upholding the rejection of the application claims as obvious is affirmed.


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