Ex parte ALBERTSON - Page 6

          Appeal No. 96-0667                                                          
          Application 08/061,249                                                      

                    While the examiner takes the position that billing the            
          cost of advertising associated with each selected pay telephone             
          is not a patentable distinction over the prior art because the              
          type of, or frequency of, billing is merely "a contractual                  
          agreement set between two parties" [answer, page 4], we agree               
          with appellant that "[t]his is a process step defined in the                
          claims and not a contractual agreement" [brief, page 9].                    
          Especially in view of any suggestion by the applied references to           
          render a statement regarding the cost of advertising associated             
          with individually selected pay telephones and in view of the                
          advantages obtained by the instant claimed invention in terms of            
          cost effectiveness information for business operators regarding             
          advertising at individual pay telephone locations, the examiner's           
          contention that the method of billing is simply an obvious                  
          contractual agreement between parties appears to be founded on              
          impermissible hindsight employing appellant's disclosure as a               
                    Hird is applied by the examiner with regard to claims 7           
          through 12 to show "smart" pay telephones and while we agree that           
          it would have been obvious to apply the teachings Davis and/or              
          Smith to "smart" pay telephones, Hird does not provide for the              
          deficiencies of Davis and Smith regarding rendering a statement             


Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007