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 guide. 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 -6-Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007