Ex Parte 5,255,309 et alDownload PDFPatent Trial and Appeal BoardSep 25, 201490012065 (P.T.A.B. Sep. 25, 2014) Copy Citation 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. 90/012,065 03/07/2012 5,255,309 A2DL-001/45US 305918-2026 1073 58249 7590 09/26/2014 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 EXAMINER RALIS, STEPHEN J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/26/2014 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 RONALD A. KATZ TECHNOLOGY LICENSING L.P. Appellant ____________ Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 Technology Center 3900 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 2 This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claim 46. Claims 11, 23–30, 32–35, 37, 41–45, and 47–58 are not subject to reexamination. (Order Granting Request for Ex Parte Reexamination 2, mailed May 11, 2012.) Claims 1–10, 12–22, 31, 36, and 38–40 have been cancelled in a previous reexamination proceeding. We have jurisdiction under §§ 134(b) and 306. An oral hearing scheduled for July 13, 2014, was waived. We affirm. STATEMENT OF THE CASE Reexamination Proceedings Three previous requests for ex parte reexamination of U.S. Patent No. 5,255,309 (the “’309 patent”) were filed on March 26, 2004, June 18, 2004, and January 20, 2006, and assigned Reexamination Control Nos. 90/006,976, 90/007,092, and 90/007,884, respectively. The reexamination proceedings were merged, resulting in the issuance of an Ex Parte Reexamination Certificate (8453rd) on August 9, 2011, US 5,255,309 C1, in which claims 1–10, 12–22, 31, 36, and 38–40 were cancelled. A subsequent request for ex parte reexamination of the ’309 patent was filed on March 7, 2012, and assigned Reexamination Control No. 90/012,065, which is the subject of this decision. The ’309 patent, entitled “Telephonic-Interface Statistical Analysis System,” issued October 19, 1993, to Ronald A. Katz, is said to be a division of Application No. 07/640,337, filed January 11, 1991, which is said to be a continuation of Application No. 07/335,923, filed April 10, 1989, which is said to be a Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 3 continuation of Application No. 07/194,258, filed May 16, 1988, now U.S. Patent No. 4,845,739, issued July 4, 1989. U.S. Patent No. 4,845,739 is said to be a continuation-in-part of Application No. 07/018,244, filed February 24, 1987, now U.S. Patent No. 4,792,968, issued December 20, 1988, which is said to be a continuation-in-part of Application No. 06/753,299, filed July 10, 1985, now abandoned. The ’309 patent is said to be assigned to Ronald A. Katz Technology Licensing L.P., described as the real party in interest. The ’309 patent is said to have an expiration date of December 20, 2005, by virtue of a terminal disclaimer. (App. Br. 5.) Thus, the ’309 patent is now expired. Appellant’s Invention Appellant’s invention relates to a telephonic-interface statistical analysis system including a multiplicity of individual terminals of a communications facility (’309 patent, Abstract; col. 4, ll. 25–26), processing systems and an associated series of automatic call distributors (col. 4, ll. 25– 28; Fig. 1). The communications facility is connected to the processing systems through the automatic call distributors. (Col. 4, ll. 25–28.) The processing systems include an interface with dialed number identification service (DNIS), automatic number identification (ANI) capability, and voice interface capabilities. (Col. 4, ll. 59–62.) The processing system can include a qualification unit (col. 10, ll. 29–30; Fig. 4) for screening callers (col. 5, ll. 25–26) and a designation unit (col. 10, ll. 31–32; Fig. 4) for designating callers by significance and identification (col. 5, ll. 35–54). The processing system can also be interconnected to an audio unit. (Col. 4, Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 4 ll. 45–48.) Callers using the individual terminals are prompted by voice- generated instructions to provide digital data that are stored for processing. (Abstract.) Related Litigation The ’309 patent is or has been involved in numerous litigations, as summarized in the Related Proceedings Appendix. (App. Br. 82–105.) The Claim Claim 46 is exemplary, with disputed limitations in italics: 46. A control system for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals may comprise a conventional telephone instrument including voice communication means, and digital input means in the form of an array of alphabetic numeric buttons for providing data, said control system comprising: an interface structure coupled to said communication facility to interface said remote terminals for voice and digital communication, and including means to provide caller data signals representative of data relating to said individual callers developed by sad remote terminals; voice generator structure coupled through said interface structure for actuating said remote terminals as to provide vocal operating instructions to said individual callers; record structure, including memory and control means, connected to receive said caller data signals from said interface structure for updating a file and storing digital caller data relating to said individual callers provided from said digital input means through said interface structure; and Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 5 qualification structure controlled by said record structure for testing caller data signals provided by a respective one of said individual callers to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement. The Rejections 1. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over Daudelin (US 4,797,910; Jan. 10, 1989) and Norris (Eileen Norris, Phone Offers Action at Push of Button, ADVERTISING AGE, Feb. 6, 1986, at 29-30). 2. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over Daudelin and Dilks (US 3,622,995; Nov. 23, 1971). 3. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over Barger (US 4,071,698; Jan. 31, 1978) and Norris. 4. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over Barger and Dilks. 5. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over Von Meister (US 5,199,062; Mar. 30, 1993) and Norris. 6. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious over Von Meister and Dilks. Appellant relies upon the following in rebuttal to the Examiner’s rejection: Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated December 14, 2012. Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 6 Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated August 18, 2013.1 ANALYSIS § 103 Rejection – Barger and Dilks We are unpersuaded by Appellant’s arguments (App. Br. 43–47, 53– 54; see also Reply Br. 3–4) that the combination of Barger and Dilks would not have rendered obvious independent claim 46, which includes the limitation “qualification structure . . . for testing caller data signals . . . to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement.”2 The Examiner found that the ticket or reservation number taught by Dilks corresponds to the limitation “to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement.” (Ans. 52–53, 124–27.) In particular, the Examiner found that “each ticket has a ticket code number which can be used a limited number of times; that is, once the ticket is used, the caller makes the flight, the ticket 1 We have considered the declaration evidence to the extent raised by Appellant’s arguments. This opinion only addresses arguments made by Appellant. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). 2 Because the ’309 patent is now expired, rather than applying the “broadest reasonable interpretation” standard, we review the claims of an expired patent similar to that of a district court’s review. In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 7 code number is consumed and cannot be used again.” (Ans. 53.) The Examiner concluded that [i]t would have been obvious . . . to incorporate the ticket code number of the Dilks et al. telephone reservation system including the consumable key test into the automated customer selected business/marketing system of the Barger et al. voice responsive system, in order to enable access to the data for checking, changing or automatic check-in customers. (Ans. 54.) We agree with the Examiner. Barger relates to “a system for marketing merchandise or services capable of being demonstrated to prospective customers over telephone lines . . . and for immediately accepting orders of selected merchandise or services.” (Col. 1, ll. 8–13.) According to Barger, [a] further object of the invention is to provide a system for permitting a customer to place orders for merchandise or services . . . and to arrange for payment by some credit account number or other means, whereupon the merchandise or services (or tickets for services) are dispatched to the customer by mail or other delivery service. (Col. 1, l. 65 to col. 2, l. 4.) “In the first mode [of Barger], the operator elicits required information from the customer, such as name and account number, demonstrations desired, and orders for the merchandise or services demonstrated . . . .” (Col. 2, ll. 33–37.) Barger explains that in a first mode “customer service operators [are] under control of the data processor.” (Col. 2, ll. 21–22.) In a second mode of Barger, an “automatic telephone service . . . causes the data processor to communicate with the customer through prerecorded messages played to the customer through the audio Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 8 repeating means and codes entered by the customer through his telephone keyboard.” (Col. 2, l. 65 to col. 3, l. 3.) To access the second mode, the operator can transfer a customer’s call (col. 2, ll. 65–67) or the customer can dial “a distinct telephone number for a line which the data processor recognizes as being from a customer who has a push-button telephone and wishes automatic telephone service” (col. 3, ll. 5–8). In a third mode, a modified automatic telephone service is provided to “customers of a licensed retailer of merchandise or services through the equivalent of push-button telephones” (col. 3, ll. 8–10), such that “[a] Touch-Tone control of demonstrations may be offered to customers of a subscribing record store or a department store” (col. 9, ll. 63–65). Barger further explains that “[t]he operator . . . greets the customer and elicits from the customer identification data such as name, address, and account or credit card number” and “keys the identification data into the data processor through the terminal 19 for credit verification and asks the customer what may be done for the customer.” (Col. 4, ll. 61–67.) Dilks relates to “on-line checking of numbered reservations and/or the control of credit card purchases, without referencing any data on the ticket or credit card itself.” (Abstract.) Dilks explains that data relating to a passenger’s airline itinerary includes a ticket or reservation number (i.e., the element mapped to the claimed “consumable participation key”) stored in a central control system (col. 7, ll. 20–30) such that “[t]he number read from the ticket or entered by keyboard is used as a code number for identifying and locating the reservation stored in the memory in these operations” (col. 7, ll. 34–37). Figure 6 of Dilks illustrates that a passenger 301 can Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 9 contact a reservation office 310 by telephone such that a reservation is sent to a central processor system 320. (Col. 8, ll. 13–16.) Dilks also explains that “[t]he ticket number may be used . . . as a key member for storage in an associative memory together with the data to enable access to the data for checking, changing or automatic check-in of the reservation.” (Col. 8, ll. 1– 6.) Furthermore, “[d]ata processor 290 may also be programmed to perform periodic checking of stored reservations for expired ticket time limits or expired confirmation time limits and other controls relevant to particular flights.” (Col. 6, ll. 69–73.) Because Dilks provides an explanation that the ticket or reservation number, which expires, can be used by the passenger to check, change or automatically check-in the reservation, Dilks teaches the limitation “to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement.” A person of ordinary skill in the art would have recognized that incorporating the ticket number of Dilks to reference a purchase with the telephone marketing system of Barger would improve Barger by providing the ability to subsequently call the marketing system with a ticket number to reference the appropriate order. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Alternatively, the combination of Barger and Dilks is nothing more than incorporating the known ticket number of Dilks to reference a purchase with the known telephone marketing system of Barger, to yield predictable results. Id. at 416. Thus, we agree with the Examiner (Ans. 54) that modifying Barger to incorporate the ticket number of Dilks would have been obvious to an ordinarily skilled artisan. Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 10 First, Appellant argues that Dilks does not disclose a “qualification structure controlled by said record structure for testing caller data signals provided by a respective one of said individual callers to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement.” (App. Br. 45 (emphasis in original).) In particular, Appellant argues that “Dilks does not disclose any ‘said system,’ namely the ‘control system’ recited in claim 46 including structures for an automated information exchange with a caller (such as a voice response system).” (Id.) However, the Examiner cited Barger for the qualification structure in general and Dilks in combination with Barger for the particular limitation “to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement.” (Ans. 51–53.) Second, Appellant argues that “[t]here is no cited description that the ticket code allows a caller access to a service or part of service a predefined limited number of times” and “[t]here is no cited disclosure in Dilks that a ticket code number has a lifespan or time limit.” (App. Br. 46.) Contrary to Appellant’s argument, the data processor 290 of Dilks periodic checks for expired ticket time limits (col. 6, ll. 69–73) and as found by the Examiner, because such ticket expires, the ticket number is only available from the time the reservation is made until the time the ticket expires (see Ans. 53). Third, Appellant argues that “[a] consumable key is effectively ‘consumed’ by use—it allows certain access a certain limited number of times” (App. Br. 47) and “[n]othing in Dilks discloses or suggests the Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 11 inventive concept of a telephonic participation key that is consumed by use” (Reply Br. 3). Contrary to Appellant’s arguments, as found by the Examiner, because Dilks relates to on-line checking of numbered airline reservations, the ticket or reservation number would be consumed when the passenger flight departs. (See Ans. 53.) Fourth, Appellant argues that “Dilks does not have a ‘voice response system’” and “Dilks merely has agents to enter reservation information into a computer system.” (App. Br. 53.) Accordingly, Appellant argues, “Barger endeavored to minimize the use of operators, therefore the approach in Dilks is not inviting.” (Id.) However, the Examiner cited Barger, rather than Dilks, for teaching the limitation of a “voice generator structure.” (Ans. 46.) Last, Appellant argues “Barger is directed toward the telemarketing of music” and “Dilks . . . is directed toward airline passenger and cargo control.” (App. Br. 53.) Accordingly, Appellant argues, “Barger and Dilks are non-analogous art” and “Barger and Dilks are not in the same field of endeavor (telemarketing versus airline reservations).” (Id.) The “Background and Summary of the Invention” section of the ’309 patent discloses that “[v]arious forms of publicly accessible communication systems for providing access to a central station have been proposed, some involving telecommunications” (col. 1, ll. 25–27) and “sometimes a need for ancillary functions arise in that regard, e.g. it may be desirable to positively identify . . . a specifically entitled group” (col. 1, ll. 28–31). Barger relates to “a system for marketing merchandise or services capable of being demonstrated to prospective customers over telephone lines . . . and for immediately accepting orders of selected merchandise or services.” (Col. 1, Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 12 ll. 8–13.) Dilks relates to “on-line checking of numbered reservations and/or the control of credit card purchases, without referencing any data on the ticket or credit card itself” (Abstract) and includes an embodiment in which a passenger 310 contacts a reservation office 310 by telephone (col. 8, ll. 13–16; Fig. 6). Therefore, both Barger and Dilks are from the same field of endeavor as Appellant’s claimed invention because each of these references relates to telecommunications with a central station coupled with identification of an entitled group (e.g., a customer using the telephone marketing system of Barger or an airline passenger using the numbered reservation system of Dilks). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Moreover, even assuming for the sake of argument that Barger and Dilks are not in the same field of endeavor, both references are reasonably pertinent to the particular problem with which the inventor is involved. The “Background and Summary of the Invention” section of the ’309 patent further discloses that “a need exists for an improved, effective, economical, and expedient system of telecommunication incorporating means for performing qualification, identification, analysis and selection of individual persons.” (Col. 1, ll. 38–42.) Barger explains that customers of the system for marketing merchandise are subjected to credit verification. (Col. 4, ll. 61–67.) Dilks explains that a passenger’s airline itinerary includes a ticket or reservation number. (Col. 7, ll. 20–30.) Therefore, both Barger and Dilks are reasonably pertinent to the particular problem with which the inventor is involved because each of these references solves the problem of qualifying (e.g., the credit verification of Barger for qualifying customers) or Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 13 identifying (e.g., the ticket or reservation number of Dilks for identifying an airline passenger) individual persons. See Bigio, 381 F.3d at 1325. Thus, we agree with the Examiner that the combination of Barger and Dilks would have rendered obvious independent claim 46, which includes the limitation “qualification structure . . . for testing caller data signals . . . to specify a consumable participation key for restricting the extent of access to said system to limit data stored from said respective one of said individual callers on the basis of entitlement.” Accordingly, we sustain the rejection of independent claim 46 under 35 U.S.C. § 103(a). Other § 103 Rejections We do not reach the rejections of claim 46 under 35 U.S.C. § 103(a) as obvious over various combinations of Daudelin, Norris, Dilks, Barger, and Von Meister. Affirmance of the obviousness-based rejection discussed previously renders it unnecessary to reach the remaining obviousness rejections, as all of pending claims have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). DECISION The Examiner’s decision rejecting claim 46 is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2014-006130 Reexamination Control 90/012,065 Patent 5,255,309 14 msc cc: Patent Owner: COOLEY LLP ATTN: PATENT GROUP 1299 PENNSYLVANIA AVENUE, NW SUITE 700 WASHINGTON, DC 20004 Third Party Requester: ORRICK, HERRINGTON & SUTCLIFFE, LLP IP PROSECUTION DEPARTMENT 2050 MAIN STREET, SUITE 1100 IRVINE, CA 92614 Copy with citationCopy as parenthetical citation