Ex Parte 5351285 et al

Patent Trial and Appeal Board

Sep 27, 2012

90008057 (P.T.A.B. Sep. 27, 2012)

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.
90/008,057 05/22/2006 5351285 A2DL-002/03US
305918-2017
8657
58249 7590 09/28/2012
COOLEY LLP
ATTN: Patent Group
Suite 1100
777 - 6th Street, NW
WASHINGTON, DC 20001
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2012 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 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285
Technology Center 3900
____________

Before SCOTT R. BOALICK, KEVIN F. TURNER, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285

2
Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal entered June 6, 2011 (“Decision”), which affirmed the
Examiner’s final rejection of claim 54.
The Request for Rehearing has been considered. We grant the
Request for Rehearing to modify the original Decision as follows:
The sentence at page 21, lines 22-25, of the Decision is replaced with
the following:
Barger teaches that in the first mode, an audio-program repeater
plays a “hello” message before a customer speaks to a customer
service operator. (FF 4.) Furthermore, Barger teaches that the
customer can initially access the first mode and request the
operator to transfer the customer’s call to access the second
mode (i.e., Barger teaches a “means for reconnecting said call
to said interface means”). (FF 2.)
In addition, the sentence at page 22, lines 19-23, of the Decision is
replaced with the following:
However, as discussed previously, the customer’s call is
initially answered by an audio-program repeater that plays a
“hello” message before the customer speaks to the customer
service operator such that the customer can request transferring
the call to access the second mode. (Ans. 17, 27-29; FF 2, 4.)
The Request for Rehearing is otherwise denied. Accordingly, the Request
for Rehearing is granted-in-part.

DISCUSSION
Claim limitation – “a plurality of live operator attended terminals with
prompting capability for a plurality of formats”
In view of a Federal Circuit opinion, In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1320-22 (Fed. Cir. 2011)
(addressing the claim term “format” with respect to claim 34 of related U.S.
Appeal 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285

3
Patent No. 5,974,120), Appellant urges that the term “format” should be
construed as “‘different’ telephone call processing flows, where the content
and sequence of steps [that] are different must be considered as different
‘formats.’” (Req. for Reh’g 5.) Furthermore, in view of a District Court
summary judgment order, Ronald A. Katz Tech. Licensing, L.P. v. Time-
Warner Cable, Inc., No. CV 2:07-ML-01816-B-RGK (FFMx), slip op. at
42-43 (C.D. Cal. Aug. 13, 2009) (interpreting the claim term “format” with
respect to dependent claim 61 of U.S. Patent No. 5,351,285), Appellant also
urges that the claim limitation “live operator attended terminals with
prompting capability” should be interpreted as “stations or terminals
attended by human operators that prompt the operators” such that “[t]he
prompts may or may not be related to prompts used in automated formats.”
(Req. for Reh’g 15 (citation omitted).)
In view of “the correct interpretation of the term ‘format,’” Appellant
argues that “[a] combination of Barger and VCT does not disclose ‘live
operator attended terminals with prompting capability for a plurality of
formats,’ where each format is a distinct call processing flow with a certain
content and sequence of steps for interacting . . . with callers.” (Id.) In
particular, Appellant argues that “[i]n its text accompanying Figure 3b,
Barger mentions that an operator can ‘step in and advance the transaction’
through the use of ‘prompting questions by the CPUs’” but “the disclosure is
not in the context of a plurality of formats as recited in claim 54.” (Id.)
Appellant further argues that:
The Board indicated that the first mode of Barger (i.e.,
customer communication with the operator) and the second
mode of Barger (i.e., customer communicates with the
automatic telephone service), a particular automated “hello”
Appeal 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285

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message is played for the customer. However, again, the
“operator” in the first mode of Barger is quite different from the
claimed operator attended terminal with prompting capability
for a plurality of formats.
(Id. at 16 (citation omitted).)
However, page 7, lines 2-11, of the Decision (i.e., FF 2) describes the
first mode and second mode of Barger, as follows:
“In the first mode, 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. 34-37.) In the second
mode, the “automatic telephone service . . . causes the data
processor to communicate with the customer through
prerecorded messages played to the customer through the audio
repeating means and codes entered by the customer through his
telephone keyboard.” (Col. 2, l. 66 to col. 3, l. 3.) To access
the second mode, the operator can transfer a customer’s call
(col. 2, ll. 65-67).
Thus, even if we adopted the claim construction advocated by Appellant,
Barger nevertheless teaches the claim limitation “plurality of formats”
because the first mode (i.e., the customer communicates with the operator)
and the second mode (i.e., the customer communicates with the automatic
telephone service) of Barger have different telephone call process flows,
where the content and sequence of steps are different. Furthermore, page 8,
line 19, to page 9, line 2, of the Decision (i.e., FF 4) describes the first mode
of Barger, as follows:
“The data processor 10 is programmed with an interrupt routine
to respond to each signal received from the automatic
answering device 11 and automatically connect the customer’s
telephone line via a [data] coupler 13 to a predetermined one of
a plurality of audio-program repeater [17] channels which plays
a ‘hello’ message explaining that a customer service operator
Appeal 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285

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will be with the customer in a moment.” (Col. 4, ll. 10-17; “GO
OFF-HOOK & CONNECT TO ‘HELLO’ MSG.,” fig. 3a.)
(Emphasis added.) In other words, Barger teaches that in the first mode, an
audio-program repeater plays a “hello” message before a customer speaks to
a customer service operator. (FF 4.) Furthermore, Barger teaches that the
customer can access the second mode by initially accessing the first mode
and requesting the operator to transfer the customer’s call. (FF 2.) Again,
even if we adopt the claim construction advocated by Appellant, Barger
nevertheless teaches the claim limitation “live operator attended terminals
with prompting capability” because both the first mode and the second mode
of Barger include stations or terminals attended by human operators that
prompt the operators.
Claim limitation – “a multiple port, multiple format processor for
concurrently processing data from a substantial number of callers in any of a
plurality of formats”
Next, Appellant argues that “the vague citations in VCT 86 fail to
show any multiple port, multiple format processor capable of processing
data in any of a plurality of formats or even an introductory message relating
to a specific format from the plurality of formats” and that “[t]he Board’s
Decision does not explain how there is any introductory message relating to
a specific format from the plurality of formats.” (Req. for Reh’g 16.)
These are new arguments and evidence not raised in the Briefs before
the Board. Such new arguments will not be considered. “Arguments not
raised in the briefs before the Board and evidence not previously relied upon
in the brief and any reply brief(s) are not permitted in the request for
rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this
section.” 37 C.F.R. § 41.52(a)(1). Appellant has not identified a sufficient
Appeal 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285

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reason for meeting one of these exceptions. Furthermore, the Examiner’s
Answer cited Barger for teaching this claim limitation, rather than VCT.
(Ans. 8-10.)
Claim limitation – “means for reconnecting said call to said interface means
to receive certain processed data via an automated voice message”
Last, Appellant argues that “Barger simply does not disclose that a
caller is first connected to an automated interface, then connected with an
operator, and then reconnected with the automated interface to receive
processed data.” (Req. for Reh’g 17.) In particular, Appellant argues that
the “purported disclosure of ‘switching the line back to the operator,’ or in
other words ‘[w]hen the demonstration has been completed, a data
processor 10 switches the line back to the customer service operator 18.’ . . .
would be one of connecting a call to a live operator, not reconnecting a call
to an automated interface means.” (Id. at 16-17 (citation omitted).)
Upon consideration of Appellant’s arguments, we modify the original
Decision to replace the sentence at page 21, lines 22-25, with the following:
Barger teaches that in the first mode, an audio-program repeater
plays a “hello” message before a customer speaks to a customer
service operator. (FF 4.) Furthermore, Barger teaches that the
customer can initially access the first mode and request the
operator to transfer the customer’s call to access the second
mode (i.e., Barger teaches a “means for reconnecting said call
to said interface means”). (FF 2.)
We further modify the original Decision to replace the sentence at page 22,
lines 19-23, with the following:
However, as discussed previously, the customer’s call is
initially answered by an audio-program repeater that plays a
“hello” message before the customer speaks to the customer
service operator such that the customer can request transferring
the call to access the second mode. (Ans. 17, 27-29; FF 2, 4.)
Appeal 2010-006516
Reexamination Control No. 90/008,057
U.S. Patent No. 5,351,285

7
Accordingly, Barger teaches a “means for reconnecting said call to said
interface means to receive certain processed data via an automated voice
message.”

CONCLUSIONS
The Request for Rehearing has been considered. As discussed
previously, we grant the Request for Rehearing to modify page 21, lines 22-
25 and page 22, lines 19-23, of the original Decision. The Request for
Rehearing is otherwise denied. Accordingly, the Request for Rehearing is
granted-in-part.
Requests for extensions of time are governed by 37 C.F.R. § 1.550(c).
See 37 C.F.R. § 41.52(b).

REHEARING GRANTED-IN-PART

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