Ex Parte 5561707 et al

Patent Trial and Appeal Board

Sep 29, 2014

90012066 (P.T.A.B. Sep. 29, 2014)

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.
90/012,066 03/07/2012 5561707 A2DL-001/40US
305918-2018
2697
58249 7590 09/30/2014
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
09/30/2014 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
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.
90/012,132 02/07/2012 5561707 A2DL-001/41US
305918-2019
3349
58249 7590 09/30/2014
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
09/30/2014 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 2014-006147
Reexamination Controls 90/012,066 and 90/012,132 (merged)
Patent 5,561,707
Technology Center 3900
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claim 24, 128, and 129. Claims 1–8, 12, 13, 17, 25, 27, 36, 39–
41, 52, 60, 61, 66, 67, 69, 71–73, 75, 77–86, 88–95, 111–114, 116–118, 130,
133, 134, 136, 152, 171, and 201 are not subject to reexamination.
Claims 9–11, 14–16, 18–23, 26, 28–35, 37, 38, 42–51, 53–59, 62–65, 68, 70,
74, 76, 87, 96–110, 115, 119–127, 131, 132, 135, 137–151, 153–170, 172–
200, and 202–207 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-in-part.

STATEMENT OF THE CASE
Reexamination Proceedings
Two previous requests for ex parte reexamination of U.S. Patent
No. 5,561,707 (the ’707 patent) were filed on March 26, 2004 and June 10,
2004, and assigned Reexamination Control Nos. 90/006,978 and
90/007,074, respectively. The reexamination proceedings were merged,
resulting in the issuance of an Ex Parte Reexamination Certificate (7717th)
on September 7, 2010, US 5,561,707 C1, in which claims 9–11, 14–16, 18–
23, 26, 28–35, 37, 38, 42–51, 53–59, 62–65, 68, 70, 74, 76, 87, 96–110, 115,
119–127, 131, 132, 135, 137–151, 153–170, 172–200, and 202–207 were
cancelled.
Two subsequent requests for ex parte reexamination of the ’707 patent
were filed on March 7, 2012 and February 7, 2012, assigned Reexamination
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Control Nos. 90/012,066 and 90/012,132, respectively. The reexamination
proceedings were merged and are the subject of this decision.
The ’707 patent entitled “Telephonic-Interface Statistical Analysis
System,” issued October 1, 1996, to Ronald A. Katz, based on Application
No. 08/139,307, filed October 18, 1993, which is said to be a continuation of
Application No. 07/803,269, filed December 3, 1991, now U.S. Patent
No. 5,255,309, issued October 19, 1993, which is said to be a division of
Application No. 07/640,337, filed January 11, 1991, now abandoned, which
is said to be a continuation of Application No. 07/335,923, filed April 10,
1989, now U.S. Patent No. 6,016,344, issued January 18, 2000, which is said
to be a continuation of Application No. 07/194,258, filed May 16, 1988, now
U.S. Patent No. 4,845,739, issued July 4, 1989, which 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 ’707 patent is said to be assigned to Ronald A. Katz Technology
Licensing L.P., the real party in interest. The ’707 patent is said to have an
expiration date of December 20, 2005 by virtue of a terminal disclaimer.
(App. Br. 7.) Thus, the ’707 patent is now expired.

Appellant’s Invention
Appellant’s invention relates to a telephonic-interface statistical
analysis system including individual terminals of a communications facility,
in which callers are prompted by voice-generated instructions to provide
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digital data that is stored for processing. The caller’s identification data is
confirmed, and callers may be ranked and accounted for on the basis of
entitlement, sequence or demographics. Caller data is processed and
correlated to isolate a select group of callers who can be identified and
confirmed. (Abstract.)

Related Litigation
The ’707 patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix. (App. Br. 105–128.)

The Claims
Claims 24, 96, 128, and 129 are exemplary, with disputed limitations
in italics:
24. An analysis 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 analysis 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 said remote
terminals;
voice generator structure coupled through said interface
structure for actuating said remote terminals as to provide voice
operating instructions to said individual callers;
record structure, including memory and control means,
connected to receive said caller
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data signals from said interface structure for accessing a file and
storing digital caller data relating to said individual callers provided
from said digital input means through said interface structure; and
qualification structure for operation at a predetermined time for
testing caller data signals provided by at least one of said individual
callers to specify a consumable participation key for restricting the
extent of access to at least a portion of said system by said one of said
individual callers on the basis of entitlement.

96. An analysis 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 and wherein said communication facility has a
capability to provide call data signals indicative of calling number
identification data for at least certain of said individual callers, said
analysis control system comprising:
interface structure coupled to said communication facility to
interface each of said remote terminals for voice and digital
communication, and including means to provide signals representative
of data developed by said remote terminals and for receiving said
calling number identification data;
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 said interface structure for accessing a file and storing
data relating to certain select ones of said individual callers in
accordance with said calling number identification data;
qualification structure controlled by said record structure for
controlling access to said system by said individual callers; and
means for processing at least certain of said data developed by
said terminals and said calling number identification data relating to
certain select ones of said individual callers.
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128. A system according to claim 96, further comprising:
a data base for storing unacceptable numbers as negative file data.

129. A system according to claim 128, wherein said
qualification structure further executes a test for unacceptable
numbers based upon said data developed by said terminals.

The Rejections
1. Claim 24 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 24 stands rejected under 35 U.S.C. § 103(a) as obvious
over Barger (US 4,071,698; Jan. 31, 1978) and Norris.
3. Claim 24 stands rejected under 35 U.S.C. § 103(a) as obvious
over Von Meister (US 5,199,062; Mar. 30, 1993) and Norris.
4. Claim 128 stands rejected under 35 U.S.C. § 102(b) as
anticipated by De Bruyn (CA 1,162,336; Feb. 14, 1984).
1

5. Claims 128 and 129 stand rejected under 35 U.S.C. § 103(a) as
obvious over De Bruyn and Emerson (S. Thomas Emerson, Voice Response
Systems Technology to the Rescue for Business Users, SPEECH TECH. 99–103
(1983)).
6. Claims 128 and 129 stand rejected under 35 U.S.C. § 103(a) as
obvious over De Bruyn and Levine (US 4,531,023; July 23, 1985).

1
The Examiner has withdrawn the rejection of claim 129 under 35 U.S.C.
§ 102(b). (Ans. 73–74.)
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Appellant relied 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 (“Brody Declaration” or “Brody Decl.”).
Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated
August 14, 2013.
2

ANALYSIS
Claim 24
We are persuaded by Appellant’s arguments (App. Br. 12, 17–18, 33;
see also Reply Br. 2) that priority Application No. 06/753,299 (the “’299
application”), filed July 10, 1985, provides written description support for
the limitation “a consumable participation key for restricting the extent of
access to at least a portion of said system by said one of said individual
callers on the basis of entitlement,” and thus, Norris, published February 6,
1986, does not qualify as prior art.
3

The Examiner found that “[t]he concept of a ‘consumable
participation key’ with an unspecified use limit are entitled only to a [date
of] 16 May 1988 therefore 16 May 1988 is the earliest priority afforded [to]
claim 24 of the ’707 patent.” (Ans. 21 (citation omitted).) In particular,

2
This opinion only addresses arguments made by Appellant. Arguments
not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). We have
considered the declaration evidence to the extent raised by Appellant’s
arguments.
3
Because the ’707 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).
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[t]he Examiner finds, based on the doctrine of claim
differentiation, Appellant’s mere recitation to the restrictive
degree/amount of access to the system being a “one time only
use” in claim 102 is clear and sufficient evidence that the
restrictive degree/amount of access to the system in claim 24,
just as in claims 96, 97 and 101, is broader and is not explicitly
limited to a single use (i.e. an unspecified use-limit).
(Ans. 81.) Accordingly, the Examiner concluded, Norris qualifies as prior
art. (Ans. 21.) We do not agree.
Independent claim 24 recites “a consumable participation key for
restricting the extent of access to at least a portion of said system by said one
of said individual callers on the basis of entitlement.” However, claim 24
does not expressly recite the number of times such “consumable
participation key” can be used prior to its consumption. Furthermore,
because no other claims in the ’707 patent depend from claim 24 to further
limit its scope, the doctrine of claim differentiation when discussing
claim 102, which depends from independent claim 96, does not demonstrate
a difference in scope concerning independent claim 24. Accordingly, the
scope of the limitation, “for restricting the extent of access to at least a
portion of said system by said one said individual callers on the basis of
entitlement” on its face, remains unclear.
To resolve this ambiguity with respect to claim 24, we turn to the
specification of the ’707 patent, which claims priority to the ’299
application. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (the ordinary and customary meaning of a term may be evidenced by a
variety of sources, including “the remainder of the specification”). The ’299
application describes “an analysis and selection system for operation in
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cooperation with a public communication facility, e.g. a telephone system”
(p. 2, ll. 15–17), such that “if a select group of callers are to have access to
the system, a key test unit 23 qualifies individual callers who present a key
number” (p. 5, ll. 29–32 (emphasis added)). The ’299 application provides
the following two examples:
For example, a person might purchase a kit containing the
apparatus and instructions to perform various non-invasive
procedures to obtain data that could indicate a health condition,
e.g. pregnancy. The kit containing the apparatus could also
include a key number for qualifying the purchase to access the
computer 22. The qualification would be performed by the key
test unit 23 which might simply incorporate a look-up table to
check off key numbers as they are used or “consumed”.
(P. 7, ll. 22–31 (emphases added).)
As an alternative, if a selective-group polling operation is
performed, as mentioned above, the caller is qualified by
providing the “one-time” key number included in his package.
As indicated above, the unit 23 may incorporate a look-up table
for proper key numbers.
(P. 10, ll. 14–19 (emphases added).) Because the two examples provided by
the ’299 application describe incorporating a look-up table, in which key
numbers are checked off as they are “consumed,” the ’299 application only
provides written description support for a single-use “consumable
participation key.” Therefore, because claim 24 is ambiguous as to the
number of times the “consumable participation key” can be used, and
claim 24 cannot be amended due to patent expiration, we construe
“consumable participation key” as a single-use “consumable participation
key” to preserve validity. See Phillips, 415 F.3d at 1315-16 (indicating that
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the specification is highly relevant to claim construction analysis when there
is doubt or ambiguity).
Appellant argues that “the ‘299 application was not specifically and
narrowly directed to a one-time use invention.” (App. Br. 34.) In particular,
Appellant argues that “[t]he described health kit example disclosed the
concept of ‘consuming’ the key, regardless of how many uses it would take
to consume it” and “[t]he description of a ‘one time’ key, as opposed to the
general ‘key’ in the health kit embodiment, confirms that the invention was
not limited to just the ‘one time’ embodiment.” (Id.) Contrary to
Appellant’s arguments, the ’299 application discloses that “[t]he
qualification would be performed by the key test unit 23 which might simply
incorporate a look-up table to check off key numbers as they are used or
‘consumed’” (p. 7, ll. 28–31 (emphasis added)), which indicates that key
number are “consumed” only once (i.e., one-time use), when they are
checked off the look-up table.
However, we are persuaded by Appellant’s argument that “[a]ll of the
grounds of rejection of claim 24 are improper because they rely on
references that are not prior art to that claim” because “[c]laim 24 is entitled
to a priority date at least as early as its parent application priority date of
July 10, 1985” and “Norris, necessarily relied upon for all three grounds of
rejection, is dated February 1986.” (App. Br. 12.)
Therefore, we disagree with the Examiner that priority ’299
application does not provide written description support for a “consumable
key number” and thus, Norris does not qualify as prior art.
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Accordingly, we do not sustain the rejection of claim 24 under 35
U.S.C. § 103(a) over various combinations of Daudelin, Barger, or Von
Meister with Norris.

Claims 128 and 129
We are unpersuaded by Appellant’s arguments (App. Br. 57–58) that
the combination of De Bruyn and Emerson would not have rendered obvious
dependent claim 128, which includes the limitation “a data base for storing
unacceptable numbers as negative file data.”
The Examiner found that the voice response system of Emerson,
illustrated in Figure 2, and the periodically published list of stolen credit
card numbers of Emerson collectively corresponds to the limitation “a data
base for storing unacceptable numbers as negative file data.” (Ans. 64–65,
111–14.) We agree with the Examiner.
Emerson relates to “[s]ystems being installed today [that] can
authorize the acceptance of credit cards.” (P. 100, col. 1, para. 2.) Emerson
explains that without a voice response system, “complex and costly”
verification procedures include, for example, “[f]or small sales—low dollar
amounts—cards are checked by sales clerks using periodically published
listings of ‘hot’ (stolen) cards.” (Id., col. 2, para. 1; see also fig. 2.) “Voice
response technology, either in combination with terminals and electronic
cash registers or acting alone, gives a credit card issuer the means to
completely automate this entire operation.” (P. 100, col. 3, para. 3.)
Because Emerson explains that voice response technology can be used in
combination with terminals and electronic cash registers to automate credit
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card verification, which is inclusive of comparing a credit card number with
a list of stolen cards, Emerson teaches the limitation of “a data base for
storing unacceptable numbers as negative file data.”
Appellant argues that “Emerson discloses a paper based publication:
‘For small sales – low dollar amounts – cards are checked by sales clerks
using periodically published listings of “hot” (stolen) cards’” and “[t]his is
not any database for storing unacceptable numbers as negative file data.”
(App. Br. 57.) Similarly, Appellant argues that “Figure 2 of Emerson, which
describes not what the Examiner imagines, but in fact expressly describes
only ‘a much simpler credit card authorization process . . . using a voice
response system,’ that does not describe the required data base for storing
unacceptable numbers or any process for checking stolen numbers.” (App.
Br. 58.) Contrary to Appellant’s arguments and as discussed previously,
Emerson explains that voice response technology can be used in
combination with terminals and electronic cash registers to automate credit
card verification, which is inclusive of comparing a credit card number with
a list of stolen cards.
Thus, we agree with the Examiner that the combination of De Bruyn
and Emerson would have rendered obvious independent claim 128, which
includes the limitation “a data base for storing unacceptable numbers as
negative file data.”
We are also unpersuaded by Appellant’s arguments (App. Br. 58) that
the combination of De Bruyn and Emerson would not have rendered obvious
dependent claim 129, which includes the limitation “said qualification
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structure further executes a test for unacceptable numbers based upon said
data developed by said terminals.”
The Examiner found that the voice response system of Emerson,
illustrated in Figure 2, corresponds to the limitation “said qualification
structure further executes a test for unacceptable numbers based upon said
data developed by said terminals.” (Ans. 65, 114–16.)
Figure 2 of Emerson illustrates “a much simpler credit card
authorization process . . . using a voice response system” that includes credit
card authorizations. (P. 101, fig. 2.) Emerson further explains that
“[s]ystems being installed today can authorize the acceptance of credit cards
and checks” (p. 100, col. 1, para. 2) and that “[v]oice response technology,
either in combination with terminals and electronic cash registers or acting
alone, gives a credit card issuer the means to completely automate this entire
operation” (p. 100, col. 3, para. 3). Thus, Emerson teaches the limitation
“said qualification structure further executes a test for unacceptable numbers
based upon said data developed by said terminals.”
Appellant argues that “a paper publication listing credit card numbers
does not disclose the required ‘qualification structure’ element, which
executes a test for unacceptable numbers based upon data developed by
remote terminals” and “Figure 1 does not describe any qualification
structure based on information developed by a remote terminal (such as
touch-tone data).” (App. Br. 58.) However, as discussed previously, the
Examiner cited to Figure 2 of Emerson for teaching the limitation “said
qualification structure further executes a test for unacceptable numbers
based upon said data developed by said terminals.”
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Thus, we agree with the Examiner that the combination of De Bruyn
and Emerson would have rendered obvious independent claim 129, which
includes the limitation “said qualification structure further executes a test for
unacceptable numbers based upon said data developed by said terminals.”
We are not persuaded by Appellant’s arguments (App. Br. 59) that the
Examiner improperly combined De Bruyn and Emerson.
With respect to claim 128, the Examiner acknowledged that De Bruyn
does not disclose the limitation “a data base for storing unacceptable
numbers as negative file data” and thus, relied upon Emerson for
collectively teaching published lists of stolen cards and voice response
technology for credit card authorizations. (Ans. 64.) The Examiner
concluded that “it would have been obvious . . . to have the telephone
number check function of De Bruyn store a list of unacceptable or ‘hot’
telephone numbers stored as ‘negative file data’ to automatically compare to
the telephone number of a caller” and “to more rapidly and accurately
authorize a purchase order than could be provided by an operator manually
comparing the data’ against a negative file, while preventing financial
losses.” (Ans. 65–66.) We agree with the Examiner.
De Bruyn relates to “a device for permitting the use of the telephone
for immediately entering a gambling stake, right up to a short time before
the drawing of the winning numbers, on the Lotto or on any other authorized
game of chance.” (P. 1, ll. 1–5.) “[T]he subscriber selects the telephone
number which has been awarded to the Lotto game, whereby he is
automatically connected to the Lotto computer device.” (P. 4, ll. 20–23.) A
reply apparatus 8 conveys the following voice message:
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You are connected to the central computer of the national Lotto.
After hearing the first signal, please select your first chosen
number by means of the selector device of your telephone set.
After each signal you select the following numbers, in
arithmetic order. After your last choice of numbers, the
computer will repeat the chosen numbers. Best of luck, and
start now.
(P. 4, l. 28 to p. 5, l. 6.) Additionally, an extra memory 10 is referenced to
determine if “the phone number of the subscriber has already been recorded
for the current Lotto game.” (P. 5, ll. 11–14). A central computer 4 can
“identify the subscriber and charge him [for] the phone call and stake cost to
his usual telephone bill.” (P. 6, ll. 24–26.)
A person of ordinary skill in the art would have recognized that
incorporating the automated credit card authorization process of Emerson,
which includes retaining a list of stolen (or unauthorized) cards, with the
device of De Bruyn, for playing Lotto via telephone, to produce a list of
unauthorized telephone numbers that would provide the benefit of
preventing fraud. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Thus, we agree with the Examiner (Ans. 65–66) that modifying De
Bruyn to incorporate the list of stolen (or unauthorized) credit cards numbers
of Emerson, to produce a list of unauthorized phone numbers, would have
been obvious.
Appellant argues that “[t]here is no motivation to combine De Bruyn
and Emerson because they are so dissimilar in their contexts, goals, needs,
constraints and problems to be solved.” (App. Br. 59.) To support this
position, Appellant points to paragraphs 9–15 of the Brody Declaration.
(Id.)
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One relevant portion of the Brody Declaration states that “it would not
have been obvious at the time of the invention to modify the De Bruyn
disclosure as asserted” because “De Bruyn does not use credit cards for its
lottery system operation.” (Brody Decl. ¶ 11.) Similarly, the Brody
Declaration states that “[u]sing credit cards for lottery payments would have
been fundamentally contrary to De Bruyn’s system and objectives and
would have led to unpredictable results” because “[i]t would have been
counter-productive and costly to re-design the De Bruyn system to charge
lottery payments through third party credit card companies and
authorizations.” (Brody Decl. ¶ 12.) However, the statements in the Brody
Declaration relied upon by Appellant lack persuasive factual support
because the Brody Declaration does not cite to sufficient corroborating
evidence. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992)
(“[D]eclarations themselves offer only opinion evidence which has little
value without factual support.”). Additionally, the statements presented in
the Brody Declaration do not directly rebut the Examiner’s modification of
De Bruyn, which is based upon creating a list of unauthorized phone
numbers to prevent fraud. (See Ans. 65–66.)
The Brody Declaration further states that “a subscriber would have a
telephone number which could not be ‘stolen’ like a credit card number” but
“[t]he problem to be solved by Emerson – screening credit card numbers for
stolen or ‘hot’ numbers – was not a problem in De Bruyn, and did not have
any application to De Bruyn’s context.” (Brody Decl. ¶ 13.) Similarly, the
Brody Declaration states that
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[e]ven if the telephone company were to maintain any
additional “negative” flag or information regarding the
telephone number . . . , the telephone company would be
understood to check that number’s billing or account records
individually as part of their usual billing process for any such
“negative” indication specific to that number or account.
(Brody Decl. ¶ 14.) Accordingly, the Brody Declaration argues, “[t]here
would be no reason to incur the expense and unpredictability of attempting
to create and maintain a current list of all ‘negative’ telephone numbers that
would separately be referenced in the process, which would only increase
cost and unpredictability regarding the current maintenance of the list.” (Id.)
Again, the statements in the Brody Declaration relied upon by Appellant
lack persuasive factual support because the Brody Declaration does not cite
to sufficient corroborating evidence. See Beattie, 974 F.2d at 1313.
Additionally, De Bruyn explains that restrictions are placed on the number
of times the Lotto game can be played per week from each phone number
because the extra memory 10 of De Bruyn is referenced to determine if “the
phone number of the subscriber has already been recorded for the current
Lotto game.” (P. 5, ll. 11–14.) Emerson explains that one method of
detecting unauthorized numbers (e.g., credit cards numbers) is to maintain
lists of such unauthorized numbers. (See p. 100, col. 2, para. 1; see also
fig. 2.) Accordingly, as discussed previously, the combination of De Bruyn
and Emerson is based on the improvement of the De Bruyn device in the
similar way, as taught by Emerson, to produce a list of unauthorized
telephone numbers.
Appellant further argues that “this built-in payment mechanism [of De
Bruyn] is critical to cover ‘the relatively high cost of investment for putting
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to use this device’” and “De Bruyn teaches away from an alternate billing
mechanism, such as the use of credit cards, as taught by Emerson.” (App.
Br. 59.) However, Examiner’s modification of De Bruyn was based upon
storing a list of unauthorized phone numbers to prevent fraud, rather than
substituting credit card payments for telephone billing. (See Ans. 65–66.)
As such, the combination does not teach an alternative billing mechanism.
Therefore, the Examiner has properly combined De Bruyn and
Emerson to reject dependent claims 128 and 129 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of dependent claims 128 and
129 under 35 U.S.C. § 103(a).
We do not reach the additional rejections of claims 128 and 129 under
35 U.S.C. § 102(b) as anticipated by De Bruyn and under § 103(a) as
obvious over De Bruyn and Levine. Affirmance of the obviousness-based
rejections 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 24 is reversed.
The Examiner’s decision rejecting claims 128 and 129 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-IN-PART

Appeal 2014-006147
Reexamination Controls 90/012,066 and 90/012,132 (merged)
Patent 5,561,707

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