Ex Parte 5898762 et al

Patent Trial and Appeal Board

Mar 31, 2014

90012376 (P.T.A.B. Mar. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/012,376 06/27/2012 5898762 A2DL-004/00US
305918-2027
5717
58249 7590 04/01/2014
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2014 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 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762
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 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of dependent claims 30, 32, 45, and 67. Claims 1-29, 31 33-44, 46-
66, and 68-70 are not subject to reexamination. We have jurisdiction under
§§ 134(b) and 306. An oral hearing scheduled for April 2, 2014 was waived.
We affirm.

STATEMENT OF THE CASE
Reexamination Proceedings
A request for ex parte reexamination of U.S. Patent No. 5,898,762
(the ’762 patent) was filed on June 27, 2012, requesting the reexamination of
dependent claims 30, 32, 45, and 67, and assigned Reexamination Control
No. 90/012,376.
The ’762 patent, entitled “Telephonic-Interface Statistical Analysis
System,” issued April 27, 1999 to Ronald A. Katz, is said to be a divisional
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-
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 ’762 patent is said to be assigned to Ronald A. Katz Technology
Licensing L.P., which is said to be the real party in interest. (App. Br. 4.)
The ’762 patent is said to have expired on December 20, 2005 by virtue of a
terminal disclaimer. (App. Br. 5.)
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

3
Appellant’s Invention
Appellant’s invention relates to a system that interfaces with a
multiplicity of individual terminals T1-Tn of a telephone network facility C,
such that callers are prompted by voice-generated instructions to provide
digital data that is identified for positive association with a caller and is
stored for processing. (Abstract; fig. 1.)

Related Proceedings
The ’762 patent is or has been involved in numerous related
proceedings, as summarized in the Related Proceedings Appendix. (App.
Br. 49-76.)

The Claims
Claims 30 and 32, which depend directly or indirectly from claim 17,
are exemplary and are reproduced below with disputed limitations in italics:
17. An analysis control system for use in a mail order facility
or the like, said analysis control system for use with a communication
facility including remote terminals for individual callers, wherein each
of said remote terminals comprises voice communication means and
digital input means in the form of an array of buttons for providing
data, comprising:
interface structure coupled to said communication facility to
interface said remote terminals for voice and digital communication
and including means to provide answer data signals provided by said
individual callers from said remote terminals including signals
indicative of an individual caller’s customer number and credit card
number;
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

4
credit verification structure to verify said individual caller’s
customer number and credit card number to determine said individual
caller’s credit;
record structure including memory and control means
connected to said interface structure to receive and store data provided
by said individual callers;
acknowledgement generator structure for providing a computer
generated acknowledgement number to said individual callers;
switching structure for transferring certain of said individual
callers to a live operator; and
central processing station coupled to said record structure to
receive data on said individual callers.

30. An analysis control system according to claim 17,
wherein said communication facility automatically provides signals
indicative of calling terminal digital data for at least certain of said
individual callers.
32. An analysis control system for use with a communication
facility according to claim 30 wherein the calling digital data controls
at least certain aspects of said interface based on at least a portion of
said caller’s telephone number.

The Rejections
Claims 30, 32, and 67 stand rejected under 35 U.S.C. § 103(a) as
obvious over Barger (US 4,071,698; Jan. 31, 1978), Yoshizawa (Kanichiro
Yoshizawa et al., Voice Response System for Telephone Betting, 26 HITACHI
REV. 215-220 (1977)), and Friedes (A. Friedes et al., ISDN Opportunities for
Large Businesses – 800 Customer Service, IEEE INT’L CONF. ON COMM. 29-
32 (1986)).
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

5
Claim 45 stands rejected under 35 U.S.C. § 103(a) as obvious over
Barger and Yoshizawa.
Appellant relied upon the following1 in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated
January 23, 2013

ANALYSIS
§ 103 Rejection – Barger, Yoshizawa, and Friedes
Initially, we note that Appellant’s arguments in the Appeal Brief and
Reply Brief are primarily directed towards the limitations of independent
claims 17, from which claims 30 and 32 depend. Claim 17 is not subject to
reexamination or on appeal.
With respect to the first disputed limitation, we are unpersuaded by
Appellant’s arguments (App. Br. 19-21; see also Reply Br. 4-6) that the
combination of Barger, Yoshizawa, and Friedes would not have rendered
obvious independent claim 17, which includes the limitation “interface
structure . . . including means to provide answer data signals . . . including
signals indicative of an individual caller’s customer number and credit card
number.”
The Examiner found that the second mode of Barger (i.e., a telephone
system featuring an automatic telephone service), corresponds to the

1 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.

Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

6
limitation “interface structure . . . including means to provide answer data
signals . . . including signals indicative of an individual caller’s customer
number and credit card number.” (Final Office Action 3 (citing Req. for
Reexamination 12-13); Ans. 4-6). In particular, the Examiner found that
because “Barger teaches the use of either [account or credit card number], it
would have been obvious to use both to provide an additional layer of
security.” (Final Office Action 8.) 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.” (Col. 1, ll. 8-10.) 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, line 65 to col. 2, lines 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. 34-37.) Barger 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.)
Barger further explains that “another object is to provide a telephone
system for customer selected audio demonstrations without human
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

7
intervention in operation.” (Col. 2, ll. 13-15.) 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 repeating means and codes entered by the
customer through his telephone keyboard.” (Col. 2, l. 65 to col. 3, l. 3.)
Furthermore, “[a]lthough the telephone record marketing system . . . has
relied upon a human customer service operator for customer
communications, the functions of the customer service operator may be
replaced by programmed subroutines in the data processor and messages
prerecorded on channels of the audio program repeater” such that “[t]he
customer responds by keying codes into the data processor through a
pushbutton telephone.” (Col. 6, ll. 35-43.) 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).
Modifying Barger such that the telephone record marketing system
requires both account and credit card number is nothing more than
incorporating one known method of customer identification (i.e., account
number) with another known method of customer identification (i.e., credit
card number), to yield predictable results (e.g., added security). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we agree with the
Examiner (Final Office Action 8) that modifying Barger, such that the
telephone record marketing system elicits both account and credit card
number, would have been obvious.
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

8
Appellant argues that “Barger does not disclose any caller entry of a
credit card number at all—it describes only that a live operator would
receive the spoken credit card number from the caller.” (App. Br. 19.)
Similarly, Appellant argues that “[a]t best, Barger would suggest only the
receipt of either one of the customer number or credit card number.” (App.
Br. 20.) However, the Examiner acknowledged that the marketing system of
Barger elicits either account or credit card number. (Final Office Action 8.)
Instead, the rejection of claim 17 was based on modifying Barger to require
the marketing system to elicit both account and credit card number. (Id.)
Appellant also argues that “[t]here was simply no reason to require the
caller to enter both the account number and credit card number in Barger[,]”
because “it would have been inconvenient to the caller to require entry of
both numbers, which would have run contrary to Barger’s goals of
increasing demonstrations and sales with a convenient service, and . . .
Barger’s music demonstration system evinces no concern about ‘security’ at
all.” (Reply Br. 5.) However, Appellant does not provide any persuasive
evidence to support this position. Arguments of counsel cannot take the
place of factually supported objective evidence. See, e.g., In re Huang, 100
F.3d 135, 139-140 (Fed. Cir. 1996).
Appellant further argues that “it is clear that Barger is not attempting
to suggest that each and every specific action that a live operator does can be
replaced by an equivalent push-button automated-interface function” and
thus, “Barger does not disclose or suggest that the caller enters a credit card
number; this is solely an operator function.” (App. Br. 21; see also Reply
Br. 4.) Contrary to Appellant’s arguments, Barger explains that “another
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

9
object [of the invention] is to provide a telephone system for customer
selected audio demonstrations without human intervention in operation.”
(Col. 2, ll. 13-15.)
Thus, we agree with the Examiner that the combination of Barger,
Yoshizawa, and Friedes would have rendered obvious independent claim 17,
which includes the limitation “interface structure . . . including means to
provide answer data signals . . . including signals indicative of an individual
caller’s customer number and credit card number.”
With respect to the second disputed limitation, we are unpersuaded by
Appellant’s arguments (App. Br. 21-25) that the combination of Barger,
Yoshizawa, and Friedes would not have rendered obvious independent
claim 17, which includes the limitation “credit verification structure to verify
said individual caller’s customer number and credit card number to
determine said individual caller’s credit.”
The Examiner found that the credit verification function of Barger
corresponds to the limitation “credit verification structure to verify said
individual caller’s customer number and credit card number to determine
said individual caller’s credit.” (Final Office Action 3 (citing Req. for
Reexamination 14-15).) We agree with the Examiner.
Barger 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.) Furthermore,
“[a]lthough the telephone record marketing system . . . has relied upon a
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

10
human customer service operator for customer communications, the
functions of the customer service operator may be replaced by programmed
subroutines in the data processor and messages prerecorded on channels of
the audio program repeater[,]” such that “[t]he customer responds by keying
codes into the data processor through a pushbutton telephone.” (Col. 6,
ll. 35-43.) Accordingly, Barger explains that the credit verification function
performed by the operator can be replaced by prerecorded messages, such
that the customer responds using a pushbutton telephone (i.e., an automated
credit verification function). As discussed previously, modifying Barger,
such that the telephone record marketing system elicits both account and
credit card number, would have been obvious. See KSR, 550 U.S. at 416.
Thus, Barger teaches a “credit verification structure to verify said individual
caller’s customer number and credit card number to determine said
individual caller’s credit.”
Appellant argues that “Barger does not disclose the required credit
verification based on either a caller’s caller-entered customer number or a
caller-entered credit card number to verify the individual caller’s credit, let
alone both as the claims require.” (App. Br. 22.) Again, the Examiner
acknowledged that the marketing system of Barger elicits either account or
credit card number. (Final Office Action 8.) Instead, the rejection of
claim 17 was based on modifying Barger to require the marketing system to
elicit both account and credit card number. (Id.) We refer to our above
discussion for more detail.
Thus, we agree with the Examiner that the combination of Barger,
Yoshizawa, and Friedes would have rendered obvious independent claim 17,
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

11
which includes the limitation “credit verification structure to verify said
individual caller’s customer number and credit card number to determine
said individual caller’s credit.”
With respect to the third disputed limitation, we are unpersuaded by
Appellant’s arguments (App. Br. 31-32; see also Reply Br. 7-8) that the
combination of Barger, Yoshizawa, and Friedes would not have rendered
obvious dependent claim 32, which includes the limitation “the calling
digital data controls at least certain aspects of said interface based on at least
a portion of said caller’s telephone number.”
The Examiner found that the station identification automatic number
identification (SID/ANI) feature for the 800 Service of Friedes corresponds
to the limitation “the calling digital data controls at least certain aspects of
said interface based on at least a portion of said caller’s telephone number.”
(Final Office Action 3 (citing Req. for Reexamination 18).) The Examiner
concluded that “[i]t would have been obvious . . . to combine these teachings
with Yoshizawa and Barger as this would allow for retrieval of additional
data to provide a more efficient or personalized service to the caller, as
taught by Friedes.” (Final Office Action 3; Ans. 11.) We agree with the
Examiner.
Friedes relates to a review of “Advanced 800 features and some ISDN
[Integrated Services for Digital Network] capabilities of special interest to
800 Service customers.” (P. 28, § 1.) Friedes explains that “[t]he network
. . . remains unaware of conditions (e.g., the availability of attendants) at
these customer locations” and that “[h]uman intervention is generally
necessary to modify the routing of calls to better satisfy the needs of
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

12
customers who could integrate conditions at each of the locations into a
single coherent picture.” (P. 28, § 2.) Friedes also explains that with the
station identification or automatic number identification (SID/ANI) feature,
“the terminating customer can be provided with the identity of caller’s
station.” (§ 4.1.) Friedes further explains that “[b]ased on information
either associated with or received from the caller, systems at the 800
customers’ premises could retrieve additional data about the caller for more
efficient or more personalized service,” for example, “forwarding of
SID/ANI to the 800 customer.” (§ 5.3.) Thus, Friedes teaches the limitation
“the calling digital data controls at least certain aspects of said interface
based on at least a portion of said caller’s telephone number.”
Appellant argues “Friedes discloses that ANI is used in connection
with a live operator service, to ‘retrieve additional data about the caller for
more efficient or more personalized service.’” (App. Br. 32; see also Reply
Br. 7.) However, according to Friedes, the ANI feature is used to provide
the identity of caller’s station to the terminating customer and Friedes does
not expressly require the ANI feature to be used in combination with live
operators. (See § 4.1.)
Thus, we agree with the Examiner that the combination of Barger,
Yoshizawa, and Friedes would have rendered obvious dependent claim 32,
which includes the limitation “the calling digital data controls at least certain
aspects of said interface based on at least a portion of said caller’s telephone
number.”
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

13
We are not persuaded by Appellant’s arguments (App. Br. 25-30; see
also Reply Br. 6-7) that the Examiner improperly combined Barger,
Yoshizawa, and Friedes.
The Examiner found that the registration number of Yoshizawa
correspond to the limitation “acknowledgement generator structure for
providing a computer generated acknowledgement number to said individual
callers.” (Final Office Action 3 (citing Req. for Reexamination 13-14).)
The Examiner concluded that it would have been obvious to combine Barger
and Yoshizawa. (Id.) We agree with the Examiner.
Yoshizawa relates a telephone betting system that uses a voice
response unit (VRU) to automate the sale of parimutuel tickets. (P. 215,
col. 1, para. 4.) The telephone betting system includes a public telephone
network, the voice response unit and a central processing unit. (P. 215,
col. 2, para. 6; fig. 1.) Table 1(a) provides an overview of typical input
items and voice responses for placing a bet. After calling the telephone
betting center, a subscriber is prompted for a “subscriber number” and
“password number.” (Table 1, “(a) When making a bet,” Item 1.) After
placing a bet (Table 1, “(a) When making a bet,” Item 2 and Item 3), a
“voice output to push-button telephone” provides a “registration time”
(Table 1, “(a) When making a bet,” Item 5) and a “registration number”
(Table 1, “(a) When making a bet,” Items 5, 6). Yoshizawa further explains
that other applications of the voice response unit include, for example,
telephone charge services, seat reservation systems, hotel and hospital
reservation systems, or order entry. (P. 220, col. 1, para. 3.)
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

14
The combination of Barger and Yoshizawa is nothing more than
incorporating the known VRU of Yoshizawa, including the “registration
number” feature, with the known marketing system of Barger, to yield
predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Thus, we agree with the Examiner (Final Office Action 3) that
modifying Barger to incorporate the “registration number” feature of
Yoshizawa would have been obvious.
Appellant argues that “[t]he registration number is, instead, a feature
highly specific to the horse race betting application” and “[w]here the
underlying VRU equipment would be used in any of the other different
applications Yoshizawa notes . . . such different applications of course
would be designed specifically for those different and distinct services.”
(App. Br. 26.) Similarly, Appellant argues that “[t]he question is whether it
would have been obvious to add Yoshizawa’s horse race bet registration
number to the system of Barger” and that “Barger . . . had no need for order
cancellation, and . . . was specifically designed to avoid any need for
cancellation by ensuring that the caller’s order would be final and could be
fulfilled.” (Id.) However, Appellant has provided insufficient persuasive
evidence that the registration number of Yoshizawa is “highly specific” to
horse race betting. Moreover, because Yoshizawa provides other
applications for the VRU (e.g., reservations or sales), Yoshizawa suggests
the registration number is provided to the customer as evidence of a
transaction. (See p. 220, col. 1, para. 3.)
Appellant further argues “Yoshizawa explains that a primary
motivation of its system is to be fully automated ‘stand-alone’ system with
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

15
no human operators, as an improvement on ‘similar’ betting systems that
rely on human operators” and “Yoshizawa thus teaches away from the use of
operators.” (App. Br. 29.) Although Yoshizawa describes the use of an
automated voice response unit to sell parimutuel tickets (p. 215, col. 1,
para. 4), Yoshizawa is silent regarding the use of live operators.
Importantly, Yoshizawa does not discredit the use of operators and, as
discussed above, Barger permits both using operators or automating operator
functions. Thus, Yoshizawa does not “teach away” or discourage the use of
live operators, such that it is not combinable with Barger. See In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994).
Therefore, the Examiner has properly combined Barger, Yoshizawa,
and Friedes to reject independent claim 17 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of dependent claim 32 under 35
U.S.C. § 103(a). Claim 30 depends from claim 17, and Appellant has not
presented any substantive arguments with respect to this claim. Therefore,
we sustain the rejection of claim 30 under 35 U.S.C. § 103(a), for the same
reasons discussed with respect to independent claim 17.
Independent claim 41 recites limitations similar to those discussed
with respect to claim 17, and Appellant has not presented any additional
substantive arguments with respect to this claim. Appealed claim 45
depends from claim 41. We sustain the rejection of claim 45 for the same
reasons discussed with respect to claim 30.
Dependent claim 67 recites limitations similar to those discussed with
respect to dependent claim 32, and Appellant has not presented any
additional substantive arguments with respect to this claim. We sustain the
Appeal 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

16
rejection of claim 67 for the same reasons discussed with respect to
claim 32.

DECISION
The Examiner’s decision rejecting claims 30, 32, 45, and 67 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 2014-001745
Reexamination Control 90/012,376
Patent 5,898,762

17
cc:

Patent Owner:

COOLEY LLP
ATTN: Patent Group
777 - 6th Street, NW
Suite 1100
WASHINGTON, DC 20001

Third Party Requester:

Alston & Bird LLP
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280

cu