Ex Parte 5898762 et al

Patent Trial and Appeal Board

Feb 25, 2013

90011438 (P.T.A.B. Feb. 25, 2013)

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.
90/011,438 01/17/2011 5898762 6646-300 (762) 7501
58249 7590 02/25/2013
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
02/25/2013 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.1,
Appellant and Patent Owner
____________

Appeal 2012-008644
Reexamination Control No. 90/011,438
Patent 5,898,762
Technology Center 3900
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and
JONI Y. CHANG, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Ronald A. Katz Technology Licensing L.P., Appellant, appeals under
35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 41, 54, and 57.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1 Ronald A. Katz Technology Licensing L.P. is the Patent Owner and the
real party in interest (App. Br. 3).
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

2
STATEMENT OF THE CASE2
This proceeding arose from a request for ex parte reexamination filed
on behalf of United States Cellular Corp. on January 17, 2011, of United
States Patent 5,898,762 (the '762 Patent). The '762 patent, entitled
“Telephonic-Interface Statistical Analysis System,” issued April 27, 1999, to
Ronald A. Katz, and has several patent applications upon which it claims
priority, listed on the face of the '762 Patent. The '762 Patent is said to have
expired on December 20, 2005, by virtue of a terminal disclaimer (App. Br.
4).
The '762 Patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix (App. Br. 37-67).

CLAIMED INVENTION
Appellant’s invention relates to a system that interfaces with a
multiplicity of individual terminals of a telephone network, where callers are
prompted by voice-generated instructions to provide data, and where the
data provided are used to select a group or subset of callers who can be
readily identified and reliably confirmed, as well as producing statistics
relating to the formats for which the system is being utilized (Abs.).
Independent claim 41, along with dependent claims 54 and 57, are

2 Our decision will make reference to the Appellant’s Second Amended
Appeal Brief (“App. Br.,” filed February 13, 2012) and Reply Brief (“Reply
Br.,” filed May 7, 2012), and the Examiner’s Answer (“Ans.,” mailed March
7, 2012).
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

3
subject to reexamination, with original claims 1-40, 42-53, 55, 56, and 58-70
not being subject to reexamination.
Claim 41 is reproduced below:
41. 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;
credit verification structure to verify on-line said
individual caller's customer 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 accumulated data on said individual callers.
(App. Br. 31, Claims App’x.).
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

4
PRIOR ART REJECTION
The prior art references relied upon by the Examiner in rejecting
claims 41, 54, and 57 are listed as follows:
Barger, Jr. et al. (“Barger”) 4,071,698 Jan. 31, 1978

Kanichiro Yoshizawa et al., Voice Response System for Telephone Betting,
26 HITACHI REV. 215-220 (1977) (hereinafter “Yoshizawa”).

The Examiner maintained a rejection of the claims on the following
basis:
 Claims 41, 54, and 57 under 35 U.S.C. § 103(a) as being unpatentable
over Barger and Yoshizawa (Ans. 4).

ISSUE
Appellant has asserted numerous arguments as to whether the
Examiner erred in proffering the above-cited rejection, which we detail in
the analysis section below. We have considered in this decision only those
arguments that Appellant actually raised in the Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Did the Examiner err in finding that Barger and Yoshizawa render
obvious the subject matter of claims 41, 54, and 57?

Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

5
FINDINGS OF FACT
1. Barger describes “a system for marketing merchandise or services
capable of being demonstrated to prospective customers over
telephone lines, such as phonograph records or tapes (cartridges or
cassettes), books, plays, and tours, and for immediately accepting
orders of selected merchandise or services” (Col. 1, ll. 8-13). One
object of the invention "is to provide a telephone system which
enables a customer shopping for merchandise or services
susceptible of audio demonstration to request that a particular
demonstration be played over the telephone" (Col. 1, ll. 60-64).
Another object is to “provide a telephone system for customer
selected audio demonstrations without human intervention in
operation” (Col. 2, ll. 13-15).
2. The system includes three modes of operation (Col. 2, ll. 34-37;
col. 3, ll. 3-5, 8-10). “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
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

6
operator can transfer a customer’s call (col. 2, ll. 65-67). “An
alternative way of entering this second mode of service is through
the customer calling 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. 3-8). In the 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. 8-11). In the third mode, the customer may
purchase the merchandise or services directly from the licensed
retailer (Col. 3, ll. 12-14). In either the second or third mode, a
data processor responds to codes entered by the customer using a
push button phone without intervention from a human operator
(Col. 3, ll. 14-17).
3. As illustrated in Figure 1, the basic telephone system includes a
data processor 10 of a telephone record marketing store, an
automatic answering device 11, a public telephone system 12 with
telephone couplers 13 (also referred to as “data couplers” (see, e.g.,
col. 3, ll. 64-65)) and telephones 14, a switching system 16, an
audio program repeater 17 and a customer service operator 18
(Col. 3, ll. 41-55). The telephones 14 can be a dial or push-button
type (Col. 3, ll. 45-46). “The address information generated by the
dial pulses, or push-button tones, establishes the basis for
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

7
subsequent operations of the telephone system to connect a calling
subscriber with the data processor 10 at a telephone record
marketing store” (Col. 3, ll. 46-51). The customer service operator
18 communicates with the data processor 10 through a video
terminal 19, a type-writer keyboard and a numeric keyboard (Col.
3, ll. 55-60). The customer service operator 18 communicates with
a customer through the switching system 16 and the telephone
couplers 13 (Col. 3, ll. 54-56).
4. When a customer calls the telephone number of the telephone
record marketing store, the transmitting and receiving equipment
of the store is connected to the telephone system 12 by one of the
data couplers 13 (Col. 3, ll. 61-65). Figures 3A and 3B illustrate
flow charts for an operator attended mode (Col. 3, ll. 29-30). “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 will be with
the customer in a moment” (Col. 4, ll. 10-17; “GO OFF-HOOK &
CONNECT TO „HELLO‟ MSG.,” Fig. 3a). A customer service
operator 18 is placed in communication with the customer through
the switching system 16 (Col. 4, ll. 57-59). “The operator then
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

8
greets the customer and elicits from the customer identification
data such as name, address, and account or credit card number”
(Col. 4, ll. 61-64; “CONNECT TO OPER.; TAKE INITIAL
INFO.,” Fig. 3a). The data processor 10 can display the calling
customer’s “historical and credit verification data” from memory
using the customer’s account number or credit card number (Col.
5, ll. 32-36).
5. To request a demonstration, the customer can provide to the
customer service operator 18 “a directory number assigned to the
requested demonstration and published in a catalog by the
telephone record store” (col. 5, ll. 4-7) or “the operator may search
for it through the data processor in which cross-indexing tables are
stored for the labels, titles and recording artists” (col. 5, ll. 9-11).
(“OPERATOR ENTERED SEL./DATA” and “SEL.
REQUESTED?,” Fig. 3b). “While the requested demonstration is
playing . . . the customer service operator [18] is available to
service other customers” (Col. 5, ll. 20-22; “PLAY SELECTION,”
Fig. 3b). “When the requested demonstration has been completed,
the data processor [10] is interrupted by the audio program repeater
[17]” (Col. 5, ll. 23-25; “OUTGOING MSG./SEL.,” Fig. 3b). The
data processor 10 then disconnects the audio program repeater 17
from the customer’s line and switches that line back to the
customer service operator 18 (Col. 5, ll. 25-29; “CONNECT TO
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

9
PREV. OPERATOR,” Fig. 3b). If the customer wishes to hear
other demonstrations, the previously described procedure is
repeated (Col. 5, ll. 42-45; Fig. 3b). If the customer places an
order, the “data processor [10] . . . transfers the order to an order
processing system 20 with the name, address, and any other
information required to fill the order, such as the account or credit
card number” (Col. 5, ll. 50-53).
6. As illustrated in Figure 2, which is described as a preferred
embodiment (col. 3, ll. 27-28), the telephone system for the
telephone record marketing system includes a data processor (col.
7, ll. 33-34), a dial telephone 24 or a push-button telephone 25,
telephone data couplers 26, an automatic answering device 27 (col.
7, ll. 38-44), an audio program repeater 28 and a switching matrix
29 (col. 7, ll. 49-51). The data processor includes a central
processing unit (CPU) 21, a bus 22 and a random access memory
23 (Col. 7, ll. 33-37). The CPU 21 communicates with other units
(e.g., the random access memory 23) via the bus 22 (Col. 7, ll. 35-
37).
7. In the first mode of operation, the dial telephone 24 or the push-
button telephone 25 is coupled to the CPU 21 with telephone data
couplers 26 and the automatic answering device 27 (Col. 7, ll. 38-
44). “The CPU [21] responds to an incoming call with a command
to an audio program repeater 28 to play a ‘hello’ message to the
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

10
customer through a switching matrix 29” (Col. 7, ll. 49-51).
“[T]here is a credit verification function (CVF) 45 which the CPU
[21] accesses under control of a programmed subroutine for credit
verification” (Col. 8, ll. 60-64).
8. For the Figure 2 embodiment, Barger also describes that “a
customer having a push-button telephone communicates with the
telephone record marketing system through the keypad of the
telephone” (Col. 9, ll. 22-24). For access to this automatic
telephone service, a customer first establishes communication with
the telephone data coupler 26 followed by entering “an established
account number having a code reserved for push-button telephone
customers” (Col. 9, ll. 36-42). “If the credit verification function
cannot validate the automatic push-button telephone customer,
operator assistance is automatically initiated by the CPU” (Col. 9,
ll. 42-45).
9. “Otherwise the CPU will command the audio program repeater to
play a prerecorded message to communicate with the customer as
necessary. In that manner the transaction is carried out by the CPU
without operator assistance. At each step, any entry required is
made by the customer through his telephone keyboard in response
to a message played by the audio program repeater under control
of the CPU” (Col. 9, ll. 45-53).
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

11
10. Figure 4 illustrates a flow chart for the automatic push-button
telephone mode (Col. 3, ll. 31-32; col. 11, ll. 18-19). “The first
part of the routine is similar to receiving a call in the operator
attended mode for playing the ‘hello’ message, except that the
message is one which concludes with an instruction for the
customer to enter his account number” (Col. 11, ll. 19-23; “GO
OFF-HOOK & CONNECT TO ‘HELLO & INSTR MSG.
COMPL.,” Fig. 4). When the customer enters a selection number
(col. 11, ll. 25-26; “CUSTOMER ENTERS SEL. NO.,” Fig. 4),
“an excerpt of the selection is played as a demonstration and an
audio message is transmitted to the customer asking him if he
wishes to buy the selection” (col. 11, ll. 28-31; “PLAY
SELECTION” and “DO YOU WISH TO BUY?,” Fig. 4). “If yes,
an audio confirming message is transmitted to the customer, and if
not, the routine branches back to ask again for a selection number .
. .” (Col. 11, ll. 32-34; “CONFIRM ORDER,” Fig. 4).
11. Yoshizawa describes a telephone betting system that uses an
automated voice response unit to sell parimutuel tickets (P. 215,
col. 1, ¶ 4). The telephone betting system includes a public
telephone network, the voice response unit and a central processing
unit (P. 215, col. 2, ¶ 6; Fig. 1).
12. After opening an account with a specified bank, a “subscriber can
make bets through any push-button telephone set” by calling a
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

12
telephone betting center and inputting “account number, password
number and the desired parimutuel tickets” (P. 216, col. 1, ¶ 1).
“The voice response unit transmits these inputs to the central
processing unit through the data communication lines” (P. 216, col.
1, ¶ 1). “Acceptance of the bet is completed as the input data are
entered in the account file” (P. 216, col. 1, ¶ 1).
13. During the process of placing a bet, 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). Similarly, during the process of
cancelling a bet, the “Voice output to push-button telephone”
requests the subscriber to enter the previously assigned
“Registration number (number assigned when bet was made)”
(Table 1, “(b) When canceling a bet,” Item 2).

PRINCIPLES OF LAW
Interpretation of Expired Patent Claims
Patent claims in a reexamination proceeding in the USPTO are
ordinarily given their broadest reasonable interpretation consistent with the
patent disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). When the patent has not expired, construing claims of an
unexpired patent broadly is not unfair to the patentee because the patentee
has the opportunity to amend the claims to obtain more precise claim
coverage. See id. However, patent claims of an expired patent may not be
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

13
amended. 37 C.F.R. § 1.530(j).
The standard of claim construction for the claims of an expired patent
in reexamination was addressed in Ex parte Papst-Motoren, 1 USPQ2d 1655
(BPAI 1986). The Board noted that In re Yamamoto, 740 F.2d 1569 (Fed.
Cir. 1984), held that claims in a reexamination proceeding should be given
their broadest reasonable interpretation, consistent with the specification,
because applicants had the right to amend, whereas in a district court,
“claims should be so construed, if possible, as to sustain their validity.”
Yamamoto, 740 F.2d at 1571 n.* (citing ACH Hosp. Systems, Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). The Board held
as follows:
[I]n reexamination proceedings in which the PTO is
considering the patentability of claims of an expired patent
which are not subject to amendment, a policy of liberal claim
construction may properly and should be applied. Such a
policy favors a construction of a patent claim that will render it
valid, i.e., a narrow construction, over a broad construction that
would render it invalid.

Papst-Motoren, 1 USPQ2d at 1656; Ex parte Bowles, 23 USPQ2d 1015,
1017 (BPAI 1991) (both nonprecedential3). The Board also held in both
Papst-Motoren and Bowles that it would be error to read “inferential
limitations” into the claims. Papst-Motoren, 1 USPQ2d at 1657; Bowles,

3 Although Papst-Motoren is not designated as precedential, it was decided
by an expanded panel of the Board of Patent Appeals and Interferences,
including the Commissioner, the Deputy Commissioner, the Chairman of the
Board, and an Examiner-in-Chief.
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

14
23 USPQ2d at 1017.
Papst-Motoren’s holding that “claims should be so construed, if
possible, as to sustain their validity” is another way of saying that the
USPTO does not apply the “broadest reasonable interpretation” in
construing the claims of an expired patent in a reexamination proceeding.
The policy reason is that the claims in an expired patent cannot be amended.
However, the maxim that “claims should be so construed, if possible, as to
sustain their validity” is sometimes misunderstood and the Federal Circuit
has clarified the maxim since Papst-Motoren. In accordance with those
cases, it is clear that any claim construction must be in accord with the rules
of claim construction and claims may not be redrafted. See Generation II
Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001)
(“[C]laims can only be construed to preserve their validity where the
proposed claim construction is ‘practicable,’ is based on sound claim
construction principles, and does not revise or ignore the explicit language
of the claims.”); Lucent Techs., Inc. v. Gateway, Inc.,
525 F.3d 1200, 1215-16 (Fed. Cir. 2008) (“This court has repeatedly held
that courts may not redraft claims to cure a drafting error made by the
patentee, whether to make them operable or to sustain their validity . . . . To
do so ‘would unduly interfere with the function of claims in putting
competitors on notice of the scope of the claimed invention.’”) (citations and
footnote omitted). The maxim is limited “to cases in which ‘the court
concludes, after applying all the available tools of claim construction, that
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

15
the claim is still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327
(Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 911 (Fed. Cir. 2004)). Importantly, it is “error . . . to use the
possible invalidity of those claims, if broadly construed, as a basis for
construing them narrowly.” The Saunders Group, Inc. v. ComforTrac, Inc.,
492 F.3d 1326, 1335 (Fed. Cir. 2007); Tate Access Floors, Inc. v. Interface
Architectural Resources, Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002)
(“Fairness and the public notice function of the patent law require courts to
afford patentees the full breadth of clear claim language, and bind them to it
as well. Consequently, where such claim language clearly reads on prior art,
the patent is invalid.”); Phillips, 415 F.3d at 1327 (“[W]e have certainly not
endorsed a regime in which validity analysis is a regular component of claim
construction.”); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999)
(“[I]f the only claim construction that is consistent with the claim’s language
and the written description renders the claim invalid, then the axiom does
not apply and the claim is simply invalid.”).
The maxim does not mean that claims should be construed more
narrowly than is required by the rules of claim construction, as is sometimes
misunderstood from cases such as In re Prater, 415 F.2d 1393, 1404 n.30
(CCPA 1969) (“By construing a claim as covering only patentable subject
matter, courts are able, in appropriate cases, to hold claims valid in order to
protect the inventive concept or the inventor’s contribution to the art. The
patentee at that time usually may not amend the claims to obtain protection
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

16
commensurate with his actual contribution to the art.”) and Yamamoto,
740 F.2d at 1572 (“District courts may find it necessary to interpret claims to
protect only that which constitutes patentable subject matter to do justice
between the parties.”).
Papst-Motoren does not describe what sources of claim construction
can be used. We assume for this appeal that a patentee is entitled to rely on
any of the various intrinsic and extrinsic sources of claim meaning discussed
in Phillips. It is patentee’s burden to show how an argued claim
construction is supported by the evidence.
Papst-Motoren also does not state what methodology of claim
construction should be used, e.g., whether the USPTO should consider all
sources of evidence considered by district courts. Nevertheless, the USPTO
always considers the specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written description . . . .”).
For purposes of this appeal, we assume that any type of evidence of claim
meaning identified by Phillips, including prosecution history of the original
patent, can be considered since patentee may not amend.

Obviousness Rejections
A finite number of solutions within the skill and understanding of
ordinarily skilled artisans can be indicative of obviousness:
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

17
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

ANALYSIS
Our standard for claim interpretation of expired patent claims is
provided above. That is the standard we apply to claims 41, 54, and 57 in
the analysis below.
Appellant argues that there is no proper motivation to combine
specific elements of Barger and Yoshizawa (App. Br. 13-19; Reply Br. 2-7).
The Examiner finds sufficient and proper motivation to combine the
references (Ans. 5-11). Both the Examiner and Appellant acknowledge that
we have addressed these issues in a decision (dated July 5, 2011) on a prior
appeal, namely Appeal No. 2010-008287 (Control No. 90/010,045) (Ans. 6-
7, 11; App. Br. 14-15, 18-19). We note that Appellant has not provided
persuasive arguments that would lead us to disturb our earlier judgment.
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

18
More specifically, Appellant argues that there was no motivation to
combine Yoshizawa’s registration number with Barger (App. Br. 13-17;
Reply Br. 2-6), and that here was no motivation to combine Yoshizawa with
live operators (App. Br. 17-19; Reply Br. 6-7). The Examiner finds support
for the combination of Yoshizawa and Barger in response to Appellant’s
arguments (Ans. 5-11).
Barger describes a telephone system for marketing merchandise or
services (e.g., phonograph records, tapes, books, plays, and tours) (FF 1). In
one mode of operation, an automatic telephone service communicates with
the customer through prerecorded messages (FF 2) and requests required
information (i.e., account number) from a customer and places orders (FF 8,
10). Yoshizawa describes a telephone betting system using voice response
unit technology (FF 11) in which a subscriber calls a telephone betting
center to place a bet (FF 12). After placing the bet, the telephone betting
system provides the subscriber with a registration number (FF 13). If the
subscriber elects to cancel the bet, the telephone betting system prompts the
subscriber to enter the registration number (FF 13).
A person of ordinary skill in the art would have recognized that
incorporating the registration number of Yoshizawa (FF 13) with the
telephone system of Barger provides the customer with a reference of the
transaction and facilitates the customer’s ability to cancel an order. See
KSR, 550 U.S. at 417. Thus, we agree with the Examiner (Ans. 5-10) that
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

19
modifying Barger to include the registration number of Yoshizawa would
have been obvious.
Similarly, a person of ordinary skill in the art would have recognized
that incorporating the use of live operators, per Barger, into the system of
Yoshizawa would allow for the benefits explicitly recited in Barger, namely
to allow for correction if there is a problem or to otherwise help if a
customer needs assistance (FF 2-3). Thus, we agree with the Examiner
(Ans. 10-11) that modifying Yoshizaw to include the live operators of
Barger would have been obvious.
Appellant also argues, with respect to the above findings, that
Yoshizawa’s registration number serves a specific purpose within that
context and there is nothing to suggest its incorporation into the system of
Barger, because Barger already has a confirmation process, and thus there
would be no need to provide for order cancellation, and because Barger
already provides for live operators to address cancellations (App. Br. 13-17).
We do not agree.
Rather, we agree with the points made by the Examiner in defending
the combination (Ans. 5-10). Appellant disagrees with the Examiner’s
finding that the cancellation process in the horserace betting context could
be applied to other applications of the same system (Reply Br. 2-3), arguing
that it would not have been obvious to use a registration number in the other
applications discussed in brief in Yoshizawa. However, given that
Yoshizawa discloses the registration number and its use in cancellation in
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

20
the horserace betting application, it would be natural to apply such processes
to other applications, if applicable. We agree with the Examiner that the use
of the registration number to facilitate cancellation would be useful in the
system of Barger, even with other methods of cancellation provided for
therein (Ans. 6-7). We also do not find the extra provision of a facilitated
cancellation to run counter to Barger’s stated goals of sales (Reply Br. 4-5),
as providing reputable practices need not run counter to high sales. Like the
Examiner (Ans. 9-10), we do not take the provision of live operators as
requiring those operators to address all issues of callers, and agree that, as
disclosed in Barger, automated and live operator responses can provide a
more responsive and cost-effective system (id.).
With respect to the incorporation of live operators into Yoshizawa,
Appellant also disagrees with the above findings, arguing that that such an
incorporation would not be obvious and that Yoshizawa teaches away from
the use of live operators, stating that a primary objective of Yoshizawa was
to avoid live operators (App. Br. 17-19; Reply Br. 6-7). However, we agree
with the Examiner that the fact that “Yoshizawa merely operates differently”
is not sufficient to provide a negative teaching that would discourage
ordinarily skilled artisans from incorporating the use of operators into the
system of Yoshizawa. We disagree that the elimination of live operators
was a primary objective of Yoshizawa and, thus, we do find Appellant’s
arguments to be persuasive.
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

21
Appellant also argues that the references do not disclose the required
credit verification structure, arguing that the Examiner’s claim interpretation
is flawed because it ignores the Specification, and that under the proper
interpretation, Yoshizawa and Barger do not teach or suggest the limitations
recited in claim 41 (App. Br. 19-22; Reply Br. 7-9). The Examiner disagrees
with Appellant and restates the Examiner’s analysis (Ans. 12-13).
We find most salient to the instant discussion the Examiner’s finding
that the limitations in question, including “signals indicative of an individual
caller’s customer number” and “to verify on-line said individual caller’s
customer number,” per claim 41, recite “signals” and the “customer number”
separately, so that the system recited in claim 41 need not directly utilize the
signals to perform the credit verification (Ans. 12-13). From this the
Examiner finds that the system of claim 41 does not require that it is the
entry by the caller that initiates the verification, or that the verification must
be based on the caller’s entry (Ans. 13).
Appellant argues that this position is flawed and runs afoul of Phillips
(Reply Br. 8), since it ignores the Specification. We do not agree. The
Examiner’s analysis follows the clear claim language; if the drafter of claim
41 wanted to allow only the interpretation now ascribed, the credit
verification could have been made on the basis of the “signals indicative of
an individual caller’s customer number.” The fact that Appellant’s
Specification only cites to such direct credit verification does not rewrite the
claim to Appellant’s inclinations. “That claims are interpreted in light of the
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

22
specification does not mean that everything in the specification must be read
into the claims.” Raytheon Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir.
1983), cert. denied, 469 U.S. 835 (1984). The scope of claim 41 allows for
the credit verification to be performed on the customer number, and not on
signals entered by the customer, which is commensurate with the
Examiner’s analysis. As Appellant’s other arguments rely upon Appellant’s
alternate interpretation of claim 41 (App. Br. 21-22), we need not reach
those arguments to affirm the Examiner’s rejection.
In addition, Appellant argues that Barger does not disclose a limit on
use based on a dollar amount, and that it would not have been obvious to
modify Barger to use the same disclosed in Yoshizawa (App. Br. 22-23;
Reply Br. 9-10). The Examiner finds that Barger’s limit on use occurs when
no purchase is made over time, i.e. zero dollars, an implicit dollar amount
(Ans. 16-17), and that Yoshizawa’s currency limit would have been obvious
to apply to Barger (Ans. 17-18). We agree with the Examiner.
While Appellant argues that the free loader algorithm in Barger “does
not check any dollar amount or do anything with respect to any dollar
amount” (App. Br. 23), one general purpose of the system in Barger is to
facilitate purchases (FF 1, 10). A lack of a purchase implicitly connotes a
lack of some amount being spent. The fact that Barger’s system does not
provide the limitations found in the “‘dollar amount’ limitations described in
the ‘762 patent’s exemplary embodiments” does not mean that Barger
cannot render the dollar amount limitation in claim 57 obvious. While
Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

23
Appellant appears to argue that Barger limits its users based on purchase,
and not a dollar amount (Reply Br. 9-10), we concur with the Examiner that
zero dollars is still an amount, as opposed to a lack of an amount.
Similarly, Appellant argues that Barger’s purpose is to facilitate
purchases and not limit them, per Yoshizawa, such that there would have
been no motivation to combine the references as found by the Examiner
(App. Br. 23). Again, we agree with the Examiner (Ans. 17-18) that
Yoshizawa has a similar purpose, to facilitate bets, but that does not negate
the disclosure of a limit, as discussed in Yoshizawa. While Appellant argues
that the system of Yoshizawa is fundamentally different in its objectives
from Barger and lists reasons why the imposition of limits in Yoshizawa
would not apply to Barger (Reply Br. 10), we still find that one of ordinary
skill in the art would have been compelled to add such limits, based on
purchases in view of Yoshizawa, into the system of Barger for the same or
similar reasons specified. As such, we do not find Appellant’s arguments to
be persuasive.
Accordingly, we sustain the rejection of claims 41, 54, and 57 under
35 U.S.C. § 103(a).

CONCLUSION
We conclude that the Examiner did not err in finding that Barger and
Yoshizawa render the subject matter of claims 41, 54, and 57 obvious.

Appeal 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

24
DECISION
We affirm the Examiner’s rejection of claims 41, 54, and 57.
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 2012-008644
Reexamination Control No. 90/011,438
United States Patent 5,898,762

25
cc:

FOR PATENT OWNER:
COOLEY LLP
ATTN: PATENT GROUP
1299 PENNSYLVANIA AVENUE, NW
SUITE 700
WASHINGTON DC 20004

FOR THE THIRD PARTY REQUESTORS:
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA
180 NORTH STETSON AVENUE
SUITE 4900
CHICAGO, IL 60601-6731