Ex Parte 5974120 et al

Board of Patent Appeals and Interferences

May 2, 2011

90010044 (B.P.A.I. May. 2, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/008,229 09/20/2006 5974120 6646-250,-250A,-250B 6348
35554 7590 05/03/2011
REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9229 SUNSET BOULEVARD
SUITE 630
LOS ANGELES, CA 90069
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/03/2011 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.
90/010,044 11/05/2007 5974120 6646-250,-250A,-250B 7796
35554 7590 05/03/2011
REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9229 SUNSET BOULEVARD
SUITE 630
LOS ANGELES, CA 90069
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/03/2011 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.
90/010,130 03/28/2008 5974120 6646-250,-250A,-250B 2106
35554 7590 05/03/2011
REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9229 SUNSET BOULEVARD
SUITE 630
LOS ANGELES, CA 90069
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/03/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD A. KATZ TECHNOLOGY LICENSING, L.P.
Appellant
____________
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120
Technology Center 3900
____________

Before SCOTT R. BOALICK, KARL D. EASTHOM, and
KEVIN F. TURNER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 28, 34, 56, 57, 62, 67 and 73. Claims 1-27, 29-33, 35-55,
58-61, 63-66, 68-72 and 74-81 are not subject to reexamination. We have
jurisdiction under §§ 134(b) and 306.
An oral hearing was held on October 20, 2010. The record includes a
written transcript of the oral hearing.
We affirm.
STATEMENT OF THE CASE
Merged Reexamination Proceedings
A first request for ex parte reexamination of U.S. Patent No.
5,974,120 (the ‘120 patent) was filed on September 20, 2006 and assigned
Reexamination Control No. 90/008,229. A second request for ex parte
reexamination of the ‘120 patent was filed on November 5, 2007 and
assigned Reexamination Control No. 90/010,044. A third request for
ex parte reexamination of the ‘120 patent was filed on March 28, 2008 and
assigned Reexamination Control No. 90/010,130. The reexamination
proceedings have been merged.
The ‘120 patent is said to be assigned to Ronald A. Katz Technology
Licensing, L.P., said to be the real party in interest. (Br. 4.)1 The ‘120
patent is said to have an expiration date of July 7, 2009 by virtue of a
terminal disclaimer. (Br. 6.) Thus, the ‘120 patent is now expired.

1 Appellant's Reply Brief filed March 1, 2010 was not entered because it
contained new evidence and Appellant's corrected Reply Brief filed
March 10, 2010 was not entered because it was untimely filed.
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

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Related Litigation
The ‘120 patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix. (Br. 71-96.)
Appellant’s Invention
Appellant’s invention relates to a telephone call processing system for
receiving calls from terminals T1-Tn in different call modes (i.e., “800”,
“900” or area code modes) and for processing calls in, for example, a game
or contest format. (Col. 2, ll. 62-65; Abstract.) The telephone call
processing system also includes audio response units (col. 4, ll. 12-21), a
qualifying apparatus to restrict against caller misuse (Abstract), ANI
(Automatic Number Identification) equipment (col. 4, ll. 51-57; col. 2,
ll. 9-11) and DNIS (Dialed Number Identification Service) equipment (col.
4, ll. 58-60; col. 2, ll. 11-12).
The Claims
Independent claims 28 and 56 are exemplary, with disputed
limitations in italics:
28. A telephone call processing system for receiving calls
through a telephonic communication facility from a multitude of
terminals in a toll free call mode for processing data in accordance
with an operating process format and involving digital signals
including called number identification signals (DNIS) automatically
provided by said telephonic communication facility, said system
comprising:
first response unit means for receiving calls in said toll free call
mode wherein said called number identification signals (DNIS)
Appeal 2010-006100
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indicative of at least one of a plurality of distinct called numbers
identifies said operating process format;
voice generator means for prompting callers to enter data in
response to voice prompts wherein said data entered by said callers is
used to update data for said callers in a database relating to said
callers;
qualification means for qualifying at least said calls utilizing
said one of said plurality of distinct called numbers in said toll free
call mode received by said first response unit to provide qualified
calls based upon a test of caller entered identification data including
caller pin-number data based upon limited use;
second response unit means for receiving calls in said toll free
call mode wherein called number identification signals (DNIS)
indicative of one other of said plurality of distinct called numbers
identifies said operating process format;
means for concurrently processing calls received by said first
response unit means and said calls received by said second response
unit for concurrent processing of data in accordance with common
operations of said operating process format.

56. A process for interfacing, through a telephone-
communication facility, (1) callers who are at a multitude of remote
terminals for voice-digital communication with (2) a system for
prompting the callers with caller cues, said process comprising the
steps of:
establishing telephone communications between the callers and
the system. [sic] the system having a receiving unit for receiving
digital signals including dialed-number identification signals
provided automatically from the telephone-communication facility;
utilizing the dialed-number identification signals to identify one
from a plurality of numbers dialed by the callers;
also receiving at the receiving unit identification signals relating
to the callers;
testing said identification signals relating to the callers to
determine whether to qualify the callers for access to at least a portion
of operations of the system;
Appeal 2010-006100
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U.S. Patent No. 5,974,120

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utilizing, for qualified callers, the identification signals relating
to the callers, to avoid prompting certain callers with a certain
previously provided cue or cues; and
providing to the qualified callers at least one other caller cue.

The Rejections2
Claims 56 and 57 stand rejected under § 102(e) as being anticipated
by Von Meister (U.S. Patent No. 5,199,062).
Claims 28, 34, 56, 57, 62, 67 and 73 stand rejected under § 103(a) as
being obvious over Calabrese (Thomas E. Calabrese, Advanced Function
VRU Applications, Voice I/O Systems Applications Conference 15-25
(1989)) and Periphonics (Periphonics Corporation, Automated Student
Registration Using Touch-Tone Telephone/Voice Response, An Application
Note, Publication No. 3230202A (1986)).
Claims 67 and 73 stand rejected under § 103(a) as being obvious over
Periphonics and Szlam (U.S. Patent No. 4,797,911).
Claims 56, 57 and 62 stand rejected under § 103(a) as being obvious
over Moosemiller (John P. Moosemiller, AT&T’s Conversant TM I Voice
System, SPEECH TECH. 88-93 (1986)) and Periphonics.

2 The rejections of claim 28 under § 103(a) as being obvious over
Moosemiller and Periphonics and as being obvious over Perdue (Robert J.
Perdue & Eugene L. Rissanen, Conversant 1 Voice System: Architecture and
Applications, 65 AT&T TECH. J. 34-47 (1986)) and Barger (U.S. Patent No.
4,071,698), as evidenced by Moosemiller have been withdrawn by the
Examiner. (Ans. 2-3.)
Appeal 2010-006100
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U.S. Patent No. 5,974,120

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Appellant relied upon the following3 in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Jerry A. Klein, dated
September 11, 2008 (“Klein Declaration” or “Klein Decl.”).
Statements by Financial Industry Leaders (Br. 51-52).
Table of Companies (Br. 44-50).
ISSUES
§ 102 Rejection – Von Meister
With respect to independent claim 56 and dependent claim 57,
Appellant argues that Von Meister does not teach the claim feature a
“receiving unit for receiving digital signals including dialed-number
identification signals provided automatically from the telephone-
communication facility.” (Br. 36-38.)
Appellant’s argument presents the following dispositive issue:
Does Von Meister teach a “receiving unit for receiving digital signals
including dialed-number identification signals provided automatically from
the telephone-communication facility”?
§ 103 Rejection – Calabrese/Periphonics
With respect to claims 28, 34, 56, 57, 62, 67 and 73, Appellant argues
that Periphonics does not qualify as prior art. (Br. 25-28.)

3 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 2010-006100
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U.S. Patent No. 5,974,120

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With respect to independent claim 28, Appellant argues that “the cited
references [of Calabrese and Periphonics] do not disclose or suggest the
claim requirement that two different telephone numbers in the toll-free call
mode may be used to access the same format.” (Br. 21-22.) Thus,
Appellant argues, the combination of Calabrese and Periphonics does not
teach or suggest the claim features of a “first response unit means for
receiving calls in said toll free call mode wherein said called number
identification signals (DNIS) indicative of at least one of a plurality of
distinct called numbers identifies said operating process format” and a
“second response unit means for receiving calls in said toll free call mode
wherein called number identification signals (DNIS) indicative of one other
of said plurality of distinct called numbers identifies said operating process
format” (Br. 22). Appellant further argues that the combination of Calabrese
and Periphonics does not teach or suggest “concurrent processing of data in
accordance with common operations of said operating process format.”
(Br. 28.)
With respect to independent claim 56, Appellant argues that “the
Periphonics document has not been shown to disclose . . . ‘cue suppression’”
(Br. 29) and thus, Periphonics does not teach or suggest the claim limitations
“utilizing, for qualified callers, the identification signals relating to the
callers, to avoid prompting certain callers with a certain previously provided
cue or cues” and “providing to the qualified callers at least one other caller
cue” (Br. 29-31). Appellant presents the same arguments for independent
claim 67, which recites similar limitations. (Br. 29-31.)
Appeal 2010-006100
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U.S. Patent No. 5,974,120

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In addition, Appellant points to evidence of commercial success.
(Br. 39-63.)
Appellant’s arguments present the following issues:
1. Does Periphonics qualify as prior art?
2. Does the combination of Calabrese and Periphonics teach or
suggest a “first response unit means for receiving calls in said toll free call
mode wherein said called number identification signals (DNIS) indicative of
at least one of a plurality of distinct called numbers identifies said operating
process format,” as recited in independent claim 28?
3. Does the combination of Calabrese and Periphonics teach or
suggest a “second response unit means for receiving calls in said toll free
call mode wherein called number identification signals (DNIS) indicative of
one other of said plurality of distinct called numbers identifies said operating
process format,” as recited in independent claim 28?
4. Does the combination of Calabrese and Periphonics teach or
suggest “concurrent processing of data in accordance with common
operations of said operating process format,” as recited in independent
claim 28?
5. Does the combination of Calabrese and Periphonics teach or
suggest “utilizing, for qualified callers, the identification signals relating to
the callers, to avoid prompting certain callers with a certain previously
provided cue or cues,” as recited in independent claims 56 and 67?
Appeal 2010-006100
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U.S. Patent No. 5,974,120

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6. Does the combination of Calabrese and Periphonics teach or
suggest “providing to the qualified callers at least one other caller cue,” as
recited in independent claims 56 and 67?
7. Has the Examiner properly considered Appellant’s evidence of
commercial success?
FINDINGS OF FACT (FF)
Von Meister
1. Von Meister describes “a telephone communications system which
includes a digital telephone switch, a voice response unit and a central
processing unit, the telephone switch and the voice response unit being
controlled by a common program sequence stored in the central
processing unit.” (Col. 1, ll. 28-33.) A user accesses the telephone
communications system by dialing “an ‘800’, foreign exchange, or
local number, identifies himself as a subscriber” and then selects a
speed dial code corresponding to a person to be called. (Col. 4, ll. 45-
49.) The user can leave a voice message if the call is unanswered or
can instruct “the telephone communications system to dial the number
until it gets through and deliver[s] the message or to place the message
in storage for the called party to retrieve at a later time.” (Col. 4,
ll. 50-55.) In addition, subscribers can also “provide courtesy calling
privileges for certain people, such as call forwarding for a VIP which
allows the VIP’s call to be directly routed to the place where the
subscriber is currently located, as well as recording messages from
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guests who are trying to reach the subscriber and are unable to do so.”
(Col. 4, ll. 56-61.)
2. In a preferred embodiment, users connect to the telephone
communications system (the “System” (see, e.g., col. 7, ll. 5-6)) by
“dialing one of a number of ‘800’ (INWATS), foreign exchange or
local telephone numbers from any location in the world using a touch-
tone telephone.” (Col. 7, ll. 8-13.) “Whether or not the caller is a
subscriber is determined by the number on which he called. His
subscriber status determines which scripts the System will recite and
which routines he can access.” (Col. 7, ll. 14-17.)
3. “All subscriber originated calls placed to the System over INWATS
carrier lines will be received by the telephone switching matrix [22]
and automatically switched to the VRU which prompts the user
concerning the availability of various messaging or database
functions.” (Col. 9, ll. 3-7; fig. 2C.) “The particular messages
delivered to the user depend upon the particular INWATS or other
telephone line on which the call was received.” (Col. 9, ll. 8-10.)
4. Figures 21A and 21B illustrate flowcharts of the VIP or guest message
retrieval and deposit routine. (Col. 6, ll. 66-68.) The VIP or guest
connects to the System by “a particular INWATS number which is
given by the subscribers to their guest and VIPs.” (Col. 20, ll. 43-46.)
Appeal 2010-006100
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Calabrese
5. Calabrese describes the use of automated voice response units
(VRU’s) to handle client calls at The Travelers Companies (p. 16, ¶ 4)
using touch-tone entry (p. 16, ¶ 6). Add-on features and technologies
for such VRU’s (p. 19, ¶ 1) include Dialed Number Identification
Service (DNIS) (p. 21, ¶ 3) and Automatic Number Identification
(ANI) (p. 21, ¶ 2).
6. Figure 2, reproduced below, illustrates “VRU Applications At The
Travelers” including “Annuities Inquiry”, “Health Claim Status”,
“Flexible Benefits Enrollment” and “Pension Account Status.”
(P. 18.) From Figure 2, each of the “VRU Applications” includes
multiple 800 lines and at least one function. (P. 18.) For example, the
“Health Claim Status” application includes the following functions:
“Inquiry for status of submitted claims”; “status of deductible”; and
“Xfer to live operator.” (P. 18.)
Appeal 2010-006100
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U.S. Patent No. 5,974,120

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7. For The Traveler’s current VRU-based applications, “[o]ne of the
most critical aspects . . . is the initial entry by the caller of the proper
Account Number (Employee ID, Account #, Policy #, etc.).” (P. 21,
¶ 1.) The “highest percentage of calls that must be transferred over to
live operators is a result of failure to get a valid account number
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touch-toned in.” (P. 21, ¶ 1.) As a result, the caller receives no
positive feedback by using the VRU application. (P. 21, ¶ 1.)
However, by using ANI to automatically capture the phone number of
the caller, the VRU can cross-reference the caller’s phone number
with a host database to obtain the caller’s ID number and latest claim
status, for example. (P. 21, ¶ 2.)
8. DNIS services can be used with “a larger, more general VRU
application . . . [with] a wider range of function provided in the same
VRU. A good way to control this is to trigger application processing
based on the number dialed into by the client (for example: 1-800-
222-1234 is a claim status, while 1-800-222-5678 is a dependant
change).” (P. 21, ¶ 3.)
Periphonics
9. Periphonics is marked as “Publication #3230202A” and lists a “Price
$12.00 U.S. Currency” on its cover page. In addition to a copyright
date of 1986, Periphonics provides the following notice:
The material contained in this document is furnished for
customer reference only, and is subject to change without
notice. Periphonics is not responsible for typographical
errors, or obsolete documentation. The techniques
described are proprietary, and should not be reproduced,
disseminated or otherwise disclosed without Periphonics’
prior written consent. This document has been
copyrighted by Periphonics Corporation and can not be
duplicated.

Appeal 2010-006100
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10. Periphonics describes automated student registration at colleges and
universities using a Touch-Tone telephone/voice response system.
(P. 1-1, ¶¶ 1, 3.) “The use of Touch-Tone telephone/voice response
for on-line transactions was pioneered by Periphonics during the early
1970’s in the banking industry. The technique has since spread to
distribution, transportation, manufacturing and many other
industries.” (P. 1-1, ¶ 3.)
11. In 1983, Periphonics Corporation visited many colleges and
universities to suggest the use of voice response systems for student
registration. (P. 1-1, ¶ 3.) As a result, trial systems were implemented
at Georgia State University (GSU) and Brigham Young University.
(P. 1-1, ¶ 3.) “The level of interest in Touch-Tone telephone
registration was demonstrated by the large number of people who
attended a conference on ‘Teaching Registration to Talk’ at GSU on
December 2 and 3, 1985. About 250 people, representing more than
90 schools attended this Conference.” (P. 1-1, ¶ 4.)
12. In the “Reasons to Buy from Periphonics” section, Periphonics
provides the following statements:
Periphonics will share with you our 15 years of voice response
experience, and our expertise concerning telephone/PABX
interfaces and computer interfaces. Our Systems Engineers will
help you evaluate and plan the project.
Periphonics is committed to supporting our customers! We
believe this commitment is particularly important in the
educational marketplace.
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(P. 5-1.)
13. Periphonics describes that “[d]esign of the dialogue is one of the most
important factors for the successful introduction of voice response
registration” (p. 4-5, ¶ 1) and that “[b]rief, but adequate, prompting
messages make a dramatic improvement in the speed and capacity (#
of completed registrations per hour) of the system” (p. 4-5, ¶ 3).
Furthermore, “[i]t is important that the script include messages for all
‘go wrong’ possibilities in the registration process.” (P. 4-5, ¶ 4.) A
sample dialogue is illustrated in “Attachment A.” (P. 4-5, ¶ 5.)
14. In the “Attachment A” example, Periphonics describes a sample
dialogue using the telephone registration system at Metropolitan State
College. (P. A-1.) The telephone registration system requests the
student to enter a student ID number and a personal access code.
(P. A-1.) The sample dialogue includes several possible responses.
One possible response is: “Your student ID number or your personal
access code is not on our file. Please verify both numbers and call
again.” (P. A-1.) Another possible response is: “You are now
registered for 12 credits” or “You are not registered for any classes.
Please enter your request.” (P. A-1.)
ANALYSIS
§ 102 Rejection – Von Meister
We agree with Appellant (Br. 36-38) that Von Meister does not teach
a “receiving unit for receiving digital signals including dialed-number
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identification signals provided automatically from the telephone-
communication facility,” as recited in claim 56.
The Examiner found that the voice response unit of Von Meister,
which automatically delivers “particular messages” to the user depending
upon if a call was received from a particular “800” number (INWATS), or
from another telephone line, corresponds to the claimed “receiving unit for
receiving digital signals including dialed-number identification signals
provided automatically from the telephone-communication facility.”
(Ans. 42, 71-75.) In particular, the Examiner found that “[i]n order to know
which ‘particular messages’ to deliver to a caller, the VRU would have to be
able to recognize the INWATS or telephone line and therefore the number
dialed to reach the line. This is at least the equivalent of DNIS.” (Ans. 42.)
We do not agree.
Von Meister describes a telephone communications system that is
accessible to a user or a subscriber by dialing an “800”, foreign exchange or
local number. (FF 1.) Von Meister teaches that calls placed by the
subscriber to the System over INWATS carrier lines are automatically
switched to the VRU such that the subscriber receives prompts concerning
various messaging or database functions. (FF 3.) Von Meister also teaches
that the System recognizes the subscriber based on the number called. (FF
2.) Von Meister further teaches that guests and VIPs of the subscriber can
retrieve messages from the subscriber by dialing a particular INWATS
number. (FF 3, 4.) However, Von Meister provides no express disclosure of
the mechanism used to distinguish between numbers called by subscribers,
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users, guests and VIPs to access the System. Although the Examiner finds
that they System of Von Meister is "at least the equivalent of DNIS," the
Examiner has not established that the claim feature of a “receiving unit for
receiving digital signals including dialed-number identification signals
provided automatically from the telephone-communication facility” is
necessarily present in the System of Von Meister. See In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999).
Therefore, we do not agree with the Examiner that Von Meister
explicitly or inherently teaches a “receiving unit for receiving digital signals
including dialed-number identification signals provided automatically from
the telephone-communication facility.”
We reverse the rejection of claim 56 under 35 U.S.C. §102(e).
Claim 57 depends from independent claim 56, and we reverse the rejection
of this claim for the same reasons as independent claim 56.
§ 103 Rejection – Calabrese/Periphonics
Periphonics as Prior Art Under 35 U.S.C. § 102(b)
With respect to the first issue, we are not convinced by Appellant’s
arguments (Br. 25-28) that Periphonics does not qualify as prior art under 35
U.S.C. § 102(b). In particular, Appellant argues that “[p]roof that a
document was published, to qualify as a ‘printed publication’ under
§ 102(b), requires a showing that the document was ‘publicly accessible.’”
(Br. 26.) Appellant also argues that “[t]he Periphonics document’s express
instructions that it ‘should not be reproduced, disseminated or otherwise
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disclosed’ and ‘can not be duplicated’ show that the document was not a
‘printed publication’ under § 102(b).” (Br. 26.)
The Examiner found that “the ‘customers’ are the public, so the
[Periphonics] document is not internal, but is instead available to any
customer” and “the publication was made available to the public at a cost
of $12.00.” (Ans. 56.) Therefore, the Examiner argues, “the language on
which Patentee relies is standard indication of copyright protection” rather
than “an internal document that somehow was not made available to the
public.” (Ans. 56.) We agree with the Examiner.
“Whether an asserted anticipatory document qualifies as a ‘printed
publication’ under § 102 is a legal conclusion based on underlying factual
determinations.” Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc.,
291 F.3d 1317, 1321 (Fed. Cir. 2002). A reference is considered publicly
accessible if it was “disseminated or otherwise made available to the extent
that persons interested and ordinarily skilled in the subject matter or art
exercising reasonable diligence, can locate it.” Kyocera Wireless Corp. v.
Int’l Trade Comm’n, 545 F.3d 1340, 1350 (2008).
Periphonics describes that, in 1983, Periphonics Corporation
approached many colleges and universities to suggest the use of voice
response systems for student registration. (FF 11.) In addition, trial systems
were implemented at Georgia State University (GSU) and Brigham Young
University. (FF 11.) Periphonics also describes a conference on “Teaching
Registration to Talk” held at GSU in December 1985 that was attended by
about 250 people, representing more than 90 schools. (FF 11.)
Appeal 2010-006100
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Furthermore, Periphonics provides a section entitled “Reasons to Buy from
Periphonics” describing Periphonics Corporation’s experience, expertise and
commitment to customers. (FF 12.) In other words, at the very least,
Periphonics Corporation actively promoted and marketed its voice response
systems for student registration to colleges and universities since 1983.
Periphonics provides a notice that “[t]he material contained in this
document is furnished for customer reference only . . .” and “[t]he
techniques described are proprietary, and should not be reproduced,
disseminated or otherwise disclosed without Periphonics’ prior written
consent” (emphasis added). (FF 9.) While the notice states that the
“techniques described” in the document are proprietary and places
restrictions on their reproduction, dissemination or disclosure, by the terms
of the notice the document is available for “customer reference” and for
anyone receiving “prior written consent” (e.g., potential customers). There
is no credible indication that interested persons were excluded from
becoming customers or would necessarily be denied prior written consent.
Periphonics is marked as “Publication #3230202A” and lists a “Price
$12.00 U.S. Currency” on its cover page. (FF 9.) Thus, the Periphonics
document is indexed and listed as available for the cost of $12.00 to at least
the customers of Periphonics Corporation. Appellant argues that “[t]here is
no showing that the Periphonics document was actually made available to
the general public, in a manner sufficient for ‘public accessibility’ as
required by § 102(b).” (Br. 26.) However, a showing that Periphonics was
available to the “general public” is not required. Instead, Periphonics is
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considered publicly accessible if “persons interested and ordinarily skilled in
the subject matter or art exercising reasonable diligence, can locate it.” See
Kyocera, 545 F.3d at 1350. On this record, we agree with the Examiner that
persons interested and ordinarily skilled in the art could, using reasonable
diligence, locate the Periphonics reference.
Therefore, we agree with the Examiner that Periphonics qualifies as
prior art.
Claims 28 and 34
With respect to the second and third issues, we are not convinced by
Appellant’s arguments (Br. 21-25) that the combination of Calabrese and
Periphonics does not teach or suggest a “first response unit means for
receiving calls in said toll free call mode wherein said called number
identification signals (DNIS) indicative of at least one of a plurality of
distinct called numbers identifies said operating process format” and a
“second response unit means for receiving calls in said toll free call mode
wherein called number identification signals (DNIS) indicative of one other
of said plurality of distinct called numbers identifies said operating process
format.”
The Examiner found that the large, general purpose voice response
unit (VRU) of Calabrese which uses DNIS to access different functions
(e.g., “claim status” or “dependant change”) by dialing different 800
numbers within a more general VRU application meets the two disputed
claim limitations of a “first response unit means” and a “second response
unit means.” (Ans. 13-14, 48, 49; FF 6, 8.) We agree with the Examiner.
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As the Examiner found, Calabrese teaches four separate VRU
applications: “Annuities Inquiry”; “Health Claim Status”; “Flexible
Benefits Enrollment”; and “Pension Account Status.” (Ans. 13-14, 48, 49;
FF 6.) Calabrese further teaches the use of DNIS services in a larger, more
general VRU application (such as one of: “Annuities Inquiry”, “Health
Claim Status”, “Flexible Benefits Enrollment” or “Pension Account Status”
shown in Figure 2 (see FF 6)) with a wide range of function, for example,
dialing a specified 800 number for “claim status” and a different 800 number
for “dependant change.” (FF 8.) Calabrese teaches that there are twenty
four (24) 800 lines in the “Flexible Benefits Enrollment” VRU application.
(FF 6.) Calabrese also teaches that the “Flexible Benefits Enrollment” VRU
application has at least two functions, “Inquiry of options available &
current selections” and “Selection of options for the next year.” (FF 6.)
Thus, in the “Flexible Benefits Enrollment” VRU application Calabrese
teaches or suggests that a caller can dial a specified 800 number for “Inquiry
of options available & current selections” using DNIS services and can dial
a different 800 number for “Selection of options for the next year” using
DNIS services. (See FF 6, 8.) In other words, Calabrese teaches or suggests
a “first response unit means for receiving calls in said toll free call mode
wherein said called number identification signals (DNIS) indicative of at
least one of a plurality of distinct called numbers identifies said operating
process format” and a “second response unit means for receiving calls in
said toll free call mode wherein called number identification signals (DNIS)
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indicative of one other of said plurality of distinct called numbers identifies
said operating process format.”
Appellant argues that “[e]ach of ‘Annuities Inquiry,’ ‘Health Claim
Status,’ ‘Flexible Benefits Enrollment,’ and ‘Pension Account Status,’ is a
separate application” which “makes clear that ‘claim status,’ ‘dependant
change,’ and the others are each distinct and different applications with
which a caller can interface.” (Br. 22.) Thus, Appellant argues, “Calabrese
does not disclose that two different dialed telephone numbers are used to
access the same application or format.” (Br. 23.) However, as discussed
previously, Calabrese teaches the use of DNIS services in a larger, more
general VRU application with a wide range of functions, for example,
dialing a specified 800 number for “claim status” and a different 800 number
for “dependant change.” As also discussed, Figure 2 of Calabrese illustrates
that some of the “VRU Applications” (e.g., “Health Claim Status” or
“Flexible Benefits Enrollment”) include more than one function. (FF 6.)
For example, Calabrese teaches that the “Flexible Benefits Enrollment”
VRU application has at least two functions, “Inquiry of options available &
current selections” and “Selection of options for the next year.” (FF 6.)
Calabrese also teaches that there are twenty four (24) 800 lines in the
“Flexible Benefits Enrollment” VRU application. (FF 6.) Thus, contrary to
Appellant’s arguments, Calabrese does disclose that two different dialed
telephone numbers are used to access the same application or format.
Therefore, we agree with the Examiner that the combination of
Calabrese and Periphonics teaches or suggests a “first response unit means
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for receiving calls in said toll free call mode wherein said called number
identification signals (DNIS) indicative of at least one of a plurality of
distinct called numbers identifies said operating process format” and a
“second response unit means for receiving calls in said toll free call mode
wherein called number identification signals (DNIS) indicative of one other
of said plurality of distinct called numbers identifies said operating process
format.”
With respect to the fourth issue, we are not convinced by Appellant’s
argument (Br. 28-29) that the combination of Calabrese and Periphonics
does not teach or suggest “concurrent processing of data in accordance with
common operations of said operating process format.”
The Examiner found that the VRU applications of Calabrese can run
simultaneously. (Ans. 20; FF 6.) The Examiner also found that when a
caller accesses the VRU applications of Calabrese, “the caller must always
be identified, but the applications selected would have different
informational needs, e.g. claim status and dependent change.” (Ans. 20;
FF 7.) Accordingly, the Examiner found that Calabrese teaches the claim
limitation “concurrent processing of data in accordance with common
operations of said operating process format.” (Ans. 20.) We find that
Calabrese at least renders obvious the disputed limitation as explained
further below.
Calabrese teaches that one “critical aspect” for VRU-based
applications is the initial identification of a caller (e.g., employee ID,
account number or policy number) and that Automatic Number
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Identification (ANI) provides the capability of automatically capturing the
caller’s phone number and cross-referencing it with the caller’s
identification. (FF 7.) In other words, Calabrese teaches that, regardless of
the VRU application (e.g., “Annuities Inquiry,” “Health Claim Status,”
“Flexible Benefits Enrollment” or “Pension Account Status”), the caller’s
phone number is captured by ANI and identified -- thus meeting the claimed
“common operations” feature. Calabrese further teaches that each of the
VRU applications includes multiple 800 lines (FF 6), suggesting that each
VRU application can support multiple calls concurrently. In other words,
Calabrese teaches or suggests “concurrent processing of data in accordance
with common operations of said operating process format.”
Appellant argues that in Calabrese, “‘claim status’ and ‘dependant
change’ are different formats, not the same format as the claim requires” and
that “there is no showing that in the claim status and dependant change
applications, there are some same, common operations between both.”
(Br. 28.) However, as discussed previously, Calabrese teaches that one
“critical aspect” for VRU-based applications is the initial identification of a
caller using ANI, regardless of the VRU application the caller dials. (See
FF 7.)
Appellant also points to the Klein Declaration. (Br. 31.) A relevant
portion of the Klein Declaration states that “to satisfy the ‘common
operations’ of the claim, Calabrese only discloses a ‘wide variety of
applications and sets up different logical paths through the menu structure.’
Calabrese does not identify which of the operations of multiple applications
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is common, therefore there is no efficient handling of these common
operations.” (Klein Decl. ¶ 20.) We are not convinced for the reasons
previously discussed. Also, the statements in the Klein Declaration relied
upon by Appellant lack persuasive factual support because the Klein
Declaration does not cite to any persuasive corroborating evidence. See In
re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992).
Therefore, we agree with the Examiner that the combination of
Calabrese and Periphonics teaches or suggests “concurrent processing of
data in accordance with common operations of said operating process
format.”
Claims 56, 57, 62, 67 and 73
With respect to the fifth and sixth issues, we are not convinced by
Appellant’s arguments (Br. 29-31) that the combination of Calabrese and
Periphonics does not teach or suggest “utilizing, for qualified callers, the
identification signals relating to the callers, to avoid prompting certain
callers with a certain previously provided cue or cues” and “providing to the
qualified callers at least one other caller cue” as recited in independent
claims 56 and 67.
The Examiner acknowledged that Calabrese does not teach these
limitations (Ans. 21), and cited Periphonics for the disclosure of the claimed
cuing features in an automated student registration system where a student
enters a student ID number and a personal access code to register for classes.
(Ans. 22-23; FF 10, 14.) The Examiner concluded that these claim
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limitations would have been obvious over Calabrese and Periphonics.
(Ans. 23.) We agree.
Calabrese describes the use of automated voice response units
(VRU’s) to handle client calls at The Travelers Companies using touch tone
entry (FF 5), including “Annuities Inquiry,” “Health Claim Status,”
“Flexible Benefits Enrollment” and “Pension Account Status” (FF 6).
Periphonics describes a Touch-Tone telephone/voice response system for
automated student registration at colleges and universities. (FF 10.) This
Touch-Tone telephone/voice response system also has additional
applications in distribution, transportation, manufacturing and many other
industries. (FF 10.) Periphonics teaches that dialogue design for the voice
response system is important for the speed and capacity of the system,
including “all ‘go wrong’ possibilities in the registration process.” (FF 13.)
As an example, Periphonics teaches that some possible responses include:
“Your student ID number or your personal access code is not on our file”,
“You are now registered for 12 credits” or “You are not registered for any
classes.” (FF 14.) In other words, if the student enters a correct student ID
and a personal access code, the response “Your student ID number or your
personal access code is not on our file” can be avoided and the student
receives a response related to class registration status. (See FF 14.) Thus,
Periphonics teaches “utilizing, for qualified callers, the identification signals
relating to the callers, to avoid prompting certain callers with a certain
previously provided cue or cues” and “providing to the qualified callers at
least one other caller cue.”
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A person of ordinary skill in the art would have recognized that
incorporating the dialogue of Periphonics’ voice response system including
“all ‘go wrong’ possibilities” with Calabrese’s voice response units would
provide the advantage of enhancing the speed and capacity of the voice
response units. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Thus, we agree with the Examiner (Ans. 23) that modifying Calabrese to
include dialogue with “all ‘go wrong’ possibilities,” as taught by Periphonics
would have been obvious.
Appellant argues that “[a] ‘cue’ . . . solicits some input from the
caller in response, and is distinct from a mere informational message given
to the caller.” (Br. 30.) Thus, Appellant argues, the “messages [of
Periphonics] are not ‘cues’ within the meaning of the ‘120 claims because
they do not prompt or solicit any responsive input from callers.”
(Br. 30-31). However, one example of a response message from Periphonics
states: “Your student ID number or your personal access code is not on our
file. Please verify both numbers and call again.” (FF 14.) Thus, this
response message is not “merely informational” because it solicits the
student to verify both the student ID number and the personal access code
and to call again. (See FF 14.)
Appellant further argues that “[e]ven if it were shown that Periphonics
disclosed utilizing identification signals to avoid prompting with a cue or
cues, it has not been shown that an additional ‘cue’ is then provided as the
claims require.” (Br. 31.) However, when the student enters a correct
student ID number and a correct personal access code, Perphonics provides
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another example of a response message as follows: “You are not registered
for any classes.” (See FF 14.) Again, this response message is not “merely
informational,” because it solicits the student to register for classes. (See
FF 14.)
Therefore, we agree with the Examiner that the combination of
Calabrese and Periphonics teaches or suggests “utilizing, for qualified
callers, the identification signals relating to the callers, to avoid prompting
certain callers with a certain previously provided cue or cues” and
“providing to the qualified callers at least one other caller cue.”
Secondary Considerations
To rebut the Examiner’s obviousness rejections, Appellant points to
evidence of commercial success. (Br. 44-52.) In particular, Appellant has
provided a list of “at least 243 companies” that have taken a “full portfolio
license.” (Br. 44-50.) Appellant has also provided statements from leaders
in the financial industry. (Br. 51-52.)
Objective evidence of nonobviousness (also called “secondary
considerations”) must always be considered in making an obviousness
determination, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39
(Fed. Cir. 1983), but it is not necessarily conclusive, Ashland Oil, Inc. v.
Delta Resins & Refrac., Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). A “nexus”
is a legally and factually sufficient connection between the objective
evidence and the claimed invention, such that the objective evidence should
be considered in the determination of nonobviousness. Demaco Corp. v. F.
Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A
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“nexus” is required between the merits of the claimed invention and the
evidence of secondary considerations in order for the evidence to be given
substantial weight in an obviousness decision. In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995); Stratoflex, 713 F.2d at 1539. The burden of
proving commercial success (and other types of secondary considerations,
such as long-felt need) during prosecution is on the applicant or patent
owner. See In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996). The
burden of proving a nexus between the commercial success and the merits of
the claimed invention during prosecution is also on the applicant or patent
owner. Huang, 100 F.3d at 140 (“In sum, Huang simply has not carried his
burden to prove that a nexus existed between any commercial success and
the novel features claimed in the application.”).
“It is well settled ‘that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (citing
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). The objective evidence is not
commensurate (coextensive) in scope with the claimed subject matter if the
claims are broader in scope than the scope of the objective evidence, e.g., if
the product included elements or features not recited in the claims which
may be responsible for the commercial success or praise. See Joy Techs.,
Inc. v. Manbeck, 751 F. Supp. 225, 229-30 (D.D.C. 1990) (and cases cited
therein). This is related to the nexus requirement – where the objective
evidence of nonobviousness is not commensurate in scope with the claimed
invention, it is more difficult (but not impossible) to show that objective
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evidence is due to the merits of the claimed invention as opposed to
unclaimed features.
With respect to Appellant’s licensing program of the “full portfolio,”
we agree with the Examiner that a sufficient nexus has not been
demonstrated. (Ans. 75-77.) Although Appellant argues that “[c]laims 28,
34, 56, 57, 62, 67, and 73 clearly have been a contributing factor” (Br. 44),
Appellant has not established with convincing documentary evidence a
sufficient connection between the decision of the “at least 243 companies” to
obtain a license and claims 28, 34, 56, 57, 62, 67 and 73 of the ‘120 patent.
Furthermore, the licensing activity may be due to factors unrelated to the
unobviousness of the claims of the ‘120 patent such as the license being
mutually beneficial or less expensive than defending infringement suits. See
EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 907-08 (Fed. Cir.
1985).
In addition, Appellant has not made an adequate showing that the
statements from leaders in the financial industry (Br. 51-52) are
commensurate in scope with claims 28, 34, 56, 57, 62, 67 and 73 of the ‘120
patent. Each of the statements refers generally to the “Katz portfolio,” “Katz
patents,” “patent portfolio,” or similar language in reference to multiple
patents. (Br. 51-52.)
Therefore, the Examiner has properly considered Appellant’s
evidence of commercial success.
We sustain the rejection of independent claims 28, 56 and 67 as being
obvious over Calabrese and Periphonics. Claims 34, 57, 62 and 73 depend
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from independent claims 28, 56 and 67, and we sustain the rejection of these
claims under 35 U.S.C. § 103(a) for the reasons discussed with respect to
independent claims 28, 56, and 67.
Because we agree with the Examiner that claims 56, 57, 62, 67 and 73
are unpatentable under 35 U.S.C. § 103(a) over Calabrese and Periphonics,
we do not reach additional issues raised by Appellant regarding additional
cumulative rejections of these claims.
DECISION
The Examiner's decision to rejection claims 28, 34, 56, 57, 62, 67 and
73 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

bim

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FOR PATENT OWNER:

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BYARD NILSSON, ESQ.
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