Ex Parte 6292547 et alDownload PDFBoard of Patent Appeals and InterferencesMar 31, 201090006979 (B.P.A.I. Mar. 31, 2010) Copy Citation 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 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 Technology Center 3900 ____________ Decided: March 31, 2010 ____________ Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and KEVIN F. TURNER, Administrative Patent Judges. BOALICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 2 This is a decision on appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 1-10, 21-26, and 29-50. The Examiner has confirmed the patentability of claims 11-20, 27, and 28. We have jurisdiction under §§ 134(b) and 306. An oral hearing was held on February 18, 2009. The record includes a written transcript of the oral hearing. We affirm-in-part. Table of Contents Page STATEMENT OF THE CASE ............................................................. 8 Merged reexamination proceedings ........................................... 8 Related litigation ......................................................................... 9 Appellant's invention .................................................................. 9 The claims .................................................................................. 10 The references ............................................................................. 12 The rejections .............................................................................. 13 PRINCIPLES OF LAW ......................................................................... 14 DISCUSSION .................................................................................. 15 Claim interpretation .................................................................... 15 Interpretation of expired patent claims ..................................... 16 Interpretation of specific claim terms ........................................ 20 "a switch" (claims 1-10) .................................................... 20 "consumable key" (claim 7) .............................................. 22 "chronological sequence" (claims 6 and 23) ..................... 22 "qualification" (claims 1, 2, 7, and 21) ............................. 25 "acknowledgement data" (claims 5 and 22) ...................... 25 "item data" (claims 8, 21, 40, 41, and 48-50) ................... 26 "computer generated data" (claims 21, 22, and 23) .......... 28 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 3 Arguments not made are waived ................................................ 29 Grounds of rejection (1) and (2) -- Anticipation and Obviousness 30 (1) VCT '87 ...................................................................... 30 Facts ........................................................................ 30 VCT '87 .......................................................... 30 Klein IV Declaration ..................................... 35 Independent Claim 1 ............................................... 38 Contentions .................................................... 38 Issue ............................................................... 50 Analysis .......................................................... 51 Conclusion ..................................................... 56 Dependent claim 2 .................................................. 57 Claim limitation at issue ................................ 57 Contentions .................................................... 57 Issue ............................................................... 58 Analysis .......................................................... 58 Conclusion ..................................................... 58 Dependent claim 3 .................................................. 59 Claim limitation at issue ................................ 59 Contentions .................................................... 59 Issue ............................................................... 59 Analysis .......................................................... 59 Conclusion ..................................................... 60 Dependent claims 4-6 and 8 ................................... 60 Claim limitations at issue .............................. 60 Contentions .................................................... 61 Issue ............................................................... 62 Additional Facts ............................................ 62 Klein IV Declaration ........................... 62 Analysis .......................................................... 63 Conclusion ..................................................... 65 Dependent claim 7 .................................................. 65 Claim limitation at issue ................................ 65 Contentions .................................................... 65 Issue ............................................................... 66 Additional Facts ............................................ 67 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 4 Klein IV Declaration ........................... 67 Analysis .......................................................... 68 Conclusion ..................................................... 68 Dependent claims 8 and 9 ....................................... 68 Claim limitations at issue .............................. 68 Contentions .................................................... 69 Issue ............................................................... 69 Analysis .......................................................... 69 Conclusion ..................................................... 69 (2) Yoshizawa .................................................................. 70 Facts ........................................................................ 70 Yoshizawa ...................................................... 70 Claims 21-23, 25, 37-39, 44, and 47 ...................... 74 Contentions .................................................... 74 Issue ............................................................... 77 Analysis .......................................................... 78 Conclusion ..................................................... 80 Dependent claims 24, 45, and 46 ............................ 80 Grounds of rejection (3) through (11) -- Obviousness .............. 81 Additional Principles of Law ............................................ 81 Scope and content of prior art ........................................... 82 Level of ordinary skill in the art ........................................ 82 Differences ........................................................................ 84 Appellant's proffered evidence of nonobviousness .......... 84 Principles of law ..................................................... 84 Issue ........................................................................ 87 Facts ........................................................................ 87 Contentions ............................................................. 89 Analysis ................................................................... 93 Conclusion .............................................................. 98 (3) VCT '87 and VCT '86 .................................................. 99 Independent claim 1 ................................................ 99 Contentions .................................................... 99 Issue ............................................................... 101 Facts .............................................................. 101 VCT '86 ................................................ 101 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 5 Klein IV Declaration ........................... 103 Analysis .......................................................... 104 Conclusion ..................................................... 106 Dependent claims 2-9 ............................................. 106 Contentions .................................................... 106 Issue ............................................................... 106 Analysis .......................................................... 106 Conclusion ..................................................... 107 Dependent claim 10 ................................................ 107 Claim limitation at issue ................................ 107 Contentions .................................................... 107 Issue ............................................................... 108 Analysis .......................................................... 108 Conclusion ..................................................... 108 (4) Moosemiller and Szlam .............................................. 108 Facts ........................................................................ 109 Moosemiller ................................................... 109 Szlam .............................................................. 111 Independent Claim 1 ............................................... 115 Contentions .................................................... 115 Issue ............................................................... 116 Analysis .......................................................... 116 Conclusion ..................................................... 117 Dependent claim 2 .................................................. 117 Claim limitation at issue ................................ 117 Contentions .................................................... 117 Issue ............................................................... 118 Analysis .......................................................... 118 Conclusion ..................................................... 118 Dependent claims 3-5 and 8 ................................... 119 Claim limitations at issue .............................. 119 Contentions .................................................... 119 Issue ............................................................... 120 Analysis .......................................................... 120 Conclusion ..................................................... 120 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 6 (5) Yoshizawa and Moosemiller ...................................... 121 Claim limitations at issue ....................................... 121 Contentions ............................................................. 121 Issue ........................................................................ 122 Facts ........................................................................ 123 Klein IV Declaration ..................................... 123 Analysis ................................................................... 123 Conclusion .............................................................. 124 (6) Yoshizawa and Rackman ........................................... 124 Claim limitations at issue ....................................... 124 Contentions ............................................................. 125 Issue ........................................................................ 127 Facts ........................................................................ 127 Rackman ........................................................ 127 Klein IV Declaration ..................................... 128 Analysis ................................................................... 130 Conclusion .............................................................. 131 (7) Yoshizawa, Rackman, and Gentile ............................. 131 Claim limitations at issue ....................................... 132 Contentions ............................................................. 132 Issue ........................................................................ 133 Facts ........................................................................ 133 Gentile ............................................................ 133 Klein IV Declaration ..................................... 133 Analysis ................................................................... 135 Conclusion .............................................................. 135 (8) Yoshizawa and Vij ..................................................... 136 Claim limitations at issue ....................................... 136 Contentions ............................................................. 136 Issue ........................................................................ 137 Facts ........................................................................ 138 Vij .............................................................. 138 Klein IV Declaration ..................................... 139 Analysis ................................................................... 140 Conclusion .............................................................. 141 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 7 (9) Yoshizawa and Kono .................................................. 141 Claim limitations at issue ....................................... 141 Contentions ............................................................. 142 Issue ........................................................................ 142 Facts ........................................................................ 143 Kono .............................................................. 143 Analysis ................................................................... 143 Conclusion .............................................................. 143 (10) Yoshizawa and Emerson .......................................... 144 Claim limitation at issue ......................................... 144 Contentions ............................................................. 144 Issue ........................................................................ 145 Facts ........................................................................ 145 Emerson ......................................................... 145 Klein IV Declaration ..................................... 146 Analysis ................................................................... 146 Conclusion .............................................................. 147 (11) Yoshizawa and St. Jean ............................................ 147 Claim limitation at issue ......................................... 147 Contentions ............................................................. 148 Issue ........................................................................ 149 Facts ........................................................................ 149 St. Jean ........................................................... 149 Klein IV Declaration ..................................... 150 Analysis ................................................................... 152 Conclusion .............................................................. 153 CONCLUSIONS .................................................................................. 153 DECISION .................................................................................. 154 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 8 STATEMENT OF THE CASE Merged reexamination proceedings The Director of the U.S. Patent and Trademark Office, on his own initiative, ordered reexamination of U.S. Patent No. 6,292,547 (the '547 patent) on March 26, 2004, Reexamination Control No. 90/006,979, for reexamination of claims 1-10. A subsequent request for ex parte reexamination was filed on June 9, 2004, on behalf of an anonymous third party requester by Donald E. Stout of Antonelli, Terry, Stout & Kraus, LLP, Reexamination Control No. 90/007,087. The reexamination proceedings have been merged. The '547 patent, entitled "Telephonic-Interface Statistical Analysis System," issued September 18, 2001, to Ronald A. Katz, based on Application No. 09/270,241 (the '241 application), filed March 15, 1999. The '547 patent is said to be a continuation of Application No. 08/475,425, filed June 7, 1995, now U.S. Patent No. 6,035,021, issued March 7, 2000, which is said to be a division of Application No. 07/335,923, filed April 10, 1989, now U.S. Patent No. 6,016,344, issued January 18, 2000, which is said to be a continuation of Application No. 07/194,258, filed May 16, 1988, now U.S. Patent No. 4,845,739, issued July 4, 1989, which is said to be a continuation-in-part of Application No. 07/018,244, filed February 24, 1987, now U.S. Patent No. 4,792,968, issued December 20, 1988, which is said to be a continuation-in-part of Application No. 06/753,299, filed July 10, 1985, now abandoned. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 9 The '547 patent is said to be assigned to Ronald A. Katz Technology Licensing L.P., said to be the real party in interest. The '547 patent is said to have an expiration date of July 10, 2005 by virtue of a terminal disclaimer. Thus, the '547 patent is now expired. Related litigation The '547 patent has been or is involved in numerous litigations, as summarized in the Related Proceedings Appendix (App. Br. 108-122). Appellant's invention The claimed invention relates to IVR (interactive voice response) apparatus and methods. Prior art IVR systems include an interface structure coupled to a communication facility, such as a public telephone network. Callers use a push-button telephone terminal to dial a number associated with a particular application. Once connected, a voice generator structure provides voice operating instructions to callers. Callers enter answer data using the push-buttons, which are converted into data that can be stored and processed by a computer. ('547 patent, col. 1, ll. 40-54.) The claimed invention is "directed to the integration of telephonic systems with computer databases and live operator call centers to provide interactive call processing services" and, in particular, "[t]he claimed combinations of technical capabilities and functionalities relating to the integration of telephone systems are directed to analysis control system for use with a communication facility." (App. Br. 5.) Applications mentioned for the claimed invention include polling, auctions, lotteries, games, and Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 10 mail order ('547 patent, col. 3, ll. 31-46; see also Abstract). Among other things, the Specification provides examples involving a health poll ('547 patent, col. 5, l. 63 to col. 9, l. 47), a mail-order facility ('547 patent, col. 10, l. 26 to col. 11, l. 67), an instant lottery system ('547 patent, col. 12, l. 20 to col. 14, l. 7), an auction sale ('547 patent, col. 14, l. 8 to col. 15, l. 61), a television game show ('547 patent, col. 15, l. 62 to col. 19, l. 61), and a polling operation associated with a television broadcast ('547 patent, col. 19, l. 62 to col. 21, l. 46). The claims Claims 1 and 21 are exemplary and reproduced below: 1. A control system for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals comprises a telephonic instrument including a voice communication device, and a digital input device in the form of an array of alphabetic numeric buttons for providing caller data signals, said control system comprising: a processor unit for processing said caller data signals supplied by individual callers via said remote terminals; interface structure for interfacing said communication facility to said processor unit wherein said interface structure receives data signals prior to the close of communication with the caller, including called number data signals (DNIS) and calling number identification data signals automatically provided by said communication facility and said caller data signals supplied by the individual callers via said remote terminals; Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 11 voice generator for providing prompts to said individual callers in response to which said individual callers provide said caller data signals, said caller data signals including caller qualification data for qualifying said individual callers; means for testing caller customer number data as part of said caller qualification data supplied by the individual callers as at least certain of said caller data signals against a file of stored customer number data; means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with a select format from a plurality of formats identified by said called number identification data signals (DNIS); and a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step. 21. A method for implementing a service for controlling an order of an item or items for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals comprises a telephonic instrument including a voice communication device and a digital input device in the form of an array of alphabetic numeric buttons for providing data, said method comprising the steps of: interfacing said remote terminals for voice and digital communication and receiving data signals prior to the close of communication from callers at said remote terminals including said caller data signals developed by said remote terminals; providing prompts to said individual callers in response to which said individual callers can provide said caller data signals including caller qualification data for qualifying callers; Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 12 receiving from said callers customer number data in addition to one other form of identification data as a part of the caller qualification data; verifying said customer number data and said other form of identification data entered by said callers; receiving from said callers order data including item data entered by said callers via said digital input device; receiving from said callers additional data relating to said item data; processing said caller entered data to implement said order; and providing individual callers with computer generated data to identify said order for individual callers. The references The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kono 3,651,503 Mar. 21, 1972 St. Jean 3,702,392 Nov. 7, 1972 Rackman 3,778,553 Dec. 11, 1973 Gentile 3,833,885 Sep. 3, 1974 Vij 4,788,682 Nov. 29, 1988 Szlam 4,797,911 Jan. 10, 1989 Kaplan 4,797,913 Jan. 10, 1989 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 13 Kanichiro Yoshizawa et al., Voice Response System for Telephone Betting, Hitachi Review 26(6), June 1977, pp. 215-220 ("Yoshizawa"). S. Thomas Emerson, Voice Response System—Technology to the Rescue for Business Users, Speech Technology, Jan/Feb 1983, pp. 99-103 ("Emerson"). John P. Moosemiller, AT&T's Conversant TM I Voice System, Speech Technology, Mar/Apr 1986, pp. 88-93 ("Moosemiller"). VCT Quarterly Newsletter, Vol. 1, No. 2, Winter 1986, pp. 1-6 ("VCT '86"). VCT Quarterly Newsletter, Vol. 2, No. 3, Winter 1987, pp. 1-6 ("VCT '87"). The rejections1 (1) Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, alternatively, under 35 U.S.C. § 103(a) as obvious over, VCT '87. (Appx. A, pp. 3-11.) (2) Claims 21-25, 37-39, and 44-47 stand rejected under 35 U.S.C. § 102(b) as anticipated by Yoshizawa. (Appx. A, pp. 12-16.) (3) Claims 1-10 stand alternatively rejected under 35 U.S.C. § 103(a) as unpatentable over VCT '87 and VCT '86. (Appx. A, pp. 17-18.) (4) Claims 1-6 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moosemiller and Szlam. (Appx. A, pp. 18-22.) 1 Information in parentheses following rejections indicates location of the rejection in Appendix A to the Examiner's Answer. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 14 (5) Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Moosemiller. (Appx. A, pp. 22-23.) (6) Claims 29-31 and 34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Rackman. (Appx. A, pp. 23-25.) (7) Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa, Rackman, and Gentile. (Appx. A, p. 25.) (8) Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Vij. (Appx. A, pp. 26-27.) (9) Claims 40, 41, and 48-50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Kono. (Appx. A, pp. 27-29.) (10) Claim 42 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Emerson. (Appx. A, p. 30.) (11) Claim 43 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and St. Jean. (Appx. A, pp. 31-32.) PRINCIPLES OF LAW Anticipation is established when a single prior art reference discloses expressly or under the principles of inherency each and every limitation of the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). Under the principles of inherency, a reference anticipates if it necessarily includes or functions in accordance with the claimed limitations. Atlas Powder, 190 F.3d at 1347. Inherency may be established by extrinsic evidence, but "[s]uch evidence must make clear that the missing Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 15 descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill." Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency may not be established by probabilities or possibilities, and "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient." Id. "Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). In KSR, the Supreme Court reaffirmed that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. at 416. DISCUSSION Claim interpretation Claim interpretation necessarily precedes the addressing of questions of patentability. See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997) ("Implicit in our review of the Board's anticipation analysis is that the claim must first have been correctly construed to define the scope and meaning of each contested limitation."). Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 16 Interpretation of expired patent claims Appellant states that the '547 patent expired on July 10, 2005, pursuant to a terminal disclaimer, and therefore can no longer be amended (App. Br. 11). Appellant argues that "a narrow claim construction that upholds the validity of the claim should be applied rather than a broad construction that would invalidate the claim" (App. Br. 11; see also App. Br. 12, 13, 21-23). In construing patent claims in a civil action in district court, "[t]he role [of claim construction] is neither to limit nor broaden the claim, but to define, as a matter of law, the invention that has been patented." Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001). "'Claim construction' is the judicial statement of what is and is not covered by the technical terms and other words of the claims." Id. That is, the district court provides a "definitive" or "true" or "exact" claim construction. By comparison, 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). Construing claims broadly is not unfair to the patentee because the patentee has the opportunity to amend the claims to obtain more precise claim coverage. Id. at 1364. 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 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 17 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: [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 nonprecedential2). 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, 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 2 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 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 18 validity" is sometimes misunderstood and therefore, 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 Technologies, 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 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 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 19 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 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 narrower claim construction is supported by the evidence. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 20 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. As to Appellant's statement that claims should be given a construction that will render the claim valid, we do not think it is sufficient that a patentee can conceive of an interpretation which is consistent with the evidence and will render the claim valid. The goal of claim construction is to determine what a claim means from the various sources of intrinsic and extrinsic evidence without regard to its possible invalidity. Interpretation of specific claim terms The following claim terms are at issue: "a switch" (claims 1-10) Appellant argues that a "'switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step' [as recited by claim 1] must be interpreted as requiring a decision by the system after conducting a test." (App. Br. 14; Reply Br. 7.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 21 The Examiner construes "the 'switch' to be a device for shifting the caller from the automated processing of a format to person-to-person or manual processing 'in the event the individual callers do not qualify during the testing step', as specifically claimed." (Ans. 9.) The "control system" of claim 1 is recited to comprise, among other things, the "switch." Therefore, the "switch" is part of the control system. Accordingly, we interpret the "switch" to be a device that is part of the control system and functions to transfer individual callers to a manual operation "in the event the individual callers do not qualify during the testing step." Although claim 1 recites that the switch transfers the callers during the testing step, we note that claim 1 is a system claim and does not recite any particular testing step. However, the control system of claim 1 is recited as comprising a "means for testing caller customer number data as part of said caller qualification data supplied by the individual callers as at least certain of said caller data signals against a file of stored customer number data." Therefore, the "means for testing" also is part of the control system. At the oral hearing, Appellant stated that "the means for testing would reside in the processor of Figure 1 [of the '547 patent]" and, in particular, represented that it is the qualification unit 93 of Figure 4 of the '547 patent which performs the test. (Transcript 7:7-10.) Thus, we interpret the recited "testing step" to be the test that is performed by the "means for testing." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 22 "consumable key" (claim 7) Appellant argues that a "'consumable key' must be interpreted as a key that specifies a finite number of uses accorded to a caller in a defined or a non-recurring period of time that once consumed are not automatically refreshed by the system." (App. Br. 14; see also App. Br. 18; Reply Br. 7-8.) The Examiner construed "consumable key" to mean "a number or word that allows a caller access to a service or part of a service a predefined limited number of times and which cannot be refreshed or recharged," as construed by the District Court in Katz v. AT&T Corp., 63 F. Supp. 2d 583, 623 (E.D. Pa. 1999). (Ans. 11.) We interpret a "consumable key" in the same manner as the Examiner, namely as a number or word that allows a caller access to a service or part of a service a predefined limited number of times and which cannot be refreshed or recharged. "chronological sequence" (claims 6 and 23) Appellant argues that "'sequence' must be construed as data that indicates the sequence or order in which the callers call the system (two callers cannot be accorded the same sequence number, an order between two must be established); a time/date stamp is not an indication of sequence." (Reply Br. 8; see also App. Br. 15, 18-19.) Appellant argues that a "sequence" should be construed to exclude a date/time stamp because several callers calling at the same time could receive the same date/time Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 23 stamp. (Reply Br. 8.) Appellant further argues that "'chronological' means that the numbers (which cannot be duplicative) accorded indicate an order in time as well." (Reply Br. 9.) Appellant also contends that "sequence data" were distinguished over "date and time" of calls in Barger during prosecution of U.S. Patent No. 5,365,575, said to be related to the '547 patent, on the basis that date and time may be duplicative of individual callers. (Reply Br. 9.) The actual claim limitations at issue are "wherein the number data is provided in chronological sequence" (claim 6) and "wherein the computer generated number data is provided to the individual callers in chronological sequence" (claim 23). Per claims 4 and 21, from which claims 6 and 23 depend, the "number data" recited in claim 6 and the "computer generated number data" recited in claim 23 are both data identifying an order. Thus, Appellant's arguments regarding "sequence data" are not germane. Appellant has not pointed to any particular definition of "chronological sequence" in the Specification. The relevant plain meaning of "chronological" is "arranged in order of time." Webster's Third New International Dictionary of the English Language Unabridged 402 (1971). The relevant plain meaning of a "sequence" is "a continuous or connected series." Webster's Third New International Dictionary of the English Language Unabridged 2071 (1971). Thus, a "chronological sequence" is interpreted to be a continuous or connected series arranged in order of time. Consequently, number data (claim 6) or computer generated number data (claim 23) provided in chronological sequence are interpreted to be number Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 24 data or computer generated number data provided in a continuous or connected series arranged in order of time. A date/time stamp arranges elements in a chronological sequence, i.e., given two date/time stamps it is possible to tell the time order. Thus, a date/time stamp meets the definition of "chronological sequence" and data, such as data identifying an order, provided with a date/time stamp meet the above-quoted limitations of claims 6 and 23. Even assuming that two callers can have the same date/time stamp, which Appellant only speculates can happen in the references, Appellant has not provided convincing evidence or argument to demonstrate that this is not providing data in chronological sequence as claimed. Data provided for two calls with a "tie" in the date/time stamp are still data provided in chronological sequence because the tie indicates that two calls were received at the same time and it indicates the order vis-à -vis other members of the sequence. The claim language does not require that each element in the sequence is given a unique consecutive number (e.g., 1, 2, 3, etc.) so that one can determine not only the sequence but also the position in the sequence. And we find no ambiguity that would lead us to a narrower interpretation. Our conclusion that a date/time stamp is a "chronological sequence" is consistent with the Specification of the '547 patent. The '547 patent describes an auction sale example where bids are received from remote terminals (col. 14, l. 8 to col. 15, l. 61). "As the selection process proceeds, signals from the clock CL (FIG. 1) are introduced to indicate the sequence of bidders." ('547 patent, col. 15, ll. 38-40.) Because the '547 patent indicates Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 25 that clock signals (i.e., chronological signals) are used to indicate the sequence of bidders, and does not indicate that the sequence is unique, the Specification of the '547 patent supports our interpretation that a date/time stamp is a "chronological sequence." "qualification" (claims 1, 2, 7, and 21) Appellant and the Examiner agree that "qualification" should be interpreted as "determining or assessing whether a call meets one or more conditions or requirements." (App. Br. 15; Ans. 14; Reply Br. 9.) We adopt this interpretation as well. "acknowledgement data" (claims 5 and 22) Appellant argues that "'acknowledgement data' must be interpreted as computer generated data provided to the caller to identify a transaction, such as an order during the call." (App. Br. 16; see also App. Br. 17, 19-20; Reply Br. 9-10.) The Examiner acknowledged that "[c]laim 22 . . . explicitly requires the acknowledgement data to be computer generated." (Ans. 15.) However, the Examiner disagreed with Appellant's interpretation of "acknowledgement data" for claim 5 because, unlike claim 22, claim 5 does not require computer generation of the acknowledgement data. (Ans. 14-15.) But even under Appellant's definition, the Examiner found that the applied prior art meets the definition of "acknowledgement data." (Ans. 14.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 26 The actual claim limitations at issue are "wherein the number data is provided as acknowledgement data to the individual callers" (claim 5) and "wherein the computer generated data identifying the order is provided to the individual callers as acknowledgement data" (claim 22). We agree with the Examiner that claim 22 requires the acknowledgement data to be computer generated. However, we agree with Appellant that claim 5 also requires the acknowledgement data to be computer generated. Per claim 4, from which claim 5 depends, the "number data" are "data identifying the order." Per claim 3, from which claim 4 depends, the processor unit generates "data identifying an order." Therefore, the "acknowledgement data" recited by claim 5 are generated by a processor unit or, in other words, are computer generated. "item data" (claims 8, 21, 40, 41, and 48-50) Appellant argues that "'item data' must be interpreted as an object for purchase" (App. Br. 17; see also App. Br. 20-21) and also argues that "'item' data is data that pertains to a physical object ('item') rather than simply a data record stored in a computer system" (Reply Br. 10; see also Reply Br. 11). Appellant has not pointed to any particular definition of "item data" in the Specification. The Examiner interpreted "item data" as "any data related to any item that is included in any format or application running on the IVR and is not limited to items for purchase or to physical items unless expressly stated so in the claim." (Ans. 19.) Among other things, the Examiner noted that Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 27 Appellant's interpretation is contrary to the example from the Krauss Declaration, which was offered by Appellant as evidence of nonobviousness, because "Krauss's example provides no physical object for purchase, yet Patentee has argued that this example in the Krauss Declaration establishes a nexus between claim 8 -- specifically directed to 'item data' -- and commercial use of the claim features." (Ans. 17; see also Ans. 16, 18.) The claims at issue recite "wherein the caller data signals include item number data" (claim 8), "receiving from said callers order data including item data entered by said callers via said digital input device . . . [and] receiving from said callers additional data relating to said item data" (claim 21), "controlling inventory of items with certain order data" (claim 40), "wherein the controlling step controls the inventory of items on- line" (claim 41), "wherein the additional data provided by the callers includes the size of the item" (claim 48), "wherein the additional data provided by the caller includes the color of the item" (claim 49), and "wherein the additional data provided by the caller includes the size and color of the item" (claim 50). The relevant plain meaning of an "item" is an article or unit, see The American Heritage Dictionary of the English Language, New College Ed., 696 (1975), and "data" are information, see id. at 336, so "item data" are information related to the article or unit. There is nothing in the claim term "item data" and nothing in the Specification that indicates that the item is restricted to an item to be purchased, or that the item is necessarily a Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 28 physical object. Nor do we find an ambiguity that would lead us to a narrower interpretation. "computer generated data" (claims 21, 22, and 23) Appellant argues that "'computer generated data' must be interpreted as data generated during the course of a communication." (App. Br. 18; see also App. Br. 21; Reply Br. 11.) Appellant contends that the limitation has been improperly "interpreted as compilation of informational data provided to the caller in response to a request as in Moosemiller's stock quotes." (App. Br. 18.) According to Appellant, "in the context of the claims such data is clearly formulated during the communication." (Reply Br. 11.) The Examiner disagreed with Appellant's interpretation because "'computer-generated data', itself, does not incorporate the time of generation by the computer" and there is nothing that requires the computer generated data to be generated during a telephone call. (Ans. 20.) The claims at issue recite "providing individual callers with computer generated data to identify said order for individual callers" (claim 21), "wherein the computer generated data identifying the order is provided to the individual callers as acknowledgement data" (claim 22), and "wherein the computer generated number data is provided to the individual callers in chronological sequence" (claim 23). Although the providing of computer generated data takes place during a communication, the claim language places no temporal limitation upon when the generation of the "computer generated data" must occur. Nor has Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 29 Appellant pointed to any particular definition of "computer generated data" in the Specification that would require a temporal restriction upon when the generation of the "computer generated data" must occur. And we find no ambiguity that would lead us to a narrower interpretation. Moreover, as discussed infra, even if the computer generated data are required to be generated during the course of a communication, the prior art discloses such "computer generated data." We interpret "computer generated data" to mean data which are created by the computer, not just selecting existing data. See In re Scroggie, 170 Fed. Appx. 132, 135 (Fed. Cir. 2006) (nonprecedential) ("The term 'generating page data' means that the page data is 'generated,' not merely 'selected.'"). This uses the ordinary and customary meaning of "generated" and does not read in any limitations. However, this definition includes the computer creating any new kind of data from existing data, e.g., generating computer speech data from stored numbers, or from other signals, e.g., generating clock data from an internal computer clock. Arguments not made are waived This opinion only addresses arguments made by Appellant. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii); In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art."); In re Wiechert , 370 F.2d 927, 936 (CCPA 1967) ("This Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 30 court has uniformly followed the sound rule that an issue raised below which is not argued in this court, even if it has been properly brought here by a reason of appeal, is regarded as abandoned and will not be considered. It is our function as a court to decide disputed issues, not to create them."); In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments must first be presented to the Board before they can be argued on appeal). It is assumed that Appellant either considers limitations not argued to be well known or has decided not to argue patentability based on these unargued limitations. Portions of declarations not relied on in the arguments are likewise considered waived. Grounds of rejection (1) and (2) -- Anticipation and Obviousness (1) VCT '87 Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, alternatively, under 35 U.S.C. § 103(a) as obvious over, VCT '87. Facts VCT '87 1. VCT '87 describes the use of voice response technology in a customer service environment. (PP. 1, 6.) VCT '87 teaches that: Voice response can be used to answer the call, identify the customer and problem and even provide the solution. In some situations the voice response system may be used to automate the complete customer service function while in other instances it is more desirable to automate only a selected portion of the transaction. Regardless of the configuration, customer service departments can benefit Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 31 through increased availability of service representatives and prevent customers from reaching a busy signal or waiting for a callback. (P. 1.) 2. VCT '87 describes partial automation where "the voice response system performs the routine data entry and identification functions of the service representative" by having the customer press appropriate keys on a Touch Tone telephone in response to verbal prompts. (P. 1.) 3. VCT '87 also describes complete automation of selected calls, such as by using the voice response system to provide answers to routine or standard questions. (P. 1.) VCT '87 teaches that: [A] customer calls the service number and is greeted by the voice response system. The voice system identifies both the customer and the question. If the question can be answered by the voice response system the call will be handled without human involvement. If the question requires an unstructured solution, the call and data generated by the voice system, can be simultaneously transferred to a service representative. (P. 1.) 4. VCT '87 teaches that "[t]hrough complete automation of selected routing inquiry calls, and partial automation of all calls, the voice response system can increase productivity by freeing up trained representatives to handle the involved and complicated inquiries made by customers." (P. 1.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 32 5. "Some voice response applications in customer service are very simple, yet many can get quite complicated due to the problems of interfacing to existing software and hardware as well as telephone systems." (P. 1.) VCT '87 teaches that there are solutions to the problems of integration. (P. 1.) "For example, the VCT ADVANTAGE system can support T1 service. . . . [and] can also provide some special services such as immediate identification for particular applications." (P. 1.) 6. "In one VCT application, several 800 numbers enter the service department over many T1 spans." (P. 1.) "These calls are received by the VCT ADVANTAGE before going to an ACD [Automatic Call Distributor]." (P. 1.) "DNIS [Dialed Number Identification Service] codes received with each call allow the voice response system to identify the application before even speaking with the customer." (PP. 1, 6.) "800 numbers . . . are provided to customers for credit card authorization, point of sale terminals and corporate accounts." (P. 6.) "The DNIS codes associated with each 800 number are identified by the voice system and directed to the appropriate department before the call is even answered." (P. 6.) 7. "A second solution to the problem of integration is Automatic Number Identification (ANI). ANI allows the voice system to identify the number from which the call is being placed. With this type of Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 33 identification, the voice response system can match the number with a customer's account." (P. 6.) Accordingly, "[t]he call can then be handled automatically by the voice system or transferred to a service representative along with a data screen for that customer." (P. 6.) 8. VCT '87 describes a telephone registration system used by Colorado State University (CSU). (P. 3.) "Each Quarter students pick up a Personal Access Number (PAN) and confirmed appointment period from their major department office. In order to register students enter their social security number and PAN number before making course selections." (P. 3.) Also, "[s]tudents may re-enter the registration system to make changes to course selections during their registration period or during open registration." (P. 3.) VCT '87 describes CSU's "plans to enhance their registration system with additional applications in the area of admissions and financial aid." (P. 3.) 9. VCT '87 also describes a telephone registration system used by the University of California at San Diego (UCSD). (P. 4.) "The VCT system will perform all verification and course checking functions from a master database of student records received each quarter from . . . the Student Information System Host." (P. 4.) "Among the database files to be located on the VCT system are student identification numbers, course authorization codes and a special calendar file to permit students to register only during appointed Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 34 registration times." (P. 4.) The registration information collected by the VCT system is downloaded to the host computer and the host generates schedule confirmations that are mailed to the students. (P. 4.) The system allows "students to waitlist for closed courses and allow[s] Departmental offices to continue to control registration for specific courses through assigned authorization codes." (P. 4.) "These authorization codes are currently given to each department prior to registration and are given only to students meeting course pre- requisite requirements." (P. 4.) "The codes will be assigned by the departmental advisor and matched with duplicate files located on the telephone registration system." (P. 4.) In a future implementation stage, "the VCT system will interface to the new host system through terminal emulation" which "allows the telephone registration system to perform all the functions of an operator at a terminal and in a real-time environment to provide students with immediate verification of their class schedules." (P. 4.) 10. VCT '87 also describes voice response systems for American Express service centers. (P. 4.) The systems "perform call routing and card authorization functions to enhance productivity of service operators." (P. 4.) "The voice system will identify the call according to DNIS codes which are associated with each of the many 800 service numbers that enter the center." (P. 4.) "Based on these codes, the voice system will instruct the ACD to route the call to the appropriate Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 35 department." (P. 4.) "In the case of a credit authorization call, the VCT system will instruct the ACD to send the call to an operator called a Relayer who keys in transaction data provided by the merchant." (P. 4.) "Once the data has been entered, the Voice Response Unit (VRU) takes control of the call and the Relayer is immediately available to receive another call. The VRU will either speak an authorization code, or transfer the call to a representative who is reviewing the transaction." (P. 4.) "A recent enhancement to the systems allow the calling merchants to complete the entire transaction by entering the data on their telephone keypad rather than wait for an available Relayer." (P. 4.) Klein IV Declaration 11. Paragraph 18 of the Klein IV Declaration states: 18. With respect to the rejection of claims 1-9, I believe that VCT '87's system does not teach a "means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with a select format from a plurality of formats identified by said Called number identification data signals (DNIS)." The Examiner indicates that "even if the applications are dedicated," each is performed by the same VCT Advantage system. The Examiner is correct that only one application at a time may be executed component [sic] by the VCT system once it is configured (involving hardware and software modifications) and programmed to do so. In other words, the VCT system is a system intended only to be dedicated for a particular application. It is not accurate to say that the VCT system is the same no matter what application Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 36 it is configured to execute because variations in software and/or hardware component configurations for each application would make the system different. For example, UCSD contemplates use of the VCT system for implementing telephone registration. In February 1988 UCSD will begin telephone registration for Graduate Students and Seniors. By Fall Quarter of 1988 all UCSD students will be able to register by phone. The VCT system will perform all verification and course checking functions from a master database of student records received each quarter from a Burroughs 7805, the Student Information System Host. Among the database files to be located on the VCT system are student identification numbers, course authorization codes and a special calendar file to permit students to register only during appointed registration times. Registration information collected by the VCT system will be downloaded to the Host computer to update student records. The Host will then be used to generate schedule confirmations to be mailed to each student. (VCT '87, p. 4). 12. Paragraph 19 of the Klein IV Declaration states: 19. VCT '87 does not teach one of ordinary skill in the art, the hardware and software component modifications and/or additions that would be necessary to configure this VCT system to be able to operate multiple automated applications concurrently. If anything, this article teaches away from making such modifications to facilitate operating multiple automated applications. For example, at page 6 of the article, it indicates the following: Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 37 The voice system must be able to support interactive communications with the host via a direct link in order to maintain fast service and prevent having customers waiting on hold for information. This interactive communication link can be accomplished through interface software supported by either the voice system or the host mainframe; in some instances, software is required for both systems. Due to the expense of developing software for the host it is beneficial to consider a voice system that will support the required host interface or has the ability to adapt to host communications with minimal modifications to the host. In regard to the simultaneous transfer of a customer call with an associated data screen, there are several options to accomplish this task. One is to allow the host to act as the controller and monitor CRT usage to determine the next available representative as well as direct the voice system in the transfer function. Yet this method once again requires software development on the host. A more efficient and economic option, available with the VCT ADVANTAGE system, is to allow the voice system to act as the controller. In this instance, the voice system is programmed to monitor line usage to determine available representatives and can direct the host to transfer the data screen to the specified representative at the same time it performs the call transfer function. (VCT '87, p. 6). The repeated references to required interfaces to host computers at the back end would teach one of ordinary skill in the art that the VCT system must be customized for dedicated purpose. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 38 13. Paragraph 20 of the Klein IV Declaration states: 20. The claimed system of '547 patent is one that has the necessary architectural configuration of hardware and software to be able to operate multiple automated applications concurrently, hence the recitation in the claims to "select" one of these applications by using DNIS signals. Contrary to the Examiner's assertion, the VCT system as described in the article, does not teach one of ordinary skill in the art, the "means for controlling the processor with DNIS," where the processor is configured with a software component to "process at least certain of said caller data signals in accordance with a select format from a plurality of formats identified by said called number identification data signals (DNIS)." 14. Paragraph 22 of the Klein IV Declaration states: 22. On page 43, the Examiner takes the position that "the feature of transferring a caller if the caller "do[es] not qualify during the testing step" would at least be obvious in the interest of customer service if not implicitly disclosed in VCT '87. To one of ordinary skill in the art, VCT '87 teaches no testing step in the context of the '547 patent, which allows access only if a caller passes a testing step. VCT '87 simply describes a system where if the system is incapable of handling a particular situation with a caller, the caller will be transferred to a service representative. This is not the same as imposing a testing step on every caller and transferring only those callers that fail the test. Independent Claim 1 Contentions Appellant contends that the Examiner erred in rejecting claim 1 as being anticipated by or obvious over VCT '87. (App. Br. 25-32, 36; Reply Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 39 Br. 13-15.) In this regard, Appellant argues three distinctions between claim 1 and VCT '87. First, Appellant argues: Distinction 1. Claim 1 generally recites the following: An analysis control system for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals comprises a telephonic instrument including a voice communication device, and a digital input device in the form of an array of alphabetic numeric buttons for providing caller data signals, (claims 1) To satisfy this general recitation, the Examiner points to VCT '87 indicating that it discloses, a control system called the "VCT Advantage system" for automated telephone call processing for a variety of applications, such as customer service (p. 1, left-hand col.), credit authorization (p. 4, left-hand col.), and on-line college registration (p. 3; p. 4, right-hand col.). The VCT Advantage system is disclosed in connection with a unitary customer service application that includes credit card authorization, "point of sale" terminals and corporate accounts. On page 3, an on-line college registration is described, which is a different and dedicated application. On page 3, there is no mention that this on-line college registration is operated with the customer service application on the same VCT Advantage system. In addition, on page 4 of the VCT '87, a telephone registration system for UCSD is disclosed. Again, this is a dedicated single application operated by UCSD on a system purchased from VCT. The Examiner has taken suggestions Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 40 with respect to particular capabilities and functionalities that are disclosed for each of these separate applications and has combined them and has made assumptions that each of these distinct applications are combined to operate within a unitary system. Patentee respectfully submits that such assumptions and leaps that bridge the gaps between disparate teachings are not proper for a 102 rejection. (App. Br. 26; see also Reply Br. 13-15.) In addition, Appellant argues that "VCT '87's system does not teach a 'means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with a select format from a plurality of formats identified by said called number identification data signals (DNIS)'" (App. Br. 27). For support, Appellant cites to paragraphs 18-20 of the expert Declaration of Jerry A. Klein, dated September 21, 2006 (the "Klein IV Declaration"). (App. Br. 27.) According to Appellant, the "VCT system is disclosed as dedicated to a particular application at one time" (App. Br. 27) and "VCT '87 does not teach that its system is intended to operate multiple automated applications concurrently" (App. Br. 27). "Nor does VCT '87 teach selecting one of the automated applications by using DNIS signals from multiple automated applications that are concurrently operated on its system." (App. Br. 28.) The Examiner finds that "[t]he VCT '87 IVR system (the VCT Advantage IVR system) is dedicated to plural applications --not a single application" and "VCT '87 expressly discloses using DNIS to select one from many applications." (Ans. 24.) The Examiner points to the disclosure Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 41 in VCT '87 that "DNIS codes received with each call allow the voice response system to identify the application before even speaking with the customer." (Ans. 24; FF 6.) The Examiner finds that "there must be plural applications simultaneously available in the VCT Advantage IVR system . . . . If there were only one application, the DNIS would be rendered useless, contrary to the teaching in VCT '87." (Ans. 24; see also Ans. 25-26.) The Examiner also finds that "[i]dentification of the application without further action, such as switching the caller to the identified application would again render the use of DNIS useless. In other words, knowing the application the caller has selected and then doing nothing with that information would be pointless." (Ans. 26.) Therefore, "[b]ecause the IVR system [of VCT '87] is identifying the application based on the DNIS code, the IVR system necessarily has a 'means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with a select format from a plurality of formats identified by said called number identification data signals (DNIS)', as presently claimed." (Ans. 25.) The Examiner finds that paragraphs 18-20 of the Klein IV Declaration "merely repeat the same arguments as does Patentee and therefore Examiner applies the same rebuttal." (Ans. 25; see FF 6.) The Examiner also states that "[i]f Klein has no specific personal knowledge as to the actual workings of the VCT Advantage IVR system . . . then Klein's comments are nothing more than speculation" (Ans. 43) and "[t]o the extent Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 42 that Klein presents opinions without factual support, the opinions have no weight in determining patentability" (Ans. 44). Second, Appellant argues: Distinction 2. Claim 1 recites DNIS for the purpose of processing data in connection with a select format from a plurality of formats identified by the called number identification data signals (DNIS). the data signals … including called number data signals (DNIS) (claim 1 only) means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at east [sic] certain of said caller data signals in accordance with a select format from a plurality of formats identified by said called number identification data signals (DNIS); (claim 1 only) VCT '87 indicates that in "one VCT application, several 800 numbers enter the service department over many T1 spans. These calls are received by the VCT Advantage system, before going to an ACD. DNIS codes received with each call allow the voice response to identify the application before even speaking with the customer. 800 numbers are provided to customers for credit card authorization, point of sale terminals and corporate accounts." The customers in the credit card authorization application are merchants that call on behalf of their customers to seek authorization by telephone before making charges to credit cards. The application involving a point of sale terminal (for example, found at grocery stores) apparently refers to routing calls to the department handling such point of sale terminals (terminals where credit cards are Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 43 swiped by cardholders at the point of sale, these terminals do not involve any voice prompting). Hence, the DNIS codes associated with each 800 number are identified by the voice system and directed to the appropriate department before the call is even answered. (App. Br. 28-29.) In addition, Appellant contends that, "[a]lthough VCT '87 discloses DNIS, it is simply for directing a call to the appropriate department or location that is operating one of the dedicated services that VCT '87 mentions." (App. Br. 29; Reply Br. 14.) According to Appellant, "in VCT '87, DNIS is used only to route a call to a particular physical location, i.e., the appropriate department (that operates either the credit card authorization service by telephone for merchants or the point of sale terminal service or a service for corporate accounts)." (App. Br. 29; Reply Br. 14-15.) Appellant argues that "[t]his is distinct from use of DNIS (in a data processing content [sic]) for selecting a particular set of possible prompts from a pool of other possible sets of prompts" (App. Br. 29; Reply Br. 15) and "[d]irecting of calls is not an example of 'processing' in the context of the claims, which recite processing in the context of processing data provided by callers" (App. Br. 29). Appellant points to page 4 of VCT '87 for "[f]urther insight into the VCT system." (Reply Br. 15.) According to Appellant, page 4 "indicates that the VCT system performs 'call routing' and 'card authorization functions' to enhance the productivity of service operators." (App. Br. 29; Reply Br. 15.) Appellant argues that, based on DNIS codes, "the voice system will Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 44 instruct the ACD to route the call to the appropriate department (which is obviously attended by a service operator)." (App. Br. 30; Reply Br. 15.) "In the case of a credit authorization call, the VCT system will instruct the ACD to send the call to an operator called a Relayer, who keys in transaction data provided by the merchant" (App. Br. 30; Reply Br. 15) and "[o]nce the data has been entered, the VRU will either speak an authorization code, or transfer the call to a representative who is reviewing the transaction." (App. Br. 30; Reply Br. 15). Thus, Appellant argues that "there is a clear distinction between routing and direction of a call contained in VCT and processing based on DNIS taught in claim 1." (App. Br. 30; Reply Br. 15.) In addition, Appellant contends that "VCT '87 does not demonstrate that multiple automated formats are operated concurrently, therefore, it cannot satisfy the claimed recitation of selecting one format from a plurality of formats that are operated on the system." (App. Br. 30; Reply Br. 15.) According to Appellant, "[t]he specific format is selected after a call is initiated by a caller for establishing an interface, not when the VCT system is configured at the very beginning to operate a dedicated application." (App. Br. 30; Reply Br. 15.) The Examiner finds Appellant's argument that the point of sale terminals in VCT '87 do not involve voice prompting to be contradicted by the disclosure of a voice response system in VCT '87. (Ans. 27.) In addition, the Examiner finds that "VCT '87 expressly states that the applications may be partially or fully automated." (Ans. 27; FF 1-4.) The Examiner cites page 1 of VCT '87 for its teachings that "the voice response Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 45 system may be used to automate the complete customer service function while in other instances it is more desirable to automate only a selected portion of the transaction" and that "[a] customer calls the service department and is greeted by the voice response system . . . . [and] press[es] appropriate keys on a Touch Tone telephone in response to verbal prompts." (Ans. 27; FF 1, 2.) The Examiner finds that, "[b]ased upon the partial or complete automation of applications, voice prompts associated with an application are selected from one of plural applications using DNIS." (Ans. 28; see also Ans. 29.) The Examiner again cites the teaching in VCT '87 that "DNIS codes received with each call allow the voice response system to identify the application before even speaking with the customer" (Ans. 29; FF 6), and finds that "[t]here would be no purpose for 'several 800 numbers' or 'DNIS codes associated with each 800 number' if all callers were to get the same set of voice prompts (i.e. only called for the same application)." (Ans. 29.) "For example, a student calling to register for a given semester would not get the same voice prompts as a student calling about financial aid, nor as a student calling about admissions (VCT '87, p. 3)" (Ans. 30; see FF 8) and "[t]he same reasoning applies to credit authorization, point of sales, and corporate accounts (VCT '87, p. 4)" (Ans. 30). Therefore, the Examiner finds that the "VCT Advantage IVR system uses 'DNIS for selecting a particular set of possible prompts from a pool of other possible sets of prompts'" as claimed. (Ans. 29.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 46 The Examiner disputes Appellant's contention that "'[d]irecting of calls is not an example of processing in the context of the claims, which recites processing in the context of processing data provided by callers.'" (Ans. 29.) Instead, using a table to compare the disclosure of VCT '87 to both claim 1 and column 6, lines 38-44 of the '547 patent, the Examiner finds that "call directing to a specific format is exactly that which the '547 specification and claim 1 state is the one and only purpose for DNIS." (Ans. 29.) The Examiner finds that "the 'means for controlling said processor unit' is the automatic call distributor AC1 -- not the DNIS signal" (Ans. 29) and "[t]he DNIS signal is only for determining to which format a caller will be connected by the automatic call distributor and nothing more, as made clear in both the '547 specification and claims" (Ans. 29). Thus, the Examiner finds that "DNIS is specifically and only used as data to route calls to a specific format." (Ans. 30.) In addition, based on the comparison table described above, the Examiner finds "the '547 patent's use of DNIS is exactly the same as in VCT '87." (Ans. 30.) With respect to Appellant's argument concerning the use of a Relayer, the Examiner replies that "Patentee again conveniently takes a single example out of context and ignores the broader disclosure" of VCT '87 which discloses both complete automation and partial automation of applications. (Ans. 30-32.) In other words, "while the specific example referred to by Patentee is an example of partial automation it does not negate that VCT '87 indicates that the entire function can be automated." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 47 (Ans. 31.) "That means no service operators are used. Total automation employing DNIS then requires plural sets of prompts, one set for each application associated with each 800 number." (Ans. 31.) "For this reason, routing to a particular department, in the partial automation example, would not be a requirement of total automation." (Ans. 31.) Third, Appellant argues: Distinction 3. Claim 1 recites the following recitation, which is not explicitly taught in VCT '87. a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step (claim 1 only) The Examiner indicates that, VCT '87 discloses automatically switching a call to an operator attendant for manual operation when it is determined that operator assistance is required based on the caller's response to a prompt, Patentee finds no evidence of that in VCT '87. Transfer to an operator in VCT '87 is for reasons entirely different than what is claimed. The Examiner alleges that VCT '87 discloses a switch to an operator in the event a question "requires an unstructured solution." In supporting that allegation, the Examiner uses the college registration examples and makes assumptions involving the circumstances that may cause a switch to an operator. (App. Br. 30-31.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 48 Appellant argues that "claim 1 explicitly requires that the system determines when a caller is switched to a manual operator, specifically, in the event the caller does not qualify during the testing step (during which the customer number provided by the caller must be compared against stored customer number data)." (App. Br. 31.) Appellant asserts that "the college registration systems for Colorado State University (page 3 of VCT '87) makes no mention of an option to switch to an operator" (App. Br. 31) and "[l]ikewise, the college registration system for UCSD (page 4 of the VCT '87) mentions an operator only in the context that the new method of interface will allow the 'telephone registration system to perform all functions of an operator at a terminal and in a real-time environment to provide students with immediate verification of their class schedules'" (App. Br. 31). Furthermore, Appellant states that the customer service application of VCT '87 "mentions use of an operator in its partial automation system, however for a different reason." (App. Br. 31.) In particular, Appellant contends that "VCT '87 makes no distinction of when a caller is transferred to an operator. It teaches transferring all callers to an operator after some initial automated processing, not just those who fail to qualify as taught in claim 1." (App. Br. 31.) According to Appellant, "[i]n its complete automation system, VCT '87 discloses that if a question requires an unstructured solution, the call and data gathered by the voice system can be simultaneously transferred to a service representative." (App. Br. 31.) "In other words, when the VCT Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 49 system is incapable of handling a call, it effects a switch to an operator (see Klein IV, paragraph 22)." (App. Br. 31.) Appellant contends that "[t]o transfer to an operator because a caller question requires an unstructured solution is not the same as failing a qualification test." (App. Br. 32.) The Examiner finds that VCT '87 teaches "a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step" without requiring assumptions to be made, but also notes that claim 1 has alternatively been rejected under § 103 in addition to § 102(b). (Ans. 32, 33.) The Examiner states that Appellant is "taking examples [in VCT '87] out of context and ignores the broader teachings presented." (Ans. 34.) In particular, the Examiner finds that the customer service example of VCT '87 teaches transferring a call to an operator when a question requires an "unstructured solution." (Ans. 34.) The Examiner also finds that, in the college registration example of VCT '87, "[i]nstead of leaving a customer (student) hopelessly unable to access the system, in contradiction to providing good customer service, it would have been obvious for one of ordinary skill in the art, at the time of the invention to pass the customer (student) to the manual operation of a customer service representative (registration representative) upon failure of the qualifying test (access to the system to register) in order to provide good customer service, as taught to be critical in VCT '87" (Ans. 35) and thus "the feature of transferring a caller if the caller 'do[es] not qualify during the testing step' would at least be Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 50 obvious in the interest of customer service if not implicitly disclosed in VCT '87" (Ans. 35). The Examiner finds that the Klein IV Declaration "merely repeat[s] the same arguments as does Patentee and therefore Examiner applies the same rebuttal." (Ans. 25; see FF 6.) The Examiner also states that "[i]f Klein has no specific personal knowledge as to the actual working of the VCT Advantage IVR system . . . then Klein's comments are nothing more than speculation" (Ans. 43) and "[t]o the extent that Klein presents opinions without factual support, the opinions have no weight in determining patentability" (Ans. 44). Issue Appellant's arguments present the following issue: Has the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) or § 103(a)? The resolution of this issue turns on the following subsidiary issues: 1. Has the Examiner erred in finding that VCT '87 teaches operating multiple concurrent applications? 2. Has the Examiner erred in finding that VCT '87 teaches a "means for controlling said processor unit in accordance with said called number Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 51 identification data signals (DNIS) to process at least certain of said caller data signals in accordance with select format from a plurality of formats identified by said called number identification signals (DNIS)"? 3. Has the Examiner erred in finding that VCT '87 teaches "a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step"? Analysis Appellant's arguments that the Examiner erred in rejecting claim 1 as being anticipated by or obvious over VCT '87 are not persuasive. With respect to the first sub-issue, we agree with the Examiner that VCT '87 teaches operating multiple concurrent applications within the meaning of the claim. As the Examiner correctly found, the customer service example in VCT '87 teaches the operation of multiple concurrent applications (FF 1-7) and VCT '87 also teaches that "DNIS codes received with each call allow the voice response system to identify the application before even speaking with the customer" (FF 6 (emphasis added)). In particular, VCT '87 teaches that different "800 numbers . . . are provided to customers for credit card authorization, point of sale terminals and corporate accounts" (FF 6) and the "DNIS codes associated with each 800 number are identified by the voice system and directed to the appropriate department before the call is even answered" (FF 6). In other words, VCT '87 teaches using DNIS codes in order to select a particular Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 52 application (associated with a particular 800 number) from multiple applications (associated with other 800 numbers). Each department (i.e., credit card authorization, point of sale terminals, and corporate accounts) would necessarily have its own set of voice prompts and thus would be a separate "format" within the meaning of the claim. We also agree with the Examiner that there would be no reason to have multiple 800 numbers if all callers were to get the same set of voice prompts. Even if not inherent, it would have been no more than common sense for each department to have had its own set of voice prompts due to the different needs and functions of each department. We further agree with the Examiner that these plural applications must be simultaneously available or else the use of DNIS codes described by VCT '87 would be meaningless. Even if not inherent, it would have been no more than common sense for the various applications associated with the various 800 numbers to have been simultaneously available so that customers could immediately be directed to the appropriate department associated with the 800 number that was dialed. Also, VCT '87 teaches that the voice response system may be completely automated or partially automated as desired. (FF 1-4.) In other words, VCT '87 teaches that the voice response system does not need to use a human service operator. Appellant has not produced convincing evidence or argument to demonstrate error in these findings. Among other things, paragraphs 18-20 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 53 of the Klein IV Declaration (see FF 11-13) do not rebut or even directly address the findings discussed above. In addition, we agree with the Examiner that the college registration example in VCT '87 teaches the operation of multiple concurrent applications. (FF 8.) Specifically, VCT '87 discusses an enhanced registration system "with additional applications in the area of admissions and financial aid." (FF 8 (emphasis added).) Each of these areas (i.e., registration, admissions, and financial aid) is a separate "format" within the meaning of the claim. We agree with the Examiner that a student calling to register for a class would not be presented with the same voice prompts as a student calling about financial aid or admissions. Even if not inherent, it would be no more than common sense for each of these areas to have its own set of voice prompts due to the different needs and functions of registration, admissions, and financial aid. Again, VCT '87 teaches that the voice response system may be completely automated or partially automated as desired (FF 1-4) and does not need to use a human service operator. Appellant has not produced convincing evidence or argument to demonstrate error in these findings. Among other things, paragraphs 18-20 of the Klein IV Declaration (see FF 11-13) do not rebut or even directly address the findings discussed above. Furthermore, as will be discussed next in greater detail with respect to the second sub-issue, we agree with the Examiner that VCT '87 teaches a "means for controlling said processor unit in accordance with said called Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 54 number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with select format from a plurality of formats identified by said called number identification signals (DNIS)." Therefore, the Examiner has not erred in finding that VCT '87 teaches operating multiple concurrent applications. Regarding the second sub-issue, we agree with the Examiner that VCT '87 teaches a "means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with select format from a plurality of formats identified by said called number identification signals (DNIS)," as claimed. As discussed above, VCT '87 teaches that multiple automated formats may be operated concurrently and teaches selecting "a format from a plurality of formats" identified by DNIS, as claimed. In particular, VCT '87 teaches that the VCT Advantage IVR system uses DNIS in order to select a particular set of possible prompts from a collection of other possible sets of prompts. (See FF 6.) In addition, we agree with the Examiner that the automatic call distributor (ACD) (FF 6) is the "means for controlling" and the routing of a call based on the DNIS codes, as taught by VCT '87 (FF 6), meets the claimed limitation "to process" caller data signals based on the DNIS codes. As pointed out by the Examiner, this interpretation is consistent with the Specification of the '547 patent. Appellant has not produced convincing evidence or argument to rebut these findings. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 55 Since VCT '87 teaches that the voice response system may be completely automated or partially automated as desired (FF 1-4), Appellant's arguments regarding the use of a human Relayer in one particular instance are not convincing because that function could be completely automated. Therefore, the Examiner has not erred in finding that VCT '87 teaches a "means for controlling said processor unit in accordance with said called number identification data signals (DNIS) to process at least certain of said caller data signals in accordance with select format from a plurality of formats identified by said called number identification signals (DNIS)." With respect to the third sub-issue, we agree with the Examiner that VCT '87 teaches "a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step," as claimed. In particular, VCT '87 teaches "complete automation of selected routing inquiry calls, and partial automation of all calls." (FF 4.) First, "a customer calls the service number and is greeted by the voice response system." (FF 3.) "The voice system identifies both the customer and the question" (FF 3) and, "[i]f the question can be answered by the voice response system the call will be handled without human involvement" (FF 3), otherwise "[i]f the question requires an unstructured solution, the call and data generated by the voice system, can be simultaneously transferred to a service representative" (FF 3) for manual processing. Claim 1 recites that the switch transfers callers to manual operation if they do not qualify during the testing step -- i.e., the test performed by the recited "means for testing" as discussed in the claim interpretation section Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 56 supra. In the "testing step" performed by the means for testing, the "caller customer number data" is tested against a file of stored customer number data. In VCT '87, the question entered by the caller meets the recited "caller customer number data," which is part of the recited "caller qualification data" entered by the caller (in VCT '87, the caller qualification data includes the customer identity and question (see FF 3)). The VCT '87 voice system must perform a test against a file of stored questions in order to determine whether the question is a routine question, in which case the call can be handled by the system in a completely automated fashion, or whether the question is one that requires an unstructured solution, in which case the call will be transferred for manual handling by a customer service representative. Even if not inherent, it would have been obvious to perform such a test in order to implement the completely automated handing of selected routing inquiry calls and the partially automated handling of all calls taught by VCT '87. Therefore, the Examiner has not erred in finding that VCT '87 teaches "a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step." Conclusion The Examiner has not erred in rejecting claim 1 as being anticipated by or obvious over VCT '87. Each of the distinctions argued by Appellant is taught expressly or inherently by VCT '87 such that claim 1 is anticipated. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 57 Alternatively, each of the argued distinctions is taught or suggested by VCT '87 such that claim 1 would have been obvious. Dependent claim 2 Claim limitation at issue Claim 2 depends on claim 1 and further recites "wherein at least certain of said individual callers at certain of said remote terminals are also subject to qualification based on said calling number identification data signals." Contentions Appellant argues that dependent claim 2 is patentable for the reasons urged with respect to independent claim 1 (App. Br. 33). Appellant also argues that the ANI (Automatic Number Identification) teachings in VCT '87 (see FF 7) relied upon by the Examiner are "for the purpose of identifying the number from which the call is placed, rather than for qualification" (App. Br. 32) and that VCT '87 does not teach qualification based on ANI (App. Br. 33). The Examiner notes that the claim does not limit how or what type of qualification is performed, so long as the qualification is based on the calling number identification data signals (i.e., ANI). (Ans. 35-38.) The Examiner finds that VCT '87 discloses qualification based on ANI by teaching that the voice response system uses ANI to match the number from which a call is being placed to a customer's account. (Ans. 36, 37; see FF 7.) The Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 58 Examiner finds that the qualification test is whether the account exists or not. (Ans. 36, 37.) Issue: Has the Examiner erred in rejecting dependent claim 2? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. We also agree with the Examiner that VCT '87 teaches subjecting a caller to qualification based on the calling number identification data signals (i.e., ANI), as claimed. As previously discussed, we have interpreted "qualification" as "determining or assessing whether a call meets one or more conditions or requirements." (See FF 7.) Determining or assessing whether the calling number of a call has the condition or requirement of an associated customer account, as taught by VCT '87, meets the definition of qualification. VCT '87 further teaches that this qualification is performed using ANI, or in other words, is based on ANI -- the calling number identification data signal. (FF 7.) Thus, VCT '87 teaches the claimed limitation of a caller being "subject to qualification based on said calling number identification data signals." Conclusion The Examiner has not erred in rejecting dependent claim 2. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 59 Dependent claim 3 Claim limitation at issue Claim 3 depends on claim 1 and further recites "wherein said processor unit generates data identifying an order and provides the data to the individual callers." Contentions Appellant argues that dependent claim 3 is patentable for the reasons urged with respect to independent claim 1 (App. Br. 33). Appellant also argues that the college registration example of VCT '87 relied upon by the Examiner "at best . . . carries a general statement of 'providing immediate verification of class schedules[]'" and does not teach generating data to identify an order and providing it to a caller. (App. Br. 33.) The Examiner finds that "[t]he claimed 'order' is the registration for classes and the schedule and its verification are computer-generated data indicative of the order." (Ans. 39; see FF 9.) The Examiner notes that the claim does not limit what the data is, so long as the computer generates it. (Ans. 39.) Issue: Has the Examiner erred in rejecting dependent claim 3? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 60 We also agree with the Examiner that the college registration example of VCT '87 teaches generating data identifying an order by teaching that the system generates schedules and confirmations (i.e., data) which identify a student's registration for classes (i.e., an order). (See FF 9.) The college registration example of VCT '87 also teaches providing these data to the caller by teaching that the system will, in a real-time environment, provide the student with an immediate verification of the class schedule. (See FF 9.) Conclusion The Examiner has not erred in rejecting dependent claim 3. Dependent claims 4-6 and 8 Claim limitations at issue Claim 4 depends on claim 3 and further recites "wherein the data identifying the order is number data." Claim 5 depends on claim 4 and further recites "wherein the number data is provided as acknowledgement data to the individual callers." Claim 6 depends on claim 4 and further recites "wherein the number data is provided in chronological sequence." Claim 8 depends on claim 1 and further recites "wherein the caller data signals include item number data." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 61 Contentions Appellant argues that dependent claims 4-6 and 8 are patentable for the reasons urged with respect to independent claim 1 (App. Br. 34). Appellant also contends that the additional limitations of dependent claims 4-6 and 8 are not met by VCT '87. (App. Br. 34-35.) In particular, Appellant argues that "[t]here is no evidence that the VCT system provides confirmation numbers, much less those that are sequential or during the call." (App. Br. 34-35.) Appellant also argues that paragraph 25 of the Klein IV Declaration shows that "VCT '87 does not demonstrate its system for real-time operation and merely contemplates a phase two implementation." (App. Br. 35.) The Examiner addresses each of the dependent claims in the statement of the rejection (Appx. A, pp. 10-11) and responds to Appellant's arguments (Ans. 39-41). The Examiner notes that the Klein IV Declaration "does nothing to change the fact the VCT '87 disclosed real-time confirmation to the public before the '547 patent did." (Ans. 40.) The Examiner found that verification of class schedules in VCT '87 is done over the telephone, and that as part of the verification "chronological number data (course times and dates) and item number data (course number) is provided to the student in a 'real-time environment'" (App. Br. 40; see also FF 9). Also, the Examiner found that, whether or not it was actually being used, VCT '87 disclosed real-time verification in the phase two example. (Ans. 40-41; see also FF 9.) The Examiner also states that "[i]f Klein has no specific personal knowledge as to the actual working of the VCT Advantage IVR system or to Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 62 the registration at USCD [sic], then Klein's comments are nothing more than speculation" (Ans. 43) and "[t]o the extent that Klein presents opinions without factual support, the opinions have no weight in determining patentability" (Ans. 44). Issue: Has the Examiner erred in rejecting dependent claims 4-6 and 8? Additional Facts Klein IV Declaration 15. Paragraph 25 of the Klein IV Declaration states: 25. VCT '87 does not teach generating data identifying an order and providing the data to the individual callers. VCT's college registration example has a statement that its system provides immediate verification of class schedules. To one or [sic] ordinary skill, VCT teaches verifying a class schedule, which is pre-determined data. I believe that is not the same as generating or developing data in a technical environment. Further one can only conclude, that the VCT system does not generate any data online is because in the Colorado State University example, "[s]tudents must confirm their registration by picking up their class schedule from the Department of Admissions and Records. Along with a confirmation of their course selections, students receive a statement of tuition and fees as well as housing information and a student activity card. If a student does not pick up his schedule confirmation, the registration transaction will be cancelled. (VCT '87, page 3). Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 63 In the UCSD example, "[r]egistration information system collected by the VCT system will be downloaded to the Host computer to update student records. The Host will then be used to generate schedule confirmations to be mailed to each student. (VCT '87, page 4). While VCT '87 suggests a phase two of the implementation eliminating mailing and conducting the process in real-time, it does not teach or demonstrate to one of ordinary skill in the art the steps that he or she should take to execute the process nor the architectural modifications to hardware and software that would be necessary accomplish the application. Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. We also agree with the Examiner that VCT '87 discloses the limitations of dependent claims 4-6 and 9. In particular, the UCSD registration example in VCT '87 discloses providing real-time verification of class schedules to callers. (FF 9.) We agree with the Examiner that paragraph 25 of the Klein IV Declaration does not negate the disclosure of a real-time system in VCT '87, even though that feature is disclosed as a future improvement in a "phase two" of the system (see FF 9). Paragraph 25 of the Klein IV Declaration asserts that VCT '87 does not teach one of ordinary skill how to conduct the registration process in real-time. (FF 15.) However, the Klein IV Declaration does not provide a convincing explanation or factual support for this assertion. For example, Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 64 VCT '87 teaches that phase two will use an IBM 8090 Host computer and will interface to the host system through terminal emulation in order to provide students with immediate verification of class schedules. (FF 9.) The Klein IV Declaration does not explain why this would be beyond the level of ordinary skill. In addition, as long as the reference discloses all of the claim limitations and enables the "subject matter that falls within the scope of the claims at issue," the reference anticipates—no "actual creation or reduction to practice" is required. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1380–81 (Fed. Cir. 2003). This is so despite the fact that the description provided in the anticipating reference might not otherwise entitle its author to a patent. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991) (discussing the "distinction between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b)"). "A thorough reading of our case law, however, makes clear that a reference need disclose no independent use or utility to anticipate a claim under § 102." In re Gleave, 560 F.3d 1331, 1335 (Fed. Cir. 2009). VCT '87 enables subject matter falling within the scope of claims 4-6 and 8. The Klein IV Declaration does not provide a convincing explanation or evidence to the contrary. Moreover, for the sake of argument, even if the Klein IV Declaration did show a failure of VCT '87 to enable subject matter within the scope of claims 4-6 and 8, "a non-enabling reference may qualify as prior art for the purpose of determining obviousness under 35 U.S.C. 103." Symbol Techs., Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 65 Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991) (citations omitted). Thus, at the very least, the Klein IV Declaration does not negate the "phase two" teachings of VCT '87 in the rejection under 35 U.S.C. § 103. We further agree with the Examiner's finding that, in this example, "chronological number data (course times and dates) and item number data (course number) is provided to the student in a 'real-time environment.'" (Ans. 40.) Appellant has not presented convincing argument or evidence to rebut this finding. The Klein IV Declaration does not demonstrate that such data are not inherently disclosed by VCT '87, nor does it demonstrate that such data would not have been obvious in view of VCT '87. Conclusion The Examiner has not erred in rejecting dependent claims 4-6 and 8. Dependent claim 7 Claim limitation at issue Claim 7 depends on claim 1 and further recites "wherein the qualification data is indicative of a consumable key." Contentions Appellant argues that dependent claim 7 is patentable for the reasons urged with respect to independent claim 1 (App. Br. 35). Appellant also argues that a "consumable key" has a limited number of uses and may not be automatically refreshed after the limit is reached. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 66 (App. Br. 35.) Appellant contends that VCT '87 does not indicate if the authorization codes are unique to the student or unique to a class or department, and, if the latter, then the authorization codes may be re-used each semester. (App. Br. 36.) Appellant relies upon paragraph 26 of the Klein IV Declaration in support of this contention. (App. Br. 36.) The Examiner agrees with Appellant's definition of consumable key but finds that VCT '87 discloses such a feature. (Ans. 42; see FF 9.) The Examiner observes that the definition of consumable key does not require that the key be unique to a caller. (Ans. 42.) Even if the key were required to be unique, the Examiner finds that the codes taught by VCT '87 are unique and can only be used one time. (Ans. 42; see FF 9.) If the codes were not limited to a single use, the Examiner finds that "they could be surreptitiously given out in subsequent semesters or during the same registration period." (Ans. 43.) The Examiner also states that "[i]f Klein has no specific personal knowledge as to the actual working of the VCT Advantage IVR system or to the registration at USCD [sic], then Klein's comments are nothing more than speculation" (Ans. 43) and "[t]o the extent that Klein presents opinions without factual support, the opinions have no weight in determining patentability" (Ans. 44). Issue: Has the Examiner erred in rejecting dependent claim 7? Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 67 Additional Facts Klein IV Declaration 16. Paragraph 26 of the Klein IV Declaration states: 26. VCT '87 does not teach consumable key to one of ordinary skill in the art. Consumable key means "a number or word that allows a caller access to a service or part of a service a predefined limited number of times and which cannot be refreshed or recharged." VCT '87 indicates the following: The UCSD telephone registration will model the current procedures of registration allowing students to waitlist for dosed courses and allowing Departmental offices to continue to control registration for specific courses through assigned authorization codes. These authorization codes are currently given to each department prior to registration and are given only to students meeting course pre-requisite requirements. The codes will be assigned by the departmental advisor and matched with duplicate files located on the telephone registration system. (VCT '87, p. 4). VCT '87 does not indicate if the authorization codes are unique to the student or unique to a class or department. If an authorization code is unique to a class or department, it may be repeatedly used multiple times by different students. Also, the authorization codes may be re-used every semester. I believe the manner in which the Examiner indicates that the authorization codes must operate to satisfy the meaning of "consumable key" would not be obvious to one of ordinary skill in the art. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 68 Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. We also agree with the Examiner that VCT '87 teaches a consumable key as claimed. (See FF 9.) In particular, we agree that a consumable key need not be unique to a caller. In addition, we agree with the Examiner that the authorization codes of VCT '87 could be abused if they did not expire after being used. Thus, the authorization codes used for registration in VCT '87 inherently have a finite number of uses in the defined or non- recurring period of time for registration, and are not automatically refreshed. Even if not inherent, it would have been obvious for the authorization codes to have had these characteristics. These characteristics are common sense to prevent abuse. Accordingly, the authorization codes of VCT '87 (FF 9) meet the definition of a consumable key discussed supra. The Klein IV Declaration does not change these teachings. Conclusion The Examiner has not erred in rejecting dependent claim 7. Dependent claims 8 and 9 Claim limitations at issue Claim 8 depends on claim 1 and further recites "wherein the caller data signals include item number data." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 69 Claim 9 depends on claim 1 and further recites "wherein the caller data signals include a second form of identification data." Contentions Appellant argues that "[b]oth these claims are distinct at least for the reasons claim 1, from which they depend is distinct." (App. Br. 36.) The Examiner addresses claims 8 and 9 in the statement of the rejection (Appx. A, pages 10-11) and responds to Appellant's argument (Ans. 43). Issue: Has the Examiner erred in rejecting dependent claims 8 and 9? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. Conclusion The Examiner has not erred in rejecting dependent claims 8 and 9. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 70 (2) Yoshizawa Claims 21-25, 37-39, and 44-47 stand rejected under 35 U.S.C. § 102(b) as anticipated by Yoshizawa. Facts Yoshizawa 17. Yoshizawa describes a voice response system for telephone betting: A member, viz. subscriber, is required to open an account with a specified bank. Upon completion of this procedure, the subscriber can make bets through any push-button telephone set, in a private home, or on a street corner. He calls the telephone betting center and inputs his account number, password number and the desired parimutuel tickets. The voice response unit transmits these inputs to the central processing unit through the data communication lines. Acceptance of the bet is completed as the input data are entered in the account file. . . . Payments for tickets are made automatically by deducting from the bank account. Similarly, pay-offs are made by automatic remittance to the bank account. So no parimutuel tickets are issued. (P. 216.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 71 18. A portion of Table 1 is reproduced below: The reproduced portion of Table 1 shows typical input items and responses when a caller is making a bet. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 72 19. Another portion of Table 1 is reproduced below: The reproduced portion of Table 1 shows typical input items and responses when a caller is canceling a bet. 20. Table 1 shows a summary of typical inputs and voice responses when a caller is making a bet and when a caller is canceling a bet. After entering the subscriber number, password number, race course, and betting information (including the number of parimutuel tickets), the system provides a registration time and a registration number (Table 1, making a bet, steps 1-5). The subscriber is prompted by a voice instruction to repeat the registration number to complete the registration (Table 1, "making a bet," steps 5 and 6). The registration Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 73 number is also required to cancel a bet (Table 1, "canceling a bet," steps 1 and 2). 21. Yoshizawa states that the "[c]onversation with the subscriber is recorded, to provide against any trouble that may occur" (p. 218). Yoshizawa states that: The following are the principal on-line tasks: Betting data sent from the voice response unit are entered on the disk file in an area corresponding to the account file. At the same time, a new purchase limit is set by deducting the bet amount from the daily maximum . . . . As acceptance of bets is closed form each race, totals are made for bets to win, to place, . . . and these totals are output to the line printer. (P. 219.) 22. Yoshizawa describes that the voice response unit may be used in other applications such as a telephone directory system, telephone charge service, automatic intercept system (AIS), stock prices information service, winning lot number service, CAI, credit card checking, deposit balance information, seat reservation systems (for trains, planes and theaters), hotel and hospital reservation systems, and order entry. (P. 220). "Other possible applications include information and sales services." (Id.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 74 Claims 21-23, 25, 37-39, 44, and 47 Contentions Appellant argues two distinctions between claims 21-23 and Yoshizawa. First, Appellant argues: Distinction 1. Claims 21-23 explicitly recites the following recitation, for which there is no explicit teaching in Yoshizawa. A method for implementing a service for controlling an order of an item or items for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals comprises a telephonic instrument including a voice communication device and a digital input device in the form of fan array of alphabetic numeric buttons for providing data, (emphasis by bold added) The Examiner takes the position that Yoshizawa discloses an automated telephonic system and method enabling a subscriber/caller to bet on horse races, stating "the subscriber can make bets [i.e. the 'order of an item or items'] through any push-button telephone set" (p. 216, left-hand col., lines 2-4). Push- button telephones inherently have (1) an array of alphabetic numeric buttons and (2) provide for voice communication. The '(communication facility" is the public telephone network. Additionally, Figure 1 of Yoshizawa depicts two individuals (subscribers/callers) at terminals having push-button telephones. (App. Br. 37.) Appellant argues that "Yoshizawa teaches away from a system that orders an object for purchase." (App. Br. 37.) According to Appellant, "[a] 'bet' is not an item, which is an object for purchase, Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 75 especially in the context of ordering." (App. Br. 37.) Instead, Appellant contends that "a bet is a 'wager' or 'stake' that represents an agreement between two parties that the one who has made an incorrect prediction will forfeit something stipulated to the other (usually money)." (App. Br. 38.) Appellant also argues that Yoshizawa does not disclose: receiving from said callers order data including item data entered by said callers via said digital input device; and receiving from said callers additional data relating to said item data; (App. Br. 38.) The Examiner finds that Yoshizawa states that its IVR system can be used for applications such as seat reservations, hotel and hospital reservations, and order entry. (Ans. 45; see also FF 22.) According to the Examiner, the term "item" is not limited to physical objects and, even if it is, Yoshizawa nevertheless teaches physical items by teaching that the system can be used for order entry and train and airplane seat reservations. (Ans. 45-46; see also FF 22.) The Examiner also finds Appellant's arguments regarding the interpretation of "item data" inconsistent with the arguments presented in Appellant's Appeal Brief (e.g., at App. Br. 76-80) regarding the IVR system for "touch-tone trading" of stocks found in the Krauss Declaration. (Ans. 46.) The Examiner reasons that if an electronic stock trade is encompassed by the term "item," then the parimutuel tickets of Yoshizawa also are items within the meaning of the claim. (Ans. 46.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 76 The Examiner further finds that Yoshizawa teaches receiving item data entered by the callers via the digital input device (Ans. 47; Appx. A, pp. 13-14) and receiving additional data relating to the item data from the callers (Ans. 47-48; see also Appx. A, pp. 13-14; FF 18, 20). In particular, the Examiner finds that Yoshizawa teaches that the system can be used for order entry and that the example of making a bet, as illustrated in Table 1, shows that the caller is prompted to enter multiple pieces of additional data relating to the item data. (Ans. 47-48; FF 18, 20.) Next, Appellant argues: Distinction 2: Claims 21-23 explicitly recite the following recitations, for which there is no explicit teaching in Yoshizawa. Providing individual callers with computer generated data to identify said order for individual callers (claim 21), wherein the computer generated data identifying the order is provided to the individual callers as acknowledgement data (claim 22), or wherein the computer generated number data is provided to the individual callers in chronological sequence (claim 23). The Examiner argues the following: Table 1 on p. 217 provides the exemplary acknowledgement, "Registration has been completed. Thank you. "" Table 1 also shows that the central processing unit (i.e. "computer") generates numbers in the form of "registration numbers" identifying the order (i.e. race bet and a time stamp (therefore in chronological sequence), indicative of a caller's bet, which is stored so that the caller may use the registration number to update the bet data, such as by cancellation. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 77 (App. Br. 38-39.) According to Appellant, "[a] date-time stamp is not sequence data, as more than one caller calling at the same instant would receive the same date-time stamp" and "for data to be sequential, an order of priority must be established by the system." (App. Br. 39.) The Examiner finds that the example of making a bet in Table 1 of Yoshizawa teaches sequence data by teaching the registration time and, even if time alone is not sufficient, further teaches providing a registration number along with the registration time that is unique to the call. (Ans. 48-49; FF 18, 20.) Issue Appellant's arguments present the following issue: Has the Examiner erred in rejecting claims 21-23, 25, 37-39, 44, and 47 under 35 U.S.C. § 102(b)? The resolution of this issue turns on the following subsidiary issues: 1. Has the Examiner erred in finding that Yoshizawa teaches an order of an item or items? 2. Has the Examiner erred in finding that Yoshizawa teaches receiving item data entered by the caller and additional data relating to the item data? Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 78 3. Has the Examiner erred in finding that Yoshizawa teaches providing computer generated data to identify the order for the individual callers? 4. Has the Examiner erred in finding that Yoshizawa teaches providing the computer generated data identifying the order as acknowledgement data? 5. Has the Examiner erred in finding that Yoshizawa teaches providing the computer generated number data to callers in chronological sequence? Analysis Appellant's arguments are not persuasive. Regarding the first sub- issue, we agree with the Examiner that Yoshizawa teaches an order of an item or items. (FF 17-22.) As discussed supra with respect to the interpretation of the claim term "item data," the relevant plain meaning of an "item" is an article or unit. There is nothing in the claim term "item" and nothing in the Specification that indicates that an item is restricted to an item to be purchased, or that the item is necessarily a physical object. Nor do we find an ambiguity that would lead us to a narrower interpretation. Under this interpretation, we agree with the Examiner that Yoshizawa teaches an order of an item by teaching the ordering of an article or unit in the form of an electronic ticket to place a bet in a horse race. (FF 18, 20.) Moreover, even under Appellant's proffered interpretation of an item as a physical object for purchase, we agree with the Examiner that Yoshizawa teaches this by Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 79 teaching that its IVR system may be used for order entry and train and airplane seat reservations. (FF 22.) With respect to the second sub-issue, we agree with the Examiner that Yoshizawa teaches receiving item data entered by the caller and additional data relating to the item data. As discussed supra, we interpret "item data" as information related to an article or unit. Thus, Yoshizawa teaches receiving item data entered by the caller and additional data relating to the item data by teaching a horse race betting example where the caller enters information related to an article or unit in the form of the race course and betting data that further includes the race number, predicted finish (win, place, or E.O. forecast), horse number/set number, and number of tickets. (FF 18, 20.) We agree with the Examiner that any one of these pieces of data may be considered as item data and the others may be considered as additional data which relate to the item data. With respect to the third, fourth, and fifth sub-issues, we agree with the Examiner that Yoshizawa teaches providing computer generated data to identify the order for the individual callers, providing the computer generated data identifying the order as acknowledgement data, and providing the computer generated number data to callers in chronological sequence. (FF 18, 20.) As discussed supra, we interpret "computer generated data" to mean data which are created by the computer and computer generated number data provided in "chronological sequence" as computer generated number data provided in a continuous or connected series arranged in order of time. A date/time stamp meets the definition of Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 80 "chronological sequence," as discussed supra. We also agree with Appellant that "acknowledgement data" must be computer generated. Yoshizawa teaches providing computer generated data to identify the order as acknowledgement data in chronological sequence by teaching a horse race betting example where, after the caller enters confirmation, the IVR system generates and provides an acknowledgement that includes both a registration time and a registration number. (FF 18, 20.) Dependent claims 25, 37-39, 44, and 473 were not argued separately (App. Br. 39) and fall with claim 21, from which they depend. Conclusion The Examiner has not erred in rejecting claims 21-23, 25, 37-39, 44, and 47 as being anticipated by Yoshizawa. Dependent claims 24, 45, and 46 Appellant lists the additional limitations recited by dependent claims 24, 45, and 46 and argues that "[n]one of these limitations are met by Yoshizawa." (App. Br. 39.) According to Appellant, "Yoshizawa at best makes a general suggestion regarding using the voice response system for credit card authorization and sales services, including order entry" (App. 3 Appellant also presents arguments with respect to claims 48, 49, and 50 (App. Br. 39), but these claims were not rejected under § 102(b) as being anticipated by Yoshizawa. Instead, these claims were rejected under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Kono and we discuss these claims infra in connection with that rejection. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 81 Br. 40) but "Yoshizawa does not disclose details on how its system could be configured to implement an order entry system" (App. Br. 40). The Examiner has explained how the limitation of dependent claims 24, 45, and 46 are met by Yoshizawa (Ans. 49-52; Appx. A, pages 14, 16). Appellant's arguments fail to demonstrate error in the Examiner's findings or reasoning. Thus, we affirm the rejections of claims 24, 45, and 46 for the reasons stated by the Examiner. Grounds of rejection (3) through (11) -- Obviousness Additional Principles of Law The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407 ("While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls."). The Court in Graham further noted that evidence of secondary considerations, such as commercial success, long felt but unsolved needs, failure of others, etc., "might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham, 383 U.S. at 17-18. "If a court, or patent examiner, conducts this analysis and concludes the claimed subject matter was obvious, the claim is invalid under § 103." KSR, 550 U.S. at 407. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 82 "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d at 988. "To facilitate review, this analysis should be made explicit." KSR, 550 U.S. at 418. However, "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. Scope and content of prior art References must be within the scope of the prior art, i.e., they must be from analogous art. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed. Cir. 1983) ("The scope of the prior art has been defined as that 'reasonably pertinent to the particular problem with which the inventor was involved.'"). The scope and content of the references will be discussed in the facts for each rejection if not already discussed previously. Level of ordinary skill in the art The USPTO has no way to take testimony about the level of ordinary skill in the art. Guessing at the level of education and experience possessed by a person of ordinary skill in the art is meaningless because it says nothing about what the hypothetical person of ordinary skill in the art would be expected to actually know. What is really important is how persons skilled Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 83 in the art think and what approach to solving a problem immediately comes to mind. If an express finding is required, the level of ordinary skill in the art is evidenced by the references. See In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) ("the PTO usually must evaluate both the scope and content of the prior art and the level of ordinary skill solely on the cold words of the literature"); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record). A person of ordinary skill in the art has certain presumed qualities, some of which overlap. First, a person of ordinary skill in the art must be presumed to know something about the art apart from what the references expressly disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Second, "the hypothetical person of ordinary skill in the pertinent art is presumed to have the 'ability to select and utilize knowledge from other arts reasonably pertinent to [the] particular problem' to which the claimed invention is directed." Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed. Cir. 1985). That is, skill in the art must be presumed. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). Third, a person of ordinary skill has ordinary creativity and is capable of making changes within his or her technical ability without an express teaching or suggestion in a reference. The obviousness "analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. "A Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 84 person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421. Fourth, a person of ordinary skill is presumed to be able to solve known problems using ordinary skill. "One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims." Id. at 420. Thus, "[w]hen there is a design need or market pressure to solve a problem and there are a number of identified, predictable solutions, a person of ordinary skill has good reason to pursue known options within his or her technical grasp." Id. at 421. Of course, it cannot be expected that every possible modification which would have been obvious to one of ordinary skill in the art will be implemented or written down to become prior art. Differences The argued differences between the claimed subject matter and the references will be noted in connection with each rejection. Appellant's proffered evidence of nonobviousness Principles of law Objective evidence of nonobviousness (also called "secondary considerations") must always be considered in making an obviousness decision. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d at 1538-39. However, it is not necessarily conclusive. Ashland Oil, Inc. v. Delta Resins & Refrac., Inc., 776 F.2d 281, 306 (Fed. Cir. 1985); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ("[E]vidence of secondary Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 85 considerations does not always overcome a strong prima facie showing of obviousness.") (citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007)). 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 "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. Stratoflex, 713 F.2d at 1539; GPAC, 57 F.3d at 1580 ("To the extent that the patentee demonstrates the required nexus, his objective evidence of nonobviousness will be accorded more or less weight."); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) ("Even assuming that Huang had sufficiently demonstrated commercial success, that success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention – as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter."); Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ("While the evidence shows that the overall system drew praise as a solution to a felt need, there was no evidence that the success of the commercial embodiment . . . was attributable to the . . . only material difference between [the prior art] and the patented invention."); EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 907, 908 (Fed. Cir. 1985) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 86 (evidence of licensing is a secondary consideration which must be carefully appraised as to its evidentiary value because licensing programs may succeed for reasons unrelated to the unobviousness of the product or process, e.g., license is mutually beneficial or less expensive than defending infringement suits). 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 Huang, 100 F.3d at 139-140 (Fed. Cir. 1996) ("In the ex parte process of examining a patent application . . . the PTO lacks the means or resources to gather evidence which supports or refutes the applicant's assertion that the sales constitute commercial success."). Cf. Ex parte Remark, 15 USPQ2d 1498, 1503 (BPAI 1990) (evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success. 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."). This is the opposite of the burden during infringement litigation, where a patentee may make a prima facie showing of nexus by evidence that the thing that is successful Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 87 embodies the invention, because the alleged infringer has the ability to find evidence to rebut the showing through discovery and at trial. "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), aff'd, 459 F.2d 226 (Fed. Cir. 1992). 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 evidence is due to the merits of the claimed invention as opposed to unclaimed features. Issue: Has Appellant demonstrated a sufficient nexus between the evidence of commercial success and the merits of the claimed invention for the evidence to be entitled to weight in the obviousness determination? Facts 23. Appellant filed a Declaration Under 37 C.F.R. § 1.132 of Joel Krauss, a principal in Market Strategy Group, LLC, on February 10, 2006 (Krauss Declaration), with an attached marketing Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 88 investigation by Market Strategy Group, LLC, entitled Investigation of the Interactive Voice Response Industry and Use of its Technical and Functional Capabilities in the Following Applications: The Utilities Industry The Brokerage Industry (February 2006) (IVR Report). Appellant also submitted "TABLE 4 Showing Nexus for All Claims Rejected U.S.C. § 103" with the Appeal Brief (App. Br. 67-83). 24. The IVR Report describes the expansion of the Interactive Voice Response (IVR) industry from 1988 to the mid-2000s, especially during the 1990s, when the industry grew at a very rapid rate (IVR Report 2). The IVR Report describes that from 1993 to 2000, IVR vendors' revenues grew at 14.1% per year (IVR Report 3). The Interactive division of West Teleservices Corp., which focused on large volume IVR services, grew in revenues from zero in 1988 to $98.6 million in 1995. (IVR Report 4.) "Interactive provided IVR services for a wide range of applications, including, 'secure automated credit card activation, information and entertainment services, polling and surveying, cellular fraud prevention service, automated product information requests, database management and enhancement, multiple caller conferencing, customer service and third-party call transfers.'" (IVR Report 4 & n.6, quote from 1996 West S-1 filing.) "A consistent benefit of the implementation of the more advanced IVR technical and functional capabilities addressed by this report was the cost reduction made possible by replacing or reducing human Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 89 functions with sophisticated capabilities of IVR systems." (IVR Report 6). The IVR Report describes the growth in use of IVR systems for the brokerage industry (IVR Report 8-14) and the utilities industry (IVR Report 15-21). 25. Mr. Krauss states that he has "over 30 years of work and research experience in market and business strategy and analysis" (Krauss Declaration ¶ 2); that he has "worked with executive level personnel to develop and implement successful market strategies in the telecommunications, financial services, computer, electronics, transportation and pharmaceutical industries, as well as for governments" (Krauss Declaration ¶ 4 (there is no ¶ 3)); and that he and "those under my direct supervision and control have conducted the marketing investigation of the Interactive Response Industry reflected in the attached report, which is incorporated herein" (Krauss Declaration ¶ 5). Contentions The Examiner states that there is no nexus between the '547 patent claims and the commercial success in the Krauss Declaration and accompanying IVR Report (Ans. 88; see also Ans. 89-101). The Examiner states that "there exists strong opposing evidence to the 'nature of the matter sought to be established'" (Ans. 88; see also Ans. 89-91), that "the Krauss Declaration provides no information regarding the interests of the Declarant Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 90 Krauss in the outcome of the case" (Ans. 88; see also Ans. 89), and that the Krauss Declaration and IVR Report "fail[] to provide 'factual support' for the [D]eclarant's perception (opinion) that the commercial success was, in fact, due to the thing claimed" by the '547 patent (Ans. 89; see also Ans. 91-101; FF 23-25). The Examiner provides a detailed discussion of the opposing evidence. (Ans. 89-91.) The Examiner states that the IVR Report points out that there are 35 vendors of IVR systems, but the IVR Report does not evidence that the growth in the IVR industry was due to the subject matter of the '547 patent (Ans. 89). The Examiner notes that the Krauss Declaration (actually referring to the IVR Report) states that "[b]efore late 1988 and early 1990's, IVR systems were primarily used to direct callers to the appropriate live customer service representative (CSR), and/or to play recorded messages such as store hours of operations" (IVR Report, p. 2, Sec. 1.2), but "[t]he word 'primarily' is a relative term of degree, and Krauss has not pointed out specific numbers directed to what is meant by 'primarily.'" (Ans. 89.) The Examiner also states that "it does not matter what the primary use of IVR systems was" (Ans. 89) because "[o]nly one person . . . has to 'give', as by publication, information to the public for the thing to belong to the public within the meaning of 35 USC 102 and 103." (Ans. 89.) The Examiner discusses the examples in the IVR Report in detail (see FF 24) and states that the examples are not coextensive in scope with the '547 patent claims (Ans. 91-101). Among other things, the Examiner states that the claims are broader than the examples relied upon to show Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 91 commercial success and, therefore, there is no showing that the claimed subject matter is responsible for the commercial success (Ans. 91-101). Also, the Examiner finds that the Krauss Declaration and IVR Report "fail[] to provide evidence 'that such success is not the result of heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention, etc." (Ans. 99.) Thus, the Examiner finds that "Krauss's perception that the various combinations lead to the perception of commercial success and the total lack of any financial data (i.e. facts) to support Krauss's opinion make the Krauss declaration insufficient for establishing a nexus between [the] '547 claims and commercial success." (Ans. 100.) Appellant argues that "the IVR report does provide objective evidence of industry adoption of those claimed features after the '547 patent" (App. Br. 60) and "demonstrate[s] sufficient nexus for all of the combination of features of the rejected claims of the '547 patent by attesting to the commercial success of those combinations of features claimed in the '547 patent" (App. Br. 60.). Appellant argues that the "IVR Report demonstrate[s] factual recollections of the state of the art at the time the '547 patent was filed." (App. Br. 64.) Also, "[c]ontrary to the Examiner's statement, Patentee has gone beyond its prima facie showing by offering the Klein Declaration (Klein IV) in combination with the IVR report to demonstrate the state of art prior to the claimed inventions and why the prior art neither taught nor suggested the inventions claimed in the '547 patent." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 92 (App. Br. 60-61; see also App. Br. 63.) Appellant also refers (App. Br. 61; see also App. Br. 64) to "TABLE 4" submitted with the Appeal Brief which "shows a comparison of the claims rejected based on § 103 and the IVR technical and functional capabilities recited in the IVR Report." (App. Br. 61.) Appellant complains that the Examiner is holding Appellant to an "impossible standard" (App. Br. 63; see also Reply Br. 25), and that "commercial success must be shown to have in some way been due to the nature of the claimed invention, as opposed to other economic and commercial factors unrelated to the technical quality of the patented subject matter" (Reply Br. 25). Appellant contends that nexus must be shown for the claims as a whole rather than for specific features of the claim. (Reply Br. 25.) According to Appellant, having shown nexus, "the burden of coming forward with evidence in rebuttal shifts to the challenger." (App. Br. 63.) Appellant also contends that "all of the declarants have attested to the adoption of the combined functionalities embodied in the '547 patent in applications for the brokerage industry" (App. Br. 64) and "[s]ignificantly over 40 companies in that industry have chosen to take a license to the subject and other patents in patentee's portfolio" (App. Br. 64). Appellant further points to statements of "industry leaders" attesting to "[t]he perception of the claimed invention in the marketplace as a significant and novel advancement." (App. Br. 65.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 93 Analysis Appellant's Appeal Brief and Reply Brief do not discuss the IVR Report or the Krauss declaration (other than repeating statements therein), but instead argue that the Examiner failed to give fair weight to the factual evidence provided by Krauss and argue why the Examiner's reasons are not persuasive. Board rules require that all arguments relied upon be included in the brief. See 37 C.F.R. § 41.37(c)(1)(vii) ("Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown."). It is not the Board's responsibility to comb through the prosecution history looking for previously-made arguments to support Appellant's position. Thus, we address the IVR report and declarations as we see them. The IVR Report unquestionably demonstrates that IVR systems are commercially successful in many applications (see FF 24). The issue is whether this commercial success has been shown to be due to the merits of the '547 patent claims so as to be persuasive evidence of nonobviousness. Appellant does not manufacture and sell IVR systems. Appellant licenses patents of Mr. Katz. Appellant does not allege that it has first hand knowledge of the technical aspects of the systems that achieved commercial success in the IVR Report. Thus, Appellant is not in a good position to demonstrate the nexus between commercial success and the patent claims. Appellant makes no effort to show how the commercial success in the IVR Report is due to the merits of the '547 patent claims as opposed to the claims in other patents. There are four ancestor patents in the chain of Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 94 applications of the '547 patent going back to ancestor Application 06/753,299, filed July 10, 1985. Also, the inventor on the '547 patent, Ronald A. Katz, also has 42 patents which claim the benefit of the '299 Application, most of which appear to claim IVR. Appellant does not mention these other patents or make any effort to show any nexus between the commercial success in the IVR Report and the merits of the '547 patent claims as opposed to the subject matter of the other patents. The brokerage and utility industry applications described in the IVR Report (FF 24) are not described in the '547 patent. Thus, there is no direct correspondence between the examples described in the IVR Report and the disclosed and claimed subject matter in the '547 patent from which nexus could be argued. It is possible that a new use for existing IVR equipment could be patentable. It is also possible that the commercial success is due to improvements made by others. See In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985) ("the commercial success of a machine 'claimed' may be due entirely to improvements or modifications made by others to the invention disclosed in a patent. Such success, we are holding, is not pertinent to the non-obviousness of the invention disclosed."). However, Appellant has not shown that the success is due to the '547 patent claims. Appellant argues that the nexus is established by Table 4, which purports to show where claim limitations find correspondence in the examples in the IVR Report. This table does not show a nexus between the commercial success and the merits of the claimed invention, but shows at Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 95 most that certain claimed features are found in applications which have been commercially successful. Many of the individual features of IVR systems were known in the prior art and Appellant makes no effort to explain how "the success of the commercial embodiment . . . was attributable to the . . . only material difference between [the prior art] and the patented invention." Asyst Techs., 544 F.3d at 1316. Appellant does not take a claimed difference over the prior art and show that commercial success was attributable to that difference. Appellant has also not carried its burden of proving nexus because it fails to demonstrate that the commercial success was not due to economic and commercial factors unrelated to the technical quality of the patented subject matter. The IVR Report describes many business reasons affecting the adoption rates of new IVR technical and functional capabilities (IVR Report p. 3, bottom). Market forces and business reasons are not evidence of technical incompatibility that is relevant to the nonobviousness issue. See Friskit, Inc. v. Real Networks, Inc., 306 Fed. Appx. 610, 617-618 (Fed. Cir. 2009) (nonprecedential) and cases cited therein. The IVR Report states that a "consistent benefit of the implementation of the more advanced IVR technical and functional capabilities addressed by this report was the cost reduction made possible to replacing or reducing human functions with sophisticated capabilities of IVR systems" (FF 24). The other references cited by the Examiner demonstrate that IVR was being more accepted in the market for a variety of uses, such as, for example, for a lottery in DeBruyn, for betting and other applications described in Yoshizawa, for order entry in Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 96 Emerson, for college registration in Moosemiller, etc. This suggests that companies may have decided to use IVR technologies to reduce costs and because others were starting to use IVR rather than for technical reasons. The IVR Report does not establish a prima facie nexus to the merits of the '547 patent claims. The fact that there was a great expansion in the IVR industry from 1988 to the mid-2000s and that IVR vendors' revenues grew at 14.1% per year from 1993 to 2000 (FF 24) does not establish a connection between the commercial success and the technical merits of the '547 patent claims. The IVR Report describes features of IVR systems but does not explain how commercial success is due to particular ones of those features. For example, it is stated that "it is estimated that in the mid-1980's only 5% of United States companies offered toll-free lines as compared to approximately 75% today" (IVR Report 2). There appears to be no connection between IVR toll-free lines and the features argued by Appellant. As another example, it is stated that the Interactive division of West Teleservices Corp., which focused on large volume IVR services, grew in revenues from zero in 1988 to $98.6 million in 1995 (FF 24). "Interactive provided IVR services for a wide range of applications, including, 'secure automated credit card activation, information and entertainment services, polling and surveying, cellular fraud prevention service, automated product information requests, database management and enhancement.'" (IVR Report 4.) There is no showing or allegation that West's many IVR services used the '547 patent claims. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 97 Nor does the IVR Report suggest that there were technical problems in the IVR art that were overcome by features attributable to the '547 patent. The report states that "[w]hile the basic underlying telephone and computer hardware was available, the more sophisticated IVR technical and functional capabilities discussed below had not yet been implemented" (IVR Report 2). The fact that technical and functional capabilities had not been implemented does not imply that the capabilities were unknown or that implementation required any more than ordinary skill in the art. Functional capabilities such as ANI and DNIS were known in art. Appellant makes no effort to show a nexus by showing that the examples in the IVR Report are commensurate in scope with the claimed inventions. The 2006 IVR Report states: "IVR systems range from simple to very complex. Their cost is usually a few hundred thousand dollars, but can range from $25,000 to millions of dollars, depending on the number of ports (which governs how many simultaneous calls a particular IVR system can handle), and their technical and functional capabilities." (IVR Report p. 2). An IVR system includes complicated equipment, programming, software, support, etc., all of which are necessary to the success of the system. Nexus is lacking if the product included elements not recited in the claims which may be responsible for the commercial success or praise. See Joy Techs. v. Manbeck, 751 F. Supp. at 229-30; Marconi Wireless Tel. Co. v. United States, 320 U.S. 1, 35 n.20 (1943) ("Marconi's specifications disclose a large number of details of construction, none of which is claimed as invention in this patent."); White v. Jeffrey Mining Mach. Co., 723 F.2d 1553, 1559 (Fed. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 98 Cir. 1983) ("That Jeffrey's miner enjoyed commercial success does not support an implication that the jury found that a nexus existed between such success and the claimed invention, because the Jeffrey machine included several features not disclosed or claimed in the White patent."). Appellant's statements regarding adoption in the brokerage industry and that over 40 companies in that industry have licensed the '547 patent do not demonstrate that the success of the licensing program is in any way connected to the merits of the '547 patent. In other words, the licensing activity may be due to factors unrelated to the unobviousness of the product or process such as the license being mutually beneficial or less expensive than defending infringement suits. In addition, the statements from the "industry leaders" mention the Katz "portfolio" or "Katz patents" but do not demonstrate a connection to the '547 patent or show that the claimed subject matter of the '547 patent was "a significant and novel advancement" as asserted by Appellant. Conclusion Appellant has not demonstrated a sufficient nexus between the evidence of commercial success and the merits of the claimed invention for the evidence to be entitled to weight in the obviousness determination. Accordingly, the IVR Report and Krauss declarations will not be further discussed in the obviousness analysis. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 99 (3) VCT '87 and VCT '86 Claims 1-10 stand alternatively rejected under 35 U.S.C. § 103(a) as unpatentable over VCT '87 and VCT '86. Independent claim 1 Contentions Appellant argues that claim 1 requires individual callers to provide their own customer number data to the system which will be tested before processing on that data is performed. (App. Br. 43-46; Reply Br. 17-19.) According to Appellant, "[t]he claim recitation 'testing caller customer number data as part of said caller qualification data supplied by the individual callers as at least certain of said caller data signals against a file of stored customer number data' requires a caller (the customer not a merchant on behalf of the customer) to interact with the system and to provides [sic] his or her own 'customer number data' to qualify." (App. Br. 44 (emphasis added).) Appellant argues that, in VCT '86, if a customer fails to qualify then "it is the merchant calling the VCT system who is transferred to an operator and not the customer who failed to qualify." (App. Br. 44.) Thus, Appellant argues, VCT '86 "teaches away from a caller interacting with voice prompts to order an item and to indicate additional details relating to the order." (App. Br. 43-44.) Appellant further states that paragraph 33 of the Klein IV Declaration "opines that it would not have been obvious or predictable to modify a limited merchant based system and application Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 100 (executing a less controlled operation) to accommodate all customers (requiring a more controlled operation)." (App. Br. 45.) The Examiner maintains that claim 1 is either anticipated or rendered obvious by VCT '87 alone. (Appx. A, p. 17; Ans. 53.) The Examiner states that "transferring the caller under the condition that the individual callers do not qualify during the testing step . . . may be a difference" (Appx. A, p. 17; Ans. 53) and explains how VCT '86 teaches this feature (Appx. A, p. 17; Ans. 53; see also FF 19-22). The Examiner concludes that claim 1 does not require any particular test or qualification data, only that the individual caller be tested. (Ans. 55.) The Examiner finds that a call by the merchant meets the disputed claim limitation (Ans. 55-56) and states that "[t]here is simply no requirement in claim 1 that a caller making the purchase be the one calling" (Ans. 56). Furthermore, the Examiner finds that the merchant reads on an individual caller making the purchase. (Ans. 56.) The Examiner finds that the merchant (caller) in the credit card authorization example of VCT '86 (see FF 19-22) is qualified based on the merchant number, which "is assessed by comparison to merchant numbers in the database to determine if the call by the merchant meets the condition or requirement of being in the database and therefore permitted to authorize the customer's card." (Ans. 55.) The Examiner states that "VCT '86 was used to show that it would have been obvious for one of ordinary skill in the art, at the time of the invention to transfer the caller (i.e. the merchant) upon failure to pass the credit verification test in the American Express credit authorization of VCT '87, in order to meet American Express's policy of never declining an Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 101 approval without first talking with the customer (i.e. the merchant), as taught in VCT '86." (Ans. 57.) The Examiner finds that paragraph 33 of the Klein IV Declaration "merely reiterates Patentee's argument" (Ans. 57) and applies the same reasoning in support of the rejection. The Examiner also finds that paragraph 33 of the Klein IV Declaration fails to provide supporting facts to back the opinion (Ans. 58). Issue Appellant's arguments present the following issue: Has the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a)? The resolution of this issue turns on whether VCT '86 and VCT '87 teach or suggest testing caller customer number data as part of the caller qualification data supplied by the individual callers as at least certain of the caller data signals against a file of stored customer number data. Facts VCT '86 26. VCT '86 describes a voice response credit authorization system for American Express designed to "automat[e] the high percentage of routine authorizations." (P. 1; see also p. 5.) "The American Express service policy is to never turn down a retail charge without first speaking directly to the merchant or customer." (P. 1.) Merchants call a toll free number and "[t]he voice response unit receives the call and directs it according to the 800 number. These numbers designate how Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 102 the voice response unit should handle the call." (P. 1.) 27. In a first method, the voice response unit directs the call to an operator called a "Relayer" who asks for and keys in the card number, merchant number, and purchase amount, which then is sent to the host for approval. (PP. 1, 5.) An authorization code for approved transactions is sent to the voice response unit to be spoken back to the merchant. (P. 5.) If the transaction is not approved, the voice response unit transfers the call to an Authorizer who, in accordance with the American Express policy, will speak to the merchant and/or the customer. (P. 5.) 28. "In a second method, specific 800 numbers are handled entirely by the voice response unit." (P. 5.) Merchants respond to voice prompts in order to enter the card number, merchant number, and purchase amount using the telephone keypad. (P. 5.) The voice response unit communicates directly with the host, bypassing the Relayers. (P. 5.) An authorization code for approved transactions is sent to the voice response unit to be spoken back to the caller. (P. 5.) If the transaction is not approved, the call and appropriate data is transferred to an Authorizer for special handling. (P. 5.) "In order to implement this system it was crucial that we be able to recognize and direct specific 800 numbers according to the DNIS identifiers." (P. 5.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 103 29. VCT '86 also describes a telephone registration system used by the University of Texas at San Antonio. (PP. 4, 6.) The caller uses the telephone keypad to key in the social security number, level (graduate or undergraduate), and term. (P, 4.) "If the student has holds, the voice response system initiates the hold message which indicates they type of hold and the office placing the hold on the student record." (P. 4.) If there are no holds, the caller enters the course numbers and receives immediate verification of the information entered. (P. 4.) Also, a database lookup is made to determine if the selected course requires an advisor code to be entered and, if so, the caller is prompted to enter the code. (P. 4.) Any errors returned from the host computer are spoken to the caller. (P. 4.) After hearing a summary of courses accepted and rejected, the caller has the option to enroll in the accepted courses and subsequently add more courses or to cancel the transaction. (P. 4.) Klein IV Declaration 30. Paragraph 33 of the Klein IV Declaration states: 33. VCT '86 is directed to a credit authorization application where the caller is a merchant and not a customer that is calling on his or her own behalf. The merchants interact with voice prompts to enter their merchant number, card number and amount of purchase by a customer of the merchant in situations where a customer is making a purchase in person and the merchant is seeking authorization to charge the customer's credit card. That situation is vastly different from a caller interacting with voice prompts to order an item and to indicate additional Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 104 details relating to the order. In VCT '86, if a customer's credit is not authorized, it is the merchant calling the VCT system who is transferred to an operator and not the customer who failed to qualify. Analysis Appellant's arguments that the Examiner erred in rejecting claim 1 as being obvious over VCT '87 and VCT '86 are not persuasive. As discussed above, we agree with the Examiner that claim 1 is anticipated by or rendered obvious in view of VCT '87 alone. We also agree with the Examiner that claim 1 is obvious in view of the combination of VCT '87 and VCT '86. We also agree with the Examiner that paragraph 33 of the Klein IV Declaration (FF 30) does not provide supporting facts to back the opinion and does not demonstrate that it would not have been obvious or predictable to modify a limited merchant based system and application to accommodate all customers. Claim 1 recites that "individual callers provide said caller data signals" where "said caller data signals includ[e] caller qualification data for qualifying said individual callers." Claim 1 also recites a "means for testing caller customer number data as part of said caller qualification data supplied by the individual callers as at least certain of said caller data signals against a file of stored customer number data." Claim 1 additionally recites "a switch that transfers the individual callers to a manual operation in the event the individual callers do not qualify during the testing step." Claim 1 does not further define "caller customer number data." Thus, claim 1 requires an individual caller to provide caller data signals which include caller Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 105 qualification data. And these caller qualification data further include caller customer number data. The caller customer number data supplied by the caller are tested against a file of stored customer number data. A switch transfers the caller to manual operation if the caller does not qualify in the test performed by the means for testing. Appellant has not pointed to any particular definition in the Specification for the claim terms "caller data signals," "caller qualification data," or "caller customer number data." Nor has Appellant pointed to any restriction in the Specification upon who may be considered as the individual caller. Contrary to Appellant's argument, the language of claim 1 does not limit "caller customer number data" to data of a customer who is the caller. Claim 1 does not recite any particular relationship between the "individual caller" and the "caller customer number data" beyond the requirement that (1) the individual caller provides the caller data signals and (2) the caller customer data are part of the caller qualification data, which are included in the caller data signals provided by the individual caller. We see no reason why the caller customer number data need be the caller's own data as opposed to, for example, data relating to a customer of the caller that is supplied by the caller. Even assuming for the sake of argument that the caller customer number data must be the caller's own data, the Examiner has correctly found (Ans. 55-56; see also FF 26-28) that the merchant number supplied by the merchant in VCT '86 is the merchant's own data and reads on caller customer number data. Therefore, we see no reason why the individual caller may not be a merchant calling to authorize a Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 106 credit card transaction of the merchant's customer -- as taught by VCT '86 (see FF 26-28). Appellant has not produced convincing evidence or arguments to demonstrate error in the Examiner's findings and reasoning. Conclusion The Examiner has not erred in rejecting claim 1 as being obvious over VCT '87 and VCT '86. Dependent claims 2-9 Contentions Appellant argues that these claims "are distinct at least for the reasons urged above with respect to claim 1" and "recite additional limitations that are not met by VCT '87." (App. Br. 45.) The Examiner addresses claims 2-9 in the statement of the rejection (Appx. A, p. 18) and responds to Appellant's argument (Ans. 58). Issue: Has the Examiner erred in rejecting dependent claims 2-9? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. Appellant has not made any effort to show error in the Examiner's findings and reasoning with respect to the additional limitations recited by claims 2-9. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 107 Conclusion The Examiner has not erred in rejecting dependent claims 2-9. Dependent claim 10 Claim limitation at issue Claim 10 depends on claim 1 and further recites "wherein said file of stored customer number data includes negative file data." Contentions Appellant argues that dependent claim 10 is patentable for the reasons urged with respect to independent claim 1 (App. Br. 45). Appellant also argues that "[t]he teachings in VCT '87 and VCT '86 relate to different types of systems and methods and yet the Examiner combines the functionalities relating to one distinct application, the customer service application, in VCT '86 with the functionalities relating to another separate application, the college registration application in VCT '87." (App. Br. 46.) The Examiner addresses claim 10 in the statement of the rejection (Appx. A, p. 18) and responds to Appellant's argument (Ans. 58). Rather than combining disparate teachings, the Examiner states that VCT '87 and VCT '86 both are drawn to the VCT Advantage IVR system. (Ans. 59.) The Examiner finds that it would have been obvious to include negative file data (i.e., the "holds") as taught by the college registration example of VCT '86 (see FF 29) in the college registration system of VCT '87 (see FF 9; see also Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 108 FF 8) in order to prevent ineligible students from registering until the problem causing the "hold" is solved. (Ans. 59-60.) Issue: Has the Examiner erred in rejecting dependent claim 10? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. We also agree with the Examiner that both VCT '87 and VCT '86 relate to the VCT Advantage IVR system and that both address college registration systems. (See FF 8, 9, 29.) The Examiner has articulated reasoning with rational underpinning to support the legal conclusion of obviousness. Appellant's arguments have failed to demonstrate error in the Examiner's articulated reasoning. Conclusion The Examiner has not erred in rejecting dependent claim 10. (4) Moosemiller and Szlam Claims 1-6 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Moosemiller and Szlam. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 109 Facts Moosemiller 31. Moosemiller describes an IVR system in which "[t]he basic product uses touch-tone signaling and voice response" (p. 89). The IVR system "accesses data bases via the public telephone network" (p. 88) and "[t]elephones, rotary or touch-tone, can become instant terminals" (p. 88). Applications for Moosemiller's IVR system include financial services, credit authorization, wholesale and retail distribution, sales order entry, direct marketing, transportation scheduling and dispatching, college registration, and communication services (p. 88), and "stock quotations, catalog ordering, airline reservations, dial-it information menus, caller destination control, and telephone banking" (p. 92). "The system is capable of outdialing, bridging to an attendant for help, or completing a partially automated transaction." (P. 89.) 32. Moosemiller teaches that "[t]he Dialed Number Identification Service (DNIS) has been used with a Direct Inward Dialing (DID) trunk interface to receive dialed digits as part of the call setup protocol." (P. 88.) This allows advance classification of incoming calls for different applications which are greeted by appropriate transaction prompts." (P. 88.) "The DNIS feature is useful for service bureaus for multiple- user applications." (P. 88.) Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 110 33. Moosemiller teaches that the system controller using the General Purpose Interface Bus (GPIB) "allows for control of the speech subsystems and all subunits, including the switch and the network interfaces." (P. 88.) Moosemiller describes an example where "[t]he trunk interface answers an incoming call and communicates this to the system controller via the GPIB" (p. 88) and "[t]ransaction software determines what greeting phrase to play" (p. 88). The caller is prompted to enter a "1" for tone input and if no tone is heard, the system switches to a speech recognizer. (PP. 88-89.) "The transaction continues to use the voice response unit to generate prompts and the speech recognizer to accept the user's voice commands." (P. 89.) 34. Moosemiller describes a Transaction State Machine (TSM) that controls all of the active sessions. (P. 91.) The TSM interprets transaction scripts. (P. 91.) "Many different scripts may reside in the system and be executed concurrently." (P. 91.) "Which script to run is determined by the telephone number that was dialed" (p. 91). Moosemiller describes logging into a service by voice entry of a numeric ID (p. 91), but notes that a speech recognizer is used "only if the caller does not have a tone signaling telephone" (p. 91). 35. In a stock quotation application, the IVR system supports "a stock quotation service for customers of Fidelity Brokerage Services, a major discount brokerage house in Boston" (p. 93) where "[t]he Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 111 service provides on-demand quotations for 6000 stocks, stock option quotations, a personal stock watch list for convenience, and the current Dow Jones Industrials Average" (p. 93). In the stock quotation service, the system "determines how many quotes to provide per call and when to provide help messages." (P. 93.) "Only a few carefully defined messages need be exchanged with the data base machine to support the application, and they are strictly informational messages" (p. 93). The tasks include "LOG -- validates user ID number, returns stock watch list," "DOW -- returns Dow plus time and date," "STK -- accepts stock number, then outputs ticker symbol and quote," and "STA -- uploads accumulated system transaction statistics" (p. 93). The system "treats the data base host as an individual transaction server while also managing user sessions with its built in state machine." (P. 93.) Szlam 36. Szlam discloses a customer account online servicing system that enables direct and immediate updating of customer account information. (Abstract.) Referring to Figure 5, a trunk interface control unit 10a13 "may direct ANI decoder 10a24 to obtain the telephone of the calling party, and direct message player 10a9 to seize the line and begin playing the prerecorded message or, alternatively, system controller 11 may instruct trunk interface control unit 10a13 to direct ANI decoder 10a24 and message player 10a9 to perform these Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 112 functions." (Col. 12, ll. 14-22.) "The message played by message player 10a9 may be a simple message advising the party that an operator will be connected as soon as one becomes available or, in conjunction with DTMF decoder 10a28, may query the customer for more information such as the customer's telephone number and/or account number." (Col. 12, ll. 22-28.) 37. Szlam further discloses that, "[i]n areas where ANI is available, the central office will provide, over the trunk, tone or other signals which can be decoded to yield the number from which the calling party is calling." (Col. 12, ll. 31-34.) The ANI decoder 10a24 provides the calling party's telephone number to trunk interface control unit 10a13, which in turn provides the telephone number to the system controller 11. (Col. 12, ll. 35-39.) Based on the telephone number of the calling party, the system controller 11 requests the mainframe 16 to provide customer account information. (Col. 12, ll. 39-42.) "If the calling party telephone number does not correspond to the telephone number for an existing client then, when an operator becomes available, system controller 11 will connect the callin [sic] party to the available operator and also provide the calling party telephone number to the operator terminal for manual input." (Col. 12, ll. 42-48 (emphasis added).) "The operator can then conduct business with the calling party, obtain other information from the calling party, such as a name and/or an account number, enter this information via the keyboard to Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 113 obtain the customer account information from mainframe 16, establish an account for a new customer etc." (Col. 12, ll. 48-54.) On the other hand, if the telephone number corresponds to an existing client in the database, customer information is provided by the mainframe computer 16 to the system controller 11. (Col. 12, ll. 55-59.) "When an operator becomes available, system controller 11 will provide the abbreviated customer account information to the available operator terminal." (Col. 12, ll. 60-63.) 38. Also referring to Figure 5, Szlam discloses a voice recognition module 10a32 that "allows some transactions to be completely handled without operator intervention and without requiring the customers to have a DTMF-type telephone." (Col. 13, ll. 54-57; see also col. 13, l. 67 to col. 14, l. 18.) 39. Claim 53 of Szlam recites (with emphasis added): 53. Apparatus for online updating of data on customer accounts contained in an information storage system, comprising: an operator terminal comprising a data terminal and an audio communications means; trunk switching means for selectively connecting a telephone trunk to said audio communications means; Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 114 incoming call detection means for providing a ring detect signal when an incoming call occurs on said telephone trunk; message player means for placing a predetermined message on said telephone trunk for prompting a calling party to provide a response; decoder means responsive to signals placed on said telephone trunk by said calling party for providing a decoded response; and control means responsive to said ring detect signal for causing said message player means to place a first predetermined said message on said telephone trunk, and responsive to said decoded response for determining whether assistance from an operator is required; wherein, if said assistance is required, said control means causes said trunk switching means to connect said telephone trunk to said audio communications means, whereby said data terminal provides data entries made at said data terminal by said operator to said information storage system, and said information storage system updates said data for said customer account of said calling party by incorporating said data entries into said data for said customer account; and if said assistance is not required, said control means provides said decoded response as data entries to said information storage system, said information storage system updates said data for said customer account by incorporating said data entries into said data for said customer account, and said control means causes said message player means to place a next predetermined message on said telephone trunk. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 115 Independent Claim 1 Contentions Appellant argues that although Moosemiller discloses DNIS, it does not disclose ANI (i.e., the "calling number identification data signals automatically provided by the communication facility" recited by claim 1) and "[t]he Examiner seeks to fill that void with the teaching in Szlam." (App. Br. 47.) According to Appellant, Szlam teaches that it is conventional in the art of telephony to use calling number identification data signals automatically provided by the telephone network (via ANI decoder 10a24) in order to identify a caller's telephone number and to retrieve any previously stored customer account information associated with the calling telephone number prior to answering the incoming call (Szlam, col. 12, lines 9-42). However, Szlam does not teach switching a call to an operator attendant for manual operation only when it is determined that a caller has failed to qualify based on the caller's response to a prompt. Szlam teaches forwarding inbound calls directly to an available operator and using the calling party telephone number to access customer account information and display that data on the operator's screen. Accordingly, a combination of Moosemiller with Szlam does not result in the system as claimed by claim 1. (App. Br. 47.) The Examiner notes that, while claim 1 recites that callers who do not qualify during the testing step are transferred to a manual operation, the language of claim 1 does not prohibit "qualified callers from being forwarded to 'manual operation'" (Ans. 62) and thus "the claim does not limit 'all calls' from being transferred" (Ans. 62). The Examiner finds that Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 116 Szlam teaches transferring a caller to an operator when the caller fails to qualify during testing. (Ans. 62-63; FF 36-39.) In addition, even though not required by claim 1, the Examiner finds that Szlam teaches transferring a caller to an operator only when the caller fails to qualify during testing. (Ans. 62-63; FF 39.) Issue Has the Examiner erred in rejecting independent claim 1? Analysis We agree with the Examiner that Szlam teaches or suggests transferring the caller to a manual operation when the caller does not qualify during testing, as recited by claim 1. (FF 36-39.) In particular, Szlam teaches that a caller who does not have a telephone number corresponding to an existing client will be transferred to an operator for assistance. (FF 37.) We agree that the plain language of claim 1 does not prohibit qualified callers from being transferred to a manual operation in addition to those callers who do not qualify. Thus, it does not matter that Szlam teaches an embodiment where callers who have telephone numbers corresponding to existing clients, and thus "qualify," are transferred to an operator along with their customer account information. (FF 37.) In addition, even though not required by the plain language of claim 1, we agree with the Examiner that Szlam teaches or suggests transferring a caller to a manual operation only in the case where the caller does not qualify. (FF 38, 39.) In particular, Szlam Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 117 teaches an embodiment where the operator is only required if the caller needs assistance (i.e., does not qualify during a testing step) and teaches that a voice recognition module allows some transactions to be handled without operator intervention. (FF 38, 39.) Conclusion The Examiner has not erred in rejecting claim 1 as being obvious over Moosemiller and Szlam. Claim 6 was not argued separately and falls with claim 1. Dependent claim 2 Claim limitation at issue Claim 2 depends on claim 1 and further recites "wherein at least certain of said individual callers at certain of said remote terminals are also subject to qualification based on said calling number identification data signals." Contentions Appellant argues that dependent claim 2 is patentable for the reasons urged with respect to independent claim 1 (App. Br. 48). Appellant also argues that "Szlam teaches use of ANI to access customer information and to display it on an operator's screen" (App. Br. 48) but "[t]here is no teaching of receiving the ANI for a caller for the purpose Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 118 of determining if the caller is entitled to proceed through the automated process." (App. Br. 48.) The Examiner notes that the plain language of claim 2 does not "limit[] the type of qualification to be for 'entitle[ment] to proceed through the automated process.'" (Ans. 64.) Moreover, even though not required by the claim, the Examiner finds that Szlam teaches receiving the ANI for the purpose of determining if the caller is entitled to proceed through the automated process. (Ans. 64; FF 36, 37.) Issue: Has the Examiner erred in rejecting dependent claim 2? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. We also agree with the Examiner that claim 2 does not constrain the type of qualification to be for entitlement to proceed through the automated process. We further agree with Examiner that such a limitation is taught by Szlam in any event. (FF 36, 37.) Conclusion The Examiner has not erred in rejecting dependent claim 2. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 119 Dependent claims 3-5 and 8 Claim limitations at issue Claim 3 depends on claim 1 and further recites "wherein said processor unit generates data identifying an order and provides the data to the individual callers." Claim 4 depends on claim 3 and further recites "wherein the data identifying the order is number data." Claim 5 depends on claim 4 and further recites "wherein the number data is provided as acknowledgement data to the individual callers." Claim 8 depends on claim 1 and further recites "wherein the caller data signals include item number data." Contentions Appellant argues that dependent claims 3-5 and 8 are patentable for the reasons urged with respect to independent claim 1 (App. Br. 49). Appellant also contends that the additional limitations of dependent claims 3-5 and 8 are not met by Moosemiller. (App. Br. 49.) In particular, Appellant "respectfully submits that stock quotes are current values for a particular stock that vary from day to day" (App. Br. 49) and "are not data that is generated by the computer to identify a particular order" (App. Br. 49). Appellant further argues that "a time/date stamp is not an indication of sequence" (App. Br. 49) because "several callers calling at the same instance would be accorded identical time/date stamps" (App. Br. 49). Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 120 The Examiner addresses claims 3-5 and 8 in the statement of the rejection (Appx. A, pp. 21-22) and responds to Appellant's arguments (Ans. 65-66). The Examiner finds that the stock quote data in Moosemiller (FF 35) read on processor-generated data identifying the order (Ans. 65) and that a time/date stamp is a chronological sequence (Ans. 65). The Examiner notes that there is nothing in the claim language to indicate that "'sequence data' indicates 'the sequence or order in which callers call the system'" (Ans. 65) and that only claim 6 recites a "chronological sequence" (Ans. 65). In addition, the Examiner notes that the terms "order" and "sequence" are not synonymous. (Ans. 65.) Instead, "the term 'order' is related to a 'request for purchase of an item' and the number data is the order number." (Ans. 65; see also Ans. 66.) Issue: Has the Examiner erred in rejecting dependent claims 3-5 and 8? Analysis Appellant's arguments with respect to independent claim 1 are not persuasive for the reasons previously discussed. We also agree with the Examiner that the stock quote data of Moosemiller meet the claimed processor-generated data identifying the order. (FF 35.) Also, as previously discussed, we agree with the Examiner that a time/date sequence is a chronological sequence. Conclusion The Examiner has not erred in rejecting dependent claims 3-5 and 8. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 121 (5) Yoshizawa and Moosemiller Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Moosemiller. Claim limitations at issue Claim 26 depends on claim 21 and further recites the step of "receiving called number identification signals (DNIS) automatically provided by said communication facility as a part of said data signals." Contentions Appellant argues that "Yoshizawa's system is dedicated to one single application and . . . when Yoshizawa suggests other applications it is not with the intention of configuring this system to run all those applications simultaneously." (App. Br. 51.) Appellant further argues that "Moosemiller does disclose DNIS signals to handle different applications, but . . . Yoshizawa does not invite such a combination, as there is no teaching in Yoshizawa that indicates a desire to operate several applications simultaneously or concurrently." (App. Br. 52.) Appellant also states that "[t]he question of whether it would be obvious to one of ordinary skill in the art is addressed in the declaration by the expert, Mr. Klein (see Klein IV, paragraphs 47-49)." (App. Br. 52.) Appellant further argues that dependent claim 26 is patentable for the reasons urged with respect to independent claim 21 (App. Br. 52). Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 122 The Examiner finds that "Yoshizawa may handle several applications simultaneously when considered with Moosemiller" (Ans. 66-67) and states that "Patentee fails to address the combination of references" (Ans. 67). The Examiner additionally finds that "given that Yoshizawa expressly suggests that the system can be used for several different applications, and since the system links to a caller's bank file (Yoshizawa, Fig. 1 on p. 216)" (Ans. 67) it would have been obvious to one of ordinary skill in the art at the time of the invention to have combined Yoshizawa and Moosemiller "to use the same system for other applications requiring determining whether a caller possessed sufficient funds, such as credit authorization or airline reservations, to thereby save money that would otherwise be spent on a separate voice response system" (Ans. 67). Furthermore, the Examiner finds that it "is clear from Moosemiller that DNIS would enable a voice response unit to handle several different applications simultaneously, such as the multiple applications indicated in Yoshizawa." (Ans. 68.) The Examiner did not afford weight to the expert opinion in paragraphs 47-49 of the Klein IV Declaration because "Klein fails to provide supporting facts to back his opinion." (Ans. 69.) Issue Has the Examiner erred in rejecting dependent claim 26? Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 123 Facts Klein IV Declaration 40. Paragraphs 47-49 of the Klein IV Declaration state: 47. Claim 26 (which depends on claim 21) is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshizawa in view of Moosemiller. 48. Yoshizawa's system is dedicated to one single application and if Yoshizawa suggests other applications it is not with the intention of configuring this system to run all those applications concurrently. Moosemiller does disclose DNIS signals to handle different applications, but there is no suggestion in Yoshizawa that indicates a desire to operate several application concurrently. 49. For the foregoing reasons, and from my knowledge of the field, my own personal experience, and the state of the art in 1988, to the extent that a person of ordinary skill in the art was familiar with the teachings of the art cited in the Office Action, I find that the rejection of claim 26 based on a combination of Yoshizawa in view of Moosemiller is incorrect. Analysis Appellant's arguments with respect to independent claim 21 are not persuasive for the reasons previously discussed. Appellant does not address the Examiner's reasoning regarding the combination of Yoshizawa with Moosemiller and, therefore, we do not find error in the rejection. The Examiner presents a reasonable basis for the modification. Moosemiller describes an IVR system (FF 31-35) and states that DNIS "allows advance classification of incoming calls for different Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 124 applications" (FF 32) and that "[t]he DNIS feature is useful for service bureaus or for multiple-user applications" (FF 32). One of ordinary skill in the art also would have known that IVR systems can have multiple applications running simultaneously. (FF 34.) One of ordinary skill in the art would have been motivated to use DNIS in Yoshizawa for its known advantage of classifying incoming calls in order to route calls to different applications. Absent any persuasive arguments against the Examiner's rejection, it must be affirmed. We agree with the Examiner that the Klein IV Declaration (FF 40) is not persuasive because it merely repeats Appellant's arguments and does not provide supporting facts for the opinion. Conclusion The Examiner has not erred in rejecting dependent claim 26. (6) Yoshizawa and Rackman Claims 29-31 and 34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Rackman. Claim limitations at issue Claim 29 depends on claim 21 and further recites "wherein in response to prompts said individual callers enter credit card data." Claim 30 depends on claim 29 and further recites "wherein in response to prompts said individual callers enter data on a type of credit card." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 125 Claim 31 depends on claim 29 and further recites "wherein said callers enter credit card number data as credit card data." Claim 34 depends on claim 31 and further recites "wherein said credit card number data is received as billing data." Contentions Regarding claim 29, Appellant argues that it is a store clerk and not the credit card holder who is the caller in the credit card verification application of Rackman. (App. Br. 53.) According to Appellant, "this is not using a credit card number, by a caller, who is interacting with a control system, to order an item for him or herself." (App. Br. 53.) Regarding claim 30, Appellant argues that the claim "requires an indication of the type of credit card that is apparent to the caller as well as to the system" (App. Br. 53) and that coding the type of credit card in the card number "would only be apparent to the system" (App. Br. 53). Appellant further argues that dependent claims 29 and 30 are patentable for the reasons urged with respect to independent claim 21 (App. Br. 53-54). Regarding claim 34, Appellant argues that "providing billing data in the context of a third party seeking credit authorization would be improper" (App. Br. 54) because "[t]he merchant or store clerk who seeks authorization on a credit card for a customer is not providing the credit card number for billing." (App. Br. 54.) Appellant further argues that dependent claim 34 is patentable for the reasons urged with respect to independent claim 21 and dependent claims 29 and 31 (App. Br. 54). Appellant states that "[t]he expert declaration (see Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 126 Klein IV, paragraphs 50-54) negates the Examiner's reasoning." (App. Br. 54.) The Examiner states that the claims do not require the caller to be the one entering the credit card data and, even if required, Rackman teaches "that the dialing of the credit card number for verification was known in the art" (Ans. 71). The Examiner states that "one of ordinary skill would not be baffled at the notion of having any caller placing an order to enter his/her own credit card number" (Ans. 71) and "Rackman was provided . . . to show [] dialing a credit card number for credit authorization was known, not that it had to be dialed by some store clerk" (Ans. 71). Regarding claim 30, the Examiner states that there is no requirement that the credit card type be apparent to the caller and in any event the credit card type would be apparent to the caller because "[a]ll credit cards have the type of card (e.g. VISA, Mastercard, AmEx) printed on the card itself." (App. Br. 72.) Regarding claim 34, the Examiner "disagrees that the combination of references results only in a third party seeking authorization" (Ans. 72) and states that "[i]t does not matter that in the example in Rackman that a store clerk dialed the number on behalf of a customer because Yoshizawa teaches that the IVR system can be used for automated telephonic order entry, and Rackman shows that a caller (merchant or otherwise) can enter a credit card number via dialing over a telephone." (Ans. 72.) The Examiner finds that the Klein IV Declaration "echoes the sentiment of Patentee" (Ans. 73) and applies the same reasoning in support of the rejection. Regarding paragraph 54 of the Klein IV Declaration, the Examiner states that "Klein's opinion has no basis Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 127 in factual support and therefore has no weight" (Ans. 73) and finds that Rackman still teaches "that the credit card number is dialed over the phone for verification" (Ans. 73) and "[t]he credit card number is clearly provided for billing" (Ans. 73). Issue Has the Examiner erred in rejecting dependent claims 29-31, 34, and 35? Facts Rackman 41. Rackman discloses that the ordinary telephone is "[a] very cheap data terminal" because it can transmit data using push-buttons and receive data by listening to a spoken response. (Col. 1, ll. 27-30.) Rackman teaches a banking application using telephone data terminals where "[a] teller, who wants to know if a depositor has a sufficient balance to cover a check to be cashed, instead of looking up a record, can simply dial a computer, key in the depositor's name or code number, and then listen to the computer response." (Col. 1, ll. 32-36.) "Another application is credit card verification; a store clerk dials the credit-card company computer, followed by the dialing of the customer's credit card number, and then listens to a verbal report." (Col. 1, ll. 36-40.) "Other applications include requests for the progress of air freight shipments, requests by a factory manager for the number of parts in Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 128 inventory, requests to a computation center for estimated time of processing of computer programs, etc." (Col. 1, ll. 40-44.) 42. Rackman discloses that "[t]he equipment which enables a computer to send back a verbal message is called a 'voice response' system" (col. 1, ll. 45-47) where "[t]he computer composes a message to be delivered and then controls the recording equipment to play back over the telephone line the selected words in the proper sequence" (col. 1, ll. 48-51). Klein IV Declaration 43. Paragraphs 50-54 of the Klein IV Declaration state: 50. Claims 29-31 (depend on claim 21), 31, 34, and 35 (ultimately depend on claim 21) are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshizawa in view of U.S. Patent No. 3,778,553 to Rackman ("Rackman"). 51. Yoshizawa teaches a system for telephone betting for which a user must have previously arranged to be a subscriber of the system in order to use it. Yoshizawa indicates the following: The Japan Racing Association, jointly with Hitachi, Ltd. has developed a telephone betting system using the voice response unit. This system is designed to enable the annually increasing horse race fans to purchase pari-mutuel tickets by phone, with the aim of improving service to the fans while at the same time solving the problems of traffic congestion and Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 129 littering (with missed pari-mutuel tickets) in the areas around race courses. (Yoshizawa, page 215, Abstract). 52. Yoshizawa developed a telephone betting system to avoid the purchase of a "ticket" (an object) for the horse races, suggesting that it is in the interest of "preventing littering" of the areas surrounding horse courses with missed pari-mutuel tickets. In that context, to one of ordinary skill in the art, a "bet" would not be an item. In the context of ordering, it would teach an object or an article for purchase. In contrast, a bet is a "wager" or "stake" that represents an agreement between two parties that the one who has made an incorrect prediction will forfeit something stipulated to the other (usually money). Even if Yoshizawa teaches an order application, Yoshizawa teaches away from a system that orders an object to make a purchase. Moreover, in a typical betting scenario (page 5 of Yoshizawa), there is no evidence that the caller is either prompted for by the system or provides any additional data that relates to the item that the caller desires to purchase. Therefore, in Yoshizawa, there is no teaching of this claimed limitation. The rejection that claim 21 is anticipated by the primary reference Yoshizawa is incorrect. 53. With respect to claims 29-31 (depend on claim 21), 31, 34, and 35 (ultimately depend on claim 21), the Examiner suggests the secondary reference, Rackman. Rackman teaches a credit card verification application for a vendor such as "a store clerk" who "dials the credit-card company computer, followed by the dialing of the customer's credit card number, and then listens to a verbal report." Rackman's system is not for a merchant's customer (the cardholder) calling to interact with an automated system, thereby eliminating the middleman (the merchant), to order and purchase an item for him or herself. Rackman does not teach a direct customer system where the type of credit card is apparent to the customer and the Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 130 system. Coding within the credit card number to indicate its type as taught in Rackman is apparent only to the system. To one of ordinary skill the merchant or store clerk (vendor application) who seeks authorization on a credit card for a customer is not providing the credit card number for billing. Once approved, the charge would be made at the merchant or store location. 54. For the foregoing reasons, and from my knowledge of the field, my own personal experience, and the state of the art in 1988, to the extent that a person of ordinary skill in the art was familiar with the teachings of the art cited in the Office Action, I find that the rejection of claims 29-31, 34, and 35 based on a combination of Yoshizawa and Rackman is incorrect. Analysis Appellant's arguments with respect to independent claim 21 are not persuasive for the reasons previously discussed. We agree with the Examiner that the claims do not require the caller to be the credit card holder. And even if this was required, we further agree with the Examiner that, in view of the teachings of Yoshizawa and Rackman (FF 17-21, 41, 42), it would have been obvious to one of ordinary skill at the time of the invention for a caller to enter their own credit card information. At the very least, this would have been common sense. The Examiner has articulated a rationale for combining the teachings of Yoshizawa and Rackman, and Appellant has not presented convincing evidence or argument to demonstrate error in the Examiner's combination of references. Regarding claim 30, we agree with the Examiner that the claim does not require an indication of the type of credit card to be apparent to the Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 131 caller. And even if it did, we further agree with the Examiner that such an indication would have been apparent because the type of card is printed on the card itself. Regarding claim 34, we do not agree with Appellant that the claim excludes a third party merchant from providing the credit card number data or that such data would not be received for billing. In any event, we agree with the Examiner that the combination of Yoshizawa and Rackman renders obvious a caller (merchant or credit card holder) entering credit card number data as billing data. At the very least, this would have been common sense. Appellant has not presented convincing evidence or argument to demonstrate error in the Examiner's findings and reasoning. Among other things, we agree with the Examiner that paragraphs 50-54 of the Klein IV Declaration do not negate the Examiner's reasoning. Appellant has not presented, and thus has waived, any arguments with respect to claim 35. See 37 C.F.R. § 41.37(c)(1)(vii). Conclusion The Examiner has not erred in rejecting dependent claims 29-31, 34, and 35. (7) Yoshizawa, Rackman, and Gentile Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa, Rackman, and Gentile. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 132 Claim limitations at issue Claim 32 depends on claim 31 and further recites "wherein in response to said prompts said callers enter credit card expiration data as credit card data." Claim 33 depends on claim 32 and further recites "further comprising the step of: verifying on-line the credit card number data and the credit card expiration data." Contentions Appellant states that error previously has been shown in the combination of Yoshizawa and Rackman, and argues that dependent claims 32 and 33 are patentable for the reasons urged with respect to independent claim 21 and the intermediate claims from which they depend. (App. Br. 55.) Appellant further argues that Gentile suggests providing data by a third party merchant or store clerk for a customer. (App. Br. 55.) Appellant states that "[t]he expert declaration (see Klein IV, paragraphs 55-57) negates the Examiner's reasoning." (App. Br. 55.) The Examiner states that no error has been shown in the combination of Yoshizawa and Rackman alone or in further combination with Gentile. (Ans. 74.) The Examiner sets forth where each limitation is taught in the references (Appx. A, p. 25; Ans. 74) and articulates a rationale for combining the teachings of Yoshizawa, Rackman, and Gentile (Ans. 74). In particular, the Examiner states that it would have been obvious "to have the caller provide the expiration date in response to a prompt in the automated Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 133 telephone credit authorization method of Yoshizawa in view of Rackman, to ensure the card was, in fact, still valid as of the date the order was requested, as taught to be known in Gentile." (Ans. 74.) The Examiner finds that the Klein IV Declaration "again echoes the sentiment of Patentee" (Ans. 75) and applies the same reasoning in support of the rejection. The Examiner "submits that one of ordinary skill would understand from Rackman and Gentile that it does not matter who dials the credit card number and the expiration date" (Ans. 75) as "long as the information is dialed for the purpose of verification" (Ans. 75) and states that "[t]his is common sense" (Ans. 75). The Examiner also finds that in paragraph 57 "Klein's opinion has no basis in factual support and therefore has no weight." (Ans. 75.) Issue Has the Examiner erred in rejecting dependent claims 32 and 33? Facts Gentile 44. Figure 5 of Gentile describes an automatic banking machine terminal and process. Credit cards are inserted into remote terminals and a person enters a personal ID code, the card is read and checked against the ID code, and then the card is verified in a card verification routine by checking the card expiration date, and number of daily transaction withdrawals: During an off-line transaction, the terminal computer of the electronic module performs the verification routine 68 Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 134 to determine if the credit card data is within established limits to assure invalid cards are not accepted. The first verification subroutine 70 determines the credit card expiration date and compares this data to the current calendar date. If the expiration date is less than or equal to the calendar date, card verification continues, if not, the transaction terminates. (Col. 5, ll. 36-45.) Klein IV Declaration 45. Paragraphs 55-57 of the Klein IV Declaration state: 55. Claims 32 and 33 (depend on 31 and ultimately depend on claim 21 via claim 29) are rejected under 35 U.S.C. § 103(a) as being unpatentable over the primary reference, Yoshizawa, in view of the secondary reference, Rackman, and further in view of a third reference, Gentile. 56. Further to my beliefs, which I have stated above, to the extent Gentile suggests providing expiration data, it is in a completely different environment and system for use by a third party merchant or store clerk for a customer of the merchant or the store. Gentile's System is not a direct customer application system. Therefore, in my view, one of ordinary skill in the art would not seek to combine the references in the way that the Examiner suggests. 57. For the foregoing reasons, and from my knowledge of the field, my own personal experience, and the state of the art in 1988, to the extent that a person of ordinary skill in the art was familiar with the teachings of the art cited in the Office Action, I find that the rejection of claims 32 and 33 based on a combination of Yoshizawa, Rackman and Gentile is incorrect. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 135 Analysis Appellant's arguments with respect to independent claim 21 and the intermediate claims from which claims 32 and 33 depend are not persuasive for the reasons previously discussed. Claims 32 and 33 do not require the caller to be the credit card holder and do not prohibit a third party such as a merchant from providing and verifying credit card data of the credit card holder. We agree with the Examiner that it would have been obvious for a caller to provide the credit card number and expiration date to ensure that the card was still valid as of the date an order was requested (see FF 44). At the very least, this would have been common sense. The Examiner has articulated a rationale for combining the teachings of Yoshizawa, Rackman, and Gentile, and Appellant has not presented convincing evidence or argument to demonstrate error in the Examiner's combination of references. Appellant has not presented convincing evidence or argument to demonstrate error in the Examiner's findings and reasoning. Among other things, we agree with the Examiner that paragraphs 55-57 of the Klein IV Declaration (FF 45) do not negate the Examiner's reasoning. Conclusion The Examiner has not erred in rejecting dependent claims 32 and 33. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 136 (8) Yoshizawa and Vij Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Vij. Claim limitations at issue Claim 35 depends on claim 21 and further recites "wherein said order is a television initiated order." Claim 36 depends on claim 35 and further recites "wherein at least certain of the data relating to the order entered by said callers is coded data displayed on the television." Contentions Appellant argues that "Yoshizawa does not disclose the details on how its system could be configured to implement an order entry system" (App. Br. 57) and "Vij is directed to a telemarketing environment where in conjunction with television advertising broadcasts, an information message is transmitted to the caller prior to a customer agent answering a telephone call" (App. Br. 57). Thus, Appellant contends that Yoshizawa and Vij teach away from each other because "Yoshizawa is directed to an automated operator-free environment and Vij is directed to a telemarketing environment where live operators communicate with callers and are assisted by a system only to enable the live operators to recognize which particular advertisement, callers are responding to." (App. Br. 57.) In addition, Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 137 Appellant argues that "[t]he expert declaration (see Klein IV, paragraphs 68-72) traverses this rejection." (App. Br. 57.) Regarding both Appellant's arguments and the Klein IV Declaration, the Examiner finds that Yoshizawa and Vij do not teach away from each other because "[b]oth are directed to automated telephone mail order" (Ans. 82; see also Ans. 83-84). The Examiner states that "[o]ne of ordinary skill would know very well to automate the know [sic] steps for sales entry already used by systems using people to take the information over the phone" (Ans. 83). Thus, the Examiner finds that "[i]t would have been obvious for one of ordinary skill in the art, at the time of the invention to use telephone initiated orders in the sale order entry of Yoshizawa, in order to beneficially increase the orders or sales or services of the advertiser or merchandiser, as taught to be notoriously well known in Vij" (Ans. 83-84). The Examiner also finds that "[a]dvertising is an independent function from automation" (Ans. 84) and "[g]iven the expressed benefit of advertising, one of ordinary skill would not be led away" (Ans. 84). "Vij teaches automated order entry of the item by the caller. Therefore, there is no teaching away from Yoshizawa's automation." (Ans. 84.) Issue Has the Examiner erred in rejecting dependent claims 35 and 36? Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 138 Facts Vij 46. Vij describes a telephone system adapted to telemarketing. (Col. 1, ll. 8-10.) Vij teaches that: Advertisements of merchandise and services via the electronic medium of television and radio are well known commercial activities. Some of these advertisements solicit a telephone response in order to facilitate delivery of merchandise and payment for same. Upon witnessing a particular advertisement, an interested person dials a telephone number as given in the advertisement, to speak with a merchandising agent. The merchandising agent is located at some convenient place for this purpose and in the first instant was provided with a telephone having a directory number as given in the advertisement. Thus, soon after an occurrence of the advertisement, a great many telephone calls may be directed to the merchandising agent. (Col. 1, ll. 13-26.) 47. Vij also teaches that: It is an object of the invention to provide a telephone system and method which optimizes a number of calls per unit time which may be correctly handled by a merchandising agent in a telemarketing business. . . . The invention is a telephone method for automatically identifying an item of purchase to a merchandising agent. The merchandising agent is provided with a telephone station set and an information display. The method includes the steps of assigning a plurality of directory numbers to the telephone station set and storing a product information in association with each of the telephone Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 139 directory numbers, in a storage medium. In response to an incoming telephone call to one of the directory numbers, the incoming telephone call is connected to the telephone station set and an indication of the directory number is communicated to the information storage medium. The product information associated with the directory number is transmitted from the storage medium to the information display where it is displayed to automatically inform the merchandising agent as to the item for purchase. (Col. 2, ll. 5-35.) 48. In an alternative embodiment, Vij teaches that "it is envisaged that the merchandising function is completely automated such that machine generated voice communication is directed to the calling party, such machine voice communication being designed to solicit detectable touch tone key pad responses from the customer for ordering and confirmation functions, et cetera." (Col. 5, ll. 39-45.) Klein IV Declaration 49. Paragraphs 68-72 of the Klein IV Declaration state: 68. Claims 35 and 36 (ultimately depend on claim 21) are rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshizawa in view of U.S. Patent No. 4,788,682 to Vij et al. ("Vij"). 69. Yoshizawa suggests using the voice response system for credit card authorization and sales services, including order entry. However, Yoshizawa does not disclose the details on how its system could be configured to implement an order entry system. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 140 70. Vij is directed to a telemarketing environment where in conjunction with television advertising broadcasts, an information message is transmitted to the caller prior to a customer agent answering a telephone call. 71. I believe that a person having ordinary skill in the art at the time the '547 specification was filed would not have been motivated to combine Yoshizawa and Vij in the way that the Examiner suggests to render claims 35 and 36 obvious. First, there is no explicit or implicit suggestion in either reference to combine them in the way the Examiner suggests. Second, to one of ordinary skill in the art, both references teach away from each other, because Yoshizawa is directed to an automated operator-free environment and Vij is directed to a telemarketing environment where live operators communicate with callers and are assisted by a system only to enable the live operators to recognize which particular advertisement, callers are responding to. 72. For the foregoing reasons, and from my knowledge of the field, my own personal experience, and the state of the art in 1988, to the extent that a person of ordinary skill in the art was familiar with the teachings of the art cited in the Office Action, I find that the rejection of claims 35 and 36 on a combination of Yoshizawa and Vij is incorrect. Analysis Appellant's arguments are not persuasive. We agree with the Examiner that Yoshizawa and Vij do not teach away from each other. Both Yoshizawa and Vij teach telephone mail order systems that can be automated. (FF 22, 46-48.) Contrary to Appellant's argument and paragraphs 70 and 71 of the Klein IV Declaration (FF 49), Vij is not limited Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 141 to the use of live operators and teaches an embodiment with an automated "operator free" environment. (FF 48.) The Examiner has articulated a rationale for combining the teachings of Yoshizawa and Vij, and Appellant has not presented convincing evidence or argument to demonstrate error in that rationale. Among other things, we agree with the Examiner that paragraphs 68-72 of the Klein IV Declaration do not demonstrate error in the Examiner's reasoning. Conclusion The Examiner has not erred in rejecting dependent claims 35 and 36. (9) Yoshizawa and Kono Claims 40, 41, and 48-50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Kono. Claim limitations at issue Claim 40 depends on claim 21 and further comprises the step of "controlling inventory of items with certain order data." Claim 41 depends on claim 40 and further recites "wherein the controlling step controls the inventory of items on-line." Claim 48 depends on claim 21 and further recites "wherein the additional data provided by the callers includes the size of the item." Claim 49 depends on claim 21 and further recites "wherein the additional data provided by the caller includes the color of the item." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 142 Claim 50 depends on claim 21 and further recites "wherein the additional data provided by the caller includes the size and color of the item." Contentions Appellant contends that the Examiner erred in combining Yoshizawa and Kono. (App. Br. 57-58.) In particular, Appellant argues that the Examiner has not shown motivation to combine the two references because "the environments in which both systems are practiced are completely disparate" (App. Br. 58) since Kono "is directed to a special purpose mechanical device for preparing and [sic] merchandizing tags having both magnetic and printed information." (Reply Br. 23.) Appellant also refers to paragraphs 73-76 of the Klein IV Declaration. (App. Br. 58; Reply Br. 24.) The Examiner finds that "[g]iven the plural pieces of information entered in the race betting example provided in Yoshizawa, one of ordinary skill would recognize by the teaching in Kono, that similar product information would be required for ordering a specific item, as in the 'order entry' function proposed by Yoshizawa." (Ans. 85.) Issue Has the Examiner erred in rejecting dependent claims 40, 41, and 48- 50? Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 143 Facts Kono 50. Kono relates to systems and machines for preparing merchandizing tags with both a magnetizable portion and a portion for receiving visible printed information. (Abstract; col. 1, ll. 15-17.) Kono teaches that a reader is used to read the magnetic portion of multiple tags and to transmit that information to a storage tape. (Col. 1, ll. 58-61.) "Periodically the information from the storage tape is retransmitted to a data processing center for sorting, classifying and tabulating the information for inventory and accounting purposes." (Col. 1, ll. 61-64.) Analysis We generally agree with Appellant that, given the disparate environments in which Yoshizawa and Kono operate (see FF 17-22, 50), the Examiner has not articulated sufficient reasoning with some rational underpinning to support the legal conclusion of obviousness. Conclusion The Examiner has erred in rejecting dependent claims 40, 41, and 48- 50. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 144 (10) Yoshizawa and Emerson Claim 42 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and Emerson. Claim limitation at issue Claim 42 depends on claim 21 and recites that the verifying step further comprises the step of "verifying the customer number data provided by the callers against a list of negative customer numbers." Contentions Appellant argues that, in Emerson, "the verification of negative customer number is provided to a merchant and not to a customer directly making an order on his or her behalf as in the context of Patentee's claims" (App. Br. 56) and "[p]roviding information on negative customer numbers directly to customers would only encourage fraud" (App. Br. 56). Also, according to Appellant, "[t]he expert declaration (see Klein IV, paragraphs 58-61) traverses the Examiner's reasoning." Appellant further argues that dependent claim 42 is patentable for the reasons urged with respect to independent claim 21 (App. Br. 56). The Examiner states that "[t]he claim only requires the customer number data to be verified against a list of negative customer data" (Ans. 76) and the claim language does not require the results of the verification to be provided to the owner of the customer number or to anyone else (Ans. 76). The Examiner also states that Appellant and the Klein IV Declaration "fail[] Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 145 to address the manner in which Examiner made the combination and why that manner is allegedly improper" (Ans. 77). In addition, the Examiner finds that the Klein IV Declaration "has no weight" (Ans. 77) and is no more persuasive than Appellant's arguments because it "is only an opinion on the ultimate legal conclusion and is provided without factual support" (Ans. 77). Issue Has the Examiner erred in rejecting dependent claim 42? Facts Emerson 51. Emerson describes that voice response "[s]ystems being installed today can authorize the acceptance of credit cards and checks, repairs under warranty and the shipments of merchandise" (p. 100). Emerson teaches that "[f]or small sales -- low dollar amounts -- cards are checked by sales clerks using periodically published listings of 'hot' (stolen cards)" (p. 100) and "[h]igh dollar amounts must be confirmed by telephone calls to authorization centers -- which are rooms full of operators answering phone calls and entering data into computer terminals" (p. 100). Emerson also teaches that "[v]oice response technology . . . gives a credit card issuer the means to completely automate his operation" (p. 100). Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 146 Klein IV Declaration 52. Paragraphs 58-61 of the Klein IV Declaration state: 58. Claim 42 (depend on claim 21) is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshizawa in view of the article by Emerson et al. entitled "Voice Response System - Technology to the Rescue for Business Users" in Speech Technology, Jan/Feb. 1983, pp. 99-103 ("Emerson"). 59. The primary reference, Yoshizawa, teaches a system for telephone betting for which a user directly interacts with a system and must have previously arranged to be a subscriber of the system in order to use it. 60. The secondary reference, Emerson, teaches verification of negative customer numbers by checking a hot list. In Emerson, it is a third party or merchant who does the checking and not a customer directly making an order on his or her behalf as in the context of the claimed invention. 61. For the foregoing reasons, and from my knowledge of the field, my own personal experience, and the state of the art in 1988, to the extent that a person of ordinary skill in the art was familiar with the teachings of the art cited in the Office Action, he or she would find no motivation to combine the references in the way that the Examiner suggests. I find that the rejection of claim 42 on a combination of Yoshizawa and Emerson is incorrect. Analysis Appellant's arguments with respect to independent claim 21 are not persuasive for the reasons previously discussed. We agree with the Examiner that the claim does not require the results of the verification to be provided to anyone. Thus, it is not germane that Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 147 Emerson describes the verification of negative numbers is provided to a merchant rather than to the customer. In addition, Emerson teaches that the authorization process can be automated using voice response technology (FF 51). The Examiner has shown how the limitations of claim 42 are met by Yoshizawa and Emerson and has articulated a rationale for combining their teachings. Appellant has not presented convincing evidence or argument to demonstrate error in the Examiner's findings and combination of references. Among other things, we agree with the Examiner that paragraphs 58-61 of the Klein IV Declaration (FF 52) do not traverse the Examiner's reasoning. Conclusion The Examiner has not erred in rejecting dependent claim 42. (11) Yoshizawa and St. Jean Claim 43 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshizawa and St. Jean. Claim limitation at issue Claim 43 depends on claim 21 and further recites "wherein said other form of identification data is social security number data." Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 148 Contentions Appellant argues that "St. Jean teaches using an identity code presented by the bearer of a credit card or security card, which most likely are random additional digits imprinted on a credit card." (App. Br. 56.) According to Appellant, "[t]he claim specifically requires a social security number data, which is a unique permanent number issued by the federal government (rather than a vendor) and is permanently associated with a person." (App. Br. 56-57.) Appellant also contends that "[t]he expert declaration (see Klein IV, paragraphs 62-67) traverses the Examiner's reasoning." (App. Br. 57.) Appellant further argues that dependent claim 43 is patentable for the reasons urged with respect to independent claim 21 (App. Br. 56). The Examiner finds that St. Jean teaches commonly used forms of identifying information, such as a social security number, and suggests storing that information on a storage medium such as magnetic tape. (Ans. 78.) The Examiner thus finds that "St. Jean teaches the use of multiple different forms of identification in order to ensure the person presenting the card is, in fact, the person authorized to use the card." (Ans. 79.) Regarding the Klein IV Declaration, the Examiner finds that Yoshizawa sells tickets, which are objects for purchase, and "[a] ticket is a ticket whether it is a pari- mutuel ticket or some other ticket." (Ans. 80; see also FF 17-22.) The Examiner also finds that Yoshizawa does not teach away from a system that orders an object to make a purchase. (Ans. 80; see also FF 22.) Furthermore, the Examiner finds that "St. Jean explicitly teaches the use of Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 149 SSN for identification to ensure the bearer of the card is, indeed, the owner of the card." (Ans. 81; see FF 53-55.) Issue Has the Examiner erred in rejecting dependent claim 43? Facts St. Jean 53. St. Jean describes "methods and apparatus for verifying that the identity code presented by the bearer of a credit card, security card or the like is the same as that associated with such card" (col. 1, ll. 6-9). St. Jean describes that there is a need to determine whether a credit card or security card user is an authorized user and to verify the identity of the user to guard against fraud (col. 1, ll. 10-41; col. 2, ll. 14-22). 54. St. Jean states in the background of the invention: Furthermore, as a large amount of digital information may be nonviewably encoded on a card similar in form to the conventional credit card format, cards of this type will soon be available for purposes which are wholly unrelated to either a credit or security function. For instance, identification cards may be developed upon which are encoded in machine readable form an individual's birth certificate information, physical characteristics, social security number, service record, employer's identification, employee's number, residential telephone number, life insurance policies, next of kin Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 150 information, fingerprint classification number and/or any other form of suitable identifying data with which he may periodically have to identify himself. . . . However, regardless of the function or functions of the card being considered, apparatus capable of verifying the identity of the user would be required in each case to ensure that the bearer is not attempting to perpetrate a fraud . . . . (Col. 1, l. 42 to col. 2, l. 17 (emphasis added).) 55. St. Jean describes that the authorized party is issued a security code which is associated with the account number on the credit card but is in no way indicated on the credit card. The security code is derived from selected digits of the account number using a decoding technique and is used to check that the person presenting the credit card is an authorized user, at least to the extent that the person has the security code. (Col. 5, ll. 13-45.) St. Jean states that the disclosed invention is "applicable to validating any card or other token bearing an account number or similar indicia which is used for credit purposes, access to a security system, the actuating of lock devices or any other identification purposes" (col. 4, ll. 21-25). Klein IV Declaration 56. Paragraphs 62-67 of the Klein IV Declaration state: 62. Claim 43 (depends on claim 21) is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yoshizawa in view of U.S. Patent No. 3,702,392 to St. Jean ("St. Jean"). Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 151 63. The primary reference, Yoshizawa, teaches a system for telephone betting for which a user must have previously arranged to be a subscriber of the system in order to use it. Yoshizawa indicates the following: The Japan Racing Association, jointly with Hitachi, Ltd. has developed a telephone betting system using the voice response unit. This system is designed to enable the annually increasing horse race fans to purchase pari- mutuel tickets by phone, with the aim of improving service to the fans while at the same time solving the problems of traffic congestion and littering (with missed pari-mutuel tickets) in the areas around race courses. (Yoshizawa, page 215, Abstract). 64. Yoshizawa developed a telephone betting system to avoid the purchase of a "ticket" (an object) for the horse races, suggesting that it is in the interest of "preventing littering" of the areas surrounding horse courses with missed pari-mutuel tickets. In that context, to one of ordinary skill in the art, a "bet" would not be an item. In the context of ordering, it would teach an object or an article for purchase. In contrast, a bet is a "wager" or "stake" that represents an agreement between two parties that the one who has made an incorrect prediction will forfeit something stipulated to the other (usually money). Even if Yoshizawa teaches an order application, Yoshizawa teaches away from a system that orders an object to make a purchase. Moreover, in a typical betting scenario (page 5 of Yoshizawa), there is no evidence that the caller is either prompted for by the system or provides any additional data that relates to the item that the caller desires to purchase. Therefore, in Yoshizawa, there is no teaching of this claimed limitation. The rejection that claim 21 is anticipated by the primary reference Yoshizawa is incorrect. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 152 65. The secondary reference, St. Jean, teaches that it is important in the art of identification to verify that the identity code presented by a bearer of a credit card, security card or the like (col. 1, lines 6-9) is being used by an authorized users associated with the identity code (col. 1, lines 10-27--especially lines 24-27). St. Jean indicates that it is a 'virtual necessity' to make the determination at the instant of use (col. 1, lines 28-41 --especially lines 39-41). In addition to credit cards, security cards and the like, St. Jean also indicates that the system described therein can be used for any other identification purposes (col. 4, lines 16-25). 66. St. Jean teaches using an identity code presented by the bearer of a credit card or security card, which to one of ordinary skill in the art would be random additional digits imprinted on a credit card. Claim 43 specifically requires social security number data, which is data relating to a unique number issued by the federal government (rather than a vendor), which is permanently associated with a person. 67. For the foregoing reasons, and from my knowledge of the field, my own personal experience, and the state of the art in 1988, to the extent that a person of ordinary skill in the art was familiar with the teachings of the art cited in the Office Action, he or she would not have been motivated to combine for the two references as suggested by the Examiner. I find that the rejection of claim 43 on a combination of Yoshizawa and St. Jean is incorrect. Analysis Appellant's arguments with respect to independent claim 21 are not persuasive for the reasons previously discussed. We agree with the Examiner that St. Jean teaches or suggests that the "other form of identification data is social security number data," as claimed. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 153 (FF 53-55.) The Examiner has articulated a rationale for combining the teachings of Yoshizawa and St. Jean, and Appellant has not presented convincing evidence or argument to demonstrate error in the Examiner's combination of references. Among other things, we agree with the Examiner that paragraphs 62-67 of the Klein IV Declaration (FF 56) do not traverse the Examiner's reasoning. Conclusion The Examiner has not erred in rejecting dependent claim 43. CONCLUSIONS Based on the findings of facts and analysis above, we conclude that: (1) The Examiner has not erred in rejecting claims 1-9 under 35 U.S.C. § 102(b) as being anticipated by or, alternatively, under 35 U.S.C. § 103(a) as being obvious over VCT '87. (2) The Examiner has not erred in rejecting claims 21-25, 37-39, and 44-47 under 35 U.S.C. § 102(b) as being anticipated by Yoshizawa. (3) The Examiner has not erred in rejecting claims 1-10 under 35 U.S.C. § 103(a) as being obvious over VCT '87 and VCT '86. (4) The Examiner has not erred in rejecting claims 1-6 and 8 under 35 U.S.C. § 103(a) as being obvious over Moosemiller and Szlam. (5) The Examiner has not erred in rejecting claim 26 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Moosemiller. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 154 (6) The Examiner has not erred in rejecting claims 29-31 and 34 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Rackman. (7) The Examiner has not erred in rejecting claims 32 and 33 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa, Rackman, and Gentile. (8) The Examiner has not erred in rejecting claims 35 and 36 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Vij. (9) The Examiner has erred in rejecting claims 40, 41, and 48-50 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Kono. (10) The Examiner has not erred in rejecting claim 42 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Emerson. (11) The Examiner has not erred in rejecting claim 43 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and St. Jean. DECISION (1) The rejection of claims 1-9 under 35 U.S.C. § 102(b) as being anticipated by or, alternatively, under 35 U.S.C. § 103(a) as being obvious over, VCT '87 is affirmed. (2) The rejection of claims 21-25, 37-39, and 44-47 under 35 U.S.C. § 102(b) as being anticipated by Yoshizawa is affirmed. (3) The rejection of claims 1-10 alternatively rejected under 35 U.S.C. § 103(a) as being obvious over VCT '87 and VCT '86 is affirmed. (4) The rejection of claims 1-6 and 8 under 35 U.S.C. § 103(a) as being obvious over Moosemiller and Szlam is affirmed. Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 155 (5) The rejection of claim 26 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Moosemiller is affirmed. (6) The rejection of claims 29-31 and 34 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Rackman is affirmed. (7) The rejection of claims 32 and 33 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa, Rackman, and Gentile is affirmed. (8) The rejection of claims 35 and 36 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Vij is affirmed. (9) The rejection of claims 40, 41, and 48-50 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Kono is reversed. (10) The rejection of claim 42 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and Emerson is affirmed. (11) The rejection of claim 43 under 35 U.S.C. § 103(a) as being obvious over Yoshizawa and St. Jean is affirmed. Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART bim Appeal 2009-000283 Reexamination Control Nos. 90/006,979 and 90/007,087 (merged) U.S. Patent No. 6,292,547 156 FOR PATENT OWNER: REENA KUYPER, ESQ. BYARD NILSSON, ESQ. 9255 SUNSET BOULEVARD SUITE 810 LOS ANGELES, CA 90069 FOR THIRD PARTY REQUESTER: DONALD E. STOUT, ESQ. ANTONELLI, TERRY, STOUT & KRAUS, LLP 1300 NORTH SEVENTEENTH STREET SUITE 1800 ARLINGTON, VA 22209 Copy with citationCopy as parenthetical citation