Ex Parte 6292547 et al

Board of Patent Appeals and Interferences

Mar 31, 2010

90006979 (B.P.A.I. Mar. 31, 2010)

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
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U.S. Patent No. 6,292,547

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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
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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
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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
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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
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(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
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(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

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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.
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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
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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;

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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;
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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

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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.
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(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
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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.").

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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
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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.
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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
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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.
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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.)
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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."

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"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
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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
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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
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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.)
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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
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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
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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
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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
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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
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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.)
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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
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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
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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
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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
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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:

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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.
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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
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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
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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
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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
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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
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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
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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
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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.)
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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."
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(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.)
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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
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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
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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
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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
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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
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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
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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.
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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
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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.
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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
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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.

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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.
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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."

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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
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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).

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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,
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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.,
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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.
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(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?

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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.

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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."
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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.

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(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.)

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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.

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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
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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.)

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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,
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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.)
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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.

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(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?
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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
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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
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"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.
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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.
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"[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
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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
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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
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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)
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(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
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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
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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
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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
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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
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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."
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(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.)

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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
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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
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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
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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.
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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.
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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.

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(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
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(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
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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
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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.)

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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
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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
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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
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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.

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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
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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.

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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.)

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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
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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
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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
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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;

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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.
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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
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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
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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
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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.

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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).
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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.
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(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).
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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?

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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
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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."
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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
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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
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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
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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

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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
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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
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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.

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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
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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
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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.

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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.

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(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,
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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?

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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
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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.
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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
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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."
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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?

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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.

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(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[]
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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).

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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
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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."

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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
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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
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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").

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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.

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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.
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(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.
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(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.
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(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

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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
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