Ex Parte 6434223 et al

Patent Trial and Appeal Board

Dec 18, 2012

90008051 (P.T.A.B. Dec. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/008,051 06/02/2006 6434223 6646-200 7411
58249 7590 12/18/2012
COOLEY LLP
ATTN: Patent Group
777 - 6th Street, NW
Suite 1100
WASHINGTON, DC 20001
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/18/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD A. KATZ TECHNOLOGY LICENSING L.P.
1
,
Appellant and Patent Owner
____________

Appeal 2012-000958
Reexamination Control No. 90/008,051
Patent 6,434,223 B2
Technology Center 3900
____________

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

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Ronald A. Katz Technology Licensing L.P., Appellant, appeals under
35 U.S.C. §§ 134(b) and 306 from a final rejection of claim 80. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1
Ronald A. Katz Technology Licensing L.P. is the Patent Owner and the
real party in interest (App. Br. 4).
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

2
STATEMENT OF THE CASE
2

This proceeding arose from a request for ex parte reexamination filed
by John L. Welsh on June 2, 2006, of United States Patent 6,434,223 B2 (the
'223 Patent). The '223 patent, entitled “Telephone Interface Call Processing
System with Call Selectivity,” issued August 13, 2002, to Ronald A. Katz,
and has a large number of patent applications upon which it claims priority,
listed on the face of the '223 Patent. The '223 Patent is said to have expired
on July 10, 2005, by virtue of a terminal disclaimer (App. Br. 6).
The '223 Patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix (App. Br. 55-81).
We heard oral arguments from Patent Owner’s representative on April
4, 2012, a transcript
3
of which is part of the record.

CLAIMED INVENTION
Appellant’s invention relates to systems which limit and control
interface access to implement voice-digital communication for statistical
processing, where the systems accommodate calls in different modes, e.g.
"800," "900," or area code, and incorporate qualifying apparatuses to restrict
against caller misuse (Abs.).

2
Our decision will make reference to the Appellant’s Second Amended
Appeal Brief (“App. Br.,” filed July 26, 2010) and Reply Brief (“Reply Br.,”
filed September 1, 2011), and the Examiner’s Answer (“Ans.,” mailed July
1, 2011).
3
Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

3
Claim 80 is the sole claim subject to reexamination, with original
claims 1-79 and 81-107 not being subject to reexamination.
Claim 80 is reproduced below:
80. A process for receiving calls through a
communication facility from a multitude of terminals in an 800
call mode for processing data in accordance with an identified
one of a plurality of interface formats and involving digital
signals including digital signals provided by the multitude of
terminals for identification or data, the process comprising the
steps of:
receiving calls in the 800 call mode wherein digital
signals indicative of at least a first-called number (DNIS)
identify a first-interface format;
receiving calls in the 800 call mode wherein digital
signals indicative of a second distinct called number (DNIS)
identify a second interface format;
processing calls received in the 800 call mode for the
two distinct called numbers in accordance with preliminary
operations of the first and second interface formats, wherein
the preliminary operations comprise at least the step of:
providing a distinct automated greeting voice prompt to
callers calling at least one of the two distinct called numbers
associated with the first and second formats in the 800 call
mode;
receiving caller provided data entered by the callers and
testing the caller-entered data to verify on-line the calls
received for at least one of the two distinct called numbers to
provide verified calls; and
coupling the calls received in the 800 call mode for the
two distinct called numbers wherein at least certain calls are
verified calls for concurrent processing in accordance with at
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

4
least certain common operations of the first and second
interface formats.
(App. Br. 51, Claims App’x.).

PRIOR ART REJECTION
The prior art references relied upon by the Examiner in rejecting the
claim are:
Barger, Jr. et al. (“Barger”) 4,071,698 Jan. 31, 1978

American Express Implements Voice Response Credit Authorization, 1 no. 2
VCT QUARTERLY NEWSLETTER 1, 5 (1986) (hereinafter “VCT”).

The Examiner maintained the rejection of claim 80 under 35 U.S.C.
§ 103(a) as being unpatentable over Barger and VCT (Ans. 4-13).

ISSUES
Appellant has asserted numerous arguments as to whether the
Examiner erred in proffering the above-cited rejection, which we detail in
the analysis section below. We have considered in this decision only those
arguments that Appellant actually raised in the Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issue arising from the respective positions of Appellant and the
Examiner, which we consider herein, is:
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

5
Did the Examiner err in determining that Barger and VCT render the
subject matter of claim 80 obvious?

FINDINGS OF FACT
1. Barger describes “a system for marketing merchandise or services
capable of being demonstrated to prospective customers over
telephone lines, such as phonograph records or tapes (cartridges or
cassettes), books, plays, and tours, and for immediately accepting
orders of selected merchandise or services” (Col. 1, ll. 8-13). One
object of the invention "is to provide a telephone system which
enables a customer shopping for merchandise or services
susceptible of audio demonstration to request that a particular
demonstration be played over the telephone" (Col. 1, ll. 60-64).
Another object is to “provide a telephone system for customer
selected audio demonstrations without human intervention in
operation” (Col. 2, ll. 13-15).
2. The system includes three modes of operation (Col. 2, ll. 34-37;
col. 3, ll. 3-5, 8-10). “In the first mode, the operator elicits
required information from the customer, such as name and account
number, demonstrations desired, and orders for the merchandise or
services demonstrated” (Col. 2, ll. 34-37). In the second mode, the
“automatic telephone service . . . causes the data processor to
communicate with the customer through prerecorded messages
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

6
played to the customer through the audio repeating means and
codes entered by the customer through his telephone keyboard”
(Col. 2, l. 66 to col. 3, l. 3). To access the second mode, the
operator can transfer a customer’s call (col. 2, ll. 65-67). “An
alternative way of entering this second mode of service is through
the customer calling a distinct telephone number for a line which
the data processor recognizes as being from a customer who has a
push-button telephone and wishes automatic telephone service”
(col. 3, ll. 3-8). In the third mode, a modified automatic telephone
service is provided to “customers of a licensed retailer of
merchandise or services through the equivalent of push-button
telephones” (Col. 3, ll. 8-11). In the third mode, the customer may
purchase the merchandise or services directly from the licensed
retailer (Col. 3, ll. 12-14). In either the second or third mode, a
data processor responds to codes entered by the customer using a
push button phone without intervention from a human operator
(Col. 3, ll. 14-17).
3. As illustrated in Figure 1, the basic telephone system includes a
data processor 10 of a telephone record marketing store, an
automatic answering device 11, a public telephone system 12 with
telephone couplers 13 (also referred to as “data couplers” (see, e.g.,
col. 3, ll. 64-65)) and telephones 14, a switching system 16, an
audio program repeater 17 and a customer service operator 18
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

7
(Col. 3, ll. 41-55). The telephones 14 can be a dial or push-button
type (Col. 3, ll. 45-46). “The address information generated by the
dial pulses, or push-button tones, establishes the basis for
subsequent operations of the telephone system to connect a calling
subscriber with the data processor 10 at a telephone record
marketing store” (Col. 3, ll. 46-51). The customer service operator
18 communicates with the data processor 10 through a video
terminal 19, a type-writer keyboard and a numeric keyboard (Col.
3, ll. 55-60). The customer service operator 18 communicates with
a customer through the switching system 16 and the telephone
couplers 13 (Col. 3, ll. 54-56).
4. When a customer calls the telephone number of the telephone
record marketing store, the transmitting and receiving equipment
of the store is connected to the telephone system 12 by one of the
data couplers 13 (Col. 3, ll. 61-65). Figures 3A and 3B illustrate
flow charts for an operator attended mode (Col. 3, ll. 29-30). “The
data processor 10 is programmed with an interrupt routine to
respond to each signal received from the automatic answering
device 11 and automatically connect the customer’s telephone line
via a [data] coupler 13 to a predetermined one of a plurality of
audio-program repeater [17] channels which plays a ‘hello’
message explaining that a customer service operator will be with
the customer in a moment” (Col. 4, ll. 10-17; “GO OFF-HOOK &
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

8
CONNECT TO „HELLO‟ MSG.,” Fig. 3a). A customer service
operator 18 is placed in communication with the customer through
the switching system 16 (Col. 4, ll. 57-59). “The operator then
greets the customer and elicits from the customer identification
data such as name, address, and account or credit card number”
(Col. 4, ll. 61-64; “CONNECT TO OPER.; TAKE INITIAL
INFO.,” Fig. 3a). The data processor 10 can display the calling
customer’s “historical and credit verification data” from memory
using the customer’s account number or credit card number (Col.
5, ll. 32-36).
5. To request a demonstration, the customer can provide to the
customer service operator 18 “a directory number assigned to the
requested demonstration and published in a catalog by the
telephone record store” (col. 5, ll. 4-7) or “the operator may search
for it through the data processor in which cross-indexing tables are
stored for the labels, titles and recording artists” (col. 5, ll. 9-11).
(“OPERATOR ENTERED SEL./DATA” and “SEL.
REQUESTED?,” Fig. 3b). “While the requested demonstration is
playing . . . the customer service operator [18] is available to
service other customers” (Col. 5, ll. 20-22; “PLAY SELECTION,”
Fig. 3b). “When the requested demonstration has been completed,
the data processor [10] is interrupted by the audio program repeater
[17]” (Col. 5, ll. 23-25; “OUTGOING MSG./SEL.,” Fig. 3b). The
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

9
data processor 10 then disconnects the audio program repeater 17
from the customer’s line and switches that line back to the
customer service operator 18 (Col. 5, ll. 25-29; “CONNECT TO
PREV. OPERATOR,” Fig. 3b). If the customer wishes to hear
other demonstrations, the previously described procedure is
repeated (Col. 5, ll. 42-45; Fig. 3b). If the customer places an
order, the “data processor [10] . . . transfers the order to an order
processing system 20 with the name, address, and any other
information required to fill the order, such as the account or credit
card number” (Col. 5, ll. 50-53).
6. As illustrated in Figure 2, which is described as a preferred
embodiment (col. 3, ll. 27-28), the telephone system for the
telephone record marketing system includes a data processor (col.
7, ll. 33-34), a dial telephone 24 or a push-button telephone 25,
telephone data couplers 26, an automatic answering device 27 (col.
7, ll. 38-44), an audio program repeater 28 and a switching matrix
29 (col. 7, ll. 49-51). The data processor includes a central
processing unit (CPU) 21, a bus 22 and a random access memory
23 (Col. 7, ll. 33-37). The CPU 21 communicates with other units
(e.g., the random access memory 23) via the bus 22 (Col. 7, ll. 35-
37).
7. In the first mode of operation, the dial telephone 24 or the push-
button telephone 25 is coupled to the CPU 21 with telephone data
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

10
couplers 26 and the automatic answering device 27 (Col. 7, ll. 38-
44). “The CPU [21] responds to an incoming call with a command
to an audio program repeater 28 to play a ‘hello’ message to the
customer through a switching matrix 29” (Col. 7, ll. 49-51).
“[T]here is a credit verification function (CVF) 45 which the CPU
[21] accesses under control of a programmed subroutine for credit
verification” (Col. 8, ll. 60-64).
8. For the Figure 2 embodiment, Barger also describes that “a
customer having a push-button telephone communicates with the
telephone record marketing system through the keypad of the
telephone” (Col. 9, ll. 22-24). For access to this automatic
telephone service, a customer first establishes communication with
the telephone data coupler 26 followed by entering “an established
account number having a code reserved for push-button telephone
customers” (Col. 9, ll. 36-42). “If the credit verification function
cannot validate the automatic push-button telephone customer,
operator assistance is automatically initiated by the CPU” (Col. 9,
ll. 42-45).
9. “Otherwise the CPU will command the audio program repeater to
play a prerecorded message to communicate with the customer as
necessary. In that manner the transaction is carried out by the CPU
without operator assistance. At each step, any entry required is
made by the customer through his telephone keyboard in response
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

11
to a message played by the audio program repeater under control
of the CPU” (Col. 9, ll. 45-53).
10. Figure 4 illustrates a flow chart for the automatic push-button
telephone mode (Col. 3, ll. 31-32; col. 11, ll. 18-19). “The first
part of the routine is similar to receiving a call in the operator
attended mode for playing the ‘hello’ message, except that the
message is one which concludes with an instruction for the
customer to enter his account number” (Col. 11, ll. 19-23; “GO
OFF-HOOK & CONNECT TO ‘HELLO & INSTR MSG.
COMPL.,” Fig. 4). When the customer enters a selection number
(col. 11, ll. 25-26; “CUSTOMER ENTERS SEL. NO.,” Fig. 4),
“an excerpt of the selection is played as a demonstration and an
audio message is transmitted to the customer asking him if he
wishes to buy the selection” (col. 11, ll. 28-31; “PLAY
SELECTION” and “DO YOU WISH TO BUY?,” Fig. 4). “If yes,
an audio confirming message is transmitted to the customer, and if
not, the routine branches back to ask again for a selection number .
. .” (Col. 11, ll. 32-34; “CONFIRM ORDER,” Fig. 4).
11. VCT describes a voice response credit authorization system for
American Express designed to automate a 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).
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

12
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 the voice response unit should handle the
call” (P. 1).
12. 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 before authorizing
or denying the transaction (P. 5).
13. “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
are transferred to an Authorizer for special handling (P. 5). “’In
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

13
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).

PRINCIPLES OF LAW
Interpretation of Expired Patent Claims
Patent claims in a reexamination proceeding in the USPTO are
ordinarily given their broadest reasonable interpretation consistent with the
patent disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). When the patent has not expired, construing claims of an
unexpired patent broadly is not unfair to the patentee because the patentee
has the opportunity to amend the claims to obtain more precise claim
coverage. See id. However, patent claims of an expired patent may not be
amended. 37 C.F.R. § 1.530(j).
The standard of claim construction for the claims of an expired patent
in reexamination was addressed in Ex parte Papst-Motoren, 1 USPQ2d 1655
(BPAI 1986). The Board noted that In re Yamamoto, 740 F.2d 1569 (Fed.
Cir. 1984), held that claims in a reexamination proceeding should be given
their broadest reasonable interpretation, consistent with the specification,
because applicants had the right to amend, whereas in a district court,
“claims should be so construed, if possible, as to sustain their validity.”
Yamamoto, 740 F.2d at 1571 n.* (citing ACH Hosp. Systems, Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). The Board held:
[I]n reexamination proceedings in which the PTO is
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

14
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 nonprecedential
4
). 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 validity” is sometimes misunderstood and the Federal Circuit
has clarified the maxim since Papst-Motoren. In accordance with those
cases, it is clear that any claim construction must be in accord with the rules
of claim construction and claims may not be redrafted. See Generation II

4
Although Papst-Motoren is not designated as precedential, it was decided
by an expanded panel of the Board of Patent Appeals and Interferences,
including the Commissioner, the Deputy Commissioner, the Chairman of the
Board, and an Examiner-in-Chief.
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

15
Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001)
(“[C]laims can only be construed to preserve their validity where the
proposed claim construction is ‘practicable,’ is based on sound claim
construction principles, and does not revise or ignore the explicit language
of the claims.”); Lucent Techs., Inc. v. Gateway, Inc.,
525 F.3d 1200, 1215-16 (Fed. Cir. 2008) (“This court has repeatedly held
that courts may not redraft claims to cure a drafting error made by the
patentee, whether to make them operable or to sustain their validity . . . . To
do so ‘would unduly interfere with the function of claims in putting
competitors on notice of the scope of the claimed invention.’”) (citations and
footnote omitted). The maxim is limited “to cases in which ‘the court
concludes, after applying all the available tools of claim construction, that
the claim is still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327
(Fed. Cir. 2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 911 (Fed. Cir. 2004)). Importantly, it is “error . . . to use the
possible invalidity of those claims, if broadly construed, as a basis for
construing them narrowly.” The Saunders Group, Inc. v. ComforTrac, Inc.,
492 F.3d 1326, 1335 (Fed. Cir. 2007); Tate Access Floors, Inc. v. Interface
Architectural Resources, Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002)
(“Fairness and the public notice function of the patent law require courts to
afford patentees the full breadth of clear claim language, and bind them to it
as well. Consequently, where such claim language clearly reads on prior art,
the patent is invalid.”); Phillips, 415 F.3d at 1327 (“[W]e have certainly not
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

16
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 claim
construction is supported by the evidence.
Papst-Motoren also does not state what methodology of claim
construction should be used, e.g., whether the USPTO should consider all
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

17
sources of evidence considered by district courts. Nevertheless, the USPTO
always considers the specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written description . . . .”).
For purposes of this appeal, we assume that any type of evidence of claim
meaning identified by Phillips, including prosecution history of the original
patent, can be considered since patentee may not amend.

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

Consideration of Evidence of Secondary Considerations of Nonobviousness
Objective evidence of nonobviousness (also called “secondary
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

18
considerations”) must always be considered in making an obviousness
determination, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39
(Fed. Cir. 1983), but it is not necessarily conclusive, Ashland Oil, Inc. v.
Delta Resins & Refrac., Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). A “nexus”
is a legally and factually sufficient connection between the objective
evidence and the claimed invention, such that the objective evidence should
be considered in the determination of nonobviousness. Demaco Corp. v. F.
Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A
“nexus” is required between the merits of the claimed invention and the
evidence of secondary considerations in order for the evidence to be given
substantial weight in an obviousness decision. In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995); Stratoflex, 713 F.2d at 1539.
The burden of proving commercial success (and other types of
secondary considerations, such as long felt need) during prosecution is on
the applicant or patent owner. See In re Huang, 100 F.3d 135, 139-140
(Fed. Cir. 1996) (“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.”). 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.”).
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

19
“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 959 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.
[E]vidence of commercial success alone is not sufficient to
demonstrate nonobviousness of a claimed invention. Rather, the
proponent must offer 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.”
In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (citations omitted).

Related Federal Circuit Case
Format refers to a call processing flow implemented by at
least one computer program that sets forth the content and
sequence of steps to gather information from and convey
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

20
information to callers through pre-recorded prompts and
messages. Selection of, or branching to, a module or
subroutine within a computer program does not constitute
selection of a separate format. Selection of (or branching to),
a second computer pro-gram by a first computer program, that
together implement a call process flow application also does
not constitute selection of a separate format.
We agree with Katz that the different call modes disclosed
by the specification identify different formats. For example,
the specification describes asking different questions to and
gathering different information from callers who dial an 800
number, as opposed to those who dial a 900 number.
In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1320 (Fed. Cir. 2011)(citations omitted).

ANALYSIS
Further to Appellant’s arguments with respect to claim interpretation
(App. Br. 8-18), our standard for claim interpretation of expired patent
claims is provided above. That is the standard we apply to claim 80 in the
analysis below. Additionally, we adopt the definition of “format” espoused
by the Federal Circuit in In re Katz Interactive Call Processing Patent Litig.,
excerpted above. Even with the adoption of this definition, however, we do
not find that Examiner erred in determining that Barger and VCT render the
subject matter of claim 80 obvious.
Appellant argues that that there is no proper motivation to combine
Barger and VCT (App. Br. 23-27; Reply Br. 32-33). The Examiner cites to
our prior decisions that there is proper support for the combination of Barger
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

21
and VCT in the rejection of claim 80 (Ans. 37-40). We agree with the
Examiner.
Barger describes a telephone system for marketing merchandise or
services (FF 1). In a first mode of operation for the telephone system of
Barger, an operator requests required information from a customer and
places orders (FF 2). In a second mode of operation, an automatic telephone
service communicates with the customer through prerecorded messages (FF
2) instead of the live operator (FF 1). To access the second mode, the
operator can transfer the customer’s call or the customer can dial a distinct
telephone number (FF 2).
Thus, even under the definition of “format” adopted above, Barger
nevertheless teaches the claim limitation “plurality of formats” because the
first mode (i.e., the customer communicates with the operator) and the
second mode (i.e., the customer communicates with the automatic telephone
service) of Barger have different telephone call process flows, where the
content and sequence of steps are different. Barger teaches that in the first
mode, an audio-program repeater plays a “hello” message before a customer
speaks to a customer service operator (FF 4). Furthermore, Barger teaches
that the customer can access the second mode by initially accessing the first
mode and requesting the operator to transfer the customer’s call (FF 2).
VCT describes a voice response credit authorization system used by
American Express to verify retail credit purchases (FF 11). In a first method
of VCT, a voice response unit directs a call to an operator to obtain an
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

22
authorization code (FF 12). In a second method of VCT, specific 800
numbers are handled entirely by a voice response unit, bypassing the
operator (FF 13). VCT further describes that it was crucial to be able to
recognize and direct specific 800 numbers according to DNIS identifiers (FF
13).
A person of ordinary skill in the art would have recognized that
incorporating DNIS identifiers for the 800 numbers, as taught by VCT, with
the telephone system of Barger would provide the advantage of
automatically recognizing and directing calls based on a specific 800
number. See KSR, 550 U.S. at 421. Thus, we agree with the Examiner
(Ans. 19) that modifying Barger to include DNIS identifiers for the 800
numbers, as taught by VCT, would have been obvious.
Appellant also argues that VCT’s applications are unrelated and
would not have been combined by ordinarily skilled artisans (App. Br. 23-
24). We do not agree.
For the first method of VCT, the voice response unit directs the call to
an operator (FF 12). For the second method of VCT, specific 800 numbers
are handled entirely by a voice response unit, bypassing the operator (FF
13). VCT further describes that it was crucial to be able to recognize and
direct specific 800 numbers according to DNIS identifiers (FF 13). We find
that these attributes of VCT would be important to all of the applications
discussed in VCT. While Appellant argues that “[t]here is no evidence that
colleges had any need to offer multiple applications that might require
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

23
DNIS” (App. Br. 24), we find no objective evidence in support of that
contention. We likewise have no evidence that colleges would not have
appreciated allowing students to register while distant from campus, and find
no support for Appellant’s contention that most calls would not likely leave
the campus switchboard (id.). Given the overall use of the system in VCT in
different applications, we do not find those applications to be unrelated nor
unlikely to have been combined.
Appellant also argues that Barger discloses only a single interactive
automated application (App. Br. 25; Reply Br. 31-32). Appellant argues that
claim 80 requires both interfaces of claim 80 to be automated, which Barger
fails to disclose. However, as discussed supra, Barger teaches two
automated modes. Barger provides as an objective that its demonstrations
occur without human intervention (FF 1), and the modes described in Barger
(FF 2) would appear to meet the requirements of being “automatic,” per
claim 80. Additionally, Appellant argues that Barger “does not teach DNIS”
(App. Br. 25), but we do not find this to be a deficit since the Examiner has
relied on VCT to disclose such an aspect of claim 80.
Appellant also argues that in VCT, the applications or formats are not
running on the same system (App. Br. 25). As discussed previously, the
voice response unit directs calls to an operator for the first method of VCT
(FF 12) and specific 800 numbers are handled entirely by a voice response
unit for the second method of VCT (FF 13). In other words, VCT teaches
that both the first method and the second method operate concurrently and
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

24
DNIS identifiers are used to direct an incoming call either to the operator or
the automated voice response unit. Also, these DNIS identifiers were well-
known for use in public telephone systems (Ans. 10), further suggesting a
wide variety of uses.
Appellant argues that it would not have been obvious to use DNIS in
Barger’s system because Barger already teaches how calls are directed (App.
Br. 26-27). We have addressed the combinability of Barger and VCT supra,
but Appellant’s current argument suggests that the additional use of DNIS
would be a redundancy. However, as discussed previously, the combination
of Barger and VCT is based on the improvement of a similar device in the
same way as in the prior art. The fact that some call identification is
performed in Barger does not forestall the additional identification provided
through DNIS. As such, we do not find Appellant’s arguments to be
persuasive.
Appellant also argues that Barger is not shown to disclose “common
operations of the first and second interface formats” as recited in claim 80
(App. Br. 27-30; Reply Br. 33-44). Appellant disputes the Examiner’s
findings regarding the free loader algorithm, insisting that such an algorithm
is employed only in the push button mode of Barger, and not in the operator
mode (App. Br. 28). Appellant also disputes the Examiner’ s rationale for
application of the free loader algorithm to the operator mode because no
freeloading would occur because operators are able to see the caller’s
information on the operator’s display (App. Br. 29). We cannot agree.
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

25
Per the Examiner’s arguments (Ans. 50), we agree that the application
of the free loader algorithm to all modes would have been obvious in order
to prevent the problem for which the algorithm was designed and
implemented, and also to “free up the operator from having to make the
decision” and “prevent a non-uniform standard from being applied by
different operators” (id.). While we acknowledge Appellant’s argument that
“there is no need for a ‘free loader’ algorithm at all in the operator mode”
(Reply Br. 42), we cannot agree that the desire for uniformity and the relief
of operators for other useful duties would not have made the application of
the free loader algorithm obvious to one of ordinary skill in the art.
Additionally, Appellant’s argument about Barger’s lack of concern for a
“uniform” standard (id.) misses the mark because the Examiner is addressing
uniformity between modes of operation, and not the long term uniformity
that Appellant is addressing.

Secondary Considerations
To rebut the Examiner’s obviousness rejections, Appellant points to
evidence of commercial success (App. Br. 33-37). In particular, Appellant
has provided a list of “at least 18 companies” that have taken a “full
portfolio license including claim 80” (App. Br. 34). Appellant has also
provided statements from leaders in the financial industry (App. Br. 36-37).
With respect to Appellant’s licensing program of the “full portfolio,”
we agree with the Examiner that a sufficient nexus has not been
demonstrated (Ans. 33-35). Although Appellant argues that “[c]laim 80
Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

26
clearly has been a contributing factor in the decision to license the
technology covered by the full portfolio license” (App. Br. 34), Appellant
has not established with convincing documentary evidence a sufficient
connection between the decision of the “at least 18 companies” to obtain a
license and claim 80 of the '223 Patent. Furthermore, the licensing activity
may be due to factors unrelated to the unobviousness of the claims of the
'223 Patent such as the license being mutually beneficial or less expensive
than defending infringement suits. See EWP Corp. v. Reliance Universal,
Inc., 755 F.2d 898, 907-08 (Fed. Cir. 1985).
In addition, Appellant has not made an adequate showing that the
statements from leaders in the financial industry (App. Br. 36-37) are
commensurate in scope with or have a sufficient nexus with claim 80. Each
of the statements refers generally to the “Katz portfolio,” “Katz patents,”
“patent portfolio,” or similar language in reference to multiple patents (App.
Br. 36-37).
Therefore, the Examiner has properly considered Appellant’s
evidence of commercial success.
Accordingly, we sustain the rejection of claim 80 under 35 U.S.C.
§ 103(a).

CONCLUSION
We conclude that the Examiner did not err in finding that Barger and
VCT render the subject matter of claim 80 obvious.

Appeal 2012-000958
Reexamination Control No. 90/008,051
United States Patent 6,434,223 B2

27
DECISION
We affirm the Examiner’s rejection of claim 80.
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
ack

cc:

FOR PATENT OWNER:
COOLEY LLP
ATTN: PATENT GROUP
SUITE 1100
777 - 6TH STREET, NW
WASHINGTON DC 20001

FOR THE THIRD PARTY REQUESTORS:
JOHN L. WELSH
WELSH & FLAXMAN LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314