Ex Parte 6512415 et al

Patent Trial and Appeal Board

Mar 30, 2015

90012413 (P.T.A.B. Mar. 30, 2015)

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.
90/012,413 07/31/2012 6512415 A2DL-001/48US
305918-2031
9691
58249 7590 04/01/2015
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte RONALD A. KATZ TECHNOLOGY LICENSING L.P.
Appellant
____________
Appeal 2015-000222
Reexamination Control 90/012,413 and 90/012,643 (merged)
Patent 6,512,415 B1
Technology Center 3900
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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Patent 6,512,415 B1

2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 2 and 24. Claims 1, 3–23, and 25–32 are not subject to
reexamination. We have jurisdiction under §§ 134(b) and 306.
An oral hearing scheduled for April 8, 2015 was waived.
We affirm.

STATEMENT OF THE CASE
Reexamination Proceedings
A first request for ex parte reexamination of U.S. Patent No.
6,512,415 (the ’415 patent) was filed on July 31, 2012, and assigned
Reexamination Control No. 90/012,413. A second request for ex parte
reexamination of the ’415 patent was filed on September 14, 2012, and
assigned Reexamination Control No. 90/012,643. The reexamination
proceedings have been merged. (See Decision Sua Sponte Merging
Proceedings, mailed February 6, 2013.)
The ’415 patent, entitled “Telephonic-Interface Game Control
System,” issued January 28, 2003, to Ronald A. Katz, has numerous patent
applications upon which it claims priority listed on the face of the ’415
patent.
The ’415 patent is said to be assigned to Ronald A. Katz Technology
Licensing L.P., described as the real party in interest. The ’415 patent is
said to have an expiration date of July 10, 2005, by virtue of a terminal
disclaimer. (App. Br. 3.) Thus, the ’415 patent is now expired.

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Appellant’s Invention
Appellant’s invention relates to a control system CS that interfaces
with multiple individual terminals T1-Tn through a telephone network
facility CO to accommodate game formats. Callers are prompted by voice-
generated instructions to provide digital data that is identified for positive
association with a caller and stored. Calls are conditionally accepted based
on a test of preliminary identification data (e.g., automatic number
identification (ANI) or dialed number identification service (DNIS)). (’415
patent, Abstract; Fig. 1.)

Related Litigation
The ’415 patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix. (App. Br. 50–75.)

The Claims
Claims 1, 2, 20, and 24 are exemplary, with disputed limitations in
italics:
1. A process for determining the acceptability of calls
and executing formats in association with a communication
facility including remote terminal apparatus for individual
callers, wherein said remote terminal apparatus includes a
telephonic instrument with voice communication means and
digital input means in the form of an array of alphabetic,
numeric buttons for providing data, said process including the
steps of:
receiving associated telephone number signals upon the
instance of a call from one of said remote terminal apparatus;
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testing said associated telephone number signals with
respect to stored negative data to determine the acceptability of
said call from said one of said remote terminal apparatus as
indicated by an acceptability signal;
accepting said call from said one of said remote terminal
apparatus conditioned on said acceptability signal;
interfacing via said communication facility to accepted
calls to provide voice signals for cueing callers and receiving
responsive digital data in accordance with a select format; and
testing at least certain of the responsive digital data
against stored positive data to determine if further voice signals
for cueing callers should be provided.

2. A process according to claim 1 wherein said step
of receiving associated telephone number signals includes
receiving data represented by number identification signals
provided automatically by said communication facility to
indicate called or calling numbers.

20. A method for determining the acceptability of calls
and executing certain operations of telephonic formats in
association with a communication facility including remote
terminal apparatus for the individual callers, wherein said
remote terminal apparatus includes a telephonic instrument with
voice communication means and digital input means in the
form of an array of alphabetic, numeric buttons for providing
data, including the steps of:
receiving associated telephone number signals
automatically provided by the communication facility upon the
instance of a call from one of said remote terminal apparatus;
testing said associated telephone number signals with
respect to stored data to determine the acceptability of said call
from said one of said remote terminal apparatus; and
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selectively providing one or more cues to said one of said
remote terminal apparatus and providing at least one cue
depending upon the associated telephone number signals for
said call from said one of said remote terminal apparatus in
accordance with a select format.

24. A method according to claim 20, wherein at least
one cue indicates ongoing accounting data during said call.

The Rejections
1. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious
over Friedes (A. Friedes et al., ISDN Opportunities for Large Businesses –
800 Service Customers, IEEE INT’L CONF. ON COMMC’NS. 28–32 (1986))
and Student Registration (Periphonics Corporation, AUTOMATED STUDENT
REGISTRATION USING TOUCH-TONE TELEPHONE/VOICE RESPONSE, AN
APPLICATION NOTE, Publication No. 3230202A (1986)).
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious
over Friedes and Moosemiller (John P. Moosemiller, AT&T’s Conversant
TM

I Voice System, SPEECH TECH. 88-93 (1986)).
3. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious
over Friedes and Barger (US 4,071,698; Jan. 31, 1978).
4. Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious
over De Bruyn (CN 1,162,336; Feb. 14, 1984) and Moosemiller.
5. Claim 24 stands rejected under 35 U.S.C. 103(a) as obvious
over Barger and Gordon (US 4,763,191; Aug. 9, 1988).
6. Claim 24 stands rejected under 35 U.S.C. 103(a) as obvious
over Barger and Friedes.
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7. Claim 24 stands rejected under 35 U.S.C. 103(a) as obvious
over Student Registration, Szlam (US 4,797,911; Jan. 10, 1989), and
Moosemiller.
8. Claim 24 stands rejected under 35 U.S.C. 103(a) as obvious
over Szlam and Moosemiller.
9. Claim 24 stands rejected under 35 U.S.C. 103(a) as obvious
over Szlam, Moosemiller, and Norris (Eileen Norris, Phone Offers Action at
Push of Button, ADVERTISING AGE, Feb. 6, 1986, at 29–30).
10. Claim 24 stands rejected under 35 U.S.C. 103(a) as obvious
over Friedes and Moosemiller.
(App. Br. 6–7.)
Appellant relies upon the following in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated
May 13, 2013.
1

ANALYSIS
Claim Construction
Exemplary claim 1 recites, in pertinent part, “[a] process for
determining the acceptability of calls and executing formats in association
with a communication facility” and “interfacing . . . to provide voice signals
for . . . receiving responsive digital data in accordance with a select format.”

1
We have considered the declaration evidence to the extent raised by
Appellant’s arguments. This opinion only addresses arguments made by
Appellant. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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In view of a Federal Circuit opinion, In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1320-22 (Fed. Cir. 2011) (addressing the
claim term “format” with respect to claim 34 of related U.S. Patent
No. 5,974,120), Appellant urges the following claim construction:
[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 information to callers
through prerecorded 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 program by a
first computer program, that together implement a call process
flow application also does not constitute selection of a separate
format.
(App. Br. 8 (quoting Katz, 639 F.3d at 1320).) Accordingly, Appellant
argues “[t]he claims thus require a system or process that implements
multiple ‘formats,’ including a certain selected format with which a given
individual caller interfaces in an automated interactive call flow.” (Id.)
Similarly, Appellant argues that “format” excludes “a live operator.” (App.
Br. 15.)
However, the ’415 patent discloses a control system CS that interfaces
with a multiplicity of individual terminals T1-Tn of a telephone network
facility CO, including “[a] break-off control circuit [that] may terminate the
computer interface aborting to a manual terminal for direct communication
with an operator.” (’415 patent, Abstract; Fig. 1.) In another example for a
game format, the ’415 patent describes that “[a]s a part of a winning step in
the process, the caller may be placed in direct vocal communication with an
operator.” (’415 patent, col. 8, ll. 18–20.)
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Thus, when we examine the written description of the ’415 patent in
determining the meaning of the disputed term, “format,” the claim
construction advocated by Appellant is unpersuasive because such an
interpretation of “format” excludes “a live operator” discussed in the
Specification and, therefore, is inconsistent with the ’415 patent.
2

§ 103 Rejection—Friedes and Barger
Initially, we note that Appellant’s arguments in the Appeal Brief and
Reply Brief are primarily directed towards the limitations of independent
claim 1, from which claim 2 depends. Claim 1 is neither subject to
reexamination nor is it on appeal. Nonetheless, due to the dependency of
claim 2 on claim 1, we recognize that the limitations of claim 1 are
subsumed in claim 2.
We are unpersuaded by Appellant’s arguments (App. Br. 23–24; see
also App. Br. 15–17) that the combination of Friedes and Barger would not
have rendered obvious independent claim 1, which includes the limitation
“testing . . . to determine the acceptability of said call . . . as indicated by an
acceptability signal.”
The Examiner found that the validation check of Friedes for screening
out “hackers” corresponds to the limitation “testing . . . to determine the

2
Because the ’415 patent is now expired, rather than applying the “broadest
reasonable interpretation” standard, we review the claims similar to that of a
district court’s review. See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
2012).
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acceptability of said call . . . as indicated by an acceptability signal.”
(Ans. 15–16, 126–35.) We agree with the Examiner.
Friedes relates to a review of “Advanced 800 features and some ISDN
[Integrated Services for Digital Network] capabilities of special interest to
800 Service customers.” (§ 1.) Figure 1 of Friedes illustrates the
architecture for Direct Services Dialing Capabilities (DSDC), including an
Action Point (ACP) component, software that recognizes Advanced 800
calls using special access codes, and a Network Control Point (NCP)
component, which is a network data base system that stores customer
information. (§ 3.1; see also Fig. 1.) Friedes explains that “[t]he ACP
recognizes that this [call] is an A800 call and queries the NCP for call
processing instructions” such that “[t]he query identifies a specific customer
record at the NCP and, if available, contains the originating station
identification.” (§ 3.1.) Friedes further explains that “[b]ased on the
SID/ANI [station identification/automatic number identification]
information, a record associated with the caller could be accessed . . . [o]r, a
validation check could be made to determine whether or not to establish a
voice path at all (screening out the ‘hacker’).” (§ 5.3.) Because Friedes
explains that SID/ANI information is used to screen out a “hacker” (i.e., a
person who uses computer expertise for illicit ends, such as by gaining
access to computer systems without permission and tampering with
programs and data), Friedes teaches the limitation “testing . . . to determine
the acceptability of said call.” Furthermore, because Friedes performs a
validation check before establishing the voice path, Friedes teaches that such
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check “determine[s] the acceptability of said call . . . as indicated by an
acceptability signal,” as recited in claim 1.
Appellant argues that “the ’415 patent teaches . . . testing ‘to
determine the acceptability of said call’ in this claim means ‘determine if
criteria are satisfied to allow access to the system’ or to a format—not to a
live operator.” (App. Br. 15.) Accordingly, Appellant argues that “[i]n
Friedes, the ‘validation check’ is disclosed only for calls to a live operator
attendant, not to any automated system or format.” (Id.) We note that the
“testing . . . to determine the acceptability of said call . . . as indicated by an
acceptability signal” step does not refer to a format. However, to the extent
that the preamble’s recitation concerning a “process for determining the
acceptability of calls and executing formats” imparts meaning, we are not
persuaded. As discussed previously, Appellant’s claim construction of
“format” is inconsistent with the Specification because the ’415 patent
describes that “[a] break-off control circuit may terminate the computer
interface aborting to a manual terminal for direct communication with an
operator” (’415 patent, Abstract) and “[a]s a part of a winning step in the
process, the caller may be placed in direct vocal communication with an
operator” (’415 patent, col. 8, ll. 18–20).
Appellant also argues that “[n]or does Friedes describe any
‘acceptability signal’ as claim 2 expressly requires” and “Friedes describes
that the ‘validation check’ would be used to screen out hackers, but does not
describe a signal indicating that a call is acceptable.” (App. Br. 16.)
Contrary to Appellant’s arguments, Friedes states that “a validation check
would be made to determine whether or not to establish a voice path at all”
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(§ 5.3), and the establishment of such voice path corresponds to the
limitation “acceptability signal.”
Appellant further argues that “Friedes does not disclose multiple
formats (or any ‘format’ at all) in connection with which ANI is tested.”
(App. Br. 17.) Again, Appellant’s claim construction of “format” is
inconsistent with the Specification because the ’415 patent describes that
“[a] break-off control circuit may terminate the computer interface aborting
to a terminal for direct communication with an operator” (’415 patent,
Abstract) and “[a]s a part of a winning step in the process, the caller may be
placed in direct vocal communication with an operator” (’415 patent, col. 8,
ll. 18–20).
Thus, we agree with the Examiner that the combination of Friedes and
Barger would have rendered obvious independent claim 1, which includes
the limitation “testing . . . to determine the acceptability of said call . . . as
indicated by an acceptability signal.”
We are unpersuaded by Appellant’s arguments (App. Br. 23–24; see
also App. Br. 17–19) that the combination of Friedes and Barger would not
have rendered obvious independent claim 1, which includes the limitation
“testing said associated telephone number signals with respect to stored
negative data.”
The Examiner found that the validation check and the NCP data base
system of Friedes for screening out “hackers” collectively correspond to the
limitation “testing said associated telephone number signals with respect to
stored negative data.” (Ans. 15–16, 136–37.) We agree with the Examiner.
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As discussed previously, Friedes explains that the NCP component is
a network data base system that stores customer information (§ 3.1; see also
Fig. 1), which is queried by the ACP using SID/ANI information (§ 3.1).
Also discussed previously, Friedes further explains that “[b]ased on the
SID/ANI information a record associated with the caller could be
accessed . . . a validation check could be made to determine whether or not
to establish a voice path at all (screening out the ‘hackers’).” (§ 5.3.) In the
context of computing, a “hacker” is defined as “[a] person . . . who uses
computer expertise for illicit ends, such as by gaining access to computer
systems without permission and tampering with programs and data.”
MICROSOFT® COMPUTER DICTIONARY 243 (5th ed. 2002). Because Friedes
explains that SID/ANI information is used to screen “hackers,” which has a
negative connotation, and queries the NCP data base system that stores
customer information, Friedes teaches the limitation “testing said associated
telephone number signals with respect to stored negative data.”
Appellant argues that “the screening out of ‘hackers’ in Friedes does
not disclose any stored negative data within the meaning of the claim” and
“[m]erely checking ANI against a record of customer telephone numbers,
without more, does not disclose stored negative data.” (App. Br. 19.)
However, the Examiner cited the validation check and the NCP data base
system of Friedes collectively, rather than only the screening process, for
teaching the limitation “testing said associated telephone number signals
with respect to stored negative data.” (Ans. 15–16, 136–37.)
Thus, we agree with the Examiner that the combination of Friedes and
Barger would have rendered obvious independent claim 1, which includes
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the limitation “testing said associated telephone number signals with respect
to stored negative data.”
We are unpersuaded by Appellant’s arguments (App. Br. 23–24; see
also App. Br. 19–21) that the combination of Friedes and Barger would not
have rendered obvious independent claim 1, which includes the limitation
“interfacing . . . to provide voice signals for . . . receiving responsive digital
data in accordance with a select format.”
The Examiner found that the ACP of Friedes corresponds to the
limitation “interfacing . . . to provide voice signals for . . . receiving
responsive digital data in accordance with a select format.” (Ans. 17–18,
137–39.) We agree with the Examiner.
Friedes explains that the ACP, software that recognizes Advanced 800
calls using special access codes, also has “generic capabilities” that include
“playing customer defined announcements” or “collecting digits.” (§ 3.1.)
Friedes further explains that for a typical A800 call, “[t]he A800 call is
routed to an ACP by means of a special access code,” and the ACP “queries
the NCP for call processing instructions” that “identifies a specific customer
record . . . contain[ing] the originating station identification” and, finally,
routes the call. (Id.) As discussed previously, Friedes explains that based on
the SID/ANI, “a validation check could be made to determine whether or not
to establish a voice path at all (screening out the ‘hacker’).” (§ 5.3.)
Because Friedes explains that the ACP includes generic capabilities (e.g.,
playing customer defined announcements or collecting digits) and that such
ACP queries the NCP to perform a validation check, Friedes teaches the
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limitation “interfacing . . . to provide voice signals for . . . receiving
responsive digital data in accordance with a select format.”
Appellant argues that “[t]he Action Point, Call Prompter, and
Courtesy Response features are all features within the telephone network,
such as for playing announcements or routing calls” (App. Br. 20) and
“[t]here is no disclosure of any automated interface system by Friedes as
would be required for a ‘format’” (App. Br. 21). Again, Appellant’s claim
construction of “format” is inconsistent with the Specification because the
’415 patent describes that “[a] break-off control circuit may terminate the
computer interface aborting to a manual terminal for direct communication
with an operator” (’415 patent, Abstract) and “[a]s a part of a winning step
in the process, the caller may be placed in direct vocal communication with
an operator” (’415 patent, col. 8, ll. 18–20).
Appellant further argues “none of these features within the network is
accessed after the ‘validation check’—the alleged ‘testing’—that occurs
after the call is connected to the customer premises, as would be required to
satisfy the claimed steps of ‘testing’ followed by ‘accepting’ and then
‘interfacing.’” (App. Br. 20.) Contrary to Appellant’s arguments, because
the ACP of Friedes initially queries the NCP for SID/ANI and such
SID/ANI is used to perform the validation check, Friedes suggests that such
validation check is performed before the other ACP generic capabilities
(e.g., playing customer defined announcements or collecting digits).
Thus, we agree with the Examiner that the combination of Friedes and
Barger would have rendered obvious independent claim 1, which includes
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the limitation “interfacing . . . to provide voice signals for . . . receiving
responsive digital data in accordance with a select format.”
We are unpersuaded by Appellant’s arguments (App. Br. 23–24) that
the Examiner improperly combined Friedes and Barger.
The Examiner found that the selection number entered by the
customer of Barger, the check into potential delivery problems, and the
audio message confirming a purchase collectively correspond to the
limitation “testing at least certain of the responsive digital data against stored
positive data to determine if further voice signals for cueing callers should
be provided,” recited in claim 1. (Ans. 30–32, 146–48.) The Examiner
concluded that
[i]t would have been obvious . . . to incorporate testing at least
certain of the responsive digital data against stored positive data
to determine if further voice signals for cueing callers should be
provided in Friedes et al. in order to provide a verification of
the operational status of requested data (i.e. error check
functionality) and providing options accordingly, thereby
increasing the operational efficiency of the voice responsive
system.
(Ans. 32.) We agree with the Examiner.
Barger relates to “a system for marketing merchandise or services
capable of being demonstrated to prospective customers over telephone lines
. . . and for immediately accepting orders of selected merchandise or
services.” (Col. 1, ll. 8–13.) According to Barger,
[a] further object of the invention is to provide a system for
permitting a customer to place orders for merchandise or
services . . . and to arrange for payment by some credit account
number or other means, whereupon the merchandise or services
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(or tickets for services) are dispatched to the customer by mail
or other delivery service.
(Col. 1, line 65 to col. 2, lines 4.)
Figure 4 of Barger illustrates a flow chart for operating in an
automatic (push-button) telephone mode (col. 3, ll. 31–32), which includes
“an instruction for the customer to enter his account number” (col. 11,
ll. 20–23). Barger explains that “[o]nce the selection number is entered, a
check is made for potential delivery problems” (col. 11, ll. 25–26) and if
there are no delivery problems, “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), followed by an
audio confirmation message (col. 11, ll. 32–33).
A person of ordinary skill in the art would have recognized that
incorporating the confirmation message of Barger with the Advanced 800
Features of Friedes for servicing 800 customers would provide the
advantage of informing customers of potential problems (e.g. delivery of
merchandise). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”). Thus, we agree with the Examiner
(Ans. 32) that modifying Friedes to incorporate the confirmation message of
Barger would have been obvious.
Appellant argues that the “obviousness rationale [is based] on the
erroneous proposition that Friedes discloses the type of ‘telephonic interface
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system’ contemplated by the claims or by Barger” and “Friedes simply does
not disclose or contemplate such a system.” (App. Br. 23.) To support this
position, Appellant points to paragraphs 47–50 of the Brody Declaration.
(Id.)
One relevant portion of the Brody Declaration states that “[u]nlike
Barger, Friedes does not involve a system where callers listen to music they
might be interested in buying” and “[u]nlike Barger, there are no account
numbers or payment issues disclosed in Friedes.” (Brody Decl. ¶ 49.) To
the extent Appellant argues that Friedes and Barger are nonanalogous art,
the ’415 patent relates improving a “widely used” technique “to interface
persons at telephone calling terminals directly with a computer facility” that
includes “computer-generated voice messages [to] prompt callers to provide
digital data by actuating the numeric buttons that are conventionally
employed for dialing from one telephone terminal to another.” (’415 patent,
col. 1, ll. 52–57.) As discussed previously, Friedes relates to a review of
“Advanced 800 features and some ISDN capabilities of special interest to
800 Service customers” (§ 1), including the ACP component and the NCP
component (§ 3.1; see also Fig. 1). Similarly, Barger relates to “a system for
marketing merchandise or services capable of being demonstrated to
prospective customers over telephone lines . . . and for immediately
accepting orders of selected merchandise or services.” (Col. 1, ll. 8–13.)
Thus, both Friedes and Barger are from the same field of endeavor as
Appellant’s claimed invention because both Friedes and Barger relate to
interfacing people at telephone calling terminals directly with a computer
facility. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
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Appellant further argues that “[n]othing in Barger suggests or
motivates any combination or modification with or of the type of
functionalities disclosed in Friedes that would achieve the claim
requirements.” (App. Br. 23–24.) Contrary to Appellant’s arguments, the
combination of Friedes and Barger is based on the improvement of a similar
device in the same way as in the prior art.
Therefore, the Examiner has properly combined Friedes and Barger to
reject independent claim 1 under 35 U.S.C. § 103(a).
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103(a). Claim 2 depends from independent claim 1, and
Appellant has not presented any substantive arguments with respect to this
claim. Therefore, we sustain the rejection of claim 2 under 35 U.S.C.
§ 103(a) for the same reasons discussed with respect to independent claim 1.

§ 103 Rejection—Barger and Friedes
Claim 20
Again, we note that some of Appellant’s arguments in the Appeal
Brief and Reply Brief are directed towards the limitations of independent
claim 20, from which claim 24 depends. Claim 20 is neither subject to
reexamination nor is it on appeal.
We are unpersuaded by Appellant’s arguments (App. Br. 34; see also
App. Br. 30) that the combination of Barger and Friedes would not have
rendered obvious independent claim 20, which includes the preamble
recitation “for . . . executing certain operations of telephonic formats” and
the limitation “select format.”
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The Examiner found that the first mode of Barger (i.e., a telephone
system featuring operator assistance), the second mode of Barger (i.e., a
telephone system featuring an automatic telephone service), and the third
mode of Barger (i.e., a modified automatic telephone service for customers
of a licensed retailer) collectively correspond to the preamble recitation “for
. . . executing certain operations of telephonic formats” and the limitation
“select format.” (Ans. 55–56, 160–63.) We agree with the Examiner.
Barger explains that “[i]n 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. 33–37.) In a second mode of Barger, an
“automatic telephone service . . . causes the data processor to communicate
with the customer through prerecorded messages played to the customer
through the audio repeating means and codes entered by the customer
through his telephone keyboard.” (Col. 2, l. 65 to col. 3, l. 3.) To access the
second mode, the operator can transfer a customer’s call (col. 2, ll. 65–67),
or the customer can dial “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. 5–8). In a
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. 8–10), such that “[a]
Touch-Tone control of demonstrations may be offered to customers of a
subscribing record store or a department store” (col. 9, ll. 63–65). Because
the telephone marketing system of Barger features a first mode, second
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mode, and third mode, Barger teaches the preamble recitation “for . . .
executing certain operations of telephonic formats.”
Appellant argues that “a ‘format’ requires an automated interactive
call processing flow in which a caller exchanges information with an
automated system through pre-recorded prompts and messages” but
“Barger’s live operator mode is not a format, nor does Barger disclose two
distinct formats.” (App. Br. 30.) Again, Appellant’s claim construction of
“format” is inconsistent with the Specification because the ’415 patent
describes that “[a] break-off control circuit may terminate the computer
interface aborting to a terminal for direct communication with an operator”
(’415 patent, Abstract) and “[a]s a part of a winning step in the process, the
caller may be placed in direct vocal communication with an operator” (’415
patent, col. 8, ll. 18–20).
Thus, we agree with the Examiner that the combination of Friedes and
Barger would have rendered obvious independent claim 20, which includes
the preamble recitation “for . . . executing certain operations of telephonic
formats” and the limitation “select format.”
Accordingly, we sustain the rejection of independent claim 20 under
35 U.S.C. § 103(a).

Claim 24
We are unpersuaded by Appellant’s arguments (App. Br. 34; see also
App. Br. 30–33) that the combination of Barger and Friedes would not have
rendered obvious dependent claim 24, which includes the limitation “at least
one cue indicates ongoing accounting data during said call.”
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The Examiner found that the customer account number of Barger,
elicited by the operator, used to determine whether the customer is a “free-
loader” and used to determine delivery problems, corresponds to the
limitation “at least one cue indicates ongoing accounting data during said
call.” (Ans. 61–64, 163–64.) We agree with the Examiner.
Figure 4 of Barger illustrates a flow chart for operating in an
automatic (push-button) telephone mode (i.e., the second mode (col. 3, ll. 3–
8)). (Col. 3, ll. 31–32.) “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” in Fig. 4.) Next, “an algorithm
is employed to determine if this customer is a free loader” and “[i]f so, the
call is transferred to an operator.” (Col. 11, ll. 34-36; “FREE-LOADER
ALGORITHM” in Fig. 4.) Barger further explains that “[t]he operator . . .
keys the directory number of the [audio] demonstration into the data
processor which checks inventory levels of that recording and notifies the
operator of any potential delivery problem” such that “[t]he operator may
. . . discuss the problem with the customer.” (Col. 5, ll. 11–17.)
Furthermore, Barger explains that such inventory levels are related to sales
data. (See col. 6, ll. 26–34.) Because the operator of Barger prompts the
customer for an account number and informs the customer of inventory,
Barger teaches the limitation “at least one cue indicates ongoing accounting
data during said call.”
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Appellant argues that “the Examiner does not demonstrate any
disclosure in Barger of on-going accounting data that is provided to the
caller at all, either by an automated message or by a live operator.” (App.
Br. 31.) Contrary to Appellant’s arguments, the Examiner cited the
inventory levels for the merchandise of Barger for teaching the limitation of
indicating “ongoing accounting data.” (Ans. 63–64, 163–164.)
Appellant further argues that “a cue does require automation in the
context of claim 24 where the cue is part of a format” and “[a] ‘cue’ is a
question or prompt provided to a caller . . . and the recited method of
claim 24 is directed to executing ‘formats.’” (App. Br. 31.) Similarly,
Appellant argues, “even if the live operator were disclosed to provide on-
going accounting data to the caller, there is no disclosure in Barger that such
an operation is, or could possibly be, done in connection with a ‘cue’
provided by an automated system.” (Id.) Again, Appellant’s claim
construction of “format” is inconsistent with the Specification because the
’415 patent describes that “[a] break-off control circuit may terminate the
computer interface aborting to a manual terminal for direct communication
with an operator” (’415 patent, Abstract) and “[a]s a part of a winning step
in the process, the caller may be placed in direct vocal communication with
an operator” (’415 patent, col. 8, ll. 18–20). In addition, the second mode of
Barger permits the customer select automatic telephone service. (Col. 2,
ll. 65–67, col. 3, ll. 5–8.)
Thus, we agree with the Examiner that the combination of Friedes and
Barger would have rendered obvious dependent claim 24, which includes the
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limitation “at least one cue indicates ongoing accounting data during said
call.”
Accordingly, we sustain the rejection of dependent claim 24 under
35 U.S.C. § 103(a).

Other § 103 Rejections
We do not reach the rejections of claims 2 and 24 under 35 U.S.C.
§ 103(a) as obvious over various combinations of De Bruyn, Moosemiller,
Barger, Gordon, Student Registration, Szlam, and Norris. Affirmance of the
obviousness-based rejection discussed previously renders it unnecessary to
reach the remaining obviousness rejections, as all of the pending claims have
been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331,
1338 (Fed. Cir. 2009).

DECISION
The Examiner’s decision rejecting claims 2 and 24 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

peb

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