Ex Parte Bunker

Board of Patent Appeals and Interferences

Jun 6, 2007

10790473 (B.P.A.I. Jun. 6, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MARK R. BUNKER
___________

Appeal 2007-0844
Application 10/790,473
Technology Center 2600
___________

Decided: June 6, 2007
___________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and JOHN A. JEFFERY,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2007-0844
Application 10/790,473

This is a decision on appeal under 35 U.S.C. §§ 6(b) and 134 from the
Examiner's final rejection of claims 1-24.

We AFFIRM.

BACKGROUND

Appellant’s invention relates to a system for disabling custom calling
features for calls originating from a restricted area. An understanding of the
invention can be derived from a reading of exemplary claim 1, which is
reproduced below.
1. A system for restricting telephone calls that originate from a facility,
the system comprising:

at least one facility resident telephone configured to originate and
present a call signal;

a switching office; and

a destination telephone, wherein the at least one facility resident
telephone, the switching office, and the destination telephone are electrically
serially coupled such that a call signal originating at the at least one facility
resident telephone is routed to the destination telephone via the switching
office, and wherein the switching office disables at least one custom calling
feature corresponding to the call signal upon determining the call signal as
originating from the at least one facility resident telephone.

PRIOR ART
The prior art reference of record relied upon by the Examiner in
rejecting the appealed claims is:
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Application 10/790,473

Gallant US 2002/0167946 A1 Nov. 14, 2002

REJECTIONS
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gallant.

Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Jul. 14, 2006) for the reasoning
in support of the rejections, and to Appellant’s Brief (filed Mar. 27, 2006)
and Reply Brief (filed Aug. 18, 2006) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
At the outset, we note that to reach a proper conclusion under § 103, the
Examiner, as finder of fact, must step backward in time and into the mind of
a person of ordinary skill in the art at a time when the invention was
unknown, and just before it was made. In light of all the evidence, we
review the specific factual determinations of the Examiner to ascertain
whether the Examiner has convincingly established that the claimed
invention as a whole would have been obvious at the time of the invention to
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a person of ordinary skill in the art. When claim elements are found in more
than one prior art reference, the fact finder must determine “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006). With respect to the role of the Examiner as finder of fact, the
Court of Appeals for the Federal Circuit has stated: “the examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The Court of Appeals
for the Federal Circuit has also noted: “[w]hat the prior art teaches, whether
it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness’ . . . . [H]owever, 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.” KSR Int’l v.
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Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
Further, as pointed out by our reviewing court, we must first determine
the scope of the claim. “[T]he name of the game is the claim.” In re Hiniker
Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998).
Therefore, we look to the limitations as recited and disputed in independent
claim 1. From our review of the Examiner’s rejection, we find that the
Examiner has set forth a proper initial showing, with respect to independent
claim 1, to shift the burden to Appellant. We note that the Examiner
maintains that Gallant teaches all the limitations but for the serial
communication.
Appellant argues the independent claim 1 differs from Gallant in that
independent claim 1 recites that a custom calling feature corresponding to a
call from a party A to party B is disabled as a result of the call having
originated from party A whereas in Gallant the custom calling feature
corresponding to a call from party A to party B is disabled based upon the
profile information associated with party B (Br. 9 and Reply Br. 2-9).
The Examiner disputes Appellant’s contention and identifies paragraph
[0058] as verifying the privileges of the first user to reach the second user
and performing any call handling features provisioned for the first and
second users (Answer 4). Here, we agree with the Examiner that Gallant is
not limited to merely using the profile information of the second user/party
B. Additionally, we find that paragraph [0008] teaches that an administrator
may perform call blocking and place outgoing call restrictions on individual
users. Additionally, the administrator may make restrictions on out-going
calls to certain international phone number ranges for different individual
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users. We find this teaching to show that a restriction may be based solely
upon the originating party and to be suggestive of the ability of the system to
perform similar restrictions on other custom calling features based upon the
individual user which originates the call. We additionally find that
paragraphs [0051] and [0066] buttress our finding that Gallant does make
determinations based upon the location of the originator of the call and
furthermore that it would have been obvious to one skilled in the art at the
time of the invention to have used the location of the originator of the call to
disable certain custom calling features based upon the location or identity of
the user placing the call.
From our review of the teachings of Gallant, we find that Gallant teaches
both the use of party A and/or party B as a determining factor to disable calls
and calling features. With that as a baseline, we find that it would have been
obvious to one skilled in the art at the time of the invention to have used the
origin of the call as a basis for disabling any or all custom calling features by
the administrator, proxy server, or location server in the various network
structures as taught by Gallant. Therefore we cannot agree with Appellant
that Gallant does not teach or fairly suggest the limitation of claim 1 that
“the switching office disables at least one custom calling feature
corresponding to the call signal upon determining the call signal as
originating from the at least one facility resident telephone.” Therefore,
Appellant's argument is not persuasive, and we will sustain the rejection of
independent claim 1 and dependent claims 2-11 which Appellant has not
provided separate argument for patentability.
With respect to independent claim 12, Appellant relies upon the
arguments advanced with respect to independent claim 1 which we did not
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find persuasive above. Therefore, we will sustain the rejection of
independent claim 12 and dependent claims 13-22 which Appellant has not
provided separate argument for patentability.
With respect to independent claims 23 and 24, Appellant argues that
Gallant teaches the use of profile information associated with party B as the
basis for disabling a custom calling feature and Appellant relies upon the
reasons advanced with respect to independent claim 1 (Br. 13-14) which we
did not find persuasive above. Therefore, we will sustain the rejection of
independent claims 23 and 24.

CONCLUSION
To summarize, we have sustained the rejection of claims 1-24 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
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Application 10/790,473

AFFIRMED

eld

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