Ex Parte Gallant

Board of Patent Appeals and Interferences

Dec 21, 2007

10101199 (B.P.A.I. Dec. 21, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN KENNETH GALLANT
____________________

Appeal 2007-1575
Application 10/101,1991
Technology Center 2600
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Decided: December 21, 2007
____________________

Before ANITA PELLMAN GROSS, JAY P. LUCAS, and MARC S. HOFF
Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals from a final rejection of claims 1 to 13 under
authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

1 Application filed March 18, 2002. Appellant claims the benefit under
35 U.S.C. § 119 of a plurality of provisional applications filed
March 20, 2001. The real party in interest is MCI, Inc.

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Appellant’s invention relates to the feature of “call screening” in
telephone services, in which an incoming call is reviewed before it is passed
on to the recipient. According to the invention, under certain circumstances
the call may be forwarded to a chosen alternative mechanical or human
recipient. In the words of the Appellant:
Claim 1 recites in a communications system, a method for processing
a request from an originating party to establish communications with a
destination party, comprising receiving a request from the originating
party to establish communications with the destination party (e.g.,
402, Fig. 4; pg. 18, para. 0071); determining if the request is
permissible based upon applying at least one criterion to at least one
aspect of the request (e.g., 414-422, Fig. 4; pg. 19, para. 0076, to pg.
20, para. 0080), the determining if the request is permissible includes
identifying a type of address with which the originating party or the
destination party is associated (e.g., 508, Fig. 5; 608, Fig. 6; pg. 23,
para. 0091-0094; pg. 26, para. 0107, to pg. 27, para. 0109). By way
of example, the determining may include identifying whether the
address is an IP address, a uniform resource locator, a universal
resource identifier, a public telephone number, a private telephone
number, etc. (see, for example, pg. 4, para. 0014). The method further
comprises determining if a forwarding-on-screening feature is
associated with the destination party (e.g., 428, Fig. 4; pg. 21, para.
0084); and responding to the request with forwarding information if
the request is not permissible and a forwarding-on-screening feature is
associated with the destination party (e.g., 432, Fig. 4; pg. 21, para.
0086).
Brief, pages 2-3

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Claim 1 is exemplary:
1. In a communications system, a method for processing a request
from an originating party to establish communications with a destination
party, comprising:
receiving a request from the originating party to establish
communications with the destination party;

determining if the request is permissible based upon applying at least
one criterion to at least one aspect of the request, the determining if the
request is permissible includes identifying a type of address with which the
originating party or the destination party is associated;

determining if a forwarding-on-screening feature is associated with the
destination party; and

responding to the request with forwarding information if the request is
not permissible and a forwarding-on-screening feature is associated with the
destination party.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chow US 6,587,683 B1 Jul. 1, 2003
(filed Dec. 13, 1999)
Yau US 6,741,688 B1 May 25, 2004
(filed Oct. 28, 1999)

Rejections:
R1: Claims 1 to 10 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Chow in view of Yau.
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R2: Claims 11 to 13 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Yau.
Appellant contends that the claimed subject matter is not anticipated
by Yau (Brief, page 6), or rendered obvious by Chow in combination with
Yau (Brief, page 12), for reasons to be discussed more fully below. The
Examiner contends that each of the claims is properly rejected.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).2
We affirm the rejections.
ISSUE
The issues are whether Appellant has shown that the Examiner erred
in rejecting claims 11 to 13 under 35 U.S.C. § 102(e) and claims 1 to 10
under 35 U.S.C. § 103(a). Further, the primary issue for the § 102 rejection

2 Appellant has not presented any substantive arguments directed separately
to the patentability of the dependent claims or related claims in each group,
except as will be noted in this opinion. In the absence of a separate
argument with respect to those claims, they stand or fall with the
representative independent claim. See In re Young, 927 F.2d 588, 590 (Fed.
Cir. 1991).

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turns on whether the Yau reference teaches the limitation of identifying a
type of address with which the originating or destination party is associated,
when that limitation is broadly, but fairly, interpreted. The § 103 rejection
issue turns on whether Yau teaches that limitation and also whether the two
references are properly combinable.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant has invented a technique for screening and forwarding a
communication (e.g. phone call) from an originating party to a
destination party. As a feature of this method and system, the invention
will screen the phone call and forward it based on applying a criterion to
one aspect of the request to complete the phone call including identifying
the type of address associated with either party. (Claim 1; spec. ¶
[0013],[ 0014]). Address types, in accordance with the specification,
may include IP addresses, URLs, public or private telephone numbers, or
any forms of character strings in a computing system. (Specification, ¶
[0014]).

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PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006)
“To reject claims in an application under section 103, an examiner
must show an unrebutted prima facie case of obviousness. . . . On appeal to
the Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” [citations removed]
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998).
Both anticipation under 35 U.S.C. § 102 and obviousness under § 103
are two-step inquiries in which the first step is a proper construction of the
claims and the second step requires a comparison of the properly construed
claims to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933
(Fed. Cir. 2003).
“Shortly after the creation of this court, Judge Rich wrote that ‘[t]he
descriptive part of the specification aids in ascertaining the scope and
meaning of the claims inasmuch as the words of the claims must be based on
the description. The specification is, thus, the primary basis for construing
the claims.’ Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452
(Fed. Cir. 1985). On numerous occasions since then, we have reaffirmed
that point…” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005).
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It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1458 (Fed. Cir. 1984).
Our reviewing court states in In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) that “claims must be interpreted as broadly as their terms reasonably
allow.” Our reviewing court further states that "the words of a claim 'are
generally given their ordinary and customary meaning.'" Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations
omitted). The "ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the
patent application." Id. at 1313.
References within the statutory terms of 35 U.S.C. § 103 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two
separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor's endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re
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Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). 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. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).

ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented prima facie cases for the rejections of Appellant’s
claims under 35 U.S.C. §§ 102 and 103. The prima facie cases are presented
on pages 3 to 8 of the Examiner’s Answer. In opposition, Appellant presents
a number of arguments which we will consider forthwith.

Rejection under 35 U.S.C. § 102(e)
The first argument alleges that Yau “in no way discloses or suggests
performing a screening operation to determine whether to permit a call to the
destination party from the originating party, where the screening operation
includes identifying a type of address with which the originating party or
destination party is associated, as required by claim 11.” (Br. 6, middle).
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Appellant concedes that Yau screens telephone numbers (Br. 7, bottom), but
distinguishes that activity from the claimed identification of a “type of
address.” Appellant further explains (Br. 8, bottom),
“By way of example, Appellant’s screening system may receive an
address and determine whether the address is an IP address, a E.164-
type telephone number, a private number, etc. Contrary to the
Examiner’s allegation, one skilled in the art would readily appreciate
that receiving a telephone number is in no way equivalent to
identifying a type of address with which an originating or destination
party is associated.”

Key to reviewing this rejection is understanding the proper
interpretation of the claims. (See Medichem S.A. v. Rolabo S.L cited above).
The clause in question, with respect to claim 1 and claim 11, reads,
“…identifying a type of address with which the originating party or the
destination party is associated.” During examination, a claim may be
interpreted in a broad but reasonable manner, not inconsistent with the
Specification. (See In re Zletz and Phillips v. AWH Corp cited above.).
Although the Appellant would have us read “type of address” as only
referring to the class of communications that the code belongs to, (e.g.,
URL, phone number, IP address) it is clear from the Specification that phone
numbers are a type of address. Yau teaches looking for certain types of
addresses (e.g., so-called 800 or 900 type phone numbers, among others).
(See Yau, col. 4, l. 19+). It seems perfectly consistent with the wording of
the claim to interpret the phrase in question to mean, for example,
determining if the request to establish a phone call is to, or from, an 800
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number. Under that interpretation, we find Yau teaches “identifying a type
of address with which the originating party or destination party is
associated.”
Regarding claim 12, Appellant argues that Yau does not disclose or
suggest routing the phone call to an alternative number when the type of
address has been identified and the destination party does not permit the call.
Examiner has pointed to column 4, lines 36 to 43, which describes a
received call, once identified as an 800 number call, being “rerouted” or
“forwarded to another number.” (Id., col. 4, l. 39). We do not find error in
the Examiner rejecting the cited claim over this teaching.
With respect to claim 13, the Appellant presents an argument similar
to that presented concerning claim 11. As Yau teaches identifying the
address as being a phone number, we do not find error in the Examiner’s
rejection.

Rejection under 35 U.S.C. § 103(a)
Appellant first argues the proper joining of the references in the
rejection. As both Yau and Chow present inventions in the same field of
endeavor, we find that an artisan would look to both teachings in seeking a
solution to a problem involving screening, call forwarding, and telephony in
general. (See KSR, cited above).
Appellant’s arguments with respect to claims 1, 2, and 4 to 10 (Br.13,
top, 19, bottom) echo the arguments against the rejection of Claim 11
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discussed above. For the reasons stated, we find the teachings in Yau
supportive of the claimed limitation concerning “identifying a type of
address.”
With respect to claim 3, we find that Chow teaches determining from
the Caller ID the “address, building number, company affiliation, etc.” of the
calling party (Chow, col. 5, l. 50+). As the claim limitation concerns the
originating party’s location, we do not find error in the Examiner’s rejection
of this claim.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 13.
DECISION
The Examiner's rejection of claims 1 to 13 is Affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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