Ex parte Jordan

Board of Patent Appeals and Interferences

Aug 31, 2000

08307249 (B.P.A.I. Aug. 31, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID P. JORDAN
__________
Appeal No. 1997-2700
Application 08/307,249
___________
ON BRIEF
___________
Before URYNOWICZ, JERRY SMITH, and RUGGIERO, Administrative
Patent Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 1-24, all of the claims present in the present
application. The claimed invention relates to a system
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Application 08/307,249
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and method for preventing fraudulent telephone calls in a
telecommunications network. More particularly, Appellant
indicates at pages 2 and 3 of the specification that, on a
successful comparison by a voice recognition device of a
caller’s spoken utterance with a stored voice print, a call is
completed to its destination. If the voice print and
utterance do not match, various risk factors associated with
the call are considered for determining whether the call is to
be completed.
Claim 1 is illustrative of the invention and reads as
follows:
1. In a telecommunications network, a system for preventing
fraudulent telephone calls comprising:
means for identifying a call being placed by a caller to
a destination over said network;
means for prompting said caller to speak an utterance;
means for recognizing said utterance spoken by said
caller;
verification means for comparing the voice of said caller
against a prestored voice signature of an authentic caller
corresponding to said utterance to determine if said caller is
said authentic caller; and
means for providing at least one risk factor relating to
said call to said verification means when the voice of said
Appeal No. 1997-2700
Application 08/307,249
The Appeal Brief (revised) was filed July 24, 1996. In1
response to the Examiner’s Answer dated September 25, 1996, a
Reply Brief was filed November 15, 1996. The Examiner entered
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caller fails to match the voice signature of said authentic
caller so that said verification means can take into
consideration said risk factor in determining whether said
call is from said authentic caller.
The Examiner relies on the following prior art:
Hou et al. (Hou) 5,325,421 Jun. 28,
1994
Johnson et al. (Johnson) 5,345,595
Sep. 06, 1994
Hunt et al. (Hunt) 5,365,574 Nov. 15,
1994
(Filed Nov. 25, 1992)
Claims 1-3, 8-13, 18-20, and 24 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Hunt. Claims 4-6, 14-
16, 21, and 22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hunt in view of Hou. Claims 7, 17, and 23
stand rejected under 35 U.S.C. § 103 as being unpatentable
over
Hunt in view of Johnson.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answers for the1
Appeal No. 1997-2700
Application 08/307,249
the Reply Brief and submitted a supplemental Examiner’s Answer
dated February 19, 1997.
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respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the Examiner and the
evidence of anticipation and obviousness relied upon by the
Examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the Briefs along
with the Examiner’s rationale in support of the rejection and
arguments in rebuttal set forth in the Examiner’s Answers.
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 Briefs have not been
considered [see 37 CFR § 1.192(a)].
It is our view, after consideration of the record before
us, that the disclosure of Hunt fully meets the invention as
recited in claims 1-3, 8-13, 18-20, and 24. We are also of
the view that the evidence relied upon and the level of skill
in the particular art would have suggested to one of ordinary
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Application 08/307,249
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skill in the art the obviousness of the invention set forth in
claims 4-7, 14-17, and 21-23. Accordingly, we affirm.
Appellant has nominally indicated (Brief, page 8) that,
for purposes of this appeal, the claims do not stand or fall
together. It is apparent, however, that Appellant has
organized his arguments by grouping the claims subject to each
rejection as a single group. We will consider the claims
separately only to the extent that separate arguments are of
record in this appeal. Any claim not specifically argued will
stand or fall with its
base claim. Note In re King, 801 F.2d 1324, 1325, 231 USPQ
136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991,
217 USPQ 1, 3 (Fed. Cir. 1983).
We will consider first the rejection of claims 1-3, 8-13,
18-20, and 24 under 35 U.S.C. § 102(e) as being anticipated by
Hunt. We note that this rejected group of claims includes all
of the independent claims (i.e. claims 1, 11, and 19) on
appeal. Anticipation is established only when a single prior
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Application 08/307,249
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art reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as
well as disclosing structure which is capable of performing
the recited functional limitations. RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Gore and Assoc, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
With respect to independent claims 1, 11, and 19, the
Examiner has indicated how the various limitations are read on
the disclosure of Hunt (Answer, pages 4-6). In particular,
the Examiner makes reference to the disclosure at column 6,
line 59 to column 7, line 7 of Hunt which describes the
operation of the
call verification system when there is only an approximate
match between a spoken voice and a stored voice print, such a
match not falling within a predetermined acceptance threshold.
In response, Appellant’s arguments primarily center on
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Application 08/307,249
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the alleged failure of Hunt’s call verification system to
disclose the risk factor feature present in each of
independent claims 1, 11, and 19. Appellant’s view is
summarized at page 4 of the Reply Brief as follows:
Putting it simply, the instant invention inputs
risk factor(s) into play only after a determination
has been made that the voice of the caller fails to
match the stored voice signature of the authentic
caller. This is in contrast to the Hunt system
in which the predetermined call condition is taken
into account to set up the thresholds before a
determination is made on whether the caller is an
authentic caller (emphasis in original).
After careful review of the Hunt reference in light of
the arguments of record, we are in agreement with the
Examiner’s position as stated in the Answers. We do agree
with Appellant that Hunt’s establishment of the threshold
“windows” for the acceptance criterion takes place prior to
call placement; however, this is not the feature that the
Examiner relies on for disclosing the claimed risk factor
limitations. In the Examiner’s interpretation of Hunt, with
which we agree, a risk factor is indeed introduced into Hunt’s
system after a determination that a voice print match does not
fall within an acceptance threshold. This risk factor takes
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Application 08/307,249
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the form of a system prompt which asks the caller to input
personal information such as social security or account
numbers (Hunt, column 7, line 1). The call in question will
not be completed until the caller satisfies this risk factor
condition by providing the correct personal information.
For all of the above reasons, the Examiner’s 35 U.S.C.
§ 102(e) rejection of independent claims 1, 11, and 19 is
sustained.
Turning to a consideration of dependent claims 2, 10 and
12, separately argued by Appellant, we sustain the 35 U.S.C. §
102(e) rejection of these claims as well. Dependent claims 2
and 12 are directed to the determination made after a matching
process is performed as whether a call is to be completed. In
our view, the passages from Hunt discussed supra relating to
the introduction of the personal information system prompt
clearly meet such requirement. It is further our opinion that
the risk factors in Hunt are clearly resident in an “audio
response unit” as broadly recited in dependent claim 10.
Dependent claims 3, 8, 9, 13, 18, 20, and 24 have not been
argued separately and, accordingly, fall with their base
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Application 08/307,249
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claim.
Since all of the claimed limitation are present in the
disclosure of Hunt, the Examiner’s 35 U.S.C. § 102(e)
rejection of appealed claims 1-3, 8-13, 18-20, and 24 is
sustained.
We next consider the Examiner’s rejection of dependent
claims 4-6, 14-16, 21, and 22 under 35 U.S.C. § 103 as being
unpatentable over Hunt in view of Hou. As a general proposition
in an appeal involving a rejection under 35 U.S.C. § 103, an
Examiner is under a burden to make out a prima facie case of
obviousness. If that burden is met, the burden of going
forward then shifts to Appellant to overcome the prima facie
case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In
re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189
Appeal No. 1997-2700
Application 08/307,249
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USPQ 143, 147 (CCPA 1976).
Dependent claims 4-6, argued separately by Appellant, are
each directed to the routing of a call under a verification
procedure to an operator station if incorrect answers are
supplied in response to the automated system request. In
addressing this claimed feature, the Examiner proposes to
modify the purely automated system of Hunt by relying on the
Hou reference which provides a teaching of routing a verifying
call to an operator after two attempts at automated
verification. In the Examiner’s line of reasoning (Answer,
page 7), the skilled artisan would have been motivated and
found it obvious to provide for the forwarding of calls to an
operator in Hunt, as taught by Hou, to overcome the possible
failure of the automated query process due to environmental
factors (e.g. noise) and program malfunctioning.
In response, Appellant attacks (Reply Brief, page 6) the
Examiner’s establishment of motivation for combining Hou with
Hunt since the Examiner’s suggested motivation is not
explicitly disclosed in Hou. However, despite any explicit
teaching in Hou of the reason for providing operator station
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Application 08/307,249
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routing, we find the Examiner’s rationale with regard to the
obviousness of providing routing of calls to an operator to be
reasonable so as to establish a prima facie case. In
considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Since the
Examiner’s prima facie case of obviousness has not been
overcome by any persuasive arguments by Appellant, the 35
U.S.C. § 103 rejection of dependent claims 4-6, as well as
dependent claims 14-16, 21, and 22 not separately argued by
Appellant, is sustained.
Lastly, we consider the Examiner’s 35 U.S.C. § 103
rejection of dependent claims 7, 17, and 23, grouped and
argued together by Appellant, as unpatentable over Hunt in
view of Johnson. The Examiner, as the basis for the
obviousness rejection of these claims, proposes to modify the
risk factor teachings of Hunt by adding additional risk
factors such as those taught by Johnson, to increase the
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Application 08/307,249
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versatility and security of Hunt’s call verification system.
Appellant’s arguments in response (Reply Brief, pages 7
and 8) do not assert Johnson’s lack of disclosure of the
particular claimed risk factors but, rather, focus on the
contention that Johnson’s risk factors are directed solely to
the historical pattern of usage of a particular calling card
subscriber. Appellant contrasts this teaching with the
instant invention which is concerned with all callers, not a
specific individual making a call.
In our view, however, it is apparent from the Examiner’s
line of reasoning that Johnson was cited for the limited
purpose of supplying a teaching of specific criteria which
could be added to improve the call verification risk factor
teachings of Hunt. The Johnson reference was used by the
Examiner in combination with Hunt to establish the basis for
the obviousness rejection. One cannot show nonobviousness
by attacking references individually where the rejections are
based on combinations of references. In re Keller, 642 F.2d
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Application 08/307,249
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413, 425, 208 USPQ 871, 881 (CCPA 1981); In re Merck & Co.,
Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
In view of the above discussion, the Examiner’s obviousness
rejection of dependent claims 7, 17, and 23 is sustained.
In summary, we have sustained each of the Examiner’s
rejections of the claims on appeal. Therefore, the decision
of the Examiner rejecting claims 1-24 is affirmed.

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

Appeal No. 1997-2700
Application 08/307,249
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STANLEY M. URYNOWICZ, Jr. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR:pgg
MCI Communications Corporation
Office of The General Counsel
ATTN: IP/TT
1133 19th Street, N.W.
Washington, DC 20036
Appeal No. 1997-2700
Application 08/307,249
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