Ex Parte Latter et al

Board of Patent Appeals and Interferences

Sep 23, 2009

09122484 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERESA FARIAS LATTER, NANCY ANN BOOK,
MARY LOUISE HARDZINSKI, JAMES THOMAS MACIEJEWSKI,
THOMAS JOSEPH MCBLAIN, and JOHN WESLEY MOSS

_____________

Appeal 2009-004642
Application 09/122,484
Technology Center 2600
____________

Decided: September 23, 2009
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Before JOHN C. MARTIN, JOSEPH F. RUGGIERO,
and ELENI MANTIS MERCADER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 09/122,484

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final
rejection of claims 57-66 and 68-93. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to a method and system for
providing a called party with audible caller identification information when
standard caller identification information cannot be provided (Spec. 2:7-9).
Claim 57, reproduced below, is representative of the subject matter on
appeal:
57. A method for processing a call from a calling party at a calling
communication station to a called communication station, the method comprising:
(a) generating a query in response to the receipt of the call, wherein the
query includes the telephone number associated with the calling communication
station;
(b) determining whether standard caller identification information for the
calling communication station can be provided to the called communication station
by analyzing data contained within the query;
(c) transmitting a request for audible caller identification information to the
calling communication station in response to a determination that the standard
caller identification information cannot be provided to the called communication
station;
(d) receiving an override signal from the calling communications station
and
(e) connecting the calling communication station and the called
communication station in response to the override signal and without providing
any caller identification information to the called communication station.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Jones US 5,033,076 Jul. 16, 1991

Bartholomew US 5,497,414 Mar. 5,1996

Tatchell US 5,905,774 May 18, 1999
(filed Mar. 10, 1997)

Bartholomew US 6,167,119 Dec. 26, 2000
(filed Jan. 12, 1998)

The following rejections are before us for review:
1. The Examiner rejected claims 57-59 under 35 U.S.C. § 103(a) as
unpatentable over Bartholomew’414 in view of Tatchell.
2. The Examiner rejected claims 60-66, 68-72, and 75-93 under 35 U.S.C.
§ 103(a) as unpatentable over Bartholomew’414 in view of Tatchell.
3. The Examiner rejected claims 73 under 35 U.S.C. § 103(a) as
unpatentable over Bartholomew’414 in view of Tatchell and further in view of
Bartholomew’119.
4. The Examiner rejected claims 74 under 35 U.S.C. § 103(a) as
unpatentable over Bartholomew’414 in view of Tatchell and further in view of
Jones.
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Appellants argue claims 57-59 as a group (App. Br. 7-9).1 We select claim
57 as representative. Accordingly, claims 58-59 stand or fall with claim 57. See 37
C.F.R. § 41.37 (c)(1)(vii) (2004).
We acknowledge that Appellants, at pages 2-4 of the Reply Brief, have
made separate and substantial arguments for whether “the provided name and
number are utilized by the agent to connect . . . and not connect to the called
communication station,” (Reply Br. 3). These arguments have been raised for the
first time on appeal in the Reply Brief and they are therefore deemed to be waived.
See Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”)
(citations and quotation marks omitted); see also Ex parte Scholl, No. 2007-3653,
slip op. at n.13 (BPAI Mar. 13, 2008) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd073653.pdf (same).

OBVIOUSNESS
ISSUE
Regarding the rejection of claims 57-59
Appellants argue that neither Bartholomew nor Tatchell discloses or
suggests transmitting a request for audible caller identification (App. Br. 7).
Appellants argue that Tatchell does not disclose the missing teaching from

1 Only arguments made by Appellants have been considered in this decision.
Arguments which Appellants could have made but did not make in the Brief have
not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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Bartholomew of the agent request in response to a determination that caller
identification is not provided (App. Br. 8). Appellants assert that for the system of
Tatchell to operate as shown in the relied upon Figure 8b, the caller identification
information must be provided, and must not be recognized or previously entered on
the call screening and priority list, which then could prompt an agent request (App.
Br. 8). Appellants further assert that in Tatchell, if the standard caller
identification information were not provided, then the calling’s party call is
blocked (App. Br. 8).
Appellants also argue that the combination of Bartholomew and Tatchell
would simply result in a system in which a PIN was utilized to determine if the
calling party was previously established on the call screening and prioritization list
(App. Br. 9).
The Examiner finds that Tatchell discloses requesting an audible caller
identification (i.e., asks for name and telephone number) to the calling station in
response to a determination that the standard caller ID information cannot be
provided (Ans. 13). The Examiner finds that Tatchell explicitly teaches that a
check is made to determine if it (i.e., the voice call) has a calling line ID (CLID),
and if there is none or the CLID is blocked (i.e., no standard caller ID information),
the agent (i.e., personal agent processor) answers the call and asks for name and
telephone number (Ans. 13) (col. 20, ll. 49-51). Based on this, the Examiner
responds that the system of Tatchell does not simply block the call when standard
caller information is not provided, since the system of Tatchell requests that caller
party to provide name and telephone number for further processing of the call
(Ans. 13). Thus, the Examiner concludes that Tatchell discloses the limitation of
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“transmitting a request for audible caller identification” and thereby cures the
deficiency of Bartholomew (Ans. 13).
The Examiner further responds that the combination of Bartholomew with
Tatchell would provide a system wherein the “request for name and phone
number” of Tatchell would ultimately replace the “request for PIN” in
Bartholomew in order to provide the called party with audible identity of the caller
(Ans. 14). The Examiner articulated that Tatchell’s teaching would improve the
call screening process of Bartholomew by enabling the calling party, with blocked
caller ID or with unavailable caller ID information, to effectively and selectively
identify him or herself to the destination party (Ans. 14).
The first issue is whether Appellants have shown that the Examiner erred in
finding that Tatchell teaches the limitation of “transmitting a request for audible
caller identification information” as recited in claim 57.
The second issue is whether Appellants have shown that the Examiner erred
in combining Bartholomew with Tatchell.

FINDINGS OF FACT
The following findings of fact (FF) supported by a preponderance of the
evidence primarily for emphasis:
1. Tatchell teaches that a check is made to determine if the incoming voice call
has a calling line ID (CLID), and if there is none or the CLID is blocked, the
agent answers the call and asks for name and telephone number (in Fig. 8a,
elements 89 and 90; col. 20, ll. 49-51).
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2. Bartholomew’414 teaches in Figure 4B at step S140, that a prompt is
transmitted to the caller to either enter a PIN number or speak a password
(col. 7, ll. 43-47).

PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If that burden is
met, then the burden shifts to the Appellants to overcome the prima facie case with
argument and/or evidence. Id. The Supreme Court, citing In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006), stated that “‘ [r]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).

ANALYSIS
Regarding the rejection of claims 57-59
1. Does Tatchell teach the limitation of “transmitting a request for audible
caller identification information?”

Tatchell teaches that a check is made to determine if the incoming voice call
has a calling line ID (CLID), and if there is none or the CLID is blocked, the agent
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(i.e., personal agent processor) answers the call and asks for name and telephone
number (FF 1).
Thus, Tatchell teaches the limitation of “transmitting a request for audible
caller identification information.” Accordingly, we are not persuaded by
Appellants’ argument (App. Br. 8), that Figure 8b does not disclose the limitation
of “transmitting a request for audible caller identification information” because the
Examiner relied on the embodiment of Figure 8a.

2. Have Appellants shown that the Examiner erred in combining
Bartholomew with Tatchell?

Bartholomew teaches in Figure 4B at step S140, that a prompt is transmitted
to the caller to either enter a PIN number or speak a password (FF 2). While
Bartholomew does teach an audible caller identification (i.e., “speak a password”
(emphasis added)), nonetheless the Examiner introduces Tatchell for the explicit
teaching of “request for name and phone number” to ultimately replace the
“request for PIN” in Bartholomew to provide the called party with audible identity
of the caller (Ans. 14). The Examiner articulated that Tatchell’s teaching would
improve the call screening process of Bartholomew by enabling the calling party,
with blocked caller ID or with unavailable caller ID information, to effectively and
selectively identify him or herself to the destination party (Ans. 14). Thus, the
Examiner appropriately articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. See KSR, 550 U.S. at 418.
For the foregoing reasons, Appellants have not shown error in the
Examiner’s finding that Tatchell teaches the limitation of “transmitting a request
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for audible caller identification information,” and the Examiner appropriately
combined Bartholomew with Tatchell. Thus, we sustain the rejection of claim 57
and claims 58-59, which fall with claim 57.

Regarding the rejection of claims 60-66 and 68-93
Regarding the obviousness rejections of claims 60-66 and 68-93 over the
additional references of Bartholomew’119 and Jones, we find that Appellants have
not persuasively rebutted the Examiner’s prima facie case of obviousness for these
claims, because they presented no further arguments with respect to these
rejections.
Once the Examiner has satisfied the burden of presenting a prima facie case
of obviousness, the burden then shifts to Appellants to present evidence and/or
arguments that persuasively rebut the Examiner's prima facie case. See Oetiker,
977 F.2d at 1445. Since Appellants did not particularly point out errors in the
Examiner’s reasoning to persuasively rebut the Examiner's prima facie case of
obviousness, the rejections are therefore sustained.

CONCLUSION
Under 35 U.S.C. § 103, Appellants have not shown that the Examiner erred
by finding that Tatchell teaches the limitation of “transmitting a request for audible
caller identification information,” and the Examiner appropriately combined
Bartholomew with Tatchell.

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ORDER
The decision of the Examiner to reject claims 57-66 and 68-93 is
affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD

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