Ex Parte Manning et al

Board of Patent Appeals and Interferences

Jul 16, 2003

09235529 (B.P.A.I. Jul. 16, 2003)

1 Application for patent filed January 22, 1999, entitled
"Parallel-Connected Dialing Signal Transmission Inhibiting Device
for Data Transfer Over a Telephone Link," which is a continuation
of Application 08/542,661, filed October 13, 1995, now U.S.
patent 5,898,756, issued April 27, 1999.
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
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Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte FRANK B. MANNING
and WILLIAM HUME VANCE

Appeal No. 2001-2270
Application 09/235,5291

ON BRIEF

Before JERRY SMITH, BARRETT, and RUGGIERO, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from
the final rejection of claims 1-6 and 9-12. Claims 7 and 8 are
objected to as being dependent upon rejected base claims.
Claims 13-18 are allowed.
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Application 09/235,529
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We affirm-in-part.
BACKGROUND
The invention relates to a parallel-connected device for
intercepting dialing signals across the tip and ring conductors
of a telephone line by switching in a load that attenuates the
dialing signals by at least 30 dB.
Claim 1 is reproduced below.
1. A parallel-connected dialing signal detection and
transmission-inhibiting device, comprising
a detector for identifying dual-tone multifrequency
dialing signals across the tip and ring conductors of a
telephone link;
a load that connects across the tip and ring conductors
to attenuate the dialing signals by at least 30 dB; and
a controller for controlling a call and the connection
of the load in response to the identified dialing signals.
The examiner relies on the following references:
Gaukel et al. (Gaukel) 5,200,995 April 6, 1993
Stevens et al. (Stevens) 5,590,182 December 31, 1996
(filed June 22, 1994)
Eaton 5,710,808 January 20, 1998
(§ 102(e) date August 11, 1995)
Claims 1-5 and 9-12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Stevens and Eaton.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stevens, Eaton, and Gaukel.
We refer to the final rejection (Paper No. 7) (pages
referred to as "FR__") and the examiner's answer (Paper No. 10)
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(pages referred to as "EA__") for a statement of the examiner's
rejection, and to the brief (Paper No. 9) (pages referred to as
"Br__") and reply brief (Paper No. 16) (pages referred to as
"RBr__") for a statement of appellants' arguments thereagainst.
OPINION
Grouping of claims
In the principal brief, appellants argued the following
groups of claims (Br4):
Group I: Claims 1, 3-6, 9, and 11
Group II: Claims 2 and 10
Group III: Claim 12
In the reply brief, appellants argues the separate
patentability of claim 6 (RBr9-10), which had not been argued in
the main brief. These arguments, presented for the first time in
the reply brief, are untimely and will not be considered. Cf.
Kaufman Company, Inc. v. Lantech, Inc., 807 F.2d 970, 973 n.*,
1 USPQ2d 1202, 1204 n.* (Fed. Cir. 1986); McBride v. Merrell Dow
and Pharmaceuticals, Inc., 800 F.2d 1208, 1210-11 (D.C. Cir.
1986) ("We generally will not entertain arguments omitted from an
appellant's opening brief and raised initially in his reply
brief. . . . Considering an argument advanced for the first time
in a reply brief, then, is not only unfair to an appellee, . . .
but also entails the risk of an improvident or ill-advised
opinion on the legal issues tendered."). While 37 CFR
§ 1.192(c)(7) (1999) usually requires each separate ground of
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rejection to be addressed, see In re McDaniel, 293 F.3d 1379,
1384-85, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002), the rule only
applies to grounds of rejection which an applicant contests.
Appellants did not contest the rejection of claim 6 in the
principal brief either in the grouping of claims, as required by
§ 1.192(c)(7), or in the arguments, as required by
§ 1.192(c)(8)(iv). Since claim 6 is a dependent claim, it can be
assumed that appellants considered the patentability to stand or
fall with claim 1. Examiners are not permitted to file a
supplemental answer as of right, § 1.193(b)(1); thus, it would be
unfair to let in new arguments in the reply brief. Accordingly,
this opinion addresses only the three groups in the main brief.
Group I: Claims 1, 3-6, 9, and 11
Claim 1 is representative of Group I. The sole difference
between Steven and the subject matter of claim 1 is that Stevens
does not disclose attenuating the dialing signals by "at least
30 dB." Stevens discloses an attenuator device, AC shunt 13 in
Fig. 2, connected in parallel (in shunt) across the tip and ring
conductors of a telephone link where "[t]he attenuator attenuates
the signals on the telephone line so that the amplitude of the
signals on the telephone line is below a threshold of the central
office, so that the central office does not recognize the signals
as representing a telephone number entered by the user" (col. 2,
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lines 41-45). However, Stevens does not disclose that the
attenuation should be "at least 30 dB." Stevens discloses that
the AC (alternating current, also abbreviated "a.c.") shunt may
include a low impedance (less than 1/3 the impedance of the
telephone device) across the tip-ring wires (col. 6, lines 8-13).
Appellants state that this corresponds to an attenuation of only
8 dB (Br6), although no explanation of how this is calculated or
the effect of "less than 1/3" is presented. Stevens discloses
that an alternative, or additional, way to ensure that the
central office does not detect the DTMF codes is to jam the DTMF
codes by introducing an interfering tone (col. 2, lines 30-34;
col. 6, lines 20-33).
The attenuator in Stevens serves the same purpose as
appellants' claimed a.c. load, i.e., the load is chosen "such
that DTMF signals, for example, generated by telephones 30 or 32
are attenuated to a level at which the central office 5 will not
recognize the tones as valid" (spec. at 8, lines 1-3).
Appellants discuss that both serial-connected and
parallel-connected call function devices were known in the prior
art (spec. at 2, lines 3-18). However, serial-connected devices
often required an experienced technician for installation to work
with several telephones (spec. at 2, lines 3-8). Known parallel-
connected devices placed an a.c. load in parallel across the tip
and ring conductors so that dialing signals generated by the
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telephones are not detected by the central office, but these
signals were often detected by variability in central office
sensitivity, telephone network attenuation, and dialing signal
strength (spec. at 2, line 20 to spec. at 3, line 6). It is
stated (Br4): "The research of the present inventors into the
Bellcore specifications and the real characteristics of central
office receivers has led to the conclusion that much more
attenuation is needed. As a result, the present claims require a
substantially higher attenuation of 30 dB or higher."
Eaton discloses a telephone dialing code processor for
intercepting outgoing DTMF codes (i.e., preventing them being
received by the central office) and then either redialing a
modified sequence of telephone numbers or barring the call
(col. 3, line 63 to col. 4, line 3). The device is located in
series with one of the telephone line conductors (Fig. 2; col. 5,
lines 51-53). Eaton disclose that in the mute (interception)
mode the loss is typically 30 dB (col. 9, lines 3-5).
The examiner concludes (FR2-3; EA5):
It would have been obvious to one of ordinary skill in
the art at the time of [sic] the invention was made
to utilize the teachings of Eaton (e.g., choosing an
impedance or an AC load that can attenuate the tone signals
to a certain threshold level, e.g., 30-38 dB) so that the
central office does not recognize the outgoing dialing
signals (e.g., the DTMF tones), and a conventional telephone
system can be economically used as an intercom system.
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We agree that Eaton's teaching of an attenuation between the
telephone and the central office of 30 dB, albeit in a series
device, would have suggested to the artisan modifying Stevens'
parallel attenuator to provide an attenuation of 30 dB between
the telephone and the central office. The important fact is the
attenuation of DTMF tones between the telephone and central
office, not the kind of connection (serial or parallel) which
provides the attenuation. In addition, even without Eaton, the
"at least 30 dB" limitation appears to be an obvious limitation
which is determinable by routine investigation by one of ordinary
skill in the art in view of the guidance provided by Stevens that
the attenuation should be sufficient "so that the amplitude of
the signals on the telephone line is below a threshold of the
central office, so that the central office does not recognize the
signals as representing a telephone number entered by the user"
(col. 2, lines 42-45). Appellants note that "[t]he signaling
chapter of 'BOC Notes on the LEC Network - 1990' states that a
central office DTMF receiver should register DTMF digits with a
power per frequency of -25 to 0 dBm" (spec. at 9, lines 2-4),
which teaches that the attenuation should be greater than 25 dB;
"[t]he Mitel MT8870D integrated DTMF receivers are claimed to be
'central office quality'; and they accept a DTMF low group or
high group tone of -29 to +1 dBm" (spec. at 9, lines 9-10), which
teaches that the attenuation should be greater that 29 dB (e.g.,
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30 dB); and "AT&T central office switches typically reject DTMF
tones less than -38.2 dBm per tone" (spec. at 9, lines 17-18),
which teaches that the attenuation should be greater than
38.2 dB. Thus, if one or ordinary skill in the art wanted to
determine how much attenuation would be required so that the
central office would not detect the DTMF signals, this knowledge
appears to be readily available in the art. We conclude that the
examiner has established a prima facie case of obviousness.
Appellants argue that the Stevens system does not provide
adequate attenuation (Br6).
The examiner does not rely solely on Stevens. However,
Stevens expressly teaches that the attenuation should be enough
so that the central office will not detect the DTMF signals. It
was evidently known in the art that an attenuation of at least
30 dB or 38.2 dB was required to meet this condition. In
addition, Eaton discloses that the DTMF tones should be
attenuated by 30 dB, which suggests that the attenuation in
Stevens also be 30 dB.
Appellants argue that the examiner's rejection states (at
FR6) that Stevens can be a parallel or series device while Eaton
teaches a series device and since both references teach the use
of a series device, it would have been obvious to utilize the
30 dB teachings of Eaton in Stevens (Br7). It is argued that
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this reasoning would yield a series device, which is contrary to
the parallel limitations of the claims (Br8).
While the examiner's reasoning could be better stated, we
interpret the examiner's rejection to mean that it would have
been obvious to modify Stevens' parallel attenuator to provide an
attenuation of 30 dB in view of Eaton's teaching of an
attenuation between the telephone and the central office of
30 dB, albeit in a series device. The examiner's reference to
both Stevens and Eaton teaching serial devices appears to be only
an attempt to show some commonality between the references rather
than a statement that the device should be serial.
Appellants argue that Stevens requires the use of a waveform
generator circuit to generate an interference signal so that the
central office does not detect DTMF dialing signals, and the
attenuator alone is not sufficient to block dialing signals so
that they are not detected (RBr3-4). It is argued that the
teaching of using an interference signal teaches away from the
present invention (RBr4).
The waveform generator in Stevens is an alternative or
additional means to prevent DTMF signals from being recognized by
the central office and is not required. "A reference may be said
to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from
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the path that was taken by the applicant." In re Gurley,
27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994). The
alternative or additional use of a waveform generator does not
constitute a teaching away from using the attenuator alone to
block the DTMF tones. The waveform generator teaching does not
contradict Stevens' teaching that the DTMF signals should be
attenuated so that they are not detected by the central office.
Appellants argue that the attenuation of dialing signals by
more than 30 dB by the present invention requires that highly
attenuated DTMF dialing signals be detected by the transmission-
inhibiting device of the present invention even though such
signals cannot be detected at the central office. It is argued
that this engineering task of processing substantially attenuated
dialing signals is not addressed by Stevens at all, which "is
presumably why Stevens teaches away from the techniques as
recited by the present invention" (RBr5). It is argued that
"Applicants disclose a method of detecting the attenuated dialing
signals even though they are attenuated by greater the [sic,
than] 30dB" (RBr6) and it is the ability to detect these
attenuated dialing signals as in the claimed invention that
enables the user to connect it across any point in the telephone
line so that it can be used for multiple parallel devices (RBr6).
Appellants argue that if Eaton were changed to a parallel load,
the dialing signals could no longer be detected by the decoder
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chip shown in Fig. 9 (RBr8). It is argued that the examiner has
not cited a reference in which any dialing signals that are
attenuated by more than 30 dB are detected by any type of
detection device (RBr9).
While the power to the central office may be attenuated by
30 dB, as shown in appellants' sketch at RBr6, it does not appear
that the voltage across the parallel attenuator is changed.
Therefore, appellants have not shown that a special voltage
detector is required or that one of ordinary skill in the art
would not know how to detect the DTMF signals without undue
experimentation. Moreover, it does not appear from appellants'
disclosure that the invention is the circuitry for detecting an
attenuated signal. No special detection circuitry is claimed.
Appellants argue that the references cannot be readily
combined without the inventive modifications as recognized by the
applicants, nor is there any indication in the reference that
they should be combined (RBr8).
"[T]he test [for obviousness] is what the combined teachings
of the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). While Eaton does not expressly say that a parallel
attenuator should attenuate by 30 dB, one of ordinary skill in
the art would readily appreciate that the 30 dB attenuation
between the telephone and central office for a serial device in
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Eaton could be used in a parallel attenuator such as Stevens for
the same purpose of preventing detection of DTMF tones by the
central office.
For the reasons stated above, we conclude that the examiner
has established a prima facie case of obviousness which
appellants have not shown to be in error. Accordingly, the
rejection of claims 1, 3-6, 9, and 11 is sustained.
Group II: Claims 2 and 10
Representative claim 2 recites that the load attenuates the
dialing signals by "at least 38 dB."
Appellants argue that neither of the references suggests
this level of attenuation and there is no evidence why such a
level of attenuation would be desirable (Br8).
The examiner concludes that 38 dB would have been obvious
because one of ordinary skill in the art, knowing from Stevens
that the attenuation should be selected to prevent detection of
the DTMF tones by the central office, is presumed to have had
sufficient skill to determine a specific value by routine
experimentation (EA9), citing In re Boesch, 617 F.2d 272, 276,
205 USPQ 215, 219 (CCPA 1980) ("[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily
within the skill of the art."); In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955) ("[W]here the general conditions of
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a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine
experimentation.").
Appellants argue that neither reference discloses a method
of detecting such attenuated dialing signals while inhibiting
their transmission so that they are not detected at a central
office (RBr9; RBr10).
We agree with the examiner that one of ordinary skill in the
art that the limitation of "at least 38 dB" would have been
determinable by routine investigation in view of the guidance
provided by Stevens and, hence, obvious. Stevens informs one
skilled in the art that the attenuation should be sufficient "so
that the amplitude of the signals on the telephone line is below
a threshold of the central office, so that the central office
does not recognize the signals as representing a telephone number
entered by the user" (col. 2, lines 42-45). Thus, attenuation is
taught to be a result effective variable for preventing detection
of tones by the central office. Appellants note that the "AT&T
central office switches typically reject DTMF tones less than
-38.2 dBm per tone" (spec. at 9, lines 17-18). One of ordinary
skill in the art, seeking to determine the level of attenuation
which would prevent detection by the central office would have
been able to determine this information with routine
investigation. We conclude that the examiner has established a
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prima facie case of obviousness which has not been shown to be in
error. The rejection of claims 2 and 10 is sustained.
Group III: Claim 12
Claim 12 depends on claim 9 and recites "further comprising
adjusting a level of the dialing signals received by a detector
in response to attenuation." It appears that this limitation
refers to the interfacing or equalizing network 216 which is
designed to ensure that the voltage amplitude of a received DTMF
signal is substantially the same whether or not the relay SW1 is
in an open or closed condition (e.g., spec. at 20, lines 13-15).
As noted by appellants (Br8), the examiner does not address
claim 12 in the final rejection. In the examiner's answer, the
examiner states that "Stevens in view of Eaton clearly teach the
use of AC loads that attenuate and/or adjust the level of dialing
signals down to a certain level (e.g., from 3 dB to 30 dB) in
response to the attenuation" (EA9). Appellants respond that
claim 12 recites adjustment in response to the attenuation, not
the attenuation itself, and that no other adjustment of the
signal in response to the attenuation is taught in any of the
cited references (RBr11).
We agree with appellants that attenuation alone does not
meet the limitations of claim 12. The examiner has not shown how
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the combination of references would provide an adjustment in the
level of the DTMF signals. Accordingly, we conclude that the
examiner has failed to establish a prima facie case of
obviousness. The rejection of claim 12 is reversed.
CONCLUSION
The rejections of claims 1-6 and 9-11 are sustained. The
rejection of claim 12 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
Appeal No. 2001-2270
Application 09/235,529
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