Ex Parte Merchant

Board of Patent Appeals and Interferences

Mar 23, 2010

10953022 (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AMYN MERCHANT

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Appeal 2009-001509
Application 10/953,022
Technology Center 2400
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Decided: March 23, 2010
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Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants invoke our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 8, 10-21, 23-35, 37-49, and 51-61. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellant claims a telecommunication system and method for a
calling party to send an electronic mail message identifying the telephone
numbers for the calling party and also a called party, so that a first call leg to
the called party number can be connected and a second call leg to the calling
party number can be connected. The pair of connected call legs is bridged to
establish a call from the called to the calling party numbers, i.e., a reverse
call origination service.1 Claim 8 is illustrative:
8. A method for supporting a reverse call origination service, the
method comprising:

establishing a first call leg with a called party based on a telephone
number of the called party;
establishing a second call leg with a calling party based on a telephone
number of the calling party, wherein the called party telephone
number and the calling party telephone number are determined from a
message forwarded by the calling party over a data network; and

bridging the call legs to establish a call between the calling party and
the called party,

wherein the message is an electronic mail message.

1 See generally Spec. 13:8-11, 13-17; 15:1-8, 13, 14; Fig. 1.
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The Examiner relies on the following prior art references to show
unpatentability:
Hsu US 5,661,790 Aug. 26, 1997
Jonas US 2001/0040885 A1 Nov. 15, 2001
Zwick US 6,377,576 B1 Apr. 23, 2002

1. Claims 8, 13, 14, 16-21, 26, 27, 29-35, 40, 41, 43-49, 54, 55, and 57-
61 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Zwick and Hsu (Ans. 3, 4).2
2. Claims 10-12, 15, 23-25, 28, 37-39, 42, 51-53, and 56 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Zwick, Hsu, and Jonas
(Ans. 5).
We refer to the Briefs (Appeal Brief filed Nov. 29, 2007, and Reply
Brief filed Mar. 18, 2008) and the Answer (mailed Mar. 10, 2008) for their
respective details. Only those arguments actually made by Appellant have
been considered. Arguments not made in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

2 Claims 21, 26, 27, 32, and 33 are reported in the final action mailed June 1,
2007, ¶ 2, as being anticipated by Zwick under 35 U.S.C. § 102(e). This
anticipation rejection is not continued in the mailed Examiner’s Answer
where these claims are reported rejected under § 103(a) as obvious over
Zwick and Hsu (Ans. 3, 4).
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Appellant’s Arguments
Appellant, without separate argument directed to any claim,
collectively argues grouped claims 8, 13, 14, 16-21, 26, 27, 29-35, 40, 41,
43-49, 54, 55, and 57-61 (App. Br. 5-9; Reply Br. 2-5). Accordingly, we
select independent claim 8 as representative. See 37 C.F.R. § 41.37
(c)(1)(vii).
Appellant asserts that the cited obviousness references fail to teach or
suggest “an electronic mail message for the purpose of establishing a call
connection between a called party telephone number and a calling party
telephone number” (App. Br. 9).

ISSUE

With respect to the 35 U.S.C. § 103(a) rejection of representative
claim 8, does the combination of Zwick and Hsu teach or suggest the
claimed reverse telephone call origination service by determining called and
calling party telephone numbers from an electronic mail message forwarded
by the calling party over a data network?

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence:
1. Zwick describes a communications system and method for using a
computer sent request on a network separate from a telephone
network to instruct a switched telephone network (e.g., a Public
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Switched Telephone Network (PSTN)) to make a call (Abstract; col.
1, l. 61-col. 2, l. 10; Fig. 1).
2. Zwick discloses that either the calling or called party can be
telephoned first, i.e., a reverse call connection can be made, and that
the computer communicated request from a caller can include both
calling and called terminal telephone numbers for instructing a
telephone switch to make a connection (col. 4, ll. 24-29; col. 7, l. 55-
col. 8, l. 23).
3. Hsu describes a telecommunications system and method whereby a
subscriber to a telecommunications network that restricts outgoing
international calls can order a call back connection. The subscribing
caller can order a call back connection using an Intelligent Peripheral
(IP) network implemented with Transmission Control
Protocol/Internet Protocol (TCP/IP) (col. 2, ll. 19-30).
4. Hsu discloses that the IP network includes resources for e-mail (col. 4,
l. 58-col.5, l. 2).

PRINCIPLES OF LAW
Analysis of claim rejections begins with a determination of claim
scope. We determine claim scope not solely on the basis of claim language,
but also on giving claims their broadest reasonable construction in light of
the specification as it would be interpreted by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). See
also Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004) (“Though understanding the claim language may be aided by
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explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim.”).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006); In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Such
suggestion arises, the Supreme Court explains:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. AG
Pro, Inc., 425 U.S. 273 (1976)] and Anderson's-Black Rock[,
Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).

ANALYSIS
Claims 8, 13, 14, 16-21, 26, 27, 29-35, 40, 41, 43-49, 54, 55, and 57-61
Based on the record, we agree with the Examiner in rejecting
representative claim 8 as obvious over Zwick and Hsu.
First, Appellant asserts that the references are not analogous art to the
claimed invention (App. Br. 6, 7; Reply Br. 2, 3). Appellant argues that Hsu
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is not pertinent to the problem facing the inventor and, consequently, is not
analogous art because Hsu’s disclosed “call back” service (see FF 3) is “not
for ‘reverse call origination’ wherein a call is made to originate from the
lower rate country” (Reply Br. 3). Claim 8 nowhere covers country rates,
and, therefore, without being a part of a pending claim, any Specification
disclosures concerning country rates are not to be imported into a claim.
Superguide Corp., 358 F.3d at 875. Accordingly, based on the record (FF 1-
4), we agree with the Examiner’s position that Hsu is analogous art, and we
are not persuaded by Appellant’s assertion that the references are not
analogous art.
Second, Appellant asserts that Hsu fails to teach use of an electronic
mail message (App. Br. 7-9; Reply Br. 3, 4). Acknowledging that use of
“electronic mail messages, per se, were known” (Reply Br. 4), Appellant
argues that an “electronic mail message must be used in a particular manner,
e.g., in claim 8, it must be used to determine a called party telephone number
and a calling party telephone number and the electronic mail message must
be forwarded by the calling party over a data network, and any electronic
mail message that may be suggested by Hsu clearly does not meet these
claimed criteria” (id.).
The Examiner and we find Zwick teaches a calling party sending a
computer message including called and calling party telephone numbers
(Ans. 3, 4; FF 1, 2), but the Examiner also finds that “Zwick fails to disclose
the message is an electronic message” (Ans. 4). Claim 8 recites that “the
message is an electronic mail message,” and the Examiner turns to Hsu and
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finds the reference teaches use of “messages such as request for initiating a
call back . . . [that is an] electronic message such as Email because [Hsu’s]
electronic message is sending and processing by computer (Email)” (Ans.
7). We concur with this Examiner finding from Hsu (FF 3, 4).
Consequently, the record establishes the Examiner as properly finding
Zwick teaching a calling party sending a computer message conveying
claimed telephone number information, and Hsu teaching use of an IP
network and e-mail for such a computer communication (Ans. 3, 4, 7; see FF
1-4).
By singly attacking Hsu for not teaching or suggesting claimed
communicated information, Appellant has not addressed the Examiner’s
Zwick and Hsu combination rejection under § 103(a), and, as such, cannot
show nonobviousness. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (Individually attacking references that are combined cannot
show nonobviousness.).
Third, Appellant asserts that even though the appealed claims are
silent as to Public Switched Telephone Network (PSTN), Hsu, in not
teaching connection to a PSTN, deprives a skilled artisan of any “reason
whatsoever to modify Zwick et al. . . . as to provide for an electronic mail
message to activate [Zwick] switch 101 for connection to [Zwick] PSTN
110” (Reply Br. 4).
Appellant does not dispute the record concerning Zwick teaching
connection to a PSTN (id.). Therefore, as the Supreme Court has explained
“if a technique [, e.g., Hsu’s electronic mail message,] has been used to
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improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417 (citations omitted). Appellant has submitted neither evidence
nor argument concerning the skill level required to modify a Zwick
computer communication and PSTN to use a Hsu e-mail, i.e., an electronic
mail message. Consequently, we are not persuaded by Appellant that a
skilled artisan would be deprived of a reason to modify Zwick with a Hsu
e-mail.
For the foregoing reasons, we will sustain the rejection of
representative claim 8, and also the rejection of claims 13, 14, 16-21, 26, 27,
29-35, 40, 41, 43-49, 54, 55, and 57-61 that fall with claim 8.
Claims 10-12, 15, 23-25, 28, 37-39, 42, 51-53, and 56
Appellant groups these claims that are rejected under § 103(a) as
being unpatentable over Zwick, Hsu, and Jonas. Exclusively relying on
arguments asserted as to deficiencies of Zwick and Hsu, Appellant further
asserts Jonas fails to “provide for the electronic mail message, as claimed”
(App. Br. 9). Since we agree with the Examiner’s finding an electronic mail
message taught from the combination of Zwick and Hsu, we also find no
error in the Examiner’s obviousness rejection of these claims, and we will
sustain the rejection of these claims.

CONCLUSION
Based on findings of facts and the analysis above, we conclude with
respect to the 35 U.S.C. § 103(a) rejection of representative claim 8, that the
combination of Zwick and Hsu teaches or suggests the claimed reverse
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telephone call origination service by determining called and calling party
telephone numbers from an electronic mail message forwarded by the
calling party over a data network.

ORDER
The Examiner’s decision rejecting claims 8, 10-21, 23-35, 37-49, and
51-61 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

KIS

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