Ex Parte Peng et al

Patent Trial and Appeal Board

Dec 14, 2016

12006587 (P.T.A.B. Dec. 14, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
PA4522US 6388
EXAMINER
PERSAUD, AMARNAUTH G
ART UNIT PAPER NUMBER
2477
MAIL DATE DELIVERY MODE
12/006,587 01/02/2008
125504 7590 12/14/2016
Carr & Ferrell LLP (Ooma)
120 Constitution Drive
Menlo Park, CA 94025
Dennis Peng
12/14/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS PENG, JEFF PECK, and TOBY FARRAND
Appeal 2016-001218
Application 12/006,587
Technology Center 2400
Before JOSEPH L. DIXON, KRISTEN L. DROESCH, and
NATHAN A. ENGELS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001218
Application 12/006,587
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3—7, 10-13, and 16—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The claims are directed to an enforcement of privacy in a Voice over
Internet Protocol (VoIP) system. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for providing privacy in a VoIP system,
comprising:
receiving an incoming call directed to a user;
determining a caller identifier associated with the
incoming call;
identifying a category associated with the incoming call,
the identifying being based at least in part on whether the caller
identifier is included in a black list, the black list being associated
with the user;
maintaining the black list including adding at least
selected caller identifiers from a community list to the black list,
the community list including caller identifiers for which at least
one other user has selected call treatments;
accessing a call treatment database to determine at least
one call treatment associated with the category; and
applying the at least one call treatment to the incoming
call, the applying the at least one call treatment comprising
providing the caller with at least one audible personal challenge
to verily the caller, the personal challenge comprising a question
about the user.
2
Appeal 2016-001218
Application 12/006,587
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yun et al.
Owen et al.
Kim
Wilson
Chiou et al.
US 2007/0037560 Al
US 2007/0118750 Al
US 2008/0075248 Al
US 2008/0168145 Al
US 2012/0284778 Al
Feb. 15,2007
May 24, 2007
Mar. 27, 2008
July 10, 2008
Nov. 8, 2012
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3—7, 10-13, and 17—24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kim in view of Owen further in view of
Wilson further in view of Chiou.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kim in view of Owen further in view of Wilson further in
view of Chiou further in view of Yun.
ANALYSIS
With respect to independent claims 1,17, and 22, Appellants present
arguments to the claims as a group. As a result, we select independent claim
1 as the representative claim for the group and will address Appellants’
arguments thereto. Arguments not made are considered waived. See
37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend the Examiner acknowledges that the Kim, Owen,
and Wilson references do not teach “applying the at least one call treatment
to the incoming call, the applying the at least one call treatment comprising
providing the caller with at least one audible personal challenge to verify the
3
Appeal 2016-001218
Application 12/006,587
caller, the personal challenge comprising a question about the user,” as
required by independent claim 1. App. Br. 8 (emphasis omitted). According
to Appellants, the “user” of claim 1 is distinct and different from the caller
and the “applying” limitation therefore requires that “the caller is asked a
question about someone else.” App. Br. 9. Appellants argue the Chiou
reference merely discloses prompting a caller to answer a challenge question
about the caller him or herself rather than prompting a caller with a
challenge question about the claimed “user” of claim 1 the callee rather than
the caller. App. Br. 8—10; see also Reply Br. 3^4.
The Examiner recognizes the difference between the claim language
and the specific teachings of the Chiou reference, and the Examiner
maintains:
the limitation “the personal challenge comprising a question
about the user” can broadly be interpreted to have multiple
interpretations. The claim is silent on the definition of the term
“user”. Is the user a person, a device (e.g. a PBX) or a network
(such as a private network)? Is the user an end user (the callee),
an end device (terminating device) or a terminating network? Is
the user an intermediate person (such as a receptionist that
connects a call), an intermediate device (e.g., a PBX) or an
intermediate network (e.g., a packet network)?
Ans. 3 (emphasis omitted). The Examiner further finds:
the claim uses the language “an incoming call directed to a user”.
Does directed to a user mean that the call is answered by the user?
If the user is interpreted to be a network, then the call is directed
to a network. Thus when broadly interpreted as discussed above,
the limitation “question about a user” also ....
Ans. 3^4. The Examiner consequently relies upon the broadest reasonable
interpretation of the claim language in light of the Examiner’s questions and
the “the examiner equates this to Chiou’s teaching of submitting responses
4
Appeal 2016-001218
Application 12/006,587
to challenge questions about the user (e.g. employee number) for
authenticating the user.” Ans. 4—5 (emphasis omitted) (citing Chiou 135).
Finally, the Examiner concludes:
Therefore[, i]t would have been obvious to one of ordinary
skill in the art at the time of the invention was made to modify
the combined Kim-Owen-Wilson system to include the feature
“the applying the at least one call treatment comprising providing
the caller with at least one audible personal challenge to verily
the caller, the personal challenge comprising a question about the
user”, as disclosed by Chiou because it enables authentication of
a user at two different levels (See Chiou: [0005]).
Ans. 5 (emphasis omitted).
We agree with the Examiner’s conclusion. As cited by the
Examiner, Chiou teaches the well-known use of challenge questions
and audio/biometric data challenges to authenticate a user/caller. Final
Act. 3—9; Ans. 3—5 (citing Chiou 1 35). Further, Chiou teaches, “[f]or
example, if the voice challenge is an answer to a challenge question, it
can be used to authenticate the user based on a voiceprint and based on
the response content.” Chiou 1 5 (emphasis added); see Ans. 5 (citing
Chiou 1 5); cf. Spec. 140 (describing analyzing responses to challenge
questions based on voice recognition and/or based on the content of the
response).
Appellants have not disputed any of the proffered teachings of the
Kim, Owens, and Wilson references, but merely contest the teachings of the
Chiou reference. Appellants have not, though, challenged that the Chiou
reference teaches the well-known use of challenge questions as a security
measure to identify the caller/user. See generally App. Br. 8—13; Reply Br.
3^4.
5
Appeal 2016-001218
Application 12/006,587
Indeed, instead of rebutting the Examiner’s findings that the prior art
teaches or suggests each step of method claim 1, Appellants seek to
distinguish the prior art based on the informational content of the challenge
question—who or what the question is “about.” We agree with the
Examiner’s findings and conclusion that each of the active steps recited in
the method of independent claim 1 are taught and suggested by the prior art
references in combination as proffered by the Examiner in the rejection.
Final Act. 2—9. While the content of the audible challenge question
disclosed in the Chiou reference is not the same as the content of the audible
question recited in independent claim 1, we find that the content of the
question does not change any function in the method of independent claim 1.
An invention cannot distinguish the prior art based on the informational
content of a claim element absent a showing that the information has a new
and unobvious functional relationship to the substrate. In re DiStefano, 808
F.3d. 845,850 (Fed. Cir. 2015).
Additionally, we find the content of challenge question and the result
of the question is not used to perform any additional function in the method
of independent claim 1 than that taught and suggested by the Chiou
reference. Independent claim 1 merely recites “applying the at least one call
treatment to the incoming call, the applying the at least one call treatment
comprising providing the caller with at least one audible personal challenge
to verify the caller, the personal challenge comprising a question about the
user.”1 Furthermore, we find the Chiou reference performs the same
1 While Appellants and the Examiner argue over the specific question, we
further find the claim term “audible” is not found in the originally filed
Specification, but paragraph 40 mentions “[a] limited vocabulary required to
answer these personal challenges may lend itself to speaker independent
6
Appeal 2016-001218
Application 12/006,587
function to verity the caller, but with the use of a different challenge
question content. We find no patentable distinction between challenging a
caller with a question about the name of a cat, a vacation, or any other
personally identifiable information. See Spec. 140 (listing as example
challenge questions “What is my cat’s name?” and “What European country
did I visit last summer?”).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007).
Appellants do not present adequate evidence that the resulting arrangements
were “uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418-19).
Accordingly, we agree with the Examiner that applying the known
technique of asking a challenge question to a caller as taught by the Chiou
reference in the combination would have predictably used prior art elements
according to their established functions—an obvious improvement. See
KSR, 550 U.S. at 417.
In addition, we note an invention cannot distinguish the prior art based
on the informational content of a claim element absent a showing that the
information has a new and unobvious functional relationship to the substrate.
In re DiStefano, 808 F.3d. 845, 850 (Fed. Cir. 2015); Ex parte Curry, 84
voice recognition.” We leave it to the Examiner to further evaluate this
issue.
7
Appeal 2016-001218
Application 12/006,587
USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No. 06-1003 (Fed.
Cir. 2006) (Rule 36). Here, the type of “question about the user” is
informational content as it is intended to communicate certain data. See
DiStefano, 808 F.3d. at 850 (“matter claimed for what it communicates” is
subject to the “printed matter” doctrine).
Further, the type of “question about the user” has no functional
relationship to the claimed system or method. See Ex parte Mathias, 84
USPQ2d 1276, 1279 (BPAI 2005) (informative) (holding a claim element
directed to a broadcast of a particular type of event (a “sporting event”)
could not distinguish prior art that teaches equivalent broadcasts of other
types of events), aff’d, 191 F. App’x 959 (Fed. Cir. 2006) (Rule 36). To
hold otherwise would allow indefinite patenting of methods for
authenticating the users based upon a myriad of different questions that do
not change the functionality of the underlying method. See King Pharms.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale
behind this line of cases is preventing the indefinite patenting of known
products by the simple inclusion of novel, yet functionally unrelated
limitations.”).
Moreover, Appellants have not identified how the content of the
question changes any of the claimed steps in the method of representative
independent claim 1. Therefore, Appellants’ argument does not show error
in the Examiner’s fact finding and conclusion of obviousness of
representative independent claim 1. Because Appellants have not set forth
separate arguments for patentability of any other claims, we group claims 3—
7, 10—13, and 16—24 as falling with representative independent claim in 1.
8
Appeal 2016-001218
Application 12/006,587
CONCLUSION
The Examiner did not err in rejecting claims 1, 3—7, 10—13, and 16—24
based upon obviousness.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1,3-7, 10-13, and 16-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9