Ex Parte Pershan et al

Patent Trial and Appeal Board

Mar 11, 2013

11215247 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BARRY PAUL PERSHAN, ELIZABETH A.
GEDDES, and KEVIN V. BOHN
____________________

Appeal 2010-009863
Application 11/215,247
Technology Center 2600
____________________

Before KALYAN K. DESHPANDE, BRYAN F. MOORE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23-42. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

According to Appellants the claims are directed to methods and
apparatus for authenticating and authorizing people to register information
corresponding to a telephone number, e.g., in an ENUM database. A trigger
is set on an ENUM registration line causing LIDB (line information
database) information corresponding to the calling party number to be
retrieved. The retrieved information, e.g. name, address and/or phone
number, is supplied to an ENUM registration service which returns a
password to be used when updating or supplying ENUM registration
information corresponding to the phone number from which the registration
call is placed at some future time, e.g. via the Internet. Abst. Claim 23,
reproduced below, is illustrative of the claimed subject matter:
23: A method comprising:
operating a first network element to detect a
communication including an initiating party number and
directed to a network number corresponding to a service
provider;
retrieving from a first database of service subscriber
information, information corresponding to said initiating party
number;
supplying at least some of the retrieved service
subscriber information to said service provider; and
operating a second network element to provide the
initiating party with a password to be used when obtaining
access to a service provided by said service provider, wherein
the service associates said initiating party number with an
Internet address.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Malik
Ueshima
Hyllander
US 6,188,757 B1
US 6,731,731 B1
US 7,065,199 B1
Feb. 13, 2001
May 4, 2004
Jun. 20, 2006

REJECTIONS
1

The Examiner rejected claims 23-42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Malik, Ueshima, and Hyllander. Ans. 3.

APPELLANTS’ CONTENTIONS
1) With respect to independent claim 23:
a) The “Password” Issue:
i) There is no motivation for incorporating a “password” into the
system disclosed by Malik. App. Br. 12. Inter alia, “there is no
teaching or suggestion in either [Malik or Ueshima] of the need to
identify an individual over and above the identification of the
calling line.” Id.
ii) “[T]here is . . . no teaching or suggestion in either [Malik or
Ueshima] as to how either or both systems would be modified to
accomplish this added functionality.” App. Br. 16.

1
Based on Appellants’ arguments, we will decide the appeal of claims 23-
26, 28, 32-34, and 42 based on claim 23, the appeal of claims 30 and 31
based on claim 30, the appeal of claims 35-37 and 40-41 based on claim 35
and claims 27, 29, 38 and 39 separately. See 37 C.F.R. § 41.37(c)(1)(vii).
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b) The “Internet” Issue:
i) “[T]here would be no reason to incorporate the Hyllander et al.
patent into either the Malik patent or the Ueshima patent.” App.
Br. 19.
ii) “Hyllander . . . doesn't teach or suggest assigning a new Internet
Address to the calling party [but, instead, to the contacted party].”
Id.
iii) “[N]one of the references teach or suggest how such an Internet
Address would be assigned to the caller in the Malik patent, either
alone or combined with the Ueshima patent.” Id at 20.
2) With respect to claims 27, 29, 30, 38, and 39, “[t]he Examiner does not
point to any teaching or suggestion in any of the references of
[highlighted language of the respective claims.]” App. Br. 20-24.
3) With respect to claim 35, the claim is patentable “[f]or at least the
reasons stated above in relation to claim 23.” App. Br. 23.

ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 10-24)
and Reply Brief (Reply 5-12) the issues presented on appeal are whether the
Examiner erred in combining the disclosures of Malik, Ueshima, and
Hyllander and whether the asserted combinations of references teaches or
suggests the invention as recited in the disputed claims.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
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We disagree with Appellants’ conclusions as to all rejections. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner. For
emphasis, we consider and highlight the following arguments seriatim as
they are presented in the Appeal Brief pages 10-24.

Claim 23: The “Password” Issue

In connection with contention 1(a)(i), Appellants argue there is no
motivation for incorporating a “password” into the system disclosed by
Malik since “there is no teaching or suggestion in either [Malik or Ueshima]
of the need to identify an individual over and above the identification of the
calling line.” App. Br. 12. That is, because “provided services in the Malik
patent are for the calling line, not any individual” (App. Br. 6), a person
using a particular line would be considered an authorized person such that it
would be of no benefit to issue a password to that person (App. Br. 7.) The
Examiner responds that providing an initiating party with a password to be
used when requesting a service would “enhance the system's efficiency by
providing the desired information to authorized individuals only. Providing a
password will ensure that only the authorized users can access or request
certain services or information.” Ans. 4.
We agree with the Examiner and find Appellants’ argument against
combining Malik and Ueshima unpersuasive. While Malik may initially
authorize a user based on receiving a call using a particular line, that does
not exclude issuance of a password to add a level of security as reasoned by
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the Examiner. We find that the Examiner has provided sufficient articulated
reasoning with rational underpinning to support the legal conclusion of
obviousness. Since Appellants have failed to provide sufficient evidence or
argument that the combination of Malik and Ueshima is improper, we find
Appellants’ contention 1(a)(i) to be unpersuasive of Examiner error.
In connection with contention 1(a)(ii), Appellants argue “there is . . .
no teaching or suggestion in either [Malik or Ueshima] as to how either or
both systems would be modified to accomplish this added functionality.”
App. Br. 16. Appellants further argue:
[s]ince the Malik patent doesn’t use passwords at all, and the
Ueshima patent only uses passwords to identify whatever party
happened to use the incoming line to the CTI, there is no help
from either reference as to why or how one would further
identify a particular individual utilizing the incoming line.
Id.
Appellants’ arguments are unpersuasive because they provide
insufficient evidence or analysis as to why a person of ordinary skill in the
art could not apply the teachings of Ueshima to modify the teachings of
Malik. Moreover, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). As such, “a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” Id. at 420.
Thus, in our view, a person having ordinary skill in the art would be readily
able to combine the teachings of Malik and Ueshima to arrive at the disputed
claim limitations.
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For the reasons discussed supra, we find Appellants’ arguments
directed to the “Password Issue” and contentions 1(a)(i) and 1(a)(ii) to lack
sufficient evidence or argument to persuade us of Examiner error.

Claim 23: The “Internet” Issue

In connection with contention 1(b)(i), Appellants argue “there would
be no reason to incorporate the Hyllander et al. patent into either the Malik
patent or the Ueshima patent.” App. Br. 19. We disagree for the reasons
presented by the Examiner. In particular, the Examiner argues that the
reason to associate an Internet Address with the initiating party is “in order
to provide the initiating party with special and new IP address that is
assigned to that calling party only” and thereby enhance security. Ans. 5.
The Examiner further argues that providing an Internet Address would
provide other advantages including cost savings in making long distance
calls. Ans. 11. In the absence of sufficient evidence or argument to the
contrary, we find that the Examiner’s explanation constitutes a sufficient
articulated reasoning with rational underpinning to support the legal
conclusion of obviousness.
In connection with contention 1(b)(ii), Appellants argue “Hyllander . .
. doesn't teach or suggest assigning a new Internet Address to the calling
party [but, instead, to the contacted party].” App. Br. 19 (emphasis added.)
The Examiner responds that Hyllander “teaches a telephony internet server
adapted to identify the mobile subscriber station (calling party) by
associating the telephone instated of the mobile subscriber station with an
internet address.” Ans. 11 citing Hyllander col. 3, ll. 8-14 (emphasis added).
We agree with the Examiner and find that the combination of Malik,
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Ueshima, and Hyllander teaches or suggests associating an initiating party
number with an Internet address. For these reasons and in the absence of
sufficient evidence or argument to the contrary, contention 1(b)(ii) is not
persuasive of Examiner error.
In connection with contention 1(b)(iii), Appellants argue “none of the
references teach or suggest how such an Internet Address would be assigned
to the caller in the Malik patent, either alone or combined with the Ueshima
patent.” App. Br. 20. However Appellants’ argument is not commensurate
in scope with claim 23 which only requires that “the service associates said
initiating party number with an Internet address” with no mention
“assigning.” Accordingly contention 1(b)(iii) is also unpersuasive of
Examiner error.
For the reasons discussed supra, we sustain the rejection of claim 23
under 35 U.S.C. § 103(a) as being unpatentable over Malik , Ueshima, and
Hyllander together with the rejections of claims 24-26, 28, 32-34, and 42 not
separately argued.

Claims 27, 29, 30, 38, and 39

In connection with contention 2, Appellants argue “the Examiner does
not point to any teaching or suggestion in any of the references of
[highlighted language of the respective claims.]” App. Br. 20-24. We
disagree. In connection with claim 27, the Examiner indicates that it is
“rejected for the same reasons as discussed above with respect to claims 23-
25” (Ans. 6) and claims 29, 30, 38, and 39 “for the same reasons as
discussed . . . with respect to claims 28 and 23” (id.) Furthermore, in
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connection with those claims, Appellants’ arguments are not persuasive of
error as they are no more than general allegations that the disputed
limitations are not disclosed by the applied references. See 37 C.F.R. §
41.37(c)(1)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Therefore we sustain the rejections of claims 27, 29, 30, 38,
and 39 under 35 U.S.C. § 103(a) as being unpatentable over Malik,
Ueshima, and Hyllander together with the rejection of claim 31 not
separately argued.

Claim 35

In connection with contention 3, Appellants argue that claim 35 is
patentable “[f]or at least the reasons stated above in relation to claim 23.”
App. Br. 23. Having found contentions 1(a)(i) – (b)(iii) lacking sufficient
evidence or argument to persuade us of Examiner error, for the same reasons
we sustain the rejection of claim 35 under 35 U.S.C. § 103(a) as being
unpatentable over Malik, Ueshima , and Hyllander together with the
rejections of claims 36, 37, and 40-41 not separately argued.

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CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 23-42 under 35 U.S.C. § 103(a) as being unpatentable over
Malik, Ueshima, and Hyllander.

DECISION
The decision of the Examiner to reject claims 23-42 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