Ex Parte Petillo et alDownload PDFPatent Trial and Appeal BoardMay 25, 201612971747 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/971,747 12/17/2010 96355 7590 05/27/2016 NIXON & VANDERHYE, P,C /Vonage 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Richard Petillo 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JCE-5524-4 8574 EXAMINER KASSIM, KHALED M ART UNIT PAPER NUMBER 2468 NOTIFICATION DATE DELIVERY MODE 05/27/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD PETILLO, VISHAL PATEL, ZHIYU GUO, WILLIAM LONERGAN, NIRA V KADAKIA, and MICHAEL SOUTH Appeal2014-009250 Application 12/971,747 Technology Center 2400 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge DENISE M. POTHIER. Opinion Concurring filed by Administrative Patent Judge BRADLEY W. BAUMEISTER. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appeal2014-009250 Application 12/971, 7 4 7 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20, which are the only pending claims. App. Br. 11, 17. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Invention Appellants' invention is a fraud-prevention method for an Internet Protocol (IP) based telephony service. See Spec. i-f 2. In one embodiment, new users must receive and register an IP-based telephony device before being authorized to perform chargeable actions. Id. i-f 44. If the system determines that a user is not authorized to perform chargeable actions, the user's call setup requests are terminated without completing the call. Id. i-f 48. The Examiner relies on the following as evidence of unpatentability: Ferrier Bramwell US 2005/0177437 Al US 2011/0294472 Al The Rejections Aug. 11, 2005 Dec. 1, 2011 (filed May 1, 2009) Claims 1-11 are rejected under 35 U.S.C. § 102(e) as anticipated by Bramwell. Final Act. 5-10. Claims 12-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bramwell and Ferrier. Final Act. 11-14. 1 Throughout this Opinion, we refer to (1) the Final Office Action ("Final Act.") mailed June 17, 2013; (2) the Appeal Brief ("App. Br.") filed May 23, 2014, (3) the Examiner's Answer ("Ans.") mailed June 24, 2014, and (4) the Reply Brief ("Reply Br.") filed August 25, 2014. 2 Appeal2014-009250 Application 12/971, 7 4 7 THE ANTICIPATION REJECTION OVER BRAMWELL Claims 1, 2, 5, and 7 Claim 1 is reproduced below: 1. A method of preventing fraud in an Internet Protocol (IP) based telephony service, comprising: receiving a call setup request to complete a call to or from a customer of the IP telephony service; determining, with a processor, if completing the requested call would result in charges being owed by customer; determining, with a processor, if the customer is authorized to conduct chargeable calls; completing the requested call if the requested call would not result in charges being owed by the customer, or if the customer is authorized to conduct chargeable calls; and terminating the call setup request without completing the call if the customer is not authorized to conduct chargeable calls and completing the call would result in charges being owed by the customer. Contentions The Examiner finds that Bramwell discloses all of claim 1 's limitations. Final Act. 5---6. In particular, the Examiner finds that Bramwell' s Subscriber Identity Module (SIM) application intercepts a call and then routes the call in a way that minimizes its costs. Ans. 3--4. According to the Examiner, Bramwell minimizes costs also means that calls must be chargeable. Id. Furthermore, in the Examiner's view, Bramwell's call must be authorized because the call is routed. Id. 3 Appeal2014-009250 Application 12/971, 7 4 7 Appellants argue that Bramwell does not determine whether the customer is authorized to conduct chargeable calls, as recited in claim 1. App. Br. 12; Reply Br. 2. According to Appellants, Bramwell assumes that the user must be authorized to place a chargeable call. App. Br. 12; Reply Br. 2. Appellants further contend that, because Bramwell does not determine if a customer is authorized, Bramwell necessarily does not terminate a call-setup request without completing the call, as recited in claim 1. App. Br. 12-13. Issues Under§ 102(e), has the Examiner erred in rejecting claim 1 by finding that Bramwell: ( 1) determines if the requested "call would result in charges being owed by [the] customer" and "if the customer is authorized to conduct chargeable calls," as recited, and (2) terminates a "call-setup request without completing the call," as recited? Analysis Based on the record before us, we do not find error in the Examiner's rejection of claim 1. In particular, Bramwell charges mobile-phone users for calls made from outside their home country-i.e., "international roaming" calls. Bramwell i-fi-f 17, 202. In this situation, Bramwell's SIM application intercepts the outbound call and routes it in a way that reduces charges. Id. i1202, cited in Final Act. 5-6. Notably, Bramwell discloses that these re- 4 Appeal2014-009250 Application 12/971, 7 4 7 routed calls are still chargeable, but at lower rates. See, e.g., Bramwell if 77. As such, Bramwell determines if a call would result in charges being owed by the customer-albeit at a lower cost-as recited. We thus agree with the Examiner's finding that Bramwell determines "if the customer is authorized to conduct chargeable calls," as recited. Final Act. 5---6. Also, the Examiner has identified at least two ways Bramwell determines if the customer is authorized. See id. (citing Bramwell iii! 1 79- 86, 188-208); Ans. 3 (citing Bramwell if 202). First, Bramwell verifies the user during registration and call setup, which includes detecting whether the user has a subscription. See Bramwell iii! 152, 156, 179. Specifically, when a user moves to a country where the user has a subscription, the user has the ability to select a new mobile number. Id. if 179. The user must also register the mobile phone with the network. Id. Then, the mobile number must be activated to inform the communication server of the user's location change. Id. if 181. Bramwell uses encryption and check sums to ensure that the activation cannot be spoofed. Id. if 182. Also, as part of this activation, Bramwell sends the device's unique identifier and its location information. Id. if 186; see also id. if 91 (describing a unique identifier as a string of numbers). During this registration and call setup, the communication server performs a verification to prevent non-system users from conducting calls. Id. iii! 152, 156. As such, Bramwell's non-system users are not authorized to make chargeable calls. See id. if 156. Second, Bramwell determines if a number is active (e.g., not available). See id. if 208. For example, when receiving calls on a number that is not operating, the user is not authorized to conduct chargeable calls with such numbers. See id. (describing routing to voicemail when the user is 5 Appeal2014-009250 Application 12/971, 7 4 7 unavailable). In this example, Bramwell' s server determines an active number and routes calls to the active number or to a user's voicemail box. Id. Accordingly, directing a call to an unavailable number involves determining if a user is authorized to make certain types of chargeable calls. Additionally, calls to such numbers are also terminated at the user's voice mailbox. See id. On this record and as discussed above, the Examiner's position-that Bramwell must check to determine if the user is authorized to make chargeable calls by (1) verifying the user's information (Final Act. 6 (citing Bramwell i-f 179)) or (2) checking if the number is active or available (id.at 6 (citing Bramwell i-f 208)}-is reasonable. Appellants' arguments to the contrary (App. Br. 12) are unpersuasive. Specifically, we find no support for the argument that Bramwell assumes that the user must be authorized to place a chargeable call. Id. As explained above, Bramwell prevents non-system users from completing calls. Bramwell i-f 156. Likewise, Bramwell does not let the user conduct calls with an inactive number. See id. i-fi-1 181-86, 208. In fact, Bramwell actively prevents spoofing and unauthorized access using encryption, check sums, device identifiers, location data, and integrity verification schemes, as previously discussed. See, e.g., id. i-fi-1156, 179, 182. Appellants' arguments regarding the recited step of terminating calls from unauthorized users are based on the reasoning that Bramwell lacks authorization, which we find unpersuasive for the above-stated reasons. See App. Br. 12. Notably, Bramwell also terminates calls, such as when preventing non-system user to call up a gateway or by sending a call made to an unavailable number to voicemail, based on the above-described active- 6 Appeal2014-009250 Application 12/971, 7 4 7 number check. See Bramwell iii! 156, 208. Therefore, we are unpersuaded that the Examiner erred in finding that Bramwell terminates a call-setup request without completing the call for the above-discussed reasons (Final Act.5---6). For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 2, 5, and 7, not separately argued with particularity (see App. Br. 13). Claim 3 Claim 3 indirectly depends from claim 1 and further limits claim 1 's step of "determining ... if completing the requested call would result in charges being owed by the customer" by reciting an additional determination. Appellants argue that the Examiner has not shown that Bramwell performs the determination recited in claim 1, let alone the additional determination recited in claim 3. App. Br. 13. To support this argument, Appellants repeat claim 1 's argument that Bramwell assumes a customer is authorized to make chargeable calls. Id. The issues before us, then, are the same as those in connection with claim 1, and we refer Appellants to our previous discussion. To the extent Appellants dispute that Bramwell fails to determine if a request is directed to a number corresponding to a location outside a customer's base plan area (id.), we refer to our previous discussion of determining when a customer is attempting to make an international call (e.g., outside of a user's domestic base plan). See, e.g., Final Act. 7; Ans. 4. Accordingly, we will sustain the Examiner's rejection of claim 3. 7 Appeal2014-009250 Application 12/971, 7 4 7 Claim 4 Like claim 3, claim 4 indirectly depends from claim 1 and further limits claim 1 's step of "determining ... if completing the requested call would result in charges being owed by the customer" by reciting an additional determination. Appellants acknowledge that, in the rejection, the Examiner cites Bramwell's paragraphs 6-9, 27, 202, 203, and 210. App. Br. 14. Appellants then conclude that the Examiner has not shown that Bramwell performs the determination also recited in claim 1, let alone the additional determination recited in claim 4. Id. Apart from this conclusion, Appellants' remarks, however, do not further analyze the Examiner-cited paragraphs. Id. The Examiner's findings are reasonable on this record. See Final Act. 7. Specifically, the paragraphs cited by the Examiner (id.) describe how the customer is charged for completing international calls (see also Bramwell i-fi-16-9, 127, 202, cited in Final Act. 7), as discussed above regarding claim 1. See also Ans. 4--5. Appellants have not explained why these findings in Bramwell do not perform the determination recited in claim 4. See App. Br. 13-14. Accordingly, we are unpersuaded that the Examiner erred. Therefore, we will sustain the Examiner's rejection of claim 4. Claims 6 and 8-11 Claim 8 is reproduced below with our emphasis: 8. A method of preventing fraud in an Internet Protocol (IP) based telephony service, comprising: 8 Appeal2014-009250 Application 12/971, 7 4 7 receiving a call setup request to complete a call from a calling party to a customer of the IP telephony service; determining, with a processor, if an IP based telephony device sent from the IP telephony service to the customer has been registered with the IP telephony service; determining, with a processor, if the calling party's telephone number is associated with a verification service; and playing a fraud prevention message to the calling party and then terminating the call setup request without completing the call if the calling party's telephone number is associated with a verification service and the IP based telephony device sent from the IP telephony service to the customer has not been registered with the IP telephony service. Contentions The Examiner finds that Bramwell discloses all of claim 8' s limitations. Final Act. 8-9. In particular, the Examiner finds that Bramwell' s determination if a call is international using registered profiles meets the first recited determining step that includes the limitation of "an IP based telephony device sent from the IP telephony service to the customer." Id. at 8. Among other arguments, Appellants argue that Bramwell does not teach sending an IP-based telephony device. App. Br. 15. Issue Under § 102, has the Examiner erred by finding that Bramwell has sent an IP based telephony device "from the IP telephony service to the customer," as recited in claim 8 and similarly recited in claim 6? 9 Appeal2014-009250 Application 12/971, 7 4 7 Analysis Although claim 8 does not recite "sending a device to the customer," claim 8 limits the IP-based telephony device to only those devices that are sent from the IP-telephony service to the customer. That is, claim 8 excludes, for example, devices obtained by the customer in some other way. Given this interpretation, we are persuaded by Appellants' argument that the Examiner has not shown that Bramwell discloses such a device. See App. Br. 15. The portion of Bramwell relied upon by the Examiner describes an IP-based telephony device and an IP-telephony service. Final Act. 8-9 (citing Bramwell i-fi-f 179-86, 188-201, 203---07, 210). For example, Bramwell' s user registers a mobile phone with a Voice-over-IP (VoIP) service provider's network. See Bramwell i-fi-f l 79-201 (describing the registration process in full). Likewise, Bramwell describes making outgoing calls using the phone with a VoIP service. See id. i-fi-1202-15. But nowhere in the cited paragraphs does Bramwell disclose how the user is provided the phone. See id. i-fi-f l 79-215. That is, the Examiner cites nearly two entire pages from Bramwell without any discussion of a device sent from a service. See Final Act. 8-9. In the Answer, the Examiner finds that "the user is in possession of a device" for an IP-based telephony. Ans. 5-6 (emphasis added). But the Examiner has not established how the user came into possession of this device. Id. Accordingly, under an anticipation rejection, we agree with Appellants' argument (App. Br. 15) and are constrained to hold that the Examiner has not established that the user was necessarily sent an IP based telephony device from the IP telephony service, as recited. 10 Appeal2014-009250 Application 12/971, 7 4 7 Likewise, we are constrained not to sustain claim 6. Claim 6 is slightly broader in scope than claim 18, failing to recite from where the IP based telephony was sent. Even so, as explained above, the Examiner has not demonstrated that Bramwell necessarily discloses the IP based telephony device is sent to the user. For example, the user may go to a retail establishment to pick up the device rather than having it sent. Lastly, because the issue on appeal is whether Bramwell anticipates the claims under 35 U.S.C. § 102, we make no determination whether sending an IP based telephony device to a user would have been obvious to an ordinarily skilled artisan. For the foregoing reasons, Appellants have persuaded us that the Examiner erred in rejecting (1) independent claim 8, (2) claim 6 which recites similar language, and (3) claims 9-11, which depend from claim 8. THE OBVIOUSNESS REJECTION OVER BRAMWELL AND FERRIER Claims 12, 14, and 19 Claim 12 is reproduced below: 12. A method of preventing fraud in an Internet Protocol (IP) based telephony service, comprising: sending a new customer an IP based telephony device; setting a profile for the new customer to reflect that the new customer is not authorized to perform chargeable actions; registering, with a processor, the IP based telephony device sent to the new customer after the new customer connects the IP based telephony device to a data network that communicates with the IP telephony service; and re-setting the profile for the new customer to reflect that the new customer is authorized to perform chargeable actions at least using a soft phone client associated with the new customer 11 Appeal2014-009250 Application 12/971, 7 4 7 after the IP based telephony device sent to the new customer has been registered. Contentions Unlike claims 6 and 8, which stand rejected as anticipated by Bramwell, the Examiner finds that Bramwell teaches all the limitations of claim 12 except for sending a new customer an IP-based telephony device. Final Act. 11-12. The Examiner turns to Ferrier to teach this missing limitation in concluding that claim 12 would have been obvious. Id. at 12. Appellants contend that neither Bramwell nor Ferrier discloses or suggests sending a customer an IP-telephony device. App. Br. 18-19; Reply Br. 3. In Appellants' view, Ferrier is completely unrelated to telephony devices and services. App. Br. 19. Furthermore, Appellants contend that Bramwell teaches away from sending a customer a new device when the user has moved to a new country. Id. Appellants argue that Bramwell does not set a customer profile to indicate that a customer is unauthorized to perform chargeable actions. Id. at 17-18; Reply Br. 3. According to Appellants, Bramwell assumes that a customer is authorized to conduct chargeable actions. App. Br. 18. Appellants further contend that Bramwell does not register an IP-based telephony device after it has been connected to a data network, as recited. Id. Appellants further argue that Bramwell does not reset a profile for the new customer to reflect the new customer's authorization, as recited. Id.; Reply Br. 3--4. 12 Appeal2014-009250 Application 12/971, 7 4 7 Issues Under§ 103(a), has the Examiner erred in rejecting claim 12 by finding that Bramwell and Ferrier collectively would have taught or suggested: I. "sending a new customer an IP based telephony device" ' II. "setting a profile for the new customer to reflect that the new customer is not authorized to perform chargeable actions," and III. registering "the IP-based telephony device sent to the new customer after the new customer connects the IP telephony device to a data network" and "resetting the profile for the new customer to reflect the new" customer's authorization? Analysis I. Appellants argue that Bramwell does not send the customer a phone and Ferrier sends goods without mentioning phones specifically. App. Br. 18-19. Such individual attacks do not show non-obviousness where, as here, the rejection is based on the references' collective teachings. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). That is, the Examiner determines that sending a new customer the recited device would have been obvious in view of Bramwell and Ferrier collectively. Final Act. 11-12. The Examiner's conclusion here (id.) is reasonable. In particular, the Examiner finds that Ferrier offers a way for users to have goods sent to 13 Appeal2014-009250 Application 12/971, 7 4 7 them. Id. at 12 (citing Ferrier iii! 61---63, Fig. 3). Under the combination, the Examiner proposes using Ferrier's technique to send a specific type of product-Bramwell's phone. See Final Act. 12. So, the Examiner's combination uses Ferrier to perform the same function in the combination as it does separately---delivering goods-with no change in its operation. See id. In this way, the Examiner combines prior art elements according to known methods to yield predictable results of sending an IP telephony device to a new customer. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). We are also unpersuaded by Appellants' teaching-away argument. App. Br. 19. As discussed above, Bramwell does not disclose how the customer obtains the phone. Appellants, likewise, acknowledge Bramwell's silence in this regard. Id. at 15 (noting that Bramwell makes "no mention of sending an IP based telephony device to a customer .... ") Given this silence, we do not see how Bramwell expressly criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Nor have Appellants demonstrated that Bramwell's disclosure, as a whole, discourages one of ordinary skill from pursuing the result sought by Appellants. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). For instance, Appellants have not cited any portion of Bramwell supporting the argument that Bramwell is designed for the user to keep the same device after moving to another country. See App. Br. 18. Also, there is nothing in claim 12 that requires a new IP based telephony device be sent to a new customer after moving to a new country. See App. Br. 18-19. Regardless, given the record, it would have been 14 Appeal2014-009250 Application 12/971, 7 4 7 obvious to an ordinarily skilled artisan to send a new customer an IP telephony device when the user is first provided with service. Bramwell discloses that a user is provided a device with a "special preloaded SIM." Bramwell i-f 22. So, Bramwell's disclosure here only bolsters the Examiner's obviousness (Final Act. 12) conclusion because Ferrier's sending is one way that a new user could be provided with this special preloaded SIM. Accordingly, we are unpersuaded by Appellants' argument (App. Br. 19; Reply Br. 4) that Bramwell would have led one of ordinary skill away from the claimed solution. II. Appellants' argument that Bramwell does not teach or suggest setting a profile to reflect a user is not authorized to perform a chargeable action as recited (App. Br. 18) is unpersuasive for the reasons discussed in connection with claim 1. Specifically, Appellants' argument is based on the reasoning that Bramwell assumes that a customer is authorized to conduct chargeable actions. Id. But as discussed above, Bramwell' s activation uses encryption, check sums, device identifiers, and location data, to authorize the user and activate the user's number. See, e.g., Bramwell i-fi-1156, 179, 182. Whether the number is active and available determines how the call is routed or terminated, among other actions necessary to conduct a chargeable call. See, e.g., id. i-f 208; see also id. i-fi-198-99. As such, this process involves setting a profile to reflect a user is authorized or unauthorized to perform certain chargeable actions. Accordingly, we are not convinced that the Examiner erred in finding that Bramwell sets a profile as recited. 15 Appeal2014-009250 Application 12/971, 7 4 7 Ill. Likewise, Appellants' argument that Bramwell does not register or reset, as recited (App. Br. 18), is unpersuasive. Appellants' remarks (id.) provide little analysis of the paragraphs cited by the Examiner in the rejection. See id. (citing Bramwell i-fi-f 179-86, 188-207). For example, Appellants argue that Bramwell registers a profile, but conclude that nothing in the cited paragraphs registers as recited in claim 12. App. Br. 18. That is, after pointing to the paragraphs cited by the Examiner, Appellants summarily conclude that the Examiner's finding is incorrect. Id. But here, the Examiner's articulated position is based on Bramwell's change in profile when a user changes countries (Final Act. 11 (citing Bramwell i-f 179)) and resetting a profile for reduced call costs (Final Act. 11-12 (citing Bramwell i-fi-1202---07)) to establish a prima facie case of obviousness. We find the Examiner's articulated position (Final Act. 11-12) to be reasonable. To these findings, Appellants have not provided a persuasive rebuttal. See App. Br. 17-19; Reply Br. 3--4. Specifically, Bramwell describes the process as a "registration." See Bramwell i-f 179. Also, like the recited registration, Bramwell' s registration involves a connection. See Bramwell i-f 152 (describing information and commands sent to the server). Likewise, the Examiner further explains that Bramwell uses profiles to reflect an authorization (Ans. 7), just as claim 12 recites using profiles. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 12 and claims 14 and 19, not separate I y argued with particularity. 16 Appeal2014-009250 Application 12/971, 7 4 7 Claims 13 and 20 Appellants argue that the Examiner has not shown that Bramwell performs the sending and setting steps recited in claim 12, or the additional limitation on when these actions are performed as recited in claims 13 and 20. App. Br. 19, 21; Reply Br. 4. To support this argument, Appellants refer to arguments previously presented for claim 12. App. Br. 19, 21. Appellants' remarks (id.) do not discuss the Examiner's specific findings in claim 13 or 20's rejection (see Final Act. 12 (citing Bramwell i-f 179); Final Act. 14 (citing Ferrier i-fi-161---63)). The issues before us, then, are the same as those in connection with claim 12, and we refer Appellants to our previous discussion. Therefore, we sustain the Examiner's rejection of claims 13 and 20. Claim 15 We, however, do not sustain the rejection of claim 15, which recites, in part, "premium rate services." The Examiner finds that Bramwell sets a profile to indicate that the customer is not authorized to use premium rate services. Final Act. 13. According to the Examiner, Bramwell sets the profile using verifier module 144, which prevents non-system users from calling the gateway. Id. (citing Bramwell i-f 156). The Examiner also points to Bramwell' s marking of numbers as inactive. Final Act. 13 (citing Bramwell i-f 169). We agree with Appellants (App. Br. 20) that the Examiner does not provide any explanation regarding the recited "premium rate services." Although the cited paragraphs describe authorization generally (see Bramwell i-fi-1 156, 169), the Examiner has not shown that how this 17 Appeal2014-009250 Application 12/971, 7 4 7 authorization relates to premium rate services. See Final Act. 13. To be sure, Bramwell discloses that some rates can be higher than others. See, e.g., Bramwell i-f 6. But without any discussion of premium rate services from the Examiner (see Final Act. 13, Ans. 8), we decline to speculate for the first time on appeal about which of Bramwell' s rates are premium, how the users are authorized for those rates, or which of Bramwell' s services correspond to those recited. For the foregoing reasons, Appellants have persuaded us of error in the rejection of claim 15. Claims 16--18 Claim 16 depends from claim 12 and further recites "setting the profile for the new customer to reflect that the customer cannot receive calls from telephone numbers associated with verification services." Appellants argue that the Examiner has not shown that Bramwell determines if the incoming call originates from a verification service. App. Br. 20-21. To support this argument, Appellants refer to arguments "explained in detail above." Id. We are not clear as to which arguments Appellants are referring. Specifically, claims 16-18 depend from claim 12 directly or indirectly. Yet claim 12 does not recite verification services. Nor do Appellants argue that claim 12 calls for such a feature. See id.; see also Reply Br. 4. Also, although claims 8 and 9 contain a "verification service" limitation and Appellants discuss these claims (App. Br. 15-16), claims 8 and 9 are rejected under a different statutory ground-namely, 35 U.S.C. § 102( e ). Final Act. 8-9. That is, the Examiner finds that the limitation at 18 Appeal2014-009250 Application 12/971, 7 4 7 issue in claims 16-18 would have been obvious under§ 103(a) in view of Bramwell and Ferrier. Id. at 13-14. Appellants' remarks (App. Br. 20-21; Reply Br. 4) do not discuss the Examiner's obviousness conclusion or the corresponding findings that support it (Final Act. 13-14 ). At best, Appellants merely assert "Bramwell' s method makes no attempt to determine if an incoming call is originating from a verification service" (App. Br. 16) when discussing claim 9, with no supporting evidence or specific challenge to the Examiner's findings concerning the claims, including claim 16. Compare App. Br. 16, 20-21 with Final Act. 13. On balance, we are not persuaded of error and sustain the rejection of claims 16-18. CONCLUSION The Examiner did not err in rejecting claims 1-5 and 7 under§ 102(e) and claims 12-14 and 16-20 under§ 103(a). The Examiner erred in rejecting claims 6 and 8-11 under§ 102(e) and claim 15 under§ 103(a). DECISION The Examiner's decision rejecting claims 1-20 is affirmed-in-part. 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-IN-PART 19 Appeal2014-009250 Application 12/971, 7 4 7 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD PETILLO, VISHAL PATEL, ZHIYU GUO, WILLIAM LONERGAN, NIRA V KADAKIA, and MICHAEL SOUTH Appeal2014-009250 Application 12/971, 7 4 7 Technology Center 2400 BAUMEISTER, Administrative Patent Judge, concurring. As noted in the Majority Opinion, independent claim 8 is directed to a method that include the step of "determining, with a processor, if an IP based telephony device sent from the IP telephony service to the customer has been registered with the IP telephony service" (emphasis added). The relevant part of claim 6, \'l1hich depends from independent method claim 1, similarly recites "wherein the determination is based upon whether an IP based telephony device sent to the customer has been registered by the IP telephony service" (emphasis added). The Panel reverses the anticipation rejection of these claims because the Examiner acknowledges that Bramwell does not disclose that the IP based telephony device was sent to the customer. Final Act. 12 ("Bramwell ... discusses the registration of profiles for the user to use for when the user changes countries and needs to properly adjust its phone, but does not disclose the user receiving a brand new phone.") I agree with the Majority decision reversing the anticipation rejection for this reason, but I agree solely due to a legal technicality-the Examiner 20 Appeal2014-009250 Application 12/971, 7 4 7 and Appellants both seem to be in agreement that sending the IP telephony device to the customer constitutes an affirmative step of the method claim. Id.; see also App. Br. 18 (arguing that "Bramwell provides no teaching or suggestion about equipping new customers with new IP telephony devices"). As such, the Board has not been asked to decide what patentable weight should be afforded the emphasized claim language. I write separately, though, because I question whether, and to what degree, the claim language "sent to the new customer" further narrows or patentably distinguishes the noted claims. I. It reasonably could be argued that, if issued, these claims might be infringed when the claimed method steps are performed, regardless of the manner by which the customer came into possession of the IP telephony device. That is, it could be argued that the noted claims cover methods wherein the customer purchased the IP telephony device at a store, as well as methods wherein the IP telephony device was sent to the customer, as claimed. Stated yet another way, it could be argued that the claim language "sent to the customer" does not patentably limit or distinguish the claims.2 2 For the purpose of this Concurrence, I am assuming that the act of a user purchasing an IP based telephony device at a store does not correspond to the device being sent to the user. It also could be argued, though, that shipping an IP based telephony device from a manufacturer to a retail store where the user subsequently purchases the device could be interpreted as the device being "sent to the customer," as claimed, at least to the same degree that shipping a device to a post office box where the user subsequently retrieves the device constitutes the device being "sent to the customer." However, this is another issue that does not seem to be addressed by the Examiner or raised on appeal. 21 Appeal2014-009250 Application 12/971, 7 4 7 Claim 12, another pending method claim, evidences that the Claim Drafter of the present claims was fully aware of how to recite the act of sending the device as an affirmative method step. See claim 12 (reciting the affirmative method step of "sending a new customer an IP based telephony device"). If the Claim Drafter intended the manner in which the customer came into possession of the IP telephony device to patentably distinguish the claim, the Claim Drafter alternatively could have recited an affirmative method step, similar to as was done in claim 12. The Claim Drafter's decision to employ product-by-process language-also referred to by the courts as a source limitation3-seems to indicate that an affirmative method step was not intended and, therefore, that the claims are intended to be broader in scope. Furthermore, it seems curious that the Inventor would intentionally draft a claim in a manner that would allow infringement to be so easily avoided. That is, it seems peculiar that an inventor would want to preclude competitors from performing a fraud-prevention method in an IP based telephony service only with respect to customers who were sent their telephony devices, but would not be interested in precluding competitors from performing the exact same method for customers who purchased their telephony devices at a store. 3 See Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1364 (Fed. Cir. 2009) (referring to a product-by-process limitation appearing in a standard-format product claim as a "source limitation:" "In other words, does the source limitation 'purified from mammalian cells grown in culture' distinguish recombinant [ erythropoietin] EPO from Dr. Goldwasser' s urinary EPO?") (emphasis added and internal citations omitted). 22 Appeal2014-009250 Application 12/971, 7 4 7 To be sure, it may well be that the claim language "the IP based telephony device sent to the new customer" could distinguish over methods alternatively performed with store-bought phones, but such a distinction would only be to the extent that the record evidences that the method by which the IP telephony device is obtained results in some physical, structural, or functionality distinction to the resultant telephony device that is being used in the method claim. For example, if the record hypothetically were to indicate that an IP telephony device is coded or programmed differently depending on whether it is purchased at a store or sent to the customer, then the claim language would structurally distinguish the two IP telephony devices. The Appeal Brief does not appear to indicate, though, that any such structural distinction exists. Also granted, meager legal authority exists for the proposition that the product-by-process doctrine is applicable to product-by-process limitations appearing in claims to the method of using the product. The existing authority on the doctrine primarily is limited to product claims that are set forth in product-by-process format, as well as product-by-process limitations appearing within product claims of otherwise standard format. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1379 (Fed. Cir. 2009) (discussing the requirements of a product-by-process limitation and explaining that the limitation at issue did not meet those requirements). However, I am equally unaware of any controlling authority that conversely prohibits applying the product-by-process doctrine to product-by-process limitations (or "source" limitations) that appear in method claims. 23 Appeal2014-009250 Application 12/971, 7 4 7 Jn re Distefano, 808 F.3d 845 (Fed. Cir. 2015) may appear, at first blush, to stand for such a prohibition. In fact, though, Distefano is readily distinguishable. Distefano involved an appeal from the Board's affirmance of the Examiner's anticipation rejection of a claim to a method of designing web pages. Distefano, 808 F.3d at 847. The issue on appeal (see id.) focused on the first method step of the sole independent claim, which is referred to as the "selecting limitation:" 24. A method of designing, by a user m a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, compnsmg: selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user (Emphasis added). The Distefano court explained, "the parties agreed that all of the other limitations were anticipated [sic: taught] by [the prior art]." Id. "The Board determined that the selecting limitation should not be afforded patentable weight under the printed matter doctrine." Id. at 848. "In performing the printed matter analysis, the Board concluded that ' [the] web assets' origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets' origins have no functional relationship to the claimed method."' Id. (internal citations omitted). 24 Appeal2014-009250 Application 12/971, 7 4 7 Our reviewing court disagreed, concluding that "the Board erred in finding that the origin of the web assets constituted printed matter in the claims at issue and erred in assigning the origin no patentable weight under the printed matter doctrine in finding anticipation by [the cited prior art]." Distefano, 808 F .3d at 851 (emphasis added). In so holding, though, the Court limited its analysis solely to the applicability of the printed matter doctrine to the method claims on appeal. Id. at 848-51. The Distefano opinion did not address, much less answer, either the question of ( 1) whether the product-by-process doctrine is applicable to source limitations appearing in method claims, generally or (2) whether the origin of Distefano 's web assets patentably distinguished these data structures. II. Even if one were to be of the contrary opinion that source limitations appearing in method claims should be analyzed by a different legal standard than product-by-process limitations appearing in product claims, this would not end the inquiry. The inherency doctrine also causes me to question the degree to which the claim language "sent to the new customer" patentably distinguishes the methods of the noted claims. More specifically, the present situation seems to have been addressed by the predecessor to our reviewing court inin re Best, 562 F.2d 1252 (CCPA 1977). Best involved claims directed to zeolitic molecular sieve catalyst compositions and to a process for producing them. Best, 562 F.2d at 1252. The Board had found that the prior art expressly disclosed "[a]ll the positive process limitations ... except for the functionally expressed rate of cooling." Id. at 1254. 25 Appeal2014-009250 Application 12/971, 7 4 7 Id. The Board reasoned, though, there is nothing to indicate that this rate of cooling in any way differs from the normal rate resulting from removal of the heat source. Thus, the examiner's conclusion[-]that those parameters of the resultant product [that] are recited in the appealed claims[,] but are not expressly disclosed in the reference[,] would be inherent[-]is a reasonable one, absent convincing evidence to the contrary. Appellants have presented no such convincing evidence. No comparison has been made between appellants' process and product and the process and product disclosed in the [prior art]. On appeal, the Court rejected appellants' argument that "because [the prior art] is silent on appellants' crucial cool-down step and on his apparatus, a direct comparison between the claimed process and that of Hansford is impossible." Id. at 1254. The Court concluded that its "analysis of the comparative data offered by appellants convinces us that the burden of rebutting the PTO's reasonable assertion of inherency under 35 U.S.C. § 102, or of prima facie obviousness under 35 U.S.C. § 103, has not been met. Id. In so concluding, the Court reasoned where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. at 1254--55 (internal citations omitted). Furthermore, the Court made clear that such a burden for appellants "is applicable to product and process claims reasonably considered as possessing the allegedly inherent characteristics." Id. at 1255 (emphasis added). 26 Appeal2014-009250 Application 12/971, 7 4 7 Such burden shifting is proper in the present appeal. If disclosures in the record (or an absence of relevant disclosure) reasonably indicates that the telephony device recited in the claims would possess the same characteristics regardless of whether the device were sent to the customer or alternatively purchased by the customer at a store, it would seem reasonable for the Examiner to require Applicants to prove that the subject matter shown to be in the prior art does not possess some characteristic associated with the device being sent to the customer. Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively,[] the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products. Best, 562 F.2d at 1255 (internal citations omitted). I therefore question the extent to which the claim language "sent to the new customer" limits independent claim 8 or the other noted claims. It would be prudent for the Examiner to address this question, and thereby better clarify the record. 27 Copy with citationCopy as parenthetical citation