Ex Parte White

Board of Patent Appeals and Interferences

Nov 17, 2009

10124239 (B.P.A.I. Nov. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANNY EUGENE WHITE, JR.
____________

Appeal 2009-004737
Application 10/124,239
Technology Center 2600
____________

Decided: November 18, 2009
____________

Before KENNETH W. HAIRSTON, KARL D. EASTHOM, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

Dissenting Opinion filed by Administrative Patent Judge BAUMEISTER.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1, 3, 4, 10, 12, 13, and 17,1 the only claims pending (App. Br. 2). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s disclosed invention provides a distinctive ringing feature
to phone subscribers so that a subscriber can determine a caller’s identity
without handling the phone. The system does not require any upgrade to the
phone and/or caller ID unit. (Abstract; Spec. 6: 10-11; 8:14-16). Exemplary
claim 1 follows:
1. A system associating distinctive rings with a set of one or more callers,
said system implemented remotely from a subscriber's telecommunication
equipment, said system comprising:
a. a subscriber interface server storing, for each subscriber,
information identifying said set of one or more callers and pre-set
ringer types associated with each one of said set of callers, wherein
said ringer types are pre-set via a menu-based communication session
between a subscriber's telecommunication equipment and
said subscriber interface server, said ringer type based on shortening
and/or lengthening a standard ringing signal; and
b. a class 5 switch working in conjunction with said subscriber
interface server identifying an incoming call to a subscriber from a
caller in said set of callers, identifying a pre-set ringer type
corresponding to said caller in said set of callers, and rendering said
identified pre-set ringer type to said subscriber, said system
implemented without installing additional hardware at a subscriber's
premises.

1 This opinion refers to Appellant’s Brief (filed Jan. 14, 2008) [hereinafter
App. Br.] and Reply Brief (filed Oct. 14, 2008) [hereinafter Reply Br.], and
the Examiner’s Answer (mailed Aug. 11, 2008) [hereinafter Ans.].
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The Examiner relies on the following prior art references:
Hoopes US 6,058,171 May 2, 2000
Chow US 6,618,600 B1 Sept. 9, 2003
The Examiner rejected:
Claims 1, 3, 4, 10, 12, 13, and 17 as obvious under 35 U.S.C. § 103(a)
based on Chow and Hoopes.
ISSUE
Appellant contends that the prior art does not collectively teach or
suggest the distinctive ring system “without upgrading any subscriber
telecommunication equipment” (App. Br. 10) because Chow’s equipment
is “locally installed” (App. Br. 12). Therefore, Appellant’s argument raises
the following issue: Did Appellant show that the Examiner erred in finding
that Chow and Hoopes collectively teach or suggest the distinctive ring
system “without installing additional hardware at a subscriber’s premises” as
recited in claim 1?

FINDINGS OF FACT (FF)
Appellant’s Disclosure
1. Appellant describes problems in prior art systems as related to
required telephone upgrades at the subscriber or customer end: “One
disadvantage associated with the prior art systems described above is that
they require additional telecommunication equipment at the customer’s end.
For example, additional telephones, answering machines, and ring
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generators are required for implementing the systems of the above-
mentioned patents.” (Spec. 5:13-16) (emphasis added).
On the other hand, Appellant describes the disclosed invention as not
requiring such subscriber end upgrades: “It should be noted that since the
ringer enhancements of the present invention are implemented via a class 5
switch, there is no requirement to upgrade any telecommunication
equipment at the subscriber’s end” (Spec. 6:16-18). “Additionally, it should
be noted that the above-mentioned enhancements to ringer types are
accomplished without upgrading any telecommunication equipment (such as
telephone or caller ID unit) at the subscriber’s end” (Spec. 8:14-16)
(emphasis added).
2. Appellant’s system employs a local end office 302 (Fig. 3) to
modify the ringer type: “In the instance a specific ringer type exists for the
caller, then the class 5 switch, in conjunction with the local end office,
modifies, in step 414, the standard ringer type to the specific ringer type
which is then rendered at the subscriber’s end” (Spec. 10:4-6).
Chow
3. Chow discloses one or more wireless centrex systems (WCS),
providing inter alia, distinctive ring tones to mobile stations 101A, 101B
using a network server platform (NSP) 106 co-located with a local digital
switch (LDS) 104. One LDS and NSP typically serve one WCS region
containing multiple mobile stations (MS) 101 and other phones (POTS 108,
and ISDN 109). (Col. 2, ll. 40-43; col. 14, ll. 9, 12, 15, 47; col. 15, ll. 31-47;
Fig. 1A). One type of LDS 104 disclosed is a “Lucent 5ESS” (col. 17, ll. 5-
7).
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“The RDT 102 [remote digital terminal (col. 14, l. 26)] interfaces,
typically at a central office, with the LDS 104. The RDT 102 provides the
distribution of services interfaces between the LDS 104 and the user’s
premises, extending the digital services network.” (Col. 78, ll. 64-68)
(emphasis added). “[E]ach WCS subscriber has a reachable desktop DN
[directory number (col. 13, l. 54)] . . . (col. 19, ll. 48-49).
4. The system “provides a cordless-like, anywhere, anytime
communications for indoor, business or campus-type environments” (col.
16, ll. 34-36). “A single RDT 102 can provide interconnection . . . in a
single large WCS office or multiple smaller offices” (col. 16, ll. 54-56) to
provide “a secure wireless network by only recognizing pre-approved
subscribers MS 101 for registration within the picocell area covered by each
of its VAPs 103 . . .” (col. 16, ll. 61-64).
5. Chow does not limit the system to a building or campus WCS:
“While the systems and methods described below relate to a traditional
cellular phone system or a wireless centrex system, it is to be understood
that the present invention can be applied to all types of wireless
communications systems including, but not limited to, satellite systems,
micro cellular systems, personal communication services, and other mobile
communication systems” (col. 14, l. 65 to col. 15, l. 5).
For example, Chow discloses (inter-connected to a WCS system) (see
Fig. 12), a typical cellular mobile system employing a base station (BS) (col.
13, l. 47) and mobile switching center (MSC) (col. 14, l. 13): “[I]t will be
appreciated that any MSC may be adapted for use with the present invention.
Plural base stations (BS), for example like the one BS 1255, are controlled
by the MSC. Mobile stations MS 101 can travel throughout the cellular
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network and into the WCS network.” (Col. 44, ll 5-10). “In such a system,
the MSC 1250 can provide similar functionality to the NSP 106 plus the
LDS 104, and a BS 1255 is functionally similar to a VAP 103” (col. 44, ll.
32-35).
6. Chow’s system provides a “distinctive ringing feature” for “a
specific directory number (DN)” (col. 75, ll. 25-28). “A subscriber can
provision one or more DNs that cause a distinctive ring to occur when a
communications unit assigned a provisioned DN initiates a call to the
subscriber” (col. 75, ll. 28-31). Chow provides several ways to provision the
distinctive ringing DN list. “For example, the user may access the Internet
or a web-based interface such as a WCS web site and input and update the
DN list. Also, the subscriber may contact a customer care center by phone
and verbally communicate the number through any type of communications
unit (e.g. cell phone, landline phone, wireless palm top computer phone,
etc.).” (Col. 75, ll. 33-39). A user may also provision the distinctive ringing
feature by sending a message to the NSP from a mobile phone in the WCS
system (col. 75, col. 44-51).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A determination of
obviousness can be based on a showing that “there was an apparent reason to
combine the known elements in the fashion claimed . . . .” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants have the burden on
appeal to show reversible error by the Examiner in maintaining the rejection.
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See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (citation omitted).

ANALYSIS
Appellant’s arguments (App. Br. 8-13) group the claims together.
Accordingly, claim 1 is selected to represent the group, with differences as
to claim 17 noted below.2 Appellant asserts (App. Br. 10) that Chow
teaches “assigning distinctive ringing in a locally installed wireless
centrix system,” implemented by “a locally installed network server
platform (NSP)” as opposed to providing distinctive ringing “without
upgrading any subscriber telecommunication equipment.”
The Examiner (Ans. 14) correctly notes that claim 1 does not preclude
upgrading equipment, but precludes “installing ‘additional hardware’ at a
subscriber’s premises.” The Examiner relies on Appellant’s Specification
for guidance as to the scope of the recited telecommunication equipment
(Ans. 14, 15). The Examiner also correctly notes that Appellant’s
telecommunication equipment comprises “additional telephones, answering
machines, and ring generators . . . .” (id. at 15 n.1; accord FF 1).
As such, the Examiner reasons (see Ans. 14-15) that claim 1 only
precludes similar telephone type equipment from being installed at the
subscriber’s premises. The Examiner also reasons that equipment depicted
as outside of the WCS area 140 (see Chow Fig. 1A) constitutes equipment
outside of the “subscriber’s premises.” As such, according to the Examiner,

2 See 37 C.F.R. § 41.37(c)(1)(vii).
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the claim does not preclude Chow’s NSP 106 which stores, inter alia, the
directory number (DN) (i.e., “[the] subscriber interface server . . . storing,
for each subscriber, information . . . identifying . . . callers . . . ” (see Ans.
4)) and the LDS 104 (i.e., “the class 5 switch”) (see FF 3).
Appellant responds (Reply Br. 4) by stating that Chow’s NSP and
LDS are “locally implemented,” but “the claims recite that the distinctive
ringing feature is accomplished without installing additional hardware at the
subscriber’s end.” (Claim 1 also recites, in the preamble, “said system
implemented remotely from a subscriber’s telecommunication equipment,”
but it is not clear from Appellant’s arguments if Appellant also relies on this
phrase as precluding local implementation. Claim 17 does not recite a
similar “implemented remotely” phrase).
In any case, Chow discloses that the LDS (and the upstream or co-
located NSP) resides at a local central office to deliver downstream services
to the user’s premises (FF 3). In particular, a centrally located LDS and
NSP provide telephone service to different offices in a campus environment
(FF 3, 4). “[E]ach WCS subscriber has a reachable desktop DN . . .” (FF 3).
Thus, each office or business in a single building (or in multiple buildings in
a campus) within a WCS reasonably constitute “a subscriber’s premises”
(FF 3, 4).3 (Chow also refers to the mobile stations 101 as subscribers (FF
4)).
Because the NSP and LDS provide service from a centrally located
office or elsewhere (i.e., not the subscriber’s premises) to multiple offices

3 “3. premises . . . . b. A building or section of a building.” Webster’s II New
Riverside Dictionary 929 (1994) (emphasis added); “3. premises . . . d: the
place of business of an enterprise or institution.” Webster’s Third New
International Dictionary 1789 (1964).
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(i.e., each “subscriber’s premises”), the NSP and LSP constitute the remote
server and class 5 switch of claim 1.4 It follows that Chow’s NSP and LDS
satisfy the disputed limitation “without installing additional hardware at a
subscriber’s premises” (and the “implemented remotely” phrase in the
preamble of claim 1).
In other words, Appellant’s arguments notwithstanding, the fact that
the NSP and LDS can be relatively locally placed (i.e., in a central office or
outside any building) does not mean that they are not remote from each
subscriber’s premises and equipment (i.e. remote from mobile station 101
and/or its associated office) as claim 1 requires. Appellant’s system also
employs a local office (FF 2).
Under another claim interpretation, Chow also particularly describes
(FF 5) a combined WCS and cellular system which uses an MSC and BS to
support several subscribers 101 in a mobile area, noting that the MSC and
BS function similarly to an LDS and NSP. Therefore, any particular mobile
station (e.g. 101a) in this combined system would be located outside the
WCS and thus, it follows, located remote from, and outside, a “subscriber’s
premises” and equipment (e.g. another mobile station 101). That is, in this
combined WCS/cellular system scenario, the LDS and NSP (even if located
at one premises, e.g. housing mobile station 101) constitute hardware
“without installing additional hardware at a subscriber’s premises”
(emphasis added) – i.e., without installing hardware at another mobile
station’s (e.g. mobile station 101a) premises.

4 The Examiner found (Ans. 16) that the Lucent 5ESS LDS switch
constitutes a class 5 switch (FF 3) as recited in claim 1. Appellant offers no
persuasive rebuttal evidence or argument to the contrary. (Claim 17 does
not require a class 5 switch or a remote server or switch).
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Under a final alternative claim interpretation, claims 1 and 17 are
broad enough to allow Chow’s NSP and LDS (respectively reading on the
subscriber interface and class 5 switch of claim 1 as explained above) to be
located at a user’s premises. Under this interpretation, the NSP and LDS are
“implemented remotely from a subscriber’s telecommunication equipment”
(such as a mobile phone 101) as recited in claim 1 (but not claim 17), and
also, are “implemented without installing additional hardware at a
subscriber’s premises” (emphasis added to claims 1 and 17); i.e., without
installing additional hardware (i.e., in addition to the NSP and LDS) at the
subscriber’s premises.5
In other words, claims 1 and 17 are amenable to several
interpretations each reading on the prior art in light of the arguments
presented. Appellant’s arguments and claims do not specify clearly how the
claimed invention differs from the prior art.6 “The problem in this case is

5 Appellant does not argue specifically that Chow’s VAPs (103A and 104B),
or any other hardware, except the NSP and LDS (Reply Br. 4), constitute
“additional hardware” precluded by open-ended claims 1 and 17. It is
reasonable to assume that the VAPs are either 1) not telephone type devices
and as such are not precluded based on the discussion above, 2) constitute
existing items (i.e., existing as prior art hardware, as opposed to additional
new hardware, in relation to Chow’s system), or 3) are not located in each
office but cover a picocell area (see FF 4). In any case, Chow’s VAPs are
not required for the existing ISDN 109 and POTS 108 telephones (see
Chow, Fig. 1A, FF 3). That is, Chow discloses that an existing “landline
phone” can be employed to order distinctive ringing (FF 6), further
evidencing that Chow’s distinctive ringing feature does not require
“additional hardware” at a subscriber’s premises.
6 Appellant complains that the Examiner and Appellant agreed to the
amendments adding the limitation of “without installing additional hardware
at a subscriber’s premises” to the independent claims (Reply Br. 2-4), and
that prolonged prosecution failed to comply with the MPEP (App. Br. 7-8).
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that the appellants failed to make their intended meaning explicitly clear.”
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). “It is the applicants’
burden to precisely define the invention, not the PTO’s.” Id.
Contrary to Appellant’s further arguments (App. Br. 10-11), Chow’s
distinctive ringing can be assigned to any DN to specifically identify, for
example, one’s spouse or friend, etc., as the call originator (see FF 6), and is
not limited to designating only business or personal calls, as the Examiner
found (Ans. 15-16).
According to the Examiner (Ans. 3-6), Chow teaches distinctive
ringing without updating additional hardware at a subscriber’s premises, and
Hoopes teaches that the distinction can be based on the length of the ringing
signals. The Examiner also found (Ans. 5-6) that Hoopes’ distinctive ring,
like Chow’s, “functions based on a sent control signal” (Ans. 6), rendering
the combination obvious by allowing a modified ring “without requiring the
re-wiring of individual telephones on the circuit as suggested by Hoopes . .
.” (id.).
Appellant does not challenge these findings but argues (App. Br. 13)
that Hoopes “fails to remedy the shortcomings associated with the Chow et
al. reference” and “merely teaches an [sic] unique ring feature . . .
(implemented locally) . . . .” For the reasons explained above, Chow does
not contain the shortcomings asserted, but rather, controls unique ring

The prolonged prosecution and the amendments agreed upon relate to
petitionable matters and not to appealable matters. See In re Schneider, 481
F.2d 1350, 1356-57 (CCPA 1973); In re Mindick, 371 F.2d 892, 894 (CCPA
1967); Manual of Patent Examining Procedure (MPEP) (8th Ed., Rev. 2,
May 2004) § 1002 et seq. Thus, any relief sought by Appellants would have
been properly requested by a petition to the Director under 37 CFR § 1.181
instead of by appeal to the Board.
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features remotely via a customer care center, web site, or an NSP (FF 6). As
such, Appellant’s response to the Examiner’s rejection, based on the
combination of Chow and Hoopes, does not demonstrate error.
While Appellant repeats other claim limitations at various points in
the Appeal Brief (see App. Br. 8-13), Appellant does not clearly present
arguments explaining how the references fail to satisfy the claims as
necessary to constitute, on appeal, an argument for patentability (compare
Reply Br. 2-4 (focusing on the “additional hardware” limitation)). See
Kahn, 441 F.3d at 985-86 (quoted supra); 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, for reasons explained above, we will sustain the
Examiner’s obviousness rejection of claims 1 and 17, and all remaining
claims on appeal, which fall with claim 1 for lack of separate patentability
arguments.
CONCLUSION
Appellant did not show that the Examiner erred in finding that the
prior art collectively teaches or suggests that the Examiner erred in finding
that Chow and Hoopes collectively teach or suggest the distinctive ring
system “without installing additional hardware at a subscriber’s premises” as
recited in claim 1.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 4, 10, 12, 13,
and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136. See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
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BAUMEISTER, Administrative Patent Judge, DISSENTING

I would reverse the Examiner’s obviousness rejection of claims 1, 3,
4, 10, 12, 13, and 17. One of ordinary skill in the art cannot reasonably
understand the metes and bounds of independent claims 1, 10, and 17. None
of the dependent claims clarify the matter either. As such, the Examiner
could not have reasonably concluded whether any of the pending claims are
rendered obvious by any potential prior art.
I.
The last clause of independent claim 1 recites, “said system
implemented without installing additional hardware at a subscriber’s
premises” (emphasis added). By reciting the relative term “additional
hardware,” this claim limitation begs the question: What baseline hardware
at a subscriber’s premises is the “additional hardware” in addition to?
The term “hardware” finds no express antecedent basis in claim 1.
Rather, claim 1 recites components such as, “a subscriber’s
telecommunication equipment,” “a subscriber interface server,” and “a class
5 switch.” Moreover, no objective definition for the term “hardware”
appears in the Specification. Rather, the Specification states, “One
disadvantage associated with the prior art systems described above is that
they require additional telecommunication equipment at the customer’s end.
For example, additional telephones, answering machines, and ring
generators are required for implementing the systems of the above-
mentioned patents” (Spec. 5);
It should be noted that since the ringer enhancements of
the present invention are implemented via a class 5 switch,
there is no requirement to upgrade any telecommunication
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equipment at the subscriber's end. Furthermore, subscribers
don't require any additional equipment to communicate with the
subscriber interface server, as they are able to change the
distinctive ring associations via an interactive phone menu.
(Spec. 6);
“the above-mentioned enhancements to ringer types are accomplished
without upgrading any telecommunication equipment (such as a telephone or
caller ID unit) at the subscriber’s end” (Spec. 8); and
It should be noted that although a specific example of a
user interface is provided in the specification, other user
interfaces such as a graphical user interface (GUI) are
envisioned, and hence such limitations in the type of interface
used should not be used to limit the scope of the present
invention. Additionally, the present invention's enhanced ringer
service can be implemented in other communication devices
316 such as, but not limited to: mobile phones, cellular phones,
wireless-access-protocol (WAP) enabled cell phones, digital
phones, or internet-based telecommunication systems. Thus, a
cellular phone user can subscribe to the present invention's
enhanced ringer service and manipulate ringer associations via
a graphical user interface displayed on the cellular phone.
(Spec. 9).
These passages from the Specification seem to indicate that the term
“hardware” might be intended to be synonymous with “telephone
equipment.” If so, “additional hardware” may be interpreted as finding
antecedent support in the preamble of claim l - “a subscriber’s
telecommunication equipment.” However, this assumption is simply
speculative and it still does not answer the question of what specific
hardware located at a subscriber’s premises constitutes “a subscriber’s
telecommunication equipment.”
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More importantly, nothing in claim 1 places any limits on what
baseline telecommunication equipment may be installed in the subscriber’s
premises or used to implement the claimed system. Rather, claim 1 merely
prohibits the subscriber’s premises from having any hardware beyond what
the subscriber’s premises already has. Restated, the language “said system
implemented without installing additional hardware at a subscriber’s
premises” could be reasonably interpreted as not limiting claim 1 in any
manner whatsoever. However, such a construction would be contrary to the
canon of claim construction that every word in a claim is presumed to have
some meaning.
Assuming arguendo, then, that the phrase “said system implemented
without installing additional hardware at a subscriber’s premises” does
somehow limit what hardware may be installed at a subscriber’s premises, it
would not be reasonably clear what hardware or telephone equipment may
be installed in a subscriber’s premises without infringing the claim. For
example, it is unclear whether installation of a system comprising a
subscriber interface server and a class 5 switch as recited in claim 1 would
infringe the claim if a user further has a second or a third telephone installed
on the premises. On the one hand, claim 1 recites that the system is
implemented remotely from a subscriber’s telecommunication system. This
fact implies that the number of phones installed within a subscriber’s
premises would be immaterial to whether the claim is infringed.
Alternatively though, claim 1 specifically limits the claim scope to systems
“implemented without installing additional hardware at a subscriber’s
premises.” Furthermore, the Specification expressly states that the present
invention overcomes disadvantages “associated with the prior art systems”
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such as “requir[ing] additional telecommunication equipment [e.g.,
additional telephones] at the customer’s end.” (Spec. 5.)
It is also unclear what is meant by the term “subscriber’s premises.”
From the context of Appellant’s Specification, it initially seems that the term
is intended to mean “subscriber’s household” or “residence.” (See
generally, Spec. 2-6, and 12.) However, neither “household” nor
“residence” appears in claim 1. Moreover, “premises” is broader than
“household” or “residence.” “Premises” is defined as “[l]and and the
buildings on it.” (premises, The American Heritage Dictionary of the
English Language (4th ed., Houghton Mifflin Co. 2004), available at
http://dictionary.reference.com/browse/ premises (last visited Nov. 12,
2009).) As such, “premises” additionally includes, for example, expansive
commercial, industrial, and governmental complexes and office buildings.
Moreover, Appellants specifically state that “the present invention's
enhanced ringer service can be implemented in other communication devices
316 such as, but not limited to: mobile phones, [and] cellular phones . . . .”
(Spec. 9.) Such devices are not tied to any premises, but they do enable
wireless communication via base stations, mobile switching centers, and the
like. In light of these considerations, it is unclear whether installation of a
system comprising a subscriber interface server and a class 5 switch as
recited in claim 1 would infringe the claim if, for example: (1) the claimed
subscriber interface server is installed on a corporation’s premises in its IT
department; or if (2) a user further installs a repeater somewhere on an
expansive industrial complex.
Determining what metes and bounds Appellant intends claim 1 to
cover, then, requires significant and undue speculation. However, it would
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be improper for us to speculate on any potential interpretation of claim 1.
“[T]he patent drafter is in the best position to resolve the ambiguity in the
patent claims . . . .” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d
1244, 1255 (Fed. Cir. 2008). See also, In re Steele, 305 F.2d 859, 862-863
(CCPA 1962) (holding that the Examiner and the Board were wrong in
relying on what at best were speculative assumptions as to the meaning of
the claims and basing a rejection under 35 U.S.C. § 103 thereon).
It suffices to conclude as a threshold matter that one of ordinary skill
in the art would not be reasonably apprised of what acts would constitute
implementing the system of claim 1 “without installing additional hardware
at a subscriber’s premises.” As such, one of ordinary skill in the art cannot
reasonably understand the metes and bounds of independent claim 1.
Therefore, the Examiner could not have reasonably concluded whether claim
1 is rendered obvious by any potential prior art.
Similarly, independent claim 10 recites, “wherein said method is
implemented without installing additional hardware at a subscriber’s
premises;” and independent claim 17 recites, “said service implemented
without installing additional hardware at a subscriber’s premises.” Likewise
then, one of ordinary skill in the art cannot reasonably understand the metes
and bounds of these claims either. Therefore, the Examiner also could not
have reasonably concluded whether independent claims 10 and 17 are
rendered obvious by any potential prior art.
II.
Claim 1 also possesses an additional ambiguity that does not appear in
either of independent claims 10 or 17. Specifically, the ambiguity relates to
the preamble of claim 1, which recites, “[a] system associating distinctive
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rings with a set of one or more callers, said system implemented remotely
from a subscriber’s telecommunication equipment” (emphasis added).
One definition of the term “system” is “an assemblage or combination
of things or parts forming a complex or unitary whole: a mountain system; a
railroad system.” (system, Random House Dictionary (Random House,
Inc.), available at Dictionary.com,
http://dictionary.reference.com/browse/system (last visited Nov. 12, 2009).)
As such, one reasonable interpretation of claim 1 is that it is directed
towards an apparatus. That is, claim 1 could be interpreted as intending to
recite, “an [apparatus] associating distinctive rings with a set of one or more
callers . . . .”
However, alternative definitions of the term “system” include: (1) “a
coordinated body of methods or a scheme or plan of procedure; . . . a system
of government.” and (2) “any formulated, regular, or special method or plan
of procedure: a system of marking, numbering, or measuring; a winning
system at bridge.” Id. Applying either of these latter definitions, then,
claim 1 could alternatively be interpreted as intending to recite, “a [method
of] associating distinctive rings with a set of one or more callers…”
As a general matter, there is nothing per se objectionable about using
the term “system” in a patent claim as a synonym for either of the terms,
“apparatus” or “method.” The term’s intended meaning can be commonly
gleaned from the context of its use and from the limitations in the body of
the claim. For example, when the subsequent limitations in the body of the
claim clearly recite structures it may be reasonably clear that “system” is
being used as a synonym for “apparatus.” Conversely, when the subsequent
limitations in the body of the claim clearly recite method steps it may be
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reasonably clear that “system” is being used as a synonym for “method.” In
such cases where the meaning of “system” is reasonably clear, using the
term does not impede one from ascertaining the metes and bounds of claim
protection being sought.
However, neither the context in which “system” is presently being
used in claim 1, nor the subsequent limitations appearing in the body of
claim 1, reasonably indicates whether “system” is intended to mean
“apparatus” or “method.” For example, the claim limitations “a subscriber
interface server storing [information]”; and “a class 5 switch working in
conjunction with said subscriber interface server identifying an incoming
call . . . , identifying a pre-set ringer type,” and “rendering said identified
pre-set ringer type . . . .” can be reasonably interpreted in two alternative
manners. On the one hand, the limitations can be interpreted as reciting two
devices (a server and a switch) as well as processes for making, and the
intended uses for, these devices. Alternatively though, the claim limitations
can be reasonably interpreted as reciting a series of method steps (storing
information, identifying a pre-set ringer type, and rendering said identified
pre-set ringer type), with the method claim being further limited to particular
devices (server and switch) that perform the recited method steps.
This ambiguity is relevant because the scope of patent protection
delineated by claim 1 differs depending upon whether the claim is
interpreted as reciting either an apparatus comprising a collection of
elements or alternatively a method. See Ex parte Lyell, 17 USPQ2d 1548,
1550 (BPAI 1990) (noting that “the statutory class of invention is important
in determining patentability and infringement”). For example, if claim 1 is
interpreted as being directed to an apparatus, a given subscriber interface
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server in combination with a given class 5 switch could potentially infringe
claim 1 even if the information identifying pre-set ringer types is pre-set
within the server by some process other than “via a menu-based
communication session between a subscriber’s telecommunication
equipment and said subscriber interface server.” See In re Thorpe, 777 F.2d
695, 697, (Fed. Cir. 1985) (noting that “even though product-by-process
claims are limited by and defined by the process, determination of
patentability is based on the product itself. The patentability of a product
does not depend on its method of production. If the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process” (citations omitted)). But, if claim 1 is alternatively interpreted as
being directed to a method, the process by which ringer type information is
pre-set in a given server would have bearing on whether claim 1 is infringed.
To summarize, in the present situation, the term “system” renders
claim 1 amenable to two plausible claim constructions. As such, claim 1 “‘is
not sufficiently precise to provide competitors with an accurate
determination of the ‘metes and bounds’ of protection involved’ and is
‘ambiguous. . . .’” IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (citations omitted). See also, Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf.
For the forgoing reasons, then, I would reverse the Examiner’s
obviousness rejection of independent claims 1, 10, and 17. The Examiner
could not have reasonably concluded whether these claims are rendered
obvious by the cited prior art. Furthermore, because none of dependent
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claims 3, 4, 12, or 13 clarifies the ambiguity of the independent claims, I
would reverse the Examiner’s obviousness rejection of these claims as well.

KMF

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