David Rondeau et al.Download PDFPatent Trials and Appeals BoardApr 9, 202014878226 - (D) (P.T.A.B. Apr. 9, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/878,226 10/08/2015 David Rondeau 1218-US-C1 2001 83809 7590 04/09/2020 CenturyLink Intellectual Property LLC Patent Docketing 1025 Eldorado Blvd. Broomfield, CO 80021 EXAMINER CHEN, CAI Y ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 04/09/2020 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): patent.docketing@level3.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID RONDEAU, DAVID E. EMERSON, GARY LAFRENIERE, and MIKE GOERGEN Appeal 2018-006823 Application 14/878,226 Technology Center 2400 Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant, CenturyLink Intellectual Property LLC, appeals from the Examiner’s decision rejecting claims 1–20, which are all claims pending in the application.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as CenturyLink Intellectual Property LLC. Appeal Br. 3. Appeal 2018-006823 Application 14/878,226 2 STATEMENT OF THE CASE2 The claims are directed to a system and method for set-top box recording. See Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed invention relate to “a set-top box that comprises a memory component for storing computer executable instructions, a data storage unit for storing recorded voice communications and recorded media content files; a line monitoring module for detecting a connected call on a communication line; and a processing unit for executing the computer executable instructions to record voice communications in response to detecting the connected call.” Spec. ¶ 2. Exemplary Claims Claims 1 and 9, reproduced below, are representative of the subject matter on appeal (emphases added to contested prior-art limitations): 1. A method of recording a voice communication on a set-top box, the method comprising: decoding a television signal to display a television program on a display unit associated with the set-top box; monitoring, by the set-top box, a communication line to detect a connected phone call between a first party associated with the set-top box and at least one second party; recording, by the set-top box, audio of a live conversation associated with the connected phone call on the communication line being monitored; 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Feb. 28, 2018); Reply Brief (“Reply Br.,” filed June 20, 2018); Examiner’s Answer (“Ans.,” mailed May 1, 2018); Final Office Action (“Final Act.,” mailed Aug. 29, 2017); and the original Specification (“Spec.,” filed Oct. 8, 2015) (claiming benefit of US 12/347,414, filed Dec. 31, 2008). Appeal 2018-006823 Application 14/878,226 3 storing the audio in a data storage unit associated with the set-top box; and generating a first user interface that displays a list of a plurality of recorded voice communications along with information relating to each of the plurality of recorded voice communications, the plurality of recorded voice communications comprising the recorded audio of the live conversation associated with the connected call between the first party associated with the set-top box and the at least one second party. 9. The method of claim 1, wherein the set-top box comprises an analog telephone adapter, and wherein the method comprises communicating directly with a Voice over Internet Protocol (VoIP) server. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Hirschberg US 2003/0128820 A1 July 10, 2003 Carroll US 2005/0207542 A1 Sept. 22, 2005 Eyal US 7,571,458 B1 Aug. 4, 2009 Rejections on Appeal R1. Claims 1–5, 7–15, and 17–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Eyal and Carroll. Final Act. 3. R2. Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Eyal, Carroll, and Hirschberg. Final Act. 7. Appeal 2018-006823 Application 14/878,226 4 CLAIM GROUPING Based on Appellant’s arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 1–5, 7, 11–15, and 17 on the basis of representative claim 1; we decide the appeal of obviousness Rejection R1 of claims 8 and 18 on the basis of representative claim 8; and we decide the appeal of obviousness Rejection R1 of claims 10 and 20 on the basis of representative claim 10. Appeal Br. 12–29. We address Rejection R1 of separately argued claims 9 and 19, infra. Remaining claims 6 and 16 in Rejection R2, not argued separately, stand or fall with the respective independent claim from which they depend.3 PRINCIPLES OF LAW During prosecution, claims must be given their broadest reasonable interpretation when reading claim language “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2018-006823 Application 14/878,226 5 contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted). With respect to obviousness, “one cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Id. at 425. Appeal 2018-006823 Application 14/878,226 6 In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We agree with particular arguments made by Appellant with respect to dependent claims 9 and 19. However, we disagree with Appellant’s arguments with respect to claims 1–8, 10–18, and 20 and, unless otherwise Appeal 2018-006823 Application 14/878,226 7 noted, we incorporate by reference herein and 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 and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding claims 1, 8, 9, and 10 for emphasis as follows. 1. § 103(a) Rejection R1 of Claims 1–5, 7, 11–15, and 17 Issue 1 Appellant argues (Appeal Br. 15–25; Reply Br. 4–7) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Eyal and Carroll is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests “[a] method of recording a voice communication on a set-top box” that includes, inter alia, the steps of “monitoring, by the set-top box, a communication line to detect a connected phone call between a first party associated with the set-top box and at least one second party,” and “recording, by the set-top box, audio of a live conversation associated with the connected phone call on the communication line being monitored,” as recited in claim 1? Analysis Appellant first argues the Examiner failed to set forth a prima facie case of unpatentability. Appeal Br. 12–14. We disagree because the Federal Circuit has repeatedly noted that “the prima facie case is merely a procedural device that enables an appropriate Appeal 2018-006823 Application 14/878,226 8 shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Examiner satisfies the burden of establishing a prima facie case under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate and informative manner. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). If the Examiner “adequately explain[s] the shortcomings . . . the burden shifts to the applicant to rebut the prima facie case with evidence and/or argument.” Hyatt, 492 F.3d at 1370. We find the Final Office Action adequately explains the § 103(a) rejection. See Final Act. 3–7. The Examiner’s statements satisfy § 132(a) because they apply the KSR analytical framework, and apprise Appellant of the reasons for the obviousness rejection under that framework. Appellant has not responded by alleging a failure to understand the rejection, but that “[t]he Examiner has failed to establish a prima facie case that any rejected claim is unpatentable” (Appeal Br. 12), and “[t]he combination of Eyal and Carroll does not support a prima facie case that any pending claim is obvious, at least because those two references do not demonstrate that every element of any claim is in the prior art.” Appeal Br. 15 We are not persuaded by these arguments concerning the purported deficiencies of the teachings and suggestions of the cited prior art, as discussed further below. “[M]onitoring, by the set-top box, a communication line” The Examiner initially finds Eyal Figures 1 and 3 teach or suggest the disputed “monitoring” limitation. Final Act. 3. The Examiner further determined, under the broadest reasonable interpretation, this disputed Appeal 2018-006823 Application 14/878,226 9 limitation reads on the subscriber answering the phone call from the second party, i.e., the monitoring task is performed upon answering the call, and Eyal’s messaging server is part of the set-top box, and has the ability to answer the call if the call is not answered. Final Act. 2 (citing Eyal, Fig. 3; col. 8, ll. 43–57). In response, Appellant contends “[t]he Examiner fails to establish that either reference teaches a set-top box that monitors a communication line to detect a connected phone call, as claim 1 requires.” Appeal Br. 15. With reference to Eyal Figure 1, Appellant further argues: Even assuming that the ability to answer a call might be equivalent to monitoring a communication line to detect a connected phone call (which Appellant disputes below), the only component of Eyal that the Examiner even alleges performs this functionality is Eyal’s messaging server. Unfortunately, Eyal unambiguously teaches that the messaging server is not part of the set-top box so the messaging server simply cannot satisfy the requirement of claim 1. As shown in Fig. 1 of Eyal . . . Eyal teaches that the messaging server resides in a completely different location than the set-top box. Appeal Br. 16 (referencing Eyal Fig. 1). “[Eyal Figure 1] in no way suggests that the messaging server 160 could be in the set-top box 115.” Id. at 17. “Thus, in all the embodiments of Eyal, the messaging server is always located remote from the set-top box.” Id. at 18 (citing Eyal Figs. 8, 9, 16– 20). “There is no indication that the messaging server 160 in Eyal monitors a communication line to detect a connected call and answers the call based on a determination that the call was not answered at a subscriber premises. Thus, at most, it is the telephony switch 150 that monitors a communication line. There is no teaching or suggestion in Eyal that set-top box 115 and/or Appeal 2018-006823 Application 14/878,226 10 messaging server 160 monitor a communication line.” Id. at 21. “Eyal only determines whether a call was unanswered and then a switch (not set-top box 115) redirects the unanswered call to the messaging server 160 located at the headend 165. . . . Eyal determines whether a call was unanswered in order to record a voicemail message from a caller.” Id. at 22. “Claim 1, on the other hand, monitors for a connected call to record a live, two-way conversation between at least two parties. . . . There is no indication that the set-top box 115 monitors the communication line connected to the telephone 125.” Id. In response to Appellant’s contention, the Examiner clarifies the rejection in the Answer by finding: [I]n this case, under the broadest reasonable interpretation, the examiner interprets “a connected call” as when one caller associated with the set top box calls [a] second caller associated with second top box, and as long as the second caller from [the] second set top box receives the ringing of the phone call, then the call is connected. A connected call does not necessarily [have] to be an answered call. The reason this part of [the] claim limitation is met by Eyal [is] because Eyal discloses the concept of a phone call from a caller is received by a subscriber’s set top box, wherein the set top box includes telephone, video cam[era], and TV, the fact that the phone call is received at the set top box, and the phone [rings] is an indication that set top box monitors the communication line by detecting the incoming connected phone call. Ans. 8 (citing Eyal Fig. 1, element 115; col. 8, ll. 42–50); see also Ans. 3 (“A connected call [is] broadly interpreted as a received phone call that is connected by ringing.”). In the Reply Brief, Appellant acknowledges the Examiner’s clarified finding that a connected call does not necessarily have to be an answered Appeal 2018-006823 Application 14/878,226 11 call (Reply Br. 4–5), but responds that “[c]laim 1 requires that the monitoring task be performed when the call is answered.” Reply Br. 5 (emphasis added). “In other words, the call must be connected/answered between a first party/person and at least one second party/person in order for any monitoring to satisfy this requirement of claim 1.” Reply Br. 6. We disagree with these contentions because claim 1, in pertinent part, does not recite an answered call, but instead recites “monitoring . . . to detect a connected phone call” (emphasis added). Under a broad, but reasonable interpretation, the Examiner has made a finding that a connected call includes unanswered calls, e.g., calls that are considered to be connected by virtue of the phone ringing. Appellant does not persuasively rebut the Examiner’s finding in this regard, but instead argues the call must be answered to be considered “connected.” Further, we look to the Specification for context in construing claim 1. Appellant proffers Specification paragraphs 2, 30, and 48 as supporting the contested “monitoring” limitation. See Appeal Br. 5 (Summary of Claimed Subject Matter). However, Appellant does not point to any evidence of record that would render the Examiner’s interpretation as being overly broad or inconsistent with the Specification. We note, for example, paragraph 30 of the Specification merely describes an exemplary embodiment, and does not provide an explicit definition of a connected call. “At step 308, the process monitors for call connection. For example, in one embodiment, once the process no longer detects the audible ring back frequency, the process, at step 310, determines that the call is connected.” Spec. ¶ 30 (emphasis added). We find this exemplary embodiment does not rise to the level of an Appeal 2018-006823 Application 14/878,226 12 explicit definition that would counter the Examiner’s broad but reasonable interpretation.4 For these reasons, we are not persuaded the Examiner erred in finding Eyal teaches or suggests the contested “monitoring” limitation. “[R]ecording, by the set-top box, audio of a live conversation” The Examiner finds Carroll teaches the contested “recording” limitation. Final Act. 4 (citing Carroll Fig. 5; ¶¶ 32, 48; claim 1). Appellant responds by stating “[h]owever, in Carroll, two separate and distinct intermediary devices are used to record a telephone call and a television program. As shown in Figs. 3 and 8, the telephone call recording system (Fig. 3) and the television recording system (Fig. 8) are two separate and distinct embodiments of Carroll’s recording system.” Appeal Br. 23. “Thus, the intermediary device that is used with voice communications is a telephony switch 40, such as an exchange switch (located at the carrier) or a PBX switch, neither of which have anything to do with a set-top box.” Appeal Br. 24. Appellant further argues, “[a]t most, Carrol teaches that a voice communication communicatively coupled to switch 40 (not video signal display device 96) may be recorded. Thus, switch 40 of Carroll possibly could monitor for a connected call between two parties and facilitate recording the connected call. There is no indication and no disclosure, 4 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Appeal 2018-006823 Application 14/878,226 13 however, in Carroll, that Carroll’s video signal device 96 may be used to record audio of a live conversation associated with a connected phone call on the communication line being monitored.” Appeal Br. 25. Appellant additionally contends: For example, neither Carroll or any other identified reference even suggests how an exchange switch or PBX switch (both being complex telephony devices designed to route calls among many different telephones and centrally located) with a set-top box (which is a generally a single-user device located at a subscriber premises, and the Examiner provides no rationale for such a complicated combination. As such, the Examiner has identified nothing (other than hindsight) that might lead a skilled artisan even to combine the two different embodiments in Carroll, let alone to combine this amalgamation with Eyal’s system. Appeal Br. 25. In response, the Examiner finds the “recording” limitation “is met by Carroll because Carroll discloses the concept of recording a live “convers[ation] during a telephone call between two persons by a device.” Ans. 8 (citing Carroll ¶¶ 32, 48). Moreover, the Examiner finds it would have been obvious for one of ordinary skill in the art at the time of invention to modify Eyal to incorporate the teaching of Carroll that allows a user to playback and listen to a telephone conservation. Ans. 4. Appellant contends the Examiner used “hindsight” in suggesting a modification of Carroll’s video signal device 96 (Appeal Br. 25), but Appellant does not address the reasoning provided except as noted above. By not showing error in the reasoning provided, Appellant has not shown error in the conclusion as to obviousness. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an “impermissible hindsight” argument as Appeal 2018-006823 Application 14/878,226 14 “essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references.”). First, as explained in In re McLaughlin: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Our review of the record establishes that the Examiner’s case for obviousness is only based on knowledge which was within the level of ordinary skill at the time of Appellant’s invention and does not include knowledge gleaned only from the Appellant’s disclosure. Second, the Examiner identifies the relevant portions of each of the references relied on throughout the Examiner’s Answer. See Ans. 2-4. To the extent that the Examiner relies on the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). As our Appeal 2018-006823 Application 14/878,226 15 precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR 550 U.S. at 418. In this case, the Examiner’s conclusions of obviousness are clearly articulated and are based on detailed factual findings that are supported by the references of record. See Ans. 2–8. Thus, we agree with the Examiner’s findings and conclusions. Moreover, Appellant has not demonstrated that the Examiner’s proffered combination of references would have been “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor has Appellant provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Accordingly, we affirm the Examiner’s Rejection R1 of claim 1, and grouped claims 2–5, 7, 11–15, and 17, which fall therewith. See Claim Grouping, supra. Appeal 2018-006823 Application 14/878,226 16 2. § 103(a) Rejection R1 of Claims 8 and 18 Issue 2 Appellant argues (Appeal Br. 26–27; Reply Br. 8–9) the Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) as being obvious over the combination of Eyal and Carroll is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the “method of claim 1, wherein monitoring a communication line comprises monitoring a voltage level traveling through the communication line,” as recited in claim 8? Analysis In the Final Action (6), the Examiner finds Eyal figure 8 teaches or suggests monitoring a voltage level traveling through the communication line, as recited in dependent claim 8. Appellant contends “for at least the reasons set forth above [with respect to claim 1], set-top box 115 of Eyal does not monitor a communication line. Thus, because set-top box 115 of Eyal does not monitor a communication line, set-top box 115 of Eyal a fortioari does not monitor a voltage level travelling through the communication line,” and “there is no disclosure, in Eyal, of monitoring, by any device, a voltage level travelling through the communication line.” Appeal Br. 26. In response, the Examiner “disagrees. The fact that the phone call is received by the set top box and the ringing of the phone call disclose by Eyal (Fig.1, col. 8, lines 42–50), there has to be a voltage level being detected Appeal 2018-006823 Application 14/878,226 17 coming to the set top box in order for the phone to be received and the phone rang.” Ans. 9. Appellant contends nothing in the Examiner’s Answer meets the burden of proving the inherent disclosure of monitoring a voltage, i.e., “[t]he Examiner has not met the burden to assert that Eyal inherently discloses voltage detection.” Reply Br. 8. A finding that the element is the inevitable result of a process or is necessarily present in the prior art creates a rebuttable presumption of inherency. In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977): [W]here 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. To rebut the presumption, the applicant must prove that the prior art does not inherently possess the claimed feature. Id. The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under either 35 U.S.C. §§ 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed a 35 U.S.C. § 103 rejection based in part on inherent disclosure in one of the references). See also In re Appeal 2018-006823 Application 14/878,226 18 Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983); and see PAR Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc., 773 F.3d 1186 (Fed. Cir. 2014).5 The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. Best, 562 F.2d at 1254-55; see also Crown Operations Int’l, LTD v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this “burden of production by ‘[adequately] explaining the shortcomings it perceives so that the applicant is properly notified and able to respond.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)). Once the Examiner has made a finding of inherency, the burden of proof then shifts to the applicant “to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” Best, 562 F.2d at 1254-55; In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the Examiner established a prima facie case, the burden of proof was properly shifted to the applicant to rebut the finding of inherency). We determine that the Examiner made a finding of inherency that a ringing signal on a communications line implies that a voltage is present on the line, and that it is inherent to monitor such a voltage to determine that there is an incoming call. Ans. 5. Thus, the burden of production was shifted to Appellant. 5 The question of obviousness is “based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently.” In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). Appeal 2018-006823 Application 14/878,226 19 However, Appellant has not properly responded to their burden by providing any evidence or argument to counter the Examiner’s finding of inherency. Instead, Appellant relies upon their argument concerning the purported deficiencies of Eyal with respect to claim 1. Reply Br. 8–9. According to Appellant, “because Eyal does not disclose monitoring a ringing phone line, there would be no need for the set-top box of Eyal to monitor a voltage level; the Examiner has not met his burden to establish that this element is met by the prior art.” Reply Br. 9. We are not persuaded Appellant’s argument concerning the inherency of monitoring a communication line to detect a connected phone call by monitoring for a voltage on the line has fully met the burden of traversing the Examiner’s finding of inherency. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 8, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Accordingly, we affirm the Examiner’s Rejection R1 of claim 8, and grouped claim 18, which falls therewith. See Claim Grouping, supra. 3. § 103(a) Rejection R1 of Claims 9 and 19 Issue 3 Appellant argues the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as being obvious over the combination of Eyal and Carroll is in error. Appeal Br. 27–28. These contentions present us with the following issue: Appeal 2018-006823 Application 14/878,226 20 Did the Examiner err in finding the cited prior art combination teaches or suggests the “method of claim 1, wherein the set-top box comprises an analog telephone adapter, and wherein the method comprises communicating directly with a Voice over Internet Protocol (VoIP) server,” as recited in claim 9? Analysis The Examiner cites Figure 1 of Eyal as teaching or suggesting the disputed limitation. Final Act. 6; Ans. 5. The Examiner further elaborates by finding “Eyal discloses the concept of a set top box to receive [an] analog signal (which would include analog telephonic signal) and process the telephonic call and direct with the phone call to the messaging server (col. 7, lines 7, lines 52, col. 8, lines 42-57), therefore the entire claim limitation of claim 9 is met by Eyal.” Ans. 9. Appellant contends “there is no indication in Fig. 1 of Eyal that the set-top box has an analog telephone adapter. Although Eyal discloses that telephone 125 may be connected to set-top box 115 (Eyal, Fig. 1 and col. 8:64-66), this connection does not mean that set-top box 115 has an analog telephone adapter.” Appeal Br. 27. We have reviewed the cited portion of Eyal, and are persuaded by Appellant’s arguments. We do not find a teaching or suggestion in Eyal of an analog telephone adaptor, as claimed. For essentially the same reasons argued by Appellant (id.), we do not sustain the Examiner’s rejection of dependent claim 9, and also the rejection of dependent claim 19, which recites the disputed limitation in commensurate form. Appeal 2018-006823 Application 14/878,226 21 4. § 103(a) Rejection R1 of Claims 10 and 20 Issue 4 Appellant argues (Appeal Br. 28–30) the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as being obvious over the combination of Eyal and Carroll is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the “method of claim 1,” that further includes the step of “detecting, by the set-top box, that the connected phone call is associated with caller identifier specified by user preferences stored at the set-top box, and wherein the audio of the live conversation is recorded in response to detecting that the connected phone call is associated with the specified caller identifier,” as recited in claim 10? Analysis The Examiner cites to Figure 3 of Eyal as teaching or suggesting the disputed limitation of claim 10. Final Act. 6. “[T]he person that sent the message is listed.” Eyal col. 12, ll. 46–47. Appellant contends “Fig. 3 of Eyal, however, is merely an example of a display for recorded voicemails. There is no indication, in Eyal, that the messaging server uses caller identifiers to determine which voicemail messages to record.” Appeal Br. 29. The Examiner clarifies the rejection by finding that the combination of Eyal and Carroll teaches or suggests the disputed limitation of claim 10 because Eyal discloses that the caller identifier such as “Jones or Unknown caller” is received as illustrated in Fig. 3 (col. 12, Appeal 2018-006823 Application 14/878,226 22 lines 23-55), and the claim limitation “wherein the audio of the live conversation is recorded in response to detecting that the connected phone call is associated with the specified caller identifier” is met by Carroll, because Carroll teaches the concept of recording a conversation between two person[s] during a telephone call (para. 32, para. 48). As such, the entire claim limitation of claim 9 is [disclosed] by [the] combination of Eyal and Carroll. Ans. 10. In the Reply Brief (9), Appellant states the Examiner’s position is novel, and that the reference combination “still cannot be used to teach or suggest” the disputed limitation of claim 10, purportedly because: The combination of a caller identifier (Eyal) and a telephone recording (Carroll) would cause two independent results that are unassociated with each other: (1) an identification of who called and (2) a recording of the call. Alternatively, the combination of Eyal and Carroll might, at most, result in the recording being identified by a specific caller identifier. However, the combination would not result in recording a call based on the detected/specified caller identifier, as required by claim 10. Reply Br. 10. We are not persuaded by Appellant’s argument concerning the combined teachings of Eyal and Carroll. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitations of claim 10, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Accordingly, we affirm the Examiner’s Rejection R1 of claim 10, and grouped claim 20 that falls therewith. See Claim Grouping, supra. Appeal 2018-006823 Application 14/878,226 23 5. § 103 Rejection R2 of Claims 6 and 16 In view of the lack of any substantive or separate arguments directed to obviousness Rejection R2 of claims 6 and 16 under § 103, we sustain the Examiner’s rejection of these claims. See generally, Appeal Br.; Reply Br. Arguments not made are waived.6 REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 4–10) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause, which Appellant has not shown. See 37 C.F.R. § 41.41(b)(2). CONCLUSIONS (1) The Examiner did not err with respect to obviousness Rejection R1 of claims 1–5, 7, 8, 10–15, 17, 18, and 20 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. (2) The Examiner erred with respect to obviousness Rejection R1 of claims 9 and 19 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we do not sustain the rejections. (3) The Examiner did not err with respect to obviousness Rejection R2 of claims 6 and 16 under 35 U.S.C. § 103(a) over the cited prior art combination of record, and we sustain the rejection. 6 Appellant’s briefs do not acknowledge or otherwise address Rejection R2 of claims 6 and 16. Appeal 2018-006823 Application 14/878,226 24 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis / References Affirmed Reversed 1–5, 7, 8, 10– 15, 17, 18, 20 103(a) Obviousness Eyal, Carroll 1–5, 7, 8, 10– 15, 17, 18, 20 9, 19 103(a) Obviousness Eyal, Carroll 9, 19 6, 16 103(a) Obviousness Eyal, Carroll, Hirschberg 6, 16 Overall Outcome 1–8, 10–18, 20 9, 19 FINALITY AND RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART Copy with citationCopy as parenthetical citation