Ex Parte 5,255,309 et al

Patent Trial and Appeal Board

Sep 25, 2014

90012065 (P.T.A.B. Sep. 25, 2014)

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.
90/012,065 03/07/2012 5,255,309 A2DL-001/45US
305918-2026
1073
58249 7590 09/26/2014
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/26/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte RONALD A. KATZ TECHNOLOGY LICENSING L.P.
Appellant
____________
Appeal 2014-006130
Reexamination Control 90/012,065
Patent 5,255,309
Technology Center 3900
____________

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL
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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claim 46. Claims 11, 23–30, 32–35, 37, 41–45, and 47–58 are
not subject to reexamination. (Order Granting Request for Ex Parte
Reexamination 2, mailed May 11, 2012.) Claims 1–10, 12–22, 31, 36, and
38–40 have been cancelled in a previous reexamination proceeding. We
have jurisdiction under §§ 134(b) and 306.
An oral hearing scheduled for July 13, 2014, was waived. We affirm.

STATEMENT OF THE CASE
Reexamination Proceedings
Three previous requests for ex parte reexamination of U.S. Patent
No. 5,255,309 (the “’309 patent”) were filed on March 26, 2004, June 18,
2004, and January 20, 2006, and assigned Reexamination Control Nos.
90/006,976, 90/007,092, and 90/007,884, respectively. The reexamination
proceedings were merged, resulting in the issuance of an Ex Parte
Reexamination Certificate (8453rd) on August 9, 2011, US 5,255,309 C1, in
which claims 1–10, 12–22, 31, 36, and 38–40 were cancelled.
A subsequent request for ex parte reexamination of the ’309 patent
was filed on March 7, 2012, and assigned Reexamination Control
No. 90/012,065, which is the subject of this decision. The ’309 patent,
entitled “Telephonic-Interface Statistical Analysis System,” issued
October 19, 1993, to Ronald A. Katz, is said to be a division of Application
No. 07/640,337, filed January 11, 1991, which is said to be a continuation of
Application No. 07/335,923, filed April 10, 1989, which is said to be a
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continuation of Application No. 07/194,258, filed May 16, 1988, now U.S.
Patent No. 4,845,739, issued July 4, 1989. U.S. Patent No. 4,845,739 is said
to be a continuation-in-part of Application No. 07/018,244, filed
February 24, 1987, now U.S. Patent No. 4,792,968, issued December 20,
1988, which is said to be a continuation-in-part of Application
No. 06/753,299, filed July 10, 1985, now abandoned.
The ’309 patent is said to be assigned to Ronald A. Katz Technology
Licensing L.P., described as the real party in interest. The ’309 patent is
said to have an expiration date of December 20, 2005, by virtue of a terminal
disclaimer. (App. Br. 5.) Thus, the ’309 patent is now expired.

Appellant’s Invention
Appellant’s invention relates to a telephonic-interface statistical
analysis system including a multiplicity of individual terminals of a
communications facility (’309 patent, Abstract; col. 4, ll. 25–26), processing
systems and an associated series of automatic call distributors (col. 4, ll. 25–
28; Fig. 1). The communications facility is connected to the processing
systems through the automatic call distributors. (Col. 4, ll. 25–28.) The
processing systems include an interface with dialed number identification
service (DNIS), automatic number identification (ANI) capability, and voice
interface capabilities. (Col. 4, ll. 59–62.) The processing system can
include a qualification unit (col. 10, ll. 29–30; Fig. 4) for screening callers
(col. 5, ll. 25–26) and a designation unit (col. 10, ll. 31–32; Fig. 4) for
designating callers by significance and identification (col. 5, ll. 35–54). The
processing system can also be interconnected to an audio unit. (Col. 4,
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ll. 45–48.) Callers using the individual terminals are prompted by voice-
generated instructions to provide digital data that are stored for processing.
(Abstract.)

Related Litigation
The ’309 patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix. (App. Br. 82–105.)

The Claim
Claim 46 is exemplary, with disputed limitations in italics:
46. A control system for use with a communication
facility including remote terminals for individual callers,
wherein each of said remote terminals may comprise a
conventional telephone instrument including voice
communication means, and digital input means in the form of
an array of alphabetic numeric buttons for providing data, said
control system comprising:
an interface structure coupled to said communication
facility to interface said remote terminals for voice and digital
communication, and including means to provide caller data
signals representative of data relating to said individual callers
developed by sad remote terminals;
voice generator structure coupled through said interface
structure for actuating said remote terminals as to provide vocal
operating instructions to said individual callers;
record structure, including memory and control means,
connected to receive said caller data signals from said interface
structure for updating a file and storing digital caller data
relating to said individual callers provided from said digital
input means through said interface structure; and
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qualification structure controlled by said record structure
for testing caller data signals provided by a respective one of
said individual callers to specify a consumable participation key
for restricting the extent of access to said system to limit data
stored from said respective one of said individual callers on the
basis of entitlement.

The Rejections
1. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious
over Daudelin (US 4,797,910; Jan. 10, 1989) and Norris (Eileen Norris,
Phone Offers Action at Push of Button, ADVERTISING AGE, Feb. 6, 1986, at
29-30).
2. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious
over Daudelin and Dilks (US 3,622,995; Nov. 23, 1971).
3. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious
over Barger (US 4,071,698; Jan. 31, 1978) and Norris.
4. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious
over Barger and Dilks.
5. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious
over Von Meister (US 5,199,062; Mar. 30, 1993) and Norris.
6. Claim 46 stands rejected under 35 U.S.C. § 103(a) as obvious
over Von Meister and Dilks.
Appellant relies upon the following in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated
December 14, 2012.
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Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated
August 18, 2013.1

ANALYSIS
§ 103 Rejection – Barger and Dilks
We are unpersuaded by Appellant’s arguments (App. Br. 43–47, 53–
54; see also Reply Br. 3–4) that the combination of Barger and Dilks would
not have rendered obvious independent claim 46, which includes the
limitation “qualification structure . . . for testing caller data signals . . . to
specify a consumable participation key for restricting the extent of access to
said system to limit data stored from said respective one of said individual
callers on the basis of entitlement.”2
The Examiner found that the ticket or reservation number taught by
Dilks corresponds to the limitation “to specify a consumable participation
key for restricting the extent of access to said system to limit data stored
from said respective one of said individual callers on the basis of
entitlement.” (Ans. 52–53, 124–27.) In particular, the Examiner found that
“each ticket has a ticket code number which can be used a limited number of
times; that is, once the ticket is used, the caller makes the flight, the ticket

1 We have considered the declaration evidence to the extent raised by
Appellant’s arguments. This opinion only addresses arguments made by
Appellant. Arguments not made are considered waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
2 Because the ’309 patent is now expired, rather than applying the “broadest
reasonable interpretation” standard, we review the claims of an expired
patent similar to that of a district court’s review. In re Rambus Inc., 694
F.3d 42, 46 (Fed. Cir. 2012).
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code number is consumed and cannot be used again.” (Ans. 53.) The
Examiner concluded that
[i]t would have been obvious . . . to incorporate the ticket code
number of the Dilks et al. telephone reservation system
including the consumable key test into the automated customer
selected business/marketing system of the Barger et al. voice
responsive system, in order to enable access to the data for
checking, changing or automatic check-in customers.
(Ans. 54.) We agree with the Examiner.
Barger relates to “a system for marketing merchandise or services
capable of being demonstrated to prospective customers over telephone lines
. . . and for immediately accepting orders of selected merchandise or
services.” (Col. 1, ll. 8–13.) According to Barger,
[a] further object of the invention is to provide a system for
permitting a customer to place orders for merchandise or
services . . . and to arrange for payment by some credit account
number or other means, whereupon the merchandise or services
(or tickets for services) are dispatched to the customer by mail
or other delivery service.
(Col. 1, l. 65 to col. 2, l. 4.)
“In the first mode [of Barger], the operator elicits required
information from the customer, such as name and account number,
demonstrations desired, and orders for the merchandise or services
demonstrated . . . .” (Col. 2, ll. 33–37.) Barger explains that in a first mode
“customer service operators [are] under control of the data processor.”
(Col. 2, ll. 21–22.) In a second mode of Barger, an “automatic telephone
service . . . causes the data processor to communicate with the customer
through prerecorded messages played to the customer through the audio
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repeating means and codes entered by the customer through his telephone
keyboard.” (Col. 2, l. 65 to col. 3, l. 3.) To access the second mode, the
operator can transfer a customer’s call (col. 2, ll. 65–67) or the customer can
dial “a distinct telephone number for a line which the data processor
recognizes as being from a customer who has a push-button telephone and
wishes automatic telephone service” (col. 3, ll. 5–8). In a third mode, a
modified automatic telephone service is provided to “customers of a licensed
retailer of merchandise or services through the equivalent of push-button
telephones” (col. 3, ll. 8–10), such that “[a] Touch-Tone control of
demonstrations may be offered to customers of a subscribing record store or
a department store” (col. 9, ll. 63–65). Barger further explains that “[t]he
operator . . . greets the customer and elicits from the customer identification
data such as name, address, and account or credit card number” and “keys
the identification data into the data processor through the terminal 19 for
credit verification and asks the customer what may be done for the
customer.” (Col. 4, ll. 61–67.)
Dilks relates to “on-line checking of numbered reservations and/or the
control of credit card purchases, without referencing any data on the ticket or
credit card itself.” (Abstract.) Dilks explains that data relating to a
passenger’s airline itinerary includes a ticket or reservation number (i.e., the
element mapped to the claimed “consumable participation key”) stored in a
central control system (col. 7, ll. 20–30) such that “[t]he number read from
the ticket or entered by keyboard is used as a code number for identifying
and locating the reservation stored in the memory in these operations”
(col. 7, ll. 34–37). Figure 6 of Dilks illustrates that a passenger 301 can
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contact a reservation office 310 by telephone such that a reservation is sent
to a central processor system 320. (Col. 8, ll. 13–16.) Dilks also explains
that “[t]he ticket number may be used . . . as a key member for storage in an
associative memory together with the data to enable access to the data for
checking, changing or automatic check-in of the reservation.” (Col. 8, ll. 1–
6.) Furthermore, “[d]ata processor 290 may also be programmed to perform
periodic checking of stored reservations for expired ticket time limits or
expired confirmation time limits and other controls relevant to particular
flights.” (Col. 6, ll. 69–73.) Because Dilks provides an explanation that the
ticket or reservation number, which expires, can be used by the passenger to
check, change or automatically check-in the reservation, Dilks teaches the
limitation “to specify a consumable participation key for restricting the
extent of access to said system to limit data stored from said respective one
of said individual callers on the basis of entitlement.”
A person of ordinary skill in the art would have recognized that
incorporating the ticket number of Dilks to reference a purchase with the
telephone marketing system of Barger would improve Barger by providing
the ability to subsequently call the marketing system with a ticket number to
reference the appropriate order. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). Alternatively, the combination of Barger and Dilks is
nothing more than incorporating the known ticket number of Dilks to
reference a purchase with the known telephone marketing system of Barger,
to yield predictable results. Id. at 416. Thus, we agree with the Examiner
(Ans. 54) that modifying Barger to incorporate the ticket number of Dilks
would have been obvious to an ordinarily skilled artisan.
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First, Appellant argues that
Dilks does not disclose a “qualification structure controlled by
said record structure for testing caller data signals provided by a
respective one of said individual callers to specify a consumable
participation key for restricting the extent of access to said
system to limit data stored from said respective one of said
individual callers on the basis of entitlement.”
(App. Br. 45 (emphasis in original).) In particular, Appellant argues that
“Dilks does not disclose any ‘said system,’ namely the ‘control system’
recited in claim 46 including structures for an automated information
exchange with a caller (such as a voice response system).” (Id.) However,
the Examiner cited Barger for the qualification structure in general and Dilks
in combination with Barger for the particular limitation “to specify a
consumable participation key for restricting the extent of access to said
system to limit data stored from said respective one of said individual callers
on the basis of entitlement.” (Ans. 51–53.)
Second, Appellant argues that “[t]here is no cited description that the
ticket code allows a caller access to a service or part of service a predefined
limited number of times” and “[t]here is no cited disclosure in Dilks that a
ticket code number has a lifespan or time limit.” (App. Br. 46.) Contrary to
Appellant’s argument, the data processor 290 of Dilks periodic checks for
expired ticket time limits (col. 6, ll. 69–73) and as found by the Examiner,
because such ticket expires, the ticket number is only available from the time
the reservation is made until the time the ticket expires (see Ans. 53).
Third, Appellant argues that “[a] consumable key is effectively
‘consumed’ by use—it allows certain access a certain limited number of
times” (App. Br. 47) and “[n]othing in Dilks discloses or suggests the
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inventive concept of a telephonic participation key that is consumed by use”
(Reply Br. 3). Contrary to Appellant’s arguments, as found by the
Examiner, because Dilks relates to on-line checking of numbered airline
reservations, the ticket or reservation number would be consumed when the
passenger flight departs. (See Ans. 53.)
Fourth, Appellant argues that “Dilks does not have a ‘voice response
system’” and “Dilks merely has agents to enter reservation information into
a computer system.” (App. Br. 53.) Accordingly, Appellant argues, “Barger
endeavored to minimize the use of operators, therefore the approach in Dilks
is not inviting.” (Id.) However, the Examiner cited Barger, rather than
Dilks, for teaching the limitation of a “voice generator structure.” (Ans. 46.)
Last, Appellant argues “Barger is directed toward the telemarketing of
music” and “Dilks . . . is directed toward airline passenger and cargo
control.” (App. Br. 53.) Accordingly, Appellant argues, “Barger and Dilks
are non-analogous art” and “Barger and Dilks are not in the same field of
endeavor (telemarketing versus airline reservations).” (Id.)
The “Background and Summary of the Invention” section of the ’309
patent discloses that “[v]arious forms of publicly accessible communication
systems for providing access to a central station have been proposed, some
involving telecommunications” (col. 1, ll. 25–27) and “sometimes a need for
ancillary functions arise in that regard, e.g. it may be desirable to positively
identify . . . a specifically entitled group” (col. 1, ll. 28–31). Barger relates
to “a system for marketing merchandise or services capable of being
demonstrated to prospective customers over telephone lines . . . and for
immediately accepting orders of selected merchandise or services.” (Col. 1,
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ll. 8–13.) Dilks relates to “on-line checking of numbered reservations and/or
the control of credit card purchases, without referencing any data on the
ticket or credit card itself” (Abstract) and includes an embodiment in which
a passenger 310 contacts a reservation office 310 by telephone (col. 8,
ll. 13–16; Fig. 6). Therefore, both Barger and Dilks are from the same field
of endeavor as Appellant’s claimed invention because each of these
references relates to telecommunications with a central station coupled with
identification of an entitled group (e.g., a customer using the telephone
marketing system of Barger or an airline passenger using the numbered
reservation system of Dilks). See In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004).
Moreover, even assuming for the sake of argument that Barger and
Dilks are not in the same field of endeavor, both references are reasonably
pertinent to the particular problem with which the inventor is involved. The
“Background and Summary of the Invention” section of the ’309 patent
further discloses that “a need exists for an improved, effective, economical,
and expedient system of telecommunication incorporating means for
performing qualification, identification, analysis and selection of individual
persons.” (Col. 1, ll. 38–42.) Barger explains that customers of the system
for marketing merchandise are subjected to credit verification. (Col. 4,
ll. 61–67.) Dilks explains that a passenger’s airline itinerary includes a
ticket or reservation number. (Col. 7, ll. 20–30.) Therefore, both Barger and
Dilks are reasonably pertinent to the particular problem with which the
inventor is involved because each of these references solves the problem of
qualifying (e.g., the credit verification of Barger for qualifying customers) or
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identifying (e.g., the ticket or reservation number of Dilks for identifying an
airline passenger) individual persons. See Bigio, 381 F.3d at 1325.
Thus, we agree with the Examiner that the combination of Barger and
Dilks would have rendered obvious independent claim 46, which includes
the limitation “qualification structure . . . for testing caller data signals . . . to
specify a consumable participation key for restricting the extent of access to
said system to limit data stored from said respective one of said individual
callers on the basis of entitlement.”
Accordingly, we sustain the rejection of independent claim 46 under
35 U.S.C. § 103(a).

Other § 103 Rejections
We do not reach the rejections of claim 46 under 35 U.S.C. § 103(a)
as obvious over various combinations of Daudelin, Norris, Dilks, Barger,
and Von Meister. Affirmance of the obviousness-based rejection discussed
previously renders it unnecessary to reach the remaining obviousness
rejections, as all of pending claims have been addressed and found
unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).

DECISION
The Examiner’s decision rejecting claim 46 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED
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