Ex Parte 5561707 et alDownload PDFPatent Trial and Appeal BoardSep 29, 201490012132 (P.T.A.B. Sep. 29, 2014) 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. 90/012,066 03/07/2012 5561707 A2DL-001/40US 305918-2018 2697 58249 7590 09/30/2014 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 09/30/2014 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 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. 90/012,132 02/07/2012 5561707 A2DL-001/41US 305918-2019 3349 58249 7590 09/30/2014 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 09/30/2014 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 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 Technology Center 3900 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 2 This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claim 24, 128, and 129. Claims 1–8, 12, 13, 17, 25, 27, 36, 39– 41, 52, 60, 61, 66, 67, 69, 71–73, 75, 77–86, 88–95, 111–114, 116–118, 130, 133, 134, 136, 152, 171, and 201 are not subject to reexamination. Claims 9–11, 14–16, 18–23, 26, 28–35, 37, 38, 42–51, 53–59, 62–65, 68, 70, 74, 76, 87, 96–110, 115, 119–127, 131, 132, 135, 137–151, 153–170, 172– 200, and 202–207 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-in-part. STATEMENT OF THE CASE Reexamination Proceedings Two previous requests for ex parte reexamination of U.S. Patent No. 5,561,707 (the ’707 patent) were filed on March 26, 2004 and June 10, 2004, and assigned Reexamination Control Nos. 90/006,978 and 90/007,074, respectively. The reexamination proceedings were merged, resulting in the issuance of an Ex Parte Reexamination Certificate (7717th) on September 7, 2010, US 5,561,707 C1, in which claims 9–11, 14–16, 18– 23, 26, 28–35, 37, 38, 42–51, 53–59, 62–65, 68, 70, 74, 76, 87, 96–110, 115, 119–127, 131, 132, 135, 137–151, 153–170, 172–200, and 202–207 were cancelled. Two subsequent requests for ex parte reexamination of the ’707 patent were filed on March 7, 2012 and February 7, 2012, assigned Reexamination Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 3 Control Nos. 90/012,066 and 90/012,132, respectively. The reexamination proceedings were merged and are the subject of this decision. The ’707 patent entitled “Telephonic-Interface Statistical Analysis System,” issued October 1, 1996, to Ronald A. Katz, based on Application No. 08/139,307, filed October 18, 1993, which is said to be a continuation of Application No. 07/803,269, filed December 3, 1991, now U.S. Patent No. 5,255,309, issued October 19, 1993, which is said to be a division of Application No. 07/640,337, filed January 11, 1991, now abandoned, which is said to be a continuation of Application No. 07/335,923, filed April 10, 1989, now U.S. Patent No. 6,016,344, issued January 18, 2000, which is said to be a continuation of Application No. 07/194,258, filed May 16, 1988, now U.S. Patent No. 4,845,739, issued July 4, 1989, which 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 ’707 patent is said to be assigned to Ronald A. Katz Technology Licensing L.P., the real party in interest. The ’707 patent is said to have an expiration date of December 20, 2005 by virtue of a terminal disclaimer. (App. Br. 7.) Thus, the ’707 patent is now expired. Appellant’s Invention Appellant’s invention relates to a telephonic-interface statistical analysis system including individual terminals of a communications facility, in which callers are prompted by voice-generated instructions to provide Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 4 digital data that is stored for processing. The caller’s identification data is confirmed, and callers may be ranked and accounted for on the basis of entitlement, sequence or demographics. Caller data is processed and correlated to isolate a select group of callers who can be identified and confirmed. (Abstract.) Related Litigation The ’707 patent is or has been involved in numerous litigations, as summarized in the Related Proceedings Appendix. (App. Br. 105–128.) The Claims Claims 24, 96, 128, and 129 are exemplary, with disputed limitations in italics: 24. An analysis 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 analysis 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 said remote terminals; voice generator structure coupled through said interface structure for actuating said remote terminals as to provide voice operating instructions to said individual callers; record structure, including memory and control means, connected to receive said caller Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 5 data signals from said interface structure for accessing a file and storing digital caller data relating to said individual callers provided from said digital input means through said interface structure; and qualification structure for operation at a predetermined time for testing caller data signals provided by at least one of said individual callers to specify a consumable participation key for restricting the extent of access to at least a portion of said system by said one of said individual callers on the basis of entitlement. 96. An analysis 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 and wherein said communication facility has a capability to provide call data signals indicative of calling number identification data for at least certain of said individual callers, said analysis control system comprising: interface structure coupled to said communication facility to interface each of said remote terminals for voice and digital communication, and including means to provide signals representative of data developed by said remote terminals and for receiving said calling number identification data; 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 said interface structure for accessing a file and storing data relating to certain select ones of said individual callers in accordance with said calling number identification data; qualification structure controlled by said record structure for controlling access to said system by said individual callers; and means for processing at least certain of said data developed by said terminals and said calling number identification data relating to certain select ones of said individual callers. Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 6 128. A system according to claim 96, further comprising: a data base for storing unacceptable numbers as negative file data. 129. A system according to claim 128, wherein said qualification structure further executes a test for unacceptable numbers based upon said data developed by said terminals. The Rejections 1. Claim 24 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 24 stands rejected under 35 U.S.C. § 103(a) as obvious over Barger (US 4,071,698; Jan. 31, 1978) and Norris. 3. Claim 24 stands rejected under 35 U.S.C. § 103(a) as obvious over Von Meister (US 5,199,062; Mar. 30, 1993) and Norris. 4. Claim 128 stands rejected under 35 U.S.C. § 102(b) as anticipated by De Bruyn (CA 1,162,336; Feb. 14, 1984). 1 5. Claims 128 and 129 stand rejected under 35 U.S.C. § 103(a) as obvious over De Bruyn and Emerson (S. Thomas Emerson, Voice Response Systems Technology to the Rescue for Business Users, SPEECH TECH. 99–103 (1983)). 6. Claims 128 and 129 stand rejected under 35 U.S.C. § 103(a) as obvious over De Bruyn and Levine (US 4,531,023; July 23, 1985). 1 The Examiner has withdrawn the rejection of claim 129 under 35 U.S.C. § 102(b). (Ans. 73–74.) Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 7 Appellant relied 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 (“Brody Declaration” or “Brody Decl.”). Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated August 14, 2013. 2 ANALYSIS Claim 24 We are persuaded by Appellant’s arguments (App. Br. 12, 17–18, 33; see also Reply Br. 2) that priority Application No. 06/753,299 (the “’299 application”), filed July 10, 1985, provides written description support for the limitation “a consumable participation key for restricting the extent of access to at least a portion of said system by said one of said individual callers on the basis of entitlement,” and thus, Norris, published February 6, 1986, does not qualify as prior art. 3 The Examiner found that “[t]he concept of a ‘consumable participation key’ with an unspecified use limit are entitled only to a [date of] 16 May 1988 therefore 16 May 1988 is the earliest priority afforded [to] claim 24 of the ’707 patent.” (Ans. 21 (citation omitted).) In particular, 2 This opinion only addresses arguments made by Appellant. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). We have considered the declaration evidence to the extent raised by Appellant’s arguments. 3 Because the ’707 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). Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 8 [t]he Examiner finds, based on the doctrine of claim differentiation, Appellant’s mere recitation to the restrictive degree/amount of access to the system being a “one time only use” in claim 102 is clear and sufficient evidence that the restrictive degree/amount of access to the system in claim 24, just as in claims 96, 97 and 101, is broader and is not explicitly limited to a single use (i.e. an unspecified use-limit). (Ans. 81.) Accordingly, the Examiner concluded, Norris qualifies as prior art. (Ans. 21.) We do not agree. Independent claim 24 recites “a consumable participation key for restricting the extent of access to at least a portion of said system by said one of said individual callers on the basis of entitlement.” However, claim 24 does not expressly recite the number of times such “consumable participation key” can be used prior to its consumption. Furthermore, because no other claims in the ’707 patent depend from claim 24 to further limit its scope, the doctrine of claim differentiation when discussing claim 102, which depends from independent claim 96, does not demonstrate a difference in scope concerning independent claim 24. Accordingly, the scope of the limitation, “for restricting the extent of access to at least a portion of said system by said one said individual callers on the basis of entitlement” on its face, remains unclear. To resolve this ambiguity with respect to claim 24, we turn to the specification of the ’707 patent, which claims priority to the ’299 application. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (the ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the remainder of the specification”). The ’299 application describes “an analysis and selection system for operation in Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 9 cooperation with a public communication facility, e.g. a telephone system” (p. 2, ll. 15–17), such that “if a select group of callers are to have access to the system, a key test unit 23 qualifies individual callers who present a key number” (p. 5, ll. 29–32 (emphasis added)). The ’299 application provides the following two examples: For example, a person might purchase a kit containing the apparatus and instructions to perform various non-invasive procedures to obtain data that could indicate a health condition, e.g. pregnancy. The kit containing the apparatus could also include a key number for qualifying the purchase to access the computer 22. The qualification would be performed by the key test unit 23 which might simply incorporate a look-up table to check off key numbers as they are used or “consumed”. (P. 7, ll. 22–31 (emphases added).) As an alternative, if a selective-group polling operation is performed, as mentioned above, the caller is qualified by providing the “one-time” key number included in his package. As indicated above, the unit 23 may incorporate a look-up table for proper key numbers. (P. 10, ll. 14–19 (emphases added).) Because the two examples provided by the ’299 application describe incorporating a look-up table, in which key numbers are checked off as they are “consumed,” the ’299 application only provides written description support for a single-use “consumable participation key.” Therefore, because claim 24 is ambiguous as to the number of times the “consumable participation key” can be used, and claim 24 cannot be amended due to patent expiration, we construe “consumable participation key” as a single-use “consumable participation key” to preserve validity. See Phillips, 415 F.3d at 1315-16 (indicating that Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 10 the specification is highly relevant to claim construction analysis when there is doubt or ambiguity). Appellant argues that “the ‘299 application was not specifically and narrowly directed to a one-time use invention.” (App. Br. 34.) In particular, Appellant argues that “[t]he described health kit example disclosed the concept of ‘consuming’ the key, regardless of how many uses it would take to consume it” and “[t]he description of a ‘one time’ key, as opposed to the general ‘key’ in the health kit embodiment, confirms that the invention was not limited to just the ‘one time’ embodiment.” (Id.) Contrary to Appellant’s arguments, the ’299 application discloses that “[t]he qualification would be performed by the key test unit 23 which might simply incorporate a look-up table to check off key numbers as they are used or ‘consumed’” (p. 7, ll. 28–31 (emphasis added)), which indicates that key number are “consumed” only once (i.e., one-time use), when they are checked off the look-up table. However, we are persuaded by Appellant’s argument that “[a]ll of the grounds of rejection of claim 24 are improper because they rely on references that are not prior art to that claim” because “[c]laim 24 is entitled to a priority date at least as early as its parent application priority date of July 10, 1985” and “Norris, necessarily relied upon for all three grounds of rejection, is dated February 1986.” (App. Br. 12.) Therefore, we disagree with the Examiner that priority ’299 application does not provide written description support for a “consumable key number” and thus, Norris does not qualify as prior art. Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 11 Accordingly, we do not sustain the rejection of claim 24 under 35 U.S.C. § 103(a) over various combinations of Daudelin, Barger, or Von Meister with Norris. Claims 128 and 129 We are unpersuaded by Appellant’s arguments (App. Br. 57–58) that the combination of De Bruyn and Emerson would not have rendered obvious dependent claim 128, which includes the limitation “a data base for storing unacceptable numbers as negative file data.” The Examiner found that the voice response system of Emerson, illustrated in Figure 2, and the periodically published list of stolen credit card numbers of Emerson collectively corresponds to the limitation “a data base for storing unacceptable numbers as negative file data.” (Ans. 64–65, 111–14.) We agree with the Examiner. Emerson relates to “[s]ystems being installed today [that] can authorize the acceptance of credit cards.” (P. 100, col. 1, para. 2.) Emerson explains that without a voice response system, “complex and costly” verification procedures include, for example, “[f]or small sales—low dollar amounts—cards are checked by sales clerks using periodically published listings of ‘hot’ (stolen) cards.” (Id., col. 2, para. 1; see also fig. 2.) “Voice response technology, either in combination with terminals and electronic cash registers or acting alone, gives a credit card issuer the means to completely automate this entire operation.” (P. 100, col. 3, para. 3.) Because Emerson explains that voice response technology can be used in combination with terminals and electronic cash registers to automate credit Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 12 card verification, which is inclusive of comparing a credit card number with a list of stolen cards, Emerson teaches the limitation of “a data base for storing unacceptable numbers as negative file data.” Appellant argues that “Emerson discloses a paper based publication: ‘For small sales – low dollar amounts – cards are checked by sales clerks using periodically published listings of “hot” (stolen) cards’” and “[t]his is not any database for storing unacceptable numbers as negative file data.” (App. Br. 57.) Similarly, Appellant argues that “Figure 2 of Emerson, which describes not what the Examiner imagines, but in fact expressly describes only ‘a much simpler credit card authorization process . . . using a voice response system,’ that does not describe the required data base for storing unacceptable numbers or any process for checking stolen numbers.” (App. Br. 58.) Contrary to Appellant’s arguments and as discussed previously, Emerson explains that voice response technology can be used in combination with terminals and electronic cash registers to automate credit card verification, which is inclusive of comparing a credit card number with a list of stolen cards. Thus, we agree with the Examiner that the combination of De Bruyn and Emerson would have rendered obvious independent claim 128, which includes the limitation “a data base for storing unacceptable numbers as negative file data.” We are also unpersuaded by Appellant’s arguments (App. Br. 58) that the combination of De Bruyn and Emerson would not have rendered obvious dependent claim 129, which includes the limitation “said qualification Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 13 structure further executes a test for unacceptable numbers based upon said data developed by said terminals.” The Examiner found that the voice response system of Emerson, illustrated in Figure 2, corresponds to the limitation “said qualification structure further executes a test for unacceptable numbers based upon said data developed by said terminals.” (Ans. 65, 114–16.) Figure 2 of Emerson illustrates “a much simpler credit card authorization process . . . using a voice response system” that includes credit card authorizations. (P. 101, fig. 2.) Emerson further explains that “[s]ystems being installed today can authorize the acceptance of credit cards and checks” (p. 100, col. 1, para. 2) and that “[v]oice response technology, either in combination with terminals and electronic cash registers or acting alone, gives a credit card issuer the means to completely automate this entire operation” (p. 100, col. 3, para. 3). Thus, Emerson teaches the limitation “said qualification structure further executes a test for unacceptable numbers based upon said data developed by said terminals.” Appellant argues that “a paper publication listing credit card numbers does not disclose the required ‘qualification structure’ element, which executes a test for unacceptable numbers based upon data developed by remote terminals” and “Figure 1 does not describe any qualification structure based on information developed by a remote terminal (such as touch-tone data).” (App. Br. 58.) However, as discussed previously, the Examiner cited to Figure 2 of Emerson for teaching the limitation “said qualification structure further executes a test for unacceptable numbers based upon said data developed by said terminals.” Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 14 Thus, we agree with the Examiner that the combination of De Bruyn and Emerson would have rendered obvious independent claim 129, which includes the limitation “said qualification structure further executes a test for unacceptable numbers based upon said data developed by said terminals.” We are not persuaded by Appellant’s arguments (App. Br. 59) that the Examiner improperly combined De Bruyn and Emerson. With respect to claim 128, the Examiner acknowledged that De Bruyn does not disclose the limitation “a data base for storing unacceptable numbers as negative file data” and thus, relied upon Emerson for collectively teaching published lists of stolen cards and voice response technology for credit card authorizations. (Ans. 64.) The Examiner concluded that “it would have been obvious . . . to have the telephone number check function of De Bruyn store a list of unacceptable or ‘hot’ telephone numbers stored as ‘negative file data’ to automatically compare to the telephone number of a caller” and “to more rapidly and accurately authorize a purchase order than could be provided by an operator manually comparing the data’ against a negative file, while preventing financial losses.” (Ans. 65–66.) We agree with the Examiner. De Bruyn relates to “a device for permitting the use of the telephone for immediately entering a gambling stake, right up to a short time before the drawing of the winning numbers, on the Lotto or on any other authorized game of chance.” (P. 1, ll. 1–5.) “[T]he subscriber selects the telephone number which has been awarded to the Lotto game, whereby he is automatically connected to the Lotto computer device.” (P. 4, ll. 20–23.) A reply apparatus 8 conveys the following voice message: Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 15 You are connected to the central computer of the national Lotto. After hearing the first signal, please select your first chosen number by means of the selector device of your telephone set. After each signal you select the following numbers, in arithmetic order. After your last choice of numbers, the computer will repeat the chosen numbers. Best of luck, and start now. (P. 4, l. 28 to p. 5, l. 6.) Additionally, an extra memory 10 is referenced to determine if “the phone number of the subscriber has already been recorded for the current Lotto game.” (P. 5, ll. 11–14). A central computer 4 can “identify the subscriber and charge him [for] the phone call and stake cost to his usual telephone bill.” (P. 6, ll. 24–26.) A person of ordinary skill in the art would have recognized that incorporating the automated credit card authorization process of Emerson, which includes retaining a list of stolen (or unauthorized) cards, with the device of De Bruyn, for playing Lotto via telephone, to produce a list of unauthorized telephone numbers that would provide the benefit of preventing fraud. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, we agree with the Examiner (Ans. 65–66) that modifying De Bruyn to incorporate the list of stolen (or unauthorized) credit cards numbers of Emerson, to produce a list of unauthorized phone numbers, would have been obvious. Appellant argues that “[t]here is no motivation to combine De Bruyn and Emerson because they are so dissimilar in their contexts, goals, needs, constraints and problems to be solved.” (App. Br. 59.) To support this position, Appellant points to paragraphs 9–15 of the Brody Declaration. (Id.) Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 16 One relevant portion of the Brody Declaration states that “it would not have been obvious at the time of the invention to modify the De Bruyn disclosure as asserted” because “De Bruyn does not use credit cards for its lottery system operation.” (Brody Decl. ¶ 11.) Similarly, the Brody Declaration states that “[u]sing credit cards for lottery payments would have been fundamentally contrary to De Bruyn’s system and objectives and would have led to unpredictable results” because “[i]t would have been counter-productive and costly to re-design the De Bruyn system to charge lottery payments through third party credit card companies and authorizations.” (Brody Decl. ¶ 12.) However, the statements in the Brody Declaration relied upon by Appellant lack persuasive factual support because the Brody Declaration does not cite to sufficient corroborating evidence. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992) (“[D]eclarations themselves offer only opinion evidence which has little value without factual support.”). Additionally, the statements presented in the Brody Declaration do not directly rebut the Examiner’s modification of De Bruyn, which is based upon creating a list of unauthorized phone numbers to prevent fraud. (See Ans. 65–66.) The Brody Declaration further states that “a subscriber would have a telephone number which could not be ‘stolen’ like a credit card number” but “[t]he problem to be solved by Emerson – screening credit card numbers for stolen or ‘hot’ numbers – was not a problem in De Bruyn, and did not have any application to De Bruyn’s context.” (Brody Decl. ¶ 13.) Similarly, the Brody Declaration states that Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 17 [e]ven if the telephone company were to maintain any additional “negative” flag or information regarding the telephone number . . . , the telephone company would be understood to check that number’s billing or account records individually as part of their usual billing process for any such “negative” indication specific to that number or account. (Brody Decl. ¶ 14.) Accordingly, the Brody Declaration argues, “[t]here would be no reason to incur the expense and unpredictability of attempting to create and maintain a current list of all ‘negative’ telephone numbers that would separately be referenced in the process, which would only increase cost and unpredictability regarding the current maintenance of the list.” (Id.) Again, the statements in the Brody Declaration relied upon by Appellant lack persuasive factual support because the Brody Declaration does not cite to sufficient corroborating evidence. See Beattie, 974 F.2d at 1313. Additionally, De Bruyn explains that restrictions are placed on the number of times the Lotto game can be played per week from each phone number because the extra memory 10 of De Bruyn is referenced to determine if “the phone number of the subscriber has already been recorded for the current Lotto game.” (P. 5, ll. 11–14.) Emerson explains that one method of detecting unauthorized numbers (e.g., credit cards numbers) is to maintain lists of such unauthorized numbers. (See p. 100, col. 2, para. 1; see also fig. 2.) Accordingly, as discussed previously, the combination of De Bruyn and Emerson is based on the improvement of the De Bruyn device in the similar way, as taught by Emerson, to produce a list of unauthorized telephone numbers. Appellant further argues that “this built-in payment mechanism [of De Bruyn] is critical to cover ‘the relatively high cost of investment for putting Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 18 to use this device’” and “De Bruyn teaches away from an alternate billing mechanism, such as the use of credit cards, as taught by Emerson.” (App. Br. 59.) However, Examiner’s modification of De Bruyn was based upon storing a list of unauthorized phone numbers to prevent fraud, rather than substituting credit card payments for telephone billing. (See Ans. 65–66.) As such, the combination does not teach an alternative billing mechanism. Therefore, the Examiner has properly combined De Bruyn and Emerson to reject dependent claims 128 and 129 under 35 U.S.C. § 103(a). Accordingly, we sustain the rejection of dependent claims 128 and 129 under 35 U.S.C. § 103(a). We do not reach the additional rejections of claims 128 and 129 under 35 U.S.C. § 102(b) as anticipated by De Bruyn and under § 103(a) as obvious over De Bruyn and Levine. Affirmance of the obviousness-based rejections 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 24 is reversed. The Examiner’s decision rejecting claims 128 and 129 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-IN-PART Appeal 2014-006147 Reexamination Controls 90/012,066 and 90/012,132 (merged) Patent 5,561,707 19 cc: Patent Owner: COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 WASHINGTON, DC 20004 Third Party Requesters: ORRICK, HERRINGTON & SUTCLIFFE, LLP IP Prosecution Department 2050 Main Street Suite 1100 Irvine, CA 92614 and Jeffrey A. Cooper, Esq. ALSTON & BIRD LLP Bank of America Plaza 101 Tryon St. Suite 4000 Charlotte, NC 28280 Copy with citationCopy as parenthetical citation