Ex Parte 5561707 et al

Board of Patent Appeals and Interferences

Feb 25, 2009

90007074 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Ronald A. Katz Technology Licensing L.P.
____________
Appeal 2008-5127
Reexamination Control 90/006,978 and 90/007,074 (merged)
Technology Center 3900
U.S. Patent 5,561,707
____________
Decided:1 February 26, 2009
____________
Before LEE E. BARRETT, HOWARD B. BLANKENSHIP, and
SCOTT R. BOALICK, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. §§ 134(b) and 306 from
the final rejection of 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-

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
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151, 153-170, 172-200, and 202-207.2 The Examiner has confirmed the
patentability of claims 1-8, 12, 13, 17, 24, 25, [27, 36,] 39-41, 52, 60, 61, 66,
67, 69, 71-73, 75, 77-86, 88-95, 111-114, 116-118, 128-130, 133, 134, 136,
152, 171, and 201. We have jurisdiction under §§ 134(b) and 306.
An oral hearing was held on November 19, 2008.
We affirm.
Table of Contents
Page
STATEMENT OF THE CASE ............................................................. 4
Reexamination proceedings and continuity information .................. 4
Related litigation................................................................................ 5
The inventions.................................................................................... 5
The claims ......................................................................................... 7
References ......................................................................................... 8
Rejections .......................................................................................... 9
Summary chart of rejections ............................................................. 12
DISCUSSION ........................................................................................ 13
Priority date for "calling number identification data" ...................... 13
Claim interpretation .......................................................................... 13
Interpretation of expired patent .................................................... 13
Interpretation of specific terms ..................................................... 16
"calling number identification data" ....................................... 16
"personal identification data" ................................................. 16
"computer generated data" ...................................................... 18
"indicative of sequence data" .................................................. 19
"item data" .............................................................................. 20
Arguments not made are waived ...................................................... 22

2 Although claims 27 and 36 are included in the list of rejected
claims, we do not find any rejections of these claims and, therefore, group
them with the claims whose patentability is confirmed as noted in brackets.
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Table of Contents (cont'd)
Page
Product claims 1-36 and 96-207 ....................................................... 22
Anticipation ................................................................................. 22
(1) De Bruyn .............................................................................. 22
(2) Yoshizawa ........................................................................... 61
(3) Emerson ................................................................................ 70
(4) Moosemiller ......................................................................... 74
(5) Barger ................................................................................... 83
Obviousness ................................................................................. 91
Scope and content of prior art ................................................ 92
Level of ordinary skill in the art ............................................ 92
Differences ............................................................................. 94
Objective evidence is not entitled to weight .......................... 94
(6) De Bruyn and either of Maxon or Streisand ........................ 112
(7) De Bruyn and St. Jean .......................................................... 117
(8) Yoshizawa and St. Jean ........................................................ 124
(9) Emerson and St. Jean ........................................................... 127
(10) Moosemiller and St. Jean ..................................................... 133
(11) De Bruyn and Moosemiller .................................................. 136
(12) De Bruyn and Yoshizawa .................................................... 137
(13) Emerson, St. Jean, and Gentile ............................................ 140
(14) De Bruyn and Flanagin ........................................................ 143
(15) Yoshizawa and Moosemiller ................................................ 146
(16) Yoshizawa and Emerson ...................................................... 150
(17) Norris and Moosemiller ....................................................... 150
(18) Norris and Moosemiller in view of Yoshizawa ................... 153
Process claims 37-95 ........................................................................ 155
Obviousness ................................................................................. 155
(19) Norris and Moosemiller ....................................................... 155
(20) Norris, Moosemiller, and Yoshizawa .................................. 161
CONCLUSION ...................................................................................... 165
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STATEMENT OF THE CASE
Reexamination proceedings and continuity information
The Director of the U.S. Patent and Trademark Office initiated an
ex parte reexamination of U.S. Patent 5,561,707 ('707 patent) on
March 26, 2004, Reexamination Control 90/006,978, for reexamination of
claim 206. A subsequent request for ex parte reexamination was filed on
June 10, 2004, on behalf of an anonymous third party requester by Donald
E. Stout of Antonelli, Terry, Stout & Kraus, LLP, Reexamination Control
90/007,074. The reexamination proceedings have been merged.
The '707 patent issued October 1, 1996, to Ronald A. Katz, based on
Application 08/139,307, filed October 18, 1993, which is a continuation of
Application 07/803,269, filed December 3, 1991, now U.S. Patent
5,255,309, issued October 19, 1993, which is division of Application
07/640,337, filed January 11, 1991, now abandoned, which is a continuation
of Application 07/335,923, filed April 10, 1989, now U.S. Patent 6,016,344,
issued January 18, 2000, which is a continuation of Application 07/194,258,
filed May 16, 1988, now U.S. Patent 4,845,739, issued July 4, 1989, which
is a continuation-in-part of Application 07/018,244, filed February 24, 1987,
now U.S. Patent 4,792,968, issued December 20, 1988, which is a
continuation-in-part of Application 06/753,299, filed July 10, 1985, now
abandoned. The '707 patent is assigned to Ronald A. Katz Technology
Licensing L.P., the real party in interest. All of the patents have the same
expiration date of December 20, 2005, as Patent 4,792,968, by virtue of
terminal disclaimers in each patent. Thus, the '707 patent is now expired.
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Related litigation
The '707 has been or is involved in several litigations as summarized
in the Related Proceedings Appendix (Br. 166-178).

The inventions
The inventions relate to IVR (interactive voice response) apparatus
and methods. Prior art IVR systems include an interface structure coupled to
a communication facility, such as the public telephone network. Callers use
a push-button telephone terminal to dial a number associated with a
particular application. Once connected, a voice generator structure provides
voice operating instructions to callers. Callers enter answer data using the
push-buttons, which is converted into data that can be stored and processed
by a computer. '707 patent, col. 1, ll. 43-57.
Applications mentioned for the claimed inventions are polling,
auctions, lotteries, games, and mail order ('707 patent, col. 3, ll. 35-50). The
apparatus claims all require an interface structure coupled to a
communication facility and all except claim 206 recite a record structure for
storing caller data. Not all of the claims require voice response. Among the
argued features of the independent apparatus claims are: (1) qualification
structure (element 93 in Fig. 4) for qualifying callers for access based on at
least two forms of distinct identification, such as a caller customer number
and personal identification data (claim 9), e.g., in a lottery application, a
caller may have to provide a form of personal identification data, such as
date of birth, in addition to a telephone number ('707 patent, col. 12,
ll. 41-52); (2) receiving calling number identification data (the caller's
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telephone number) provided automatically by the communication facility
(claims 26, 96, 183), e.g., in the lottery example, the telephone number may
be provided by the telephone company ('707 patent, col. 12, ll. 34-40);
(3) qualification structure for testing the calling number identification data to
specify a basis for entitlement defining a limit on use (claim 26), e.g., in the
lottery example, the telephone number could be tested to determine if it
exceeds an allowable number of uses ('707 patent, col. 12, ll. 19-26 &
41-56); (4) voice generator structure to provide voice operating instructions
(claims 96, 137, 169, 183); (5) qualification structure for controlling access
to the system (claim 96); (6) means for processing data from the terminals
and the calling number identification data (claim 96), i.e., a programmed
computer to process data; (7) means for receiving identification data signals
and additional identification data signals and for storing the additional
identification data signals for subsequent identification (claim 137);
(8) structure for providing computer generated numbers to callers and
storing the computer generated numbers in the record memory (claim 169),
e.g., callers may be provided with sequence data or acknowledgement
numbers for confirmation of a transaction ('707 patent, col. 7, l. 66, to col. 8,
l. 59); (9) testing calling number identification data and caller personal
identification data against previously stored calling number identification
data and caller personal identification data (claim 183), e.g., in the lottery
example to qualify a caller ('707 patent, col. 12, ll. 41-56); and
(10) qualification structure to test caller data signals specifying a
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consumable key number (claim 206), i.e., "a user is qualified to a specific
limited number of uses" ('707 patent, col. 9, ll. 33-34).
The independent process claims 37 and 64 are directed to methods
involving "products carrying participation numbers specifying limits on use
to entitle individual callers to access said operations of the interface" and
qualifying callers by testing the limits of use, e.g., in a game show example,
a product carries a key number entitling a caller to participate a limited
number of times ('707 patent, col. 17, ll. 38-62). These claims also recite
called number identification data "to select a specific operating format from
a plurality of operating formats," e.g., the called telephone number is used to
connect to a specific system ('707 patent, col. 6, ll. 41-49).

The claims
Claim 9 is illustrative:

9. An analysis control system for use with a communication
facility including remote terminals for individual callers, wherein 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:

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;

record structure, including memory and control means,
connected to receive said caller data signals from said interface
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structure for accessing a file and storing caller data relating to certain
select ones of said individual callers; and

qualification structure coupled to said record structure for
qualifying said individual callers based on at least two forms of
distinct identification including caller customer number data and at
least one other distinct identification data element consisting of
personal identification data provided by a respective one of said
individual callers.

References

St. Jean US 3,702,392 Nov. 7, 1972
Maxon US 3,725,596 Apr. 3, 1973
Streisand US 3,725,597 Apr. 3, 1973
Gentile US 3,833,885 Sep. 3, 1974
Barger US 4,071,698 Jan. 31, 1978
Flanagin US 4,556,970 Dec. 3, 1985

De Bruyn Canada 1,162,336 Feb. 14, 1984

Yoshizawa et al., Voice Response System for Telephone Betting,
Hitachi Review 26(6), June 1977, pp. 215-220 ("Yoshizawa").

S. Thomas Emerson et al., Voice Response System--Technology to the
Rescue for Business Users, Speech Technology, Jan/Feb 1983,
pp. 99-103 ("Emerson").

Moosemiller, AT&T's Conversant TM I Voice System, Speech
Technology, Mar/Apr 1986, pp. 88-93 ("Moosemiller").

Eileen Norris, Phone offers action at push of button, Advertising Age,
February 6, 1986 ("Norris").

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Rejections3
Product claims 1-36 and 96-207
Anticipation
(1) Claims 9, 18, 19, 22, 23, 26, 32-34, 96-102, 106-108, 115, 119-123,
131, 132, 135, 137, 141-147, 150, 151, 153, 165, 166, 183-190, 196-200,
202, and 203 stand rejected under 35 U.S.C. § 102(b) as anticipated by
De Bruyn (Final Rej. 10; Appx. A, p. 5.)
(2) Claims 9, 20, 21, 137, 141, 143, 148-150, 151, 153, 169, 176-178,
181, and 182 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Yoshizawa (Final Rej. 25; Appx. A, p. 20.)
(3) Claim 9 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Emerson. (Final Rej. 32; Appx. A, p. 27.)
(4) Claims 169, 170, 172, and 176-180 are rejected under 35 U.S.C.
§ 102(b) as anticipated by the article by Moosemiller. (Final Rej. 47;
Appx. A, p. 30.)
(5) Claims 9, 22, 23, 137, 141, 144-146, 150, 151, 154, 156, and 167 are
rejected under 35 U.S.C. 102(b) as anticipated by Barger. (Final Rej. 52;
Appx. A, p. 35.)

Obviousness
(6) Claims 18, 19, 26, 32-34, 96-102, 106-108, 115, 119-123, 131, 132,
135, 183-190, 196-200, 202, and 203 stand rejected, in the alternative, under

3 Independent claims are indicated in bold. Information in
parentheses following rejections indicates location of the rejection in the
Final Rejection and Appx. A to the Examiner's Answer.
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35 U.S.C. § 103(a) as unpatentable over De Bruyn considered with either of
Maxon or Streisand. (Final Rej. 60; Appx. A, p. 43.)
(7) Claims 10, 11, 16, 109, 110, 163, 164, and 168 stand rejected under
35 U.S.C. § 103(a) as unpatentable over De Bruyn and St. Jean. (Final
Rej. 61; Appx. A, p. 44.)
(8) Claims 10, 11, 16, 163, 164, 168, and 173-175 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Yoshizawa and St. Jean. (Final
Rej. 62; Appx. A, p. 45.)
(9) Claims 10, 11, 16, 137, 154, and 156-168 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Emerson and St. Jean. (Final
Rej. 63; Appx. A, p. 46.)
(10) Claims 173-175 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moosemiller and St. Jean. (Final Rej. 66;
Appx. A, p. 49.)
(11) Claims 14, 15, 28, 29, 103, 104, 124, 138-140, 191-195 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over De Bruyn and Moosemiller.
(Final Rej. 67; Appx. A, p. 50.)
(12) Claims 30, 31, 105, 125-127, 204, and 205 stand rejected under
35 U.S.C. § 103(a) as unpatentable over De Bruyn in view of Yoshizawa.
(Final Rej. 69; Appx. A, p. 52.)
(13) Claim 155 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Emerson in view of St. Jean further in view of Gentile. (Final Rej. 72;
Appx. A, p. 54.)
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(14) Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over De Bruyn and Flanagin. (Final Rej. 72; Appx. A, p. 55.)
(15) Claims 170 and 172 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoshizawa in view of Moosemiller. (Final Rej. 73;
Appx. A, p. 55.)
(16) Claims 179 and 180 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoshizawa and Emerson. (Final Rej. 75; Appx. A, p. 56.)
(17) Claim 206 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Norris and Moosemiller. (Final Rej. 76; Appx. A, p. 57.)
(18) Claim 207 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Norris and Moosemiller further in view of Yoshizawa. (Final Rej. 79;
Appx. A, p. 60.)

Process claims 37-95
Obviousness
(19) Claims 37, 38, 42-51, 53-59, 64, 65, 70, 74, 76, and 87 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Norris and Moosemiller.
(Final Rej. 80; Appx. A, p. 62.)
(20) Claims 62, 63, and 68 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris and Moosemiller further in view of Yoshizawa.
(Final Rej. 88; Appx. A, p. 70.)
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Summary chart of rejections

Rejection numbers refer to numbered paragraphs above.

Cl. Rej. Cl. Rej. Cl. Rej. Cl. Rej. Cl. Rej. Cl. Rej.
1 36 71 106 = 1, 6 141 = 1,2,5 176 = 2, 4
2 37 = 19 72 107 = 1, 6 142 = 1 177 = 2, 4
3 38 = 19 73 108 = 1, 6 143 = 1, 2 178 = 2, 4
4 39 74 = 19 109 = 7 144 = 1, 5 179 = 4,16
5 40 75 110 = 7 145 = 1, 5 180 = 4,16
6 41 76 = 19 111 146 = 1, 5 181 = 2
7 42 = 19 77 112 147 = 1 182 = 2
8 43 = 19 78 113 148 = 2 183 = 1, 6
9 = 1,2,3,5 44 = 19 79 114 149 = 2 184 = 1, 6
10 = 7, 8, 9 45 = 19 80 115 = 1, 6 150 = 1,2,5 185 = 1, 6
11 = 7, 8, 9 46 = 19 81 116 151 = 1,2,5 186 = 1, 6
12 47 = 19 82 117 152 187 = 1, 6
13 48 = 19 83 118 153 = 1, 2 188 = 1, 6
14 = 11 49 = 19 84 119 = 1, 6 154 = 5, 9 189 = 1, 6
15 = 11 50 = 19 85 120 = 1, 6 155 = 13 190 = 1, 6
16 = 7, 8, 9 51 = 19 86 121 = 1, 6 156 = 5, 9 191 = 11
17 52 87 = 19 122 = 1, 6 157 = 9 192 = 11
18 = 1, 6 53 = 19 88 123 = 1, 6 158 = 9 193 = 11
19 = 1, 6 54 = 19 89 124 = 11 159 = 9 194 = 11
20 = 2 55 = 19 90 125 = 12 160 = 9 195 = 11
21 = 2 56 = 19 91 126 = 12 161 = 9 196 = 1, 6
22 = 1, 5 57 = 19 92 127 = 12 162 = 9 197 = 1, 6
23 = 1, 5 58 = 19 93 128 163 = 7,8,9 198 = 1, 6
24 59 = 19 94 129 164 = 7,8,9 199 = 1, 6
25 60 95 130 165 = 1, 9 200 = 1, 6
26 = 1, 6 61 96 = 1, 6 131 = 1, 6 166 = 1, 9 201
27 62 = 20 97 = 1, 6 132 = 1, 6 167 = 5, 9 202 = 1, 6
28 = 11 63 = 20 98 = 1, 6 133 168 = 7,8,9 203 = 1, 6
29 = 11 64 = 19 99 = 1, 6 134 169 = 2, 4 204 = 12
30 = 12 65 = 19 100 = 1, 6 135 = 1, 6 170 = 4,15 205 = 12
31 = 12 66 101 = 1, 6 136 171 206 = 17
32 = 1, 6 67 102 = 1, 6 137=1,2,5,9 172 = 4,15 207 = 18
33 = 1, 6 68 = 20 103 = 11 138 = 11 173 = 8,10
34 = 1, 6 69 104 = 11 139 = 11 174 = 8,10
35 = 14 70 = 19 105 = 12 140 = 11 175 = 8,10

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DISCUSSION
Priority date for "calling number identification data"
Appellant submits Exhibits A to E, Exhibit A1, Exhibit Berger I,
Exhibit Klein III, Exhibit DEC I, and Exhibit DEC II to evidence that the
limitation to "calling number identification data" is entitled to the priority
date of U.S. Patent 4,792,968, filed February 24, 1987, issued December 20,
1988 (Br. 31-32; Br. 52-65). The Examiner has determined that the
limitation of "calling number identification data" is entitled to the priority
date of '968 patent and has withdrawn the rejections over intervening prior
art. Accordingly, these exhibits are not discussed further.

Claim interpretation
Claim interpretation necessarily precedes the addressing of questions
of patentability. See, e.g., Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed.
Cir. 1997) ("Implicit in our review of the Board's anticipation analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation.").

Interpretation of expired patent
Appellant notes that the '707 patent expired on December 20, 2005,
pursuant to a terminal disclaimer, and therefore can no longer be amended
(Br. 32). It is argued that "a narrow claim construction that upholds the
validity of the claim should be applied rather than a broad construction that
would invalidate the claim" (Br. 32).
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Ordinarily, claims under reexamination are given their broadest
reasonable interpretation consistent with the patent disclosure. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Construing
claims broadly is not unfair to the patentee because the patentee has the
opportunity to amend the claims to obtain more precise claim coverage. Id.
However, this appeal involves an expired patent and previous panels of this
Board have held:

[I]n reexamination proceedings in which the PTO is considering the
patentability of claims of an expired patent which are not subject to
amendment, a policy of liberal claim construction may properly and
should be applied. Such a policy favors a construction of a patent
claim that will render it valid, i.e., a narrow construction, over a broad
construction that would render it invalid.

Ex parte Bowles, 23 USPQ2d 1015, 1017 (BPAI 1991) (quoting Ex parte
Papst-Motoren, 1 USPQ2d 1655, 1656 (BPAI 1986)) (both
nonprecedential). That is, Pabst-Motoren would give claims the same
interpretation as they have in infringement litigation. We have not found
any CCPA or Federal Circuit cases on this issue.
While it is sometimes said that claims in litigation should be
construed to uphold their validity, it is now recognized that this claim
construction is limited to resolving ambiguities in a claim:

While we have acknowledged the maxim that claims
should be construed to preserve their validity, we have not
applied that principle broadly, and we have certainly not
endorsed a regime in which validity analysis is a regular
component of claim construction. See Nazomi Communications
[Inc. v. ARM Holdings, PLC], 403 F.3d [1364,] 1368-69 [(Fed.
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Cir. 2005)]. Instead, we have limited the maxim to cases in
which "the court concludes, after applying all the available
tools of claim construction, that the claim is still ambiguous."
Liebel-Flarsheim [Co. v. Medrad, Inc.], 358 F.3d [898,] 911
[(Fed. Cir. 2004)] [other citations omitted].

Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc),
accord Cross Medical Prod. Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1304 (Fed. Cir. 2005).
Importantly, it is improper to use the possible invalidity of the claims,
if broadly construed, over the prior art as the reason for construing them
narrowly. The Saunders Group, Inc. v. ComforTrac, Inc., 492 F.3d 1326,
1335 (Fed. Cir. 2007) (citing Liebel-Flarsheim, 358 F.3d at 911). As stated
by Judge Learned Hand in Foxboro Co. v. Taylor Instruments Companies,
157 F.2d 226, 232 (2d Cir. 1946):

We should have no warrant for limiting the claims by the elements of
the disclosure which they do not include, even if the elements were
new. A patentee who claims broadly must prove broadly; he may not
claim broadly, and recede as he later finds that the art unknown to him
has limited his invention. That is the chance he must take in making
broad claims . . . He may not keep them by interpretative
limitation . . . .

A fundamental principle of patent law is that the claims measure the
invention. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 232
(1942). It is improper, and unfair to the public, to narrow the scope of a
claim by interpretation by implicitly reading in disclosed limitations from
the Specification which have no express basis in the claims. There should
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be no exception for claims of an expired patent; there is no unfairness to
patentee who has received the full patent term for the broad construction.
Therefore, the claims will not be narrowed by interpretation not
required by the claim language.
Original patent claims in a reexamination are not examined for
compliance with the definiteness requirements of 35 U.S.C. § 112 ¶ 2.

Interpretation of specific terms
The following terms are at issue:

"calling number identification data"
"Calling number identification data" is data indicating the telephone
number of the caller, however it is determined. Automatic Number
Identification (ANI) is a specific service that indicates the calling party's
telephone number. Dialed Number Identification Service (DNIS) is a
service that provides the number that the caller dialed when accessing the
service. ANI and DNIS are specific implementations for providing
telephone numbers and there may be techniques for providing calling and
called number identification data that do not use ANI or DNIS standards.
Br. 53 n.2. "Calling number identification data" is interpreted to be a
generic term that includes "ANI."

"personal identification data"
Appellant argues that "personal identification data should be
interpreted as data that is 'personal' or specific to a caller as in data that
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permanently identifies the caller to the world at large. The examples in the
'707 specification of name, address, telephone number, initials, etc. (see Fig.
5 of the '707 patent) are personal data items that identify a person to the
world at large." Br. 42. At the oral hearing it was argued that "personal
identification data" is "something that is associated with a person from the
time that they're born, say a Social Security number, name, or address,
something that's permanently associated with you that is used by institutions
to verify who the caller is" (Transcript p. 5)
Appellant's interpretation requires reading in limitations that the data
permanently identifies a person which are not reasonably required by the
ordinary interpretation of "personal identification data." We interpret
"personal identification data" to be any information relating to the
identification of a particular person. The information need not uniquely
identify the person like a Social Security or passport number; e.g., many
people share the birth date, and even the same name, but the birth date and
name provide identification information. The identification data need not be
some immutable characteristic of the person, such as sex, eye color, tattoo,
or birth date. The identification data does not need to represent some
permanent or semi-permanent information, such as name, initials, address, or
telephone number. The data does not have to be "secret" information, e.g., a
person's name, birth date, address, etc. might be known to many people and
yet still be personal identification data. The identification data can be
chosen by the person or assigned by someone else as an identifier, such as a
personal identification number (PIN), as evidenced by claim 19, which
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recites that "said personal identification data is caller PIN number data." As
was commonly known, a PIN number is a secret alphanumeric password
shared between a user and a system that can be used to authenticate the user
to the system. Typically, the user is required to provide a non-confidential
user identifier (such as a computer UserID) or token (such as a banking card)
and a confidential PIN to gain access to a system, such as to a computer or
an automated teller machine (ATM). An access code shared by many people
is not personal identification data because it does not help to identify a
particular person.

"computer generated data"
Appellant argues that "'computer generated data' must be interpreted
as data generated or formulated during the course of a communication"
(Br. 36) and that the limitation has been improperly "interpreted as
compilation of informational data provided to the caller in response to a
request as in Moosemiller's stock quotes" (Br. 36).
We interpret "computer generated data" to mean data that is created
by the computer, not just selecting existing data. See In re Scroggie,
170 Fed. Appx. 132, 135 (Fed. Cir. 2006) (nonprecedential) ("The term
'generating page data' means that the page data is 'generated,' not merely
'selected.'"). This uses the ordinary and customary meaning of "generated"
and does not read in any limitations. However, this definition includes the
computer creating any new kind of data from existing data, e.g., generating
computer speech data from stored numbers, or from other signals, e.g.,
generating clock data from an internal computer clock.
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"indicative of sequence data"
Appellant argues that "sequence data" should be construed to exclude
a date/time stamp because several persons could receive the same date/time
stamp (Br. 40). It is argued that "sequence data" was distinguished over
"date and time" of calls in Barger during prosecution of U.S. Patent
5,365,575, related to the '707 patent, on the basis that date and time may be
duplicative of individual callers (Br. 40).
The actual claim limitation is, for example, "wherein said computer
generated numbers provided to callers are indicative of sequence data"
(claim 176), and not just "sequence data." A "sequence" is defined as a
"continuous or connected series" or an "order of succession," Webster's New
Collegiate Dictionary (G.&C. Merriam Co. 1977). A date/time stamp
arranges elements in a chronological sequence, i.e., given two date/time
stamps it is possible to tell their order. Assuming that two calls can have the
same data/time stamp, which Appellant only speculates can happen in the
references, Appellant has not shown that this is not "indicative of sequence
data," as claimed. A "tie" in a data/time stamp is still "indicative of
sequence data" because it indicates that two calls were received at the same
time and it indicates the order vis-à-vis other members of the sequence. The
term "indicative of sequence data" is broader than just strict "sequence data"
and does not require that each element in the sequence is given a
consecutive number (e.g., 1, 2, 3, etc.) so that one can determine not only the
sequence but the position in the sequence.
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Our conclusion that a date/time stamp is "indicative of sequence data"
is consistent with the '707 patent. The '707 patent describes an auction
example where bids are received from remote terminals (col. 14, l. 4 to
col. 15, l. 54). "As the selection process proceeds, signals from the clock CL
(FIG. 1) are introduced to indicate the sequence of bidders." Col. 15,
ll. 31-33. The '707 patent describes data indicating the "chronological
sequence of the call" (col. 8, ll. 1-2) and describes that "signals from the
clock CL (FIG. 1) are introduced to indicate the sequence of bidders"
(col. 15, ll. 31-33), which indicates that a date/time stamp is indicative of
chronological sequence data. Since the '707 patent indicates that clock
signals are used to indicate the chronological sequence of bidders, and does
not indicate that the sequence number is unique, the '707 patent supports our
interpretation that a date/time stamp is "indicative of sequence data." The
fact that Appellant argued during the prosecution of another application that
a date/time stamp is not "sequence data" is not controlling here.

"item data"
Appellant argues that "item data" in claims 145-147 and 187, which
are rejected over one or more of De Bruyn, Barger, or De Bruyn in view of
Maxon or Streisand, must be interpreted as an "object for purchase" and not
"something that is wagered in a game or lotto" (Br. 35). The claims recite
that the answer data is "item data" (claim 145), "wherein said item data is
indicative of a product for order" (claim 146), answer data includes
"additional data relating to said item data" (claim 147), and the data
"includes an item for order" (claim 187). Appellant does not separately
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argue the claims in connection with the rejections, so we address the
arguments in this claim interpretation section.
An "item" is an article or unit, so "item data" is information related to
the article or unit. There is nothing in "item data" that indicates the item is
to be purchased, or that the item is necessarily a physical object to be
shipped to the caller after a purchase, such as a book or sweater. Claim 146
recites that the "item data is indicative of a product for order," which
indicates a transaction although not necessarily a purchase for money.
The disagreement is apparently with the Examiner's finding that "[t]he
stakes in the Lotto is the 'item' and is the product provided by the De Bruyn
system, which is therefore taken as 'item data' 'indicative of a product order'"
(Final Rej. 23). The Examiner's statement could be better explained.
De Bruyn describes a Lotto game conducted over the telephone. A "stake"
is a monetary investment in something, e.g., the amount wagered for a Lotto
ticket, rather than the ticket itself. While, perhaps, a stake is "item data" in
the sense of data about a Lotto item for purchase, a better interpretation is
probably that the Lotto "ticket" (a record in the system corresponding to
certain selected Lotto numbers) is an "item" that is purchased, and the input
Lotto numbers and stake for the number from the caller is "item data" and
"item data [] indicative of a product for order." There is no requirement that
the item be shipped to the caller or be a tangible thing. Thus, we conclude
that De Bruyn discloses "item data" as claimed. Appellant does not address
the Examiner's interpretation of Barger.

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Arguments not made are waived
This opinion only addresses arguments made by Appellant.
Arguments not made are considered waived. See In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this
court to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art."); In re Wiechert ,
370 F.2d 927, 936 (CCPA 1967) ("This court has uniformly followed the
sound rule that an issue raised below which is not argued in this court, even
if it has been properly brought here by a reason of appeal, is regarded as
abandoned and will not be considered. It is our function as a court to decide
disputed issues, not to create them."); In re Wiseman, 596 F.2d 1019, 1022
(CCPA 1979) (arguments must first be presented to the Board before they
can be argued on appeal). It is assumed that Appellant either considers
limitations not argued to be well known or has decided not to argue
patentability based on these unargued limitations. Portions of declarations
not relied on in the arguments are likewise considered waived.

Product claims 1-36 and 96-207
Anticipation
(1) De Bruyn
Claims 9, 18, 19, 22, 23, 26, 32-34, 96-102, 106-108, 115, 119-123,
131, 132, 135, 137, 141-147, 150, 151, 153, 165, 166, 183-190, 196-200,
202, and 203 are rejected under 35 U.S.C. § 102(b) as anticipated by
De Bruyn.

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Facts - '707 patent and De Bruyn
The '707 patent describes a lottery system using the telephone in
which callers enter their telephone numbers or the calling number is
provided by ANI equipment and in which callers are limited to a
predetermined number of calls or dollar value (col. 12, ll. 19-56).
De Bruyn describes a system for playing a Lotto game using the
telephone and having voice response (p. 1).
De Bruyn describes that the user dials the telephone number for the
Lotto game "whereby he is automatically connected to the Lotto computer
device" (p. 4, ll. 21-23). De Bruyn does not state what type of telephone is
used. Push-button telephones use DTMF (dual tone multifrequency) signals,
whereas rotary telephones produce pulses corresponding to the number
dialed. Push-button telephones are also known as touch tone telephones
(AT&T's trademark registration for "Touch-Tone" has been canceled).
A PABX (private automatic branch exchange) sets up a connection
with a free line of the reply apparatus 8 based on the language attributed to
the subscriber's telephone number (p. 4, ll. 23-28).
The reply device of the central Lotto computer gives voice
instructions to prompt the caller to select numbers using the telephone set
(p. 4, l. 28 to p. 5, l. 6) and "the selected Lotto numbers and the telephone
number of the subscriber are recorded" (p. 5, ll. 10-11).
De Bruyn describes that "a check is carried out in an auxiliary
memory 10 in order to determine whether the phone number of the
subscriber has already been recorded for the current Lotto game" (p. 5,
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ll. 11-14). The stake may be refused to avoid "abnormally high stakes being
entered per participant" (p. 5, l. 20). "The charges for the stakes can be
determined in accordance with the number of selected figures, and in order
to avoid abnormally high stakes, a maximum amount can be preset which,
when exceeded, would be refused by the computer device." P. 6, ll. 17-21.
When a stake is accepted, the system converts the entered information
into speech so that the caller "can check whether the correct Lotto numbers
have been recorded" (p. 5, ll. 25-26) and, if it is, the connection is severed.
De Bruyn describes that "[t]he device described above will identify
the subscriber and charge him the phone call and stake costs on his usual
telephone bill, which shall also state the selected Lotto figures and the cost
of the stake" (p. 6, ll. 24-27).
De Bruyn states that "[i]n order to select the players, the Telephone
Company may, should it wish to do so, attribute a secret code to each player,
which should then also be dialed in order to obtain the connection with the
computer device" (pp. 6-7).
De Bruyn describes:

After the drawing, the computer is programmed with the winning
numbers and the magnetic tape is then read in at high speed. As a
result, the computer documents will state the phone numbers of the
participants, the number and the value of the selected figures and the
amount which is charged on the telephone bill. The winners of prizes
are identified and payed out with a check or by any other means.

Page 7, lines 5-12.

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1.
Issue: Do the claims require a push-button telephone?

Claim limitations at issue
Claim 9 is directed to an "analysis control system for use with a
communication facility including remote terminals for individual callers,
wherein said remote terminals may comprise a conventional telephone
instrument including . . . buttons for providing data, said analysis control
system comprising . . . ."4 The preambles of independent claims 26, 96, 137,
and 183 contain similar language.
The bodies of the independent claims recite "interface structure . . . for
voice and digital communication" (claim 9); "storing additional digital data
provided by said callers" (claim 26); "interface structure coupled to said
communication facility to interface each of said remote terminals for voice
and digital communication" (claim 96); and "an interface structure coupled
to said communication facility to interface said remote terminals for voice
and digital communication" (claims 137 and 183).

Contentions
Appellant argues that "there is no teaching in De Bruyn that the
lottery number selected is entered via a DTMF keypad" (Br. 46).

4 Emphases in italics and bold in claim quotations in this opinion
have been added to highlight the limitations at issue.
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Appellant argues that the telephone in De Bruyn is not specifically a
push-button telephone and De Bruyn's statement that impulses are converted
into computer language would suggest a rotary telephone (Br. 47-48).
The Examiner states that the claims do not require that data is
provided by a DTMF keypad because the preamble states that the telephone
"may" include numeric buttons (Final Rej. 109).
Appellant argues that "[a]lthough the Examiner indicates that there is
no requirement in the claim that data is provided by a DTMF keypad . . ., the
claims, in their body, require voice and digital communication" (Br. 46).
Appellant states that

in the industry, a push button or (DTMF) Touch Tone telephone is
sometimes referred to as a 'digital' telephone, not because it generates
digital signals for transmission (as both a rotary telephone and a
(DTMF) Touch Tone telephone are analog devices), but rather
because it has a panel of buttons or keypad with digits which are
expressed by pushing buttons.

Br. 48; see also Reply Br. 17.

Analysis
De Bruyn does not expressly teach what type of telephone is used. As
was well known in the IVR art, most IVR systems require push-button
telephones with DTMF. See Moosemiller (Describing AT&T's voice
system: "The basic product uses touch-tone signaling and voice response."
P. 89); Emerson ("The caller responds by way of the Touch-Tone dialer on
his phone, entering the code number or letter for the functions he or she
wants to perform." P. 101); Yoshizawa ("Push button telephone input" from
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member to public telephone network. Figure 1); Barger (while callers can
be connected via dial or push-button signaling, col. 3, ll. 46-51, all
embodiments describe use of push-button telephone); Norris (callers "use
the Touch-Tone phone to punch out an identifying account number").
Nevertheless, while a push-button telephone is implied, it is possible to use a
dial telephone, so a push-button is not inherent. Since this is an anticipation
rejection, the issue is whether the claims require a push-button telephone.
The claim preambles recite an "analysis control system for use with a
communication facility including remote terminals for individual callers . . .
said analysis control system comprising." The bodies of the claims are
directed to the "analysis control system," not the system in combination with
the remote terminals, therefore the term "for use with" is a statement of
intended use that does not limit the claim. See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003) ("An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates."). Moreover, the words "may comprise" in the
recitation that "said remote terminals may comprise [a telephone with
buttons]" indicates that a push-button telephone is optional.
Although the claim bodies recite "digital data" or "digital
communication," this does not require push-button telephones. Both rotary
and push-button telephones have an array of numbers/letters, but the rotary
telephone has a dial that must be rotated while a push-button telephone has
buttons that are pushed. Appellant notes that both rotary and push-button
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telephones are analog devices, thus, "digital" does not mean a device that
transmits data digitally. Appellant states that push-button telephones are
referred to in the industry as "digital" telephones because they have a panel
of buttons with digits that are expressed by pushing buttons (Br. 48). The
term "digital" does not describe buttons. In the context of the claim,
"digital" means a number (digit) as opposed to the particular apparatus to
generate the number. Thus, both rotary and push-button telephones are
capable of sending "digital" data.

Conclusion
The claims do not require a push-button telephone.

2.
Issue: Does the "secret code to each user" in De Bruyn constitute "personal
identification data" as recited in claims 9, 19, and 183?

Claim limitations at issue
Claim 9 recites, in part:

qualification structure coupled to said record structure for
qualifying said individual callers based on at least two forms of
distinct identification including caller customer number data and at
least one other distinct identification data element consisting of
personal identification data provided by a respective one of said
individual callers.

Claim 19 depends on claim 18 which depends on claim 9 and recites
that "said personal identification data is caller PIN number data."
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Claim 183 recites, in part:

means to receive caller data signals representative of data
relating to said individual callers, including caller personal
identification data and said calling number identification data" and
"record testing structure connected to receive and test said caller data
signals including said calling number identification data and said
caller personal identification data against previously stored calling
number identification and caller personal identification data.

Contentions
The Examiner finds that the "secret code" in De Bruyn is personal
identification data (Final Rej. 13).
Appellant argues that De Bruyn does not teach a qualification
structure requiring two forms of identification as recited in claim 9 and that
the "secret code" in De Bruyn is not personal identification data:

De Bruyn's secret code is not personal to the caller and therefore, not
personal identification data used to identify the caller. Instead, it is
assigned by the telephone company to obtain a connection with the
computer device. The Patentee urges that personal identification data
should be interpreted as data that is "personal" or specific to a caller as
in data that permanently identifies the caller to the world at large. The
examples in the '707 specification of name, address, telephone
number, initials, etc. (see Fig. 5 of the '707 patent) are personal data
items that identify a person to the world at large. . . . There is no
mention that the secret code must be dialed for personal identification
data. At best, De Bruyn's secret code may be considered an access
code. For example, a password is a data item that a person creates to
identify the person to a computer and generally keeps it secret for the
purpose of restricting access by others, sometimes by frequently
changing it.

Br. 42.
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The Examiner finds that the "secret code" inherently identifies the
caller because the secret code is not known to others and the caller cannot
access the Lotto system without the secret code (Ans. 30).
Appellant argues:

Patentee submits that there is no indication whether the "secret
code" in De Bruyn is for personal identification of each caller or
simply part of a connection scheme. De Bruyn does not indicate
whether the "secret code" is shared by many callers or is personal to
each caller. Absent such indication in De Bruyn, the Examiner is
speculating.

Reply Br. 15-16.

Analysis
Although Appellant does not mention claim 183, since claim 183
recites "personal identification data," we treat the claim in this discussion.
"Personal identification data" is interpreted to be any information that
identifies a particular person as discussed in the claim interpretation section.
De Bruyn states that "the Telephone Company may, should it wish to do so,
attribute a secret code to each player" (pp. 6-7), which indicates that each
player has a unique secret code which identifies that player. "Secret codes"
are secret and therefore are not known to others. One of ordinary skill in the
art reading De Bruyn would understand that the purpose of the secret code
for each player is to allow only authorized persons at a telephone number to
play. The "secret code" is "caller PIN number data" as recited in claim 19
because it identifies the caller when taken together with the telephone
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number. Admittedly, De Bruyn's description is sparse, but this is often the
case with prior art and we must work with what we have.
Appellant's arguments that the "secret code" is "assigned by the
telephone company to obtain a connection with the computer device"
(Br. 42) and "there is no indication whether the 'secret code' in De Bruyn is
for personal identification of each caller or simply part of a connection
scheme" (Reply Br. 15-16) apparently refer to De Bruyn's statement that
"the Telephone Company may, should it wish to do so, attribute a secret
code to each player, which should then also be dialed in order to obtain the
connection with the computer device" (pp. 6-7). The secret code in
De Bruyn must be "dialed in order to obtain the connection" which
inherently requires comparing the secret code against a previously stored
secret code for that player to identify the player and obtain the connection.
Appellant's "personal identification data" must also be dialed in order to
obtain connection with the computer, so Appellant has not shown how the
claims distinguish over De Bruyn's using the secret code for "connection."

Conclusion
The "secret code to each user" in De Bruyn constitutes "personal
identification data" as recited in claims 9 and 183. The "secret code" is
"caller PIN number data" as recited in claim 19.

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3.
Appellant's statement of the issue (Br. 43): Does De Bruyn teach "calling
number identification data" automatically taken from or provided by the
PSTN (public switched telephone network) at the user interface?

Based on Appellant's arguments, we see the calling number
identification data and the interface as separate issues as follows:

Issue: Does De Bruyn teach automatically providing "calling number
identification data," as recited in dependent claim 18 and independent
claims 26, 96, and 183?

Issue: Does the limitation "interface structure coupled to said
communications facility" in independent claims 9, 26, 96, 137, and 183,
require that the "communications facility" is the public telephone company
and that the interface is separate from the public telephone company?

Claim limitations at issue
Claim 18 depends on claim 9 and further recites "said caller customer
number data is calling number identification data automatically provided
by said communication facility."
Claim 26 recites, in part, "[a]n analysis control system for use with a
communication facility . . . wherein said communication facility has a
capability to automatically provide calling number identification data . . .,
said analysis control system comprising: an interface structure coupled to
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said communication facility; . . . . record structure . . . connected to receive
said calling number identification data provided automatically."
Claim 96 recites, in part, "[a]n analysis control system for use with a
communication facility . . . wherein said communication facility has a
capability to provide call data signals indicative of calling number
identification data . . ., said analysis control system comprising: an interface
structure coupled to said communication facility . . . for receiving said
calling number identification data."
Claim 183 recites, in part, "[a]n analysis control system for use with a
communication facility . . . wherein said communication facility has a
capability to provide calling number identification data, said analysis
control system comprising: an interface structure coupled to said
communication facility . . . including means to receive caller data . . .
including . . . said calling number identification data provided
automatically from said communication facility."
Claims 9, 26, 96, 137, and 183 recite "an interface structure coupled
to said communication facility."

Contentions
The Examiner interprets claims 26 and 96 to require only that the
communication facility has a "capability" to provide calling number
identification data (ANI) (Final Rej. 11).
The Examiner finds that De Bruyn describes all the process steps in
detail and never requires the caller to enter his telephone number, yet the
system records the caller's telephone number, and therefore the telephone
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system must inherently automatically provide calling number identification
data (ANI) (Final Rej. 11-12).
Appellant argues that De Bruyn simply teaches that the telephone
number of the subscriber is recorded (Br. 43) and the Examiner has not
supported the determination that ANI is inherent (Br. 44).
Appellant also argues in connection with the obviousness rejection
over De Bruyn in view of either Maxon or Streisand (which we address here
because it concerns the teachings of De Bruyn):

De Bruyn does not teach ANI or similar capability to indicate a
calling number for use at a user interface. The analysis in De Bruyn is
based on data provided by a caller, not information provided by the
telephone network at a user interface.

Br. 73.
Appellant argues that the expert Declaration of Jerry A. Klein,
July 10, 2006 (Klein Declaration5), ¶ 18, traverses Examiner's reasons why
use of ANI or the like can be implied in De Bruyn (Br. 45).

5 There is some confusion in the brief over the labels of the Klein
declarations. Appellant refers to "an expert declaration of Jerry Klein (copy
attached, see EXHIBIT 'Klein I')" (Br. 30), referring to the Declaration of
Jerry A. Klein dated July 10, 2006, 67 pages long, having ¶ ¶ 1-120, and
"another supplemental declaration by Mr. Klein (copy attached, see
EXHIBIT Klein III)" (Br. 30), referring to the Supplemental Declaration of
Jerry A. Klein dated November 29, 2006, three pages long, having ¶ ¶ 1-6.
There is evidently no Klein II declaration. The brief refers to "Klein III
signed July 10, 2006" (Br. 41), when Klein I actually has this date. The
brief refers to Klein III ¶ 18 (Br. 45), ¶ ¶ 28-29 (Br. 51), ¶ 56 (Br. 77), and
¶ 77 (Br. 85). However, Klein III only has six paragraphs, so it assumed
from the discussion that Appellant intends to refer to Klein 1. The brief
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Klein states:

18. If it is assumed from De Bruyn that one of ordinary skill in the
art can glean the use of ANI, that person would assume that Bruyn's
lottery system could only be implemented within the network
operations of a telephone company (i.e., a carrier, the PSTN) and not
at a user interface of a private end user. Because De Bruyn assumes
that the telephone identification necessary to implement his lottery
system correlates with the billing operations integral to the carrier call
routing operations, one of ordinary skill in the art would assume that
De Bruyn's lottery system must be implemented within the call
routing operations of the telephone network ("the communication
facility"). De Bruyn makes an express statement that his device "will
identify the subscriber and charge him the phone call and stake cost
on his usual telephone bill, which shall also state the selected Lotto
figures and the cost of the stake." Therefore, De Bruyn does not teach
use of ANI at an individual user interface. The rejection that claims
18, 26, 96, 188 and 206 are anticipated by De Bruyn is incorrect.

Klein Declaration ¶ 18.
Appellant argues:

Even if for purposes of argument, ANI capability is implied in
De Bruyn, it can only be implied for use within a carrier's operations
for call placement and routing operations for purposes of billing.
There is no mention or implication in De Bruyn of receiving ANI or
like signals for any purpose other than billing. The very examples
used by the Examiner (TOA, page 107) in fact, support that De Bruyn,
at best, relies on the carrier's network to keep track of calling
numbers; there is no reference to receiving ANI or like signals at a
user interface and storing it with other caller data (e.g. lottery data) for

correctly refers to Klein I ¶ 116 (Br. 88). It appears that the Klein III
declaration is directed only to support for ANI in the '968 patent, which is no
longer at issue. Therefore, all references to the "Klein Declaration" refer to
the Klein I Declaration dated July 10, 2006.
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end user application. For clarity, "user interface" refers to interactive
operations between a user and an IVR system. A carrier's traditional
operations for call placement and routing operations do not require
interaction (via voice prompts) with the user. A user dials a number
and a carrier connects the user to a called party, without interaction
with the user. De Bruyn states that the system "will identify the
subscriber and charge him." (De Bruyn at page 6, lines 24-25.)

Br. 44.
The Examiner states that De Bruyn never requires the caller to enter
his or her telephone number, yet the system somehow gets that telephone
number and stores it, so De Bruyn inherently must have the capability to
provide calling number identification data (Ans. 31-32).
The Examiner states that the Klein Declaration fails to address that the
memory 10 in De Bruyn is not part of the telephone company (Ans. 34-35).
Appellant further argues that "De Bruyn teaches a lottery system that
is not implemented as an end user system. It can only be implemented by
the telephone company as part of its traditional call placement and routing
operations" (Reply Br. 16).
Appellant argues in connection with the obviousness rejection over
De Bruyn in view of Maxon or Streisand:

The Examiner fails to appreciate that the receipt and use of ANI
signals at the user interface (not within the call placement and routing
operations of a telephone company represented by the words
"communication facility" within the claims at issue) is not disclosed
by De Bruyn.

Reply Br. 21. This argument is most logically treated in this rejection.
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Appellant argues with respect to the Klein Declaration:

The Patentee does not deny that his system may operate within the
communication facility. But it operates at the user interface, which is
not within the traditional call placement and routing operations of the
communication facility. The Examiner has failed to appreciate this
distinction. De Bruyn's operation is presumed to be by the telephone
company (page 6, line 28) and De Bruyn does not disclose a user
interface separate from these traditional operations of the telephone
company.

Reply Br. 30.

Analysis - calling number identification data
The preambles of claims 26 and 183 recite that the communication
facility has the "capability" to provide calling number identification data,
which does not require automatically providing calling number identification
data. However, the bodies of those claims positively recite that the calling
number identification data is "provided automatically." Claim 96 does not
require the calling number identification data is provided "automatically."
However, for simplicity, we treat claim 96 the same as claims 26 and 183.
De Bruyn details the steps for entering a bet starting with the user
lifting the receiver, dialing the Lotto game number, responding to voice
announcements to enter numbers with the telephone set, having a voice read
the selected numbers back to verify whether the correct numbers have been
recorded, and hanging up the telephone (pp. 4-5). De Bruyn describes that
the device records the calling telephone number and the selected Lotto
numbers for billing purposes (p. 5, ll. 9-11), but does not indicate that the
telephone number is entered by the caller or is read back by the system for
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verification by the caller. Accordingly, we agree with the Examiner that a
preponderance of the evidence establishes that De Bruyn inherently
automatically provides the telephone number to the Lotto system. This is in
accord with common sense since an accurate record of telephone numbers is
critical for billing and payout purposes. Appellant's argument that "[t]he
analysis in De Bruyn is based on data provided by a caller, not information
provided by the telephone network at a user interface" (Br. 73) does not
point to any disclosure of the telephone number being provided by the caller.

Conclusion - calling number identification data
De Bruyn teaches automatically providing "calling number
identification data."

Analysis - interface
Although not clearly stated in connection with the anticipation
rejection, we understand Appellant's and Klein's arguments about the
interface to imply that the "interface structure coupled to said
communications facility" limitation should be construed to mean that the
"communications facility" is the call placement and routing operations of the
public telephone company equipment and the "interface structure" (which
Appellant also refers to as the "user interface" for an "end user application")
is not part of the telephone company system. This argument is more clearly
stated in connection with the later obviousness rejection:

The Examiner fails to appreciate that the receipt and use of ANI
signals at the user interface (not within the call placement and routing
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operations of a telephone company represented by the words
"communication facility" within the claims at issue) is not disclosed
by De Bruyn.

Reply Br. 21; see also Reply Br. 30 (Appellant's invention "operates at the
user interface, which is not within the traditional call placement and routing
operations of the communication facility.").
It is not clear whether Appellant considers this to be the ordinary
interpretation of the claims or a narrow interpretation that should be adopted
to preserve patentability. Appellant presents no evidence that
"communications facility" must be defined as the call placement and routing
operations of the public telephone company equipment and the "interface
structure" is not part of the telephone company system. In a Markman
hearing in Katz v. AT&T Corp., 63 F. Supp. 2d 583 (E.D. Pa. 1999),
involving the '707 patent, among others, the court construed the term
"communication facility." Plaintiff Katz argued that "the kind of
communication facility is inconsequential and the Court should construe the
term to mean 'any telephone network that enables callers to make calls,'"
id. at 594. Defendant telephone company AT&T argued:

[T]he Court should construe the term as requiring that (1) the
communication facility comprise the entire Public Switched
Telephone Network ("PSTN") and (2) the Katz system must be
operated only outside the PSTN or communication facility.

Id. That is, Appellant took the opposite position of what it now appears to
argue in this appeal. The district court concluded "that there is no basis in
the claim language, the specifications, or in Figure 1 to construe the term
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'communication facility' to mean that the Katz system must be operated only
outside the communication facility," id. at 596.
The district court noted that in an information disclosure statement
(IDS) during the prosecution history of U.S. Patent 5,553,120, issued
October 1, 1996, Katz discussed the patent to De Bruyn for a telephonic
lottery system. "Katz stated that DeBruyn was distinct from his system
which received identification from a caller because it was 'integrated with
the composite telephone system which could identify the subscriber's
telephone number,'" id. at 597. The district court concluded that Katz's
statement did "not restrict or limit the term 'communication facility' to mean
that the Katz system must be operated only outside of it," id.
The district court concluded:

Based on the foregoing inspection of the claim language,
specification, and prosecution history, the Court construes the term
"communication facility" in the Katz patents to mean: that part of a
telephone network that enables a caller to connect to the Katz system.
The Court concludes that there is no support for a construction of
"communication facility" to require that the Katz system be operated
only outside the entire PSTN nor that the "communication facility"
encompass the elements or processes of the entire PSTN.

Id. at 598. We expressly adopt the district court's reasoning and conclusion.
Therefore, as a matter of claim interpretation, the term
"communication facility" does not require that the claimed system be
operated only outside the call placement and routing operations of a
telephone company; the system could be operated outside the telephone
system or as part of the telephone system. This was Appellant's own
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interpretation in the district court when it was suing a telephone company.
To the extent it is now argued that the claims should be narrowly construed
so as to be operated only outside the call placement and routing operations
of a telephone company to uphold the '707 patent's patentability, we do not
agree because this would require reading limitations into the claims.
In any case, however, the Lotto voice response system in De Bruyn is
attached to a PABX connected to the main telephone exchange to route calls
to the central Lotto computer (sole drawing figure). Thus, the Lotto system
in De Bruyn is separate from the call placement and routing operations of
the main telephone company.
Appellant's argument that the calling telephone number is used only
by the telephone company for billing purposes is not accurate. The calling
telephone number is stored with the Lotto information (p. 3, ll. 27-28; p. 5,
ll. 10-11), the telephone number is used to "determine whether the phone
number of the subscriber has already been recorded for the current Lotto
game" (p. 5, ll. 12-14), and winners of prizes are identified by the numbers
and the subscriber's telephone numbers (p. 7). Accordingly, the callers'
telephone number are integral to the Lotto system and are not just used to
place the call to the Lotto game.

Conclusion - interface
The limitation "interface structure coupled to said communications
facility" in independent claims 9, 26, 96, 137, and 183 does not require that
the "communications facility" is the public telephone company and that the
interface is separate from the public telephone company.
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Since the only limitations argued with respect to claim 9 are the
push-button telephone and personal identification data, discussed supra, and
the interface structure discussed here, the rejection of claim 9 is affirmed.
Appellant does not separately argue the patentability of claims 22 and 23, so
the rejection of these claims is affirmed. See 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 18 is affirmed because De Bruyn teaches
automatically providing "calling number identification data," as discussed in
the previous section. Since we find that the "secret code" is "caller PIN
number data" as recited in claim 19, as discussed supra, the rejection of
claim 19 is also affirmed.
4.
Issue: Does De Bruyn teach (1) "record structure . . . connected to receive
said calling number identification data provided automatically by said
communication facility for at least certain of said individual callers, for
accessing a file, and storing additional digital data provided by said callers"
and (2) "qualification structure . . . for testing said calling number
identification data to specify a basis for entitlement defining a limit on use,
for restricting the extent of access to said system," as recited in claim 26?

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Claim limitations at issue
Claim 26 recites, in part:

record structure, including memory and control means,
connected to receive said calling number identification data
provided automatically by said communication facility for at least
certain of said individual callers, for accessing a file, and storing
additional digital data provided by said callers; and

qualification structure controlled by said record structure for
testing said calling number identification data to specify a basis for
entitlement defining a limit on use, for restricting the extent of
access to said system for a respective one of said certain of said
individual callers.

Contentions
Appellant argues:

De Bruyn does not teach using the calling number identification data
that is automatically provided by the communication facility, i.e., ANI
or the like, at the user interface for "accessing a file" and storing
"additional" data relating to certain select ones of the individual
callers in combination with testing the calling number identification
data as a basis to limit the extent of access.

Br. 46.
Appellant also argues in connection with the obviousness rejection
over De Bruyn in view of either Maxon or Streisand (which we address here
because it concerns the teachings of De Bruyn):

With respect to claim 26 (and its dependents 32-34), De Bruyn
does not teach using the calling number identification data provided
automatically for accessing a file and storing additional data relating
to certain select ones of the individual callers in combination with
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testing the calling number identification data as a basis to limit the
extent of access.

Br. 74.
The Examiner responds that De Bruyn uses the calling number
identification data to determine if the caller previously placed a stake and
therefore necessarily accesses a file using calling number data and that the
additional data stored is the Lotto selection (Ans. 35).

Analysis
The limitation "record structure . . . connected to receive said calling
number identification data provided automatically by said communication
facility for at least certain of said individual callers, for accessing a file, and
storing additional digital data provided by said caller" in claim 26 is
interpreted to recite a record structure: (1) connected to receive calling
number identification data; (2) for accessing a file; and (3) for storing
additional digital data. That is, the commas indicate that the record structure
performs three functions. Appellant's argument that claim 26 requires
"using the calling number identification data provided automatically for
accessing a file and storing additional data" (Br. 74; Br. 46) is inaccurate
because claim 26 does not recite using the calling number identification data
to access a file and store additional data; the record structure, not the calling
number identification data, is used for "accessing a file" and "storing
additional data," which are independent functions.
We previously found that De Bruyn teaches "record structure,
including memory and control means, connected to receive said calling
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number identification data provided automatically by said communication
facility" as recited in claim 26. The Lotto numbers and stakes from the
subscribers in De Bruyn are "additional digital data." De Bruyn has
structure for accessing a file to store and retrieve the selected Lotto numbers,
stakes, and the telephone number of the subscriber (e.g., p. 5, ll. 6-11; p. 7,
ll. 3-12). De Bruyn also teaches that "a check is carried out in an auxiliary
memory 10 in order to determine whether the phone number of the
subscriber has already been recorded for the current Lotto game" (p. 5,
ll. 11-14), so De Bruyn uses the calling number identification data to access
a file even though this is not required by claim 26. We find that De Bruyn
teaches "record structure . . . connected to receive said calling number
identification data provided automatically by said communication facility for
at least certain of said individual callers, for accessing a file, and storing
additional digital data provided by said callers."
De Bruyn teaches structure using the telephone number for "checking
the permitted number of stakes per week by one and the same player"
(De Bruyn, p. 4, ll. 1-2), i.e., to "check . . . in order to determine whether the
phone number of the subscriber has already been recorded for the current
Lotto game" (p. 5, ll. 11-14), and, should this be the case, to refuse a stake
(p. 5, ll. 14-21). This defines a limit on use for restricting access to the
system. Accordingly, De Bruyn teaches "qualification structure . . . testing
said calling number identification data to specify a basis for entitlement
defining a limit on use, for restricting the extent of access to said system for
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a respective one of said certain of said individual callers." This is identical
to the qualification structure described in the '707 patent (col. 12).

Conclusion
De Bruyn teaches (1) "record structure . . . connected to receive said
calling number identification data provided automatically by said
communication facility for at least certain of said individual callers, for
accessing a file, and storing additional digital data provided by said callers"
and (2) "qualification structure . . . testing said calling number identification
data to specify a basis for entitlement defining a limit on use, for restricting
the extent of access to said system for a respective one of said certain of said
individual callers," as recited in claim 26.
The rejection of claim 26 is affirmed.

5.
Issue: Does De Bruyn teach (1) "record structure . . . connected to said
interface structure for accessing a file and storing data . . . in accordance
with said calling number identification data" and (2) "means for processing
at least certain of said data developed by said terminals and said calling
number identification data," as recited in claim 96?

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Claim limitations at issue
Claim 96 recites, in part:

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 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.

Contentions
Appellant argues:

[T]he logical processing operation performed in De Bruyn is for
determination of a winner, which is based on the lottery number
selected by the caller, and not on the telephone number (received
either by ANI or the like as asserted by the Examiner or in any other
manner as De Bruyn is silent on this subject).

Br. 46.
Appellant further argues:

Thus, even if it is assumed that De Bruyn taught receipt of ANI
or the like at the user interface, which it does not, all the limitations of
claims 26, 96 and 183 have not been met. The Examiner, however,
argues that the claim recitation "in accordance with" is "in agreement
with." Even with the Examiner's meaning, the logical interpretation
for the claim recitation "control structure for controlling the analysis
structure in accordance with the terminal digital data indicative of the
calling number," is that the terminal digital data factors into the
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analysis. In distinction, all participants in De Bruyn are identified by
the telephone number, prior to any analysis that is performed. (see De
Bruyn, page 1.) Thus, it cannot be sustained as the Examiner argues
that the identification of the telephone number factors into the
determination of a winner in De Bruyn. That is an improper, illogical,
and overly broad interpretation.

Br. 46.
Appellant still further argues:

The Examiner (TOA, pages 109 and 110) falters in his
reasoning that determination of a winner is not the only analysis
performed in De Bruyn. In De Bruyn, a check of the stored data to
determine whether the phone number of the subscriber has already
been recorded for the current week's Lotto game, is done before taking
Lotto numbers from a caller, obviously in order to determine if the
caller should be allowed to play the lottery. However, the claims
require caller-entered data (Lotto numbers) and the terminal digital
data (telephone number) to be processed and separately recites
qualification structure distinct from the analysis structure to
perform the check whether the phone number has been recorded.
[Emphasis added.]

Br. 47.
Appellant also argues in connection with the obviousness rejection
over De Bruyn in view of either Maxon or Streisand (which we address here
because it concerns the teachings of De Bruyn):

With respect to claim 96 (and its dependents 97-102, 106-108,
115, 123, 131, and 135), De Bruyn does not teach (ANI or similar
capability) using calling number data for accessing a file and storing
data and processing caller entered data as well as calling number
identification data.

Br. 74.
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The Examiner states that De Bruyn discloses accessing a file and
storing data "in accordance with said calling number identification data":

De Bruyn shows that, in determining the winners, the caller's
telephone number factors into the analysis (De Bruyn, p. 7,
lines 4-12). The caller winners and losers cannot be identified absent
their telephone numbers; therefore, the telephone numbers necessarily
"factor into the analysis", at least for identification of the caller with
his Lotto numbers. Therefore, Patentee's argument ignores the clear
teaching in De Bruyn.

Ans. 37.
The Examiner notes that "processing" has been defined in litigation to
mean "manipulation of data which performs some operation or sequence of
operations on the data" (Ans. 36) and finds that De Bruyn processes the
telephone numbers in connection with determining who has won or lost the
Lotto game in addition to using the telephone number in the qualification
process (Ans. 38).

Analysis
Although Appellant's arguments refer to claims 26 and 183, they seem
to apply only to claim 96 because they discuss "processing" caller number
identification data and accessing a file and storing data "in accordance with"
calling number identification data, which limitations are not found in
claims 26 and 183. Thus, we address claim 96 separately.
In the limitation "record structure . . . connected to said interface
structure for accessing a file and storing data . . . in accordance with said
calling number identification data," it is not clear what is meant by
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"accessing a file and storing data . . . in accordance with said calling number
identification data." Appellant does not define or argue what is meant by
"in accordance with" and the limitation is not defined in the '707 patent.
Appellant argues that "De Bruyn does not teach (ANI or similar capability)
using calling number data for accessing a file and storing data" (Fact 5),
which implies that the calling number data is used as a file name or index,
but the limitation "accessing a file and storing data . . . in accordance with
said calling number identification data" is not the same as "using calling
number data for accessing a file and storing data." We interpret "record
structure . . . for accessing a file and storing data . . . in accordance with said
calling number identification data" broadly to mean that the calling number
identification data factors somehow into "accessing a file and storing data."
De Bruyn describes that the telephone number and Lotto number are
recorded together so the Lotto number data is broadly stored in accordance
with the telephone number. De Bruyn describes that the files containing the
telephone number, Lotto number, and stake are read out after the winning
Lotto number is drawn for determining and notifying the winners and for
billing purposes so the files for individual subscribers are broadly accessed
in accordance with the telephone number. De Bruyn teaches "record
structure . . . connected to said interface structure for accessing a file and
storing data . . . in accordance with said calling number identification data."
In the limitation "means for processing at least certain of said data
developed by said terminals and said calling number identification data,"
Appellant does not dispute the Examiner's statement that "processing" has
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been defined in litigation to mean "manipulation of data which performs
some operation or sequence of operations on the data" (Ans. 36). The
Examiner finds that "processing at least certain of said data developed by
said terminals and said calling number identification data" is met by
determining whether the subscriber has already placed a stake and by
processing the record containing the Lotto number, telephone number, and
stake for billing and payout purposes. We agree that the computer processes
records containing the Lotto number, telephone number, and stake of the
subscribers to identify the winners and for billing purposes and, thus,
"processes" the calling number identification data.
Appellant's argument that "the logical processing operation performed
in De Bruyn is for determination of a winner, which is based on the lottery
number selected by the caller, and not on the telephone number" (Br. 46) is
not persuasive because the computer must process the telephone numbers to
identify who won and for billing purposes. Claim 96 does not recite the
nature of the processing of the calling number identification data.
Appellant's argument that "all participants in De Bruyn are identified by the
telephone number, prior to any analysis that is performed . . . Thus, it
cannot be sustained as the Examiner argues that the identification of the
telephone number factors into the determination of a winner in De Bruyn"
(Br. 46) is not persuasive because the actual claim only requires
"processing" the calling number identification data and because the
computer in De Bruyn must process the telephone numbers to identify who
won and for billing purposes. Appellant's argument that "the claims require
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caller-entered data (Lotto numbers) and the terminal digital data (telephone
number) to be processed and separately recites qualification structure
distinct from the analysis structure to perform the check whether the phone
number has been recorded" (Br. 47) is not persuasive because De Bruyn
separately qualifies callers to determine whether to accept their stake in
addition to processing of the data after the Lotto drawing. Claim 96 does not
specify the order of operations and does not recite "analysis structure to
perform the check whether the phone number has been recorded," as argued;
see discussion of claim 183 in the next section. Therefore, Appellant has not
shown error in the Examiner's finding that De Bruyn teaches "means for
processing at least certain of said data developed by said terminals and said
calling number identification data."

Conclusion
De Bruyn teaches (1) "record structure . . . connected to said interface
structure for accessing a file and storing data . . . in accordance with said
calling number identification data" and (2) "means for processing at least
certain of said data developed by said terminals and said calling number
identification data," as recited in claim 96.
The rejection of claim 96 is affirmed.

6.
Issue: Does De Bruyn teach (1) "interface structure . . . including means to
receive caller data signals . . . including caller personal identification data
and said calling number identification data provided automatically from said
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communication facility" and (2) "record testing structure connected to
receive and test said caller data signals including said calling number
identification data and said caller personal identification data. against
previously stored calling number identification and caller personal
identification data," as recited in claim 183?

Claim limitations at issue
Claim 183:

interface structure coupled to said communication facility to
interface said remote terminals for voice and digital communication
and including means to receive caller data signals representative of
data relating to said individual callers, including caller personal
identification data and said calling number identification data
provided automatically from said communication facility;
. . .

record testing structure connected to receive and test said
caller data signals including said calling number identification data
and said caller personal identification data against previously stored
calling number identification and caller personal identification
data . . . .

Contentions
Appellant argues in connection with the obviousness rejection over
De Bruyn in view of either Maxon or Streisand (which we address here
because it concerns the teachings of De Bruyn):

With respect to claim 183 (196-200), De Bruyn does not teach
receiving calling number identification data provided automatically
from said communication facility in combination with testing that
against previously stored calling number identification data.
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Br. 74.

Analysis
As discussed, supra, De Bruyn teaches "calling number identification
data provided automatically from said communication facility."
De Bruyn teaches structure using the telephone number for "checking
the permitted number of stakes per week by one and the same player"
(De Bruyn, p. 4, ll. 1-2) and to "check . . . in order to determine whether the
phone number has already been recorded for the current Lotto game" (p. 5,
ll. 11-14) and, should this be the case, to refuse a stake (p. 5, ll. 14-21).
Thus, De Bruyn tests the telephone number against the previously stored
telephone number to determine whether to refuse the stake. Accordingly,
De Bruyn teaches "record testing structure connected to receive and test . . .
said calling number identification data . . . against previously stored calling
number identification."

Conclusion
De Bruyn teaches (1) "interface structure . . . including means to
receive caller data signals . . . including caller personal identification data
and said calling number identification data provided automatically from said
communication facility" and (2) "record testing structure connected to
receive and test said caller data signals including said calling number
identification data and said caller personal identification data against
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previously stored calling number identification and caller personal
identification data," as recited in claim 183.
The rejection of claim 183 is affirmed.

7.
Issue: Does De Bruyn teach "storing . . . additional identification data
signals in said record structure for subsequent identification of said callers,"
as recited in claim 137?

Claim limitations at issue
Claim 137 recites, in part:

record structure including memory and control means for
storing answer data signals and for receiving identification data
signals for specific individual callers, said record structure further
including means for receiving additional identification data signals
on-line for said specific individual callers and for initially storing
said additional identification data signals in said record structure
for subsequent identification of said callers.

Contentions
Appellant does not address claim 137 in the anticipation rejection of
claims 137, 141-147, 150, 151, 153, 165, 166 over De Bruyn.
However, Appellant argues in connection with the obviousness
rejection over De Bruyn in view of either Maxon or Streisand (which we
address here because it concerns the teachings of De Bruyn):

Claims 137 and its dependents 141-143, 150-151,153, 165 and
166 recite "storing additional data signals online for said specific
individual callers and for initially storing said additional data signals
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in said record structure for subsequent identification . ." De Bruyn
does not teach receiving identification data signals as well as
additional data signals that are initially stored for subsequent
identification.

Br. 75.
The Examiner finds that the telephone numbers in De Bruyn
correspond to the "identification signals" and the "secret codes" in De Bruyn
correspond to the "additional identification data signals," and that the secret
code must inherently be stored temporarily for comparison for identification
of the callers (Final Rej. 16).

Analysis
Initially, we note that claim 137 does not positively recite a step of
using the "additional data signals" for identification. Claim 137 recites
"storing said additional identification data signals in said record structure for
subsequent identification of said callers" where "for subsequent
identification" is a statement of intended use. Nevertheless, we find that
De Bruyn does use additional data signals for identification.
De Bruyn describes that the system may provide for a secret code that
must be dialed to obtain a connection (pp. 6-7). The secret code must be
inherently stored at least temporarily in structure somewhere for comparison
with a previously stored secret code to determine whether the caller is
authorized to be connected to the system.
Alternatively, the secret code can be considered to correspond to the
"identification signals" and receiving the telephone numbers from the system
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can be considered to correspond to "receiving additional identification data
signals on-line" since "on-line" requires during a connection, not necessarily
signals provided by a human caller during a connection (or, at least,
Appellant has not provided any argument to that effect). The telephone
numbers in De Bruyn are used for subsequent identification of callers for
billing and payout purposes.

Conclusion
De Bruyn teaches "storing . . . additional identification data signals in
said record structure for subsequent identification of said callers," as recited
in claim 137.
The rejection of claim 137 is affirmed.

8. Dependent claims
Issue: Has Appellant shown error in the Examiner's rejection of dependent
claims 32-34, 97-102, 106-108, 115, 119-123, 131, 132, 135, 141-147, 150,
151, 153, 165, 166, 184-190, 196-200, 202, and 203?

Contentions
Appellant argues that the dependent claims rejected over De Bruyn
are patentable for the reasons urged with respect to independent claims 26,
96, 137, and 183 (Br. 49-50).
Appellant argues that claim 32 expressly indicates that the "limit on
use restricts access based on a one time only use," where "only" means a
single one (Br. 49).
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Appellant argues that claim 33 indicates that the "limit on use relates
to a dollar amount" and that in De Bruyn the limit imposed is not the cost
but the number of stakes that a caller makes (Br. 49).
As to claims 97-102, 106-108, 115, 119-123, 131, 132, 135, 141-147,
150-153, 165, 166, 184, 196-200, 202, and 203, Appellant summarizes what
is claimed and argues that the limitations are not taught by De Bruyn
(Br. 49-50).
The Examiner address each of the dependent claims in the statement
of the rejection (Final Rej. 16-24) and responds to each of Appellant's
arguments (Ans. 42-45). The Examiner notes that as to claim 115 and
higher, Appellant fails to address the rejections (Ans. 45).

Analysis
The rejections of the independent claims are affirmed, so the
rejections of the dependent claims must be analyzed.
Initially, we ask how much discussion of the dependent claims is
required. "A statement [in the Appeal Brief] which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim." 37 C.F.R. § 41.37(c)(1)(vii). Appellant denies that the
limitations of the dependent claims are found in De Bruyn. However, the
Examiner has discussed each of the dependent claims and Appellant has not
made any effort to show the error in the Examiner's reasoning. It is not our
role to make an unassisted review of the Examiner's rejection and to make
Appellant's arguments for it. Appellant can not make any arguments on
appeal which were not presented to the Board; thus, in any judicial review
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Appellant will require the court to make its own review. We affirm the
rejection of the dependent claims for reasons stated by the Examiner, as
elaborated on below for claims that are minimally argued as to limits on use.
Independent claim 26 recites a qualification structure "defining a limit
on use" and Appellant does not contest that this limitation is taught by
De Bruyn. Claim 97, which depends on independent claim 96, and
claim 141, which depends on independent claim 137, recite a qualification
structure to enable access "based on limits on use." Claim 150 depends on
independent claim 137 and recites a qualification structure to test callers "on
the basis of limits specified on use." Claim 188 depends on dependent
claim 184 which depends on independent claim 183 and recites a
qualification structure for testing calling number identification data "to
specify a limit on use." Claim 196 depends on independent claim 183 and
recites a qualification structure for testing calling number identification data
"to specify a limit on use." The Examiner finds that De Bruyn's statement
that a check is carried out "in order to determine whether the phone number
of the subscriber has already been recorded for the current Lotto game"
(De Bruyn, p. 5, ll. 12-14) and, if so, the stake is refused, teaches a limit on
use (Final Rej. 17-18). We agree that De Bruyn teaches a limit on use and
Appellant has not said why it does not. The rejection of dependent
claims 97, 141, 150, 188, and 196 is affirmed for these reasons.
Dependent claims 32, 98, and 142 and recite a "one time only use."
Dependent claims 99 and 151 recite a "limited number of uses." Dependent
claim 197 recites a "one time use." Dependent claim 198 recites a "one time
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only use or a limited number of uses." The Examiner finds that De Bruyn's
statement that a check is carried out "in order to determine whether the
phone number of the subscriber has already been recorded for the current
Lotto game" (De Bruyn, p. 5, ll. 12-14) and, if so, the stake is refused,
teaches a one time only use for that Lotto game (Final Rej. 18-19).
Appellant argues that "only" means a single one (Br. 49), but does not
explain why the Examiner errs. We agree with the Examiner that De Bruyn
teaches that there may be a limit of one use per game, which also meets the
limitations of a limited number of uses. Each game is a separate and
different event. The rejection of dependent claims 32, 98, 99, 142, 151, 197,
and 198 is affirmed for these reasons.
Dependent claim 33 recites that the "limit on use relates to a dollar
amount." Dependent claim 100 recites that the "limits on use relate to a
dollar amount." Dependent claim 153 recites that the "limits on use specify
limits with respect to a dollar amount." Dependent claim 199 recites that the
"limit on use is a limit based on a dollar amount." De Bruyn states that
"[t]he charges for the stakes can be determined in accordance with the
number of selected figures, and in order to avoid abnormally high stakes, a
maximum amount can be preset, which, when exceeded, would be refused
by the computer device" (De Bruyn, p. 6, ll. 17-21). The Examiner reasons
"[g]iven that a maximum amount of stakes can be preset, with each stake
costing a specific amount, the limits are also established with respect to the
dollar amount" (Final Rej. 19). Appellant argues that "the limit imposed in
De Bruyn is not the cost, but is instead the number of stakes that a caller
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makes" (Br. 49). We agree with the Examiner. We understand the
"maximum amount" in this quotation from De Bruyn to refer to the "charges
for the stakes" which is the dollar amount. Furthermore, the claim limitation
that the "limit on use relates to a dollar amount" only requires that the limit
"relate to" a dollar amount, so a number of stakes each having a
predetermined value relates to a dollar amount. The rejection of dependent
claims 33, 100, 153, and 199 is affirmed for these reasons.
As to claims 145-147 and 187, which are not argued here, we refer to
the claim interpretation section on "item data," supra.

Conclusion
Appellant has not shown error in the Examiner's rejection of
dependent claims 32-34, 97-102, 106-108, 115, 119-123, 131, 132, 135,
141-147, 150, 151, 153, 165, 166, 184-190, 196-200, 202, and 203. The
rejection of these claims over De Bruyn is affirmed.

(2) Yoshizawa
Claims 9, 20, 21, 137, 141, 143, 148-150, 151, 153, 169, 176-178,
181, and 182 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Yoshizawa. These claims do not require the "calling number identification
data" of claims 18, 26, 96, and 183.

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Facts - Yoshizawa
Yoshizawa describes a voice response system for telephone betting:

A member, viz. subscriber, is required to open an account with a
specified bank. Upon completion of this procedure, the subscriber can
make bets through any push-button telephone set, in a private home,
or on a street corner. He calls the telephone betting center and inputs
his account number, password number and the desired parimutuel
tickets. The voice response unit transmits these inputs to the central
processing unit through the data communication lines. Acceptance of
the bet is completed as the input data are entered in the account
file. . . .

Payments for tickets are made automatically by deducting from
the bank account. Similarly, pay-offs are made by automatic
remittance to the bank account. So no parimutuel tickets are issued.

P. 216.
A summary of typical inputs and voice responses is shown in Table 1.
After entering the subscriber number, password number, and number of
parimutuel tickets, the system provides a registration time and a registration
number (Table 1, making a bet, step 5). The subscriber is prompted by a
voice instruction to repeat the registration number to complete the
registration (Table 1, making a bet, steps 5 and 6). The registration number
is also required to cancel a bet (Table 1, canceling a bet, steps 1 and 2).
Yoshizawa states that the "[c]onversation with the subscriber is
recorded, to provide against any trouble that may occur" (p. 218).
Yoshizawa describes that the voice response unit may be used in other
applications (p. 220).

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1.
Appellant does not separately argue the patentability of independent
claim 169 or its dependent claims. Thus, the rejection of claims 169,
176-178, 181, and 182 over Yoshizawa is affirmed. See 37 C.F.R.
§ 41.37(c)(1)(vii) ("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.").

2.
Issue: Is the "password" in Yoshizawa "personal identification data" as
recited in claim 9?

Claim limitations at issue
Claim 9 recites "qualification structure coupled to said record
structure for qualifying said individual callers based on at least two forms of
distinct identification including caller customer number data and at least one
other distinct identification data element consisting of personal
identification data provided by a respective one of said individual callers"
(emphasis added).
Claim 19 depends on claim 18 which depends on claim 9 and recites
that "said personal identification data is caller PIN number data."

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Contentions
The Examiner finds that "the 'personal identification data' of the
claims and the 'password' of Yoshizawa are equivalents" (Final Rej. 28).
Appellant argues that the Examiner errs in finding that a password or
registration number is "one other distinct identification data element
consisting of personal identification data" because a "password that is
composed (and frequently changed) serves as an access code or PIN, rather
than personal identification data" (Br. 50).
The Examiner responds that claim 19, for example, requires the
personal identification data to be a caller's PIN number data and, therefore, a
password can be personal identification data (Ans. 46).

Analysis
We agree with the Examiner that the password in Yoshizawa is
personal identification data. Claim 19 recites that "said personal
identification data is caller PIN number data," which indicates that a PIN is
an example of personal identification data, contrary to Appellant's argument.
As was well known to the average person, a PIN number is a secret
alphanumeric password shared between a user and a system that can be used
to authenticate the user to the system. Typically, the user is required to
provide a non-confidential user identifier (such as a UserID on a computer)
or token (such as a banking card) and a confidential password or PIN to gain
access to a system, such as to a computer or an ATM. In Yoshizawa, a
caller enters a subscriber number and a password where the password serves
as personal identification data to verify the caller's identity in combination
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with the account number. As discussed in the claim interpretation section,
"personal identification data" does not have to be something that is
associated with a person from the time that he or she is born.

Conclusion
The "password" in Yoshizawa is "personal identification data" as
recited in claim 9.
The rejection of claim 9 is affirmed. Claims 20 and 21 have not been
separately argued, so the rejection of these claims is affirmed.

3.
Issue: Does Yoshizawa teach "means for receiving additional identification
data signals on-line . . . and for initially storing said additional identification
data signals in said record structure for subsequent identification of said
callers," as recited in claim 137?

Claim limitation at issue
Claim 137 recites, in part:

record structure including memory and control means for
storing answer data signals and for receiving identification data
signals for specific individual callers, said record structure further
including means for receiving additional identification data signals
on-line for said specific individual callers and for initially storing said
additional identification data signals in said record structure for
subsequent identification of said callers.

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Contentions
The Examiner finds that "additional identification data signals"
corresponds to the password and registration number (Yoshizawa, p. 217,
Table 1) and to the recorded conversation with the subscriber (Yoshizawa,
p. 218: "Conversation with the subscriber is recorded to provide against any
trouble that may occur.") which is "voice data" (Final Rej. 27).
Appellant argues:

The plain meaning of "initially" is "occurring at the beginning; first."
See Websters Encyclopedic Unabridged Dictionary. The fact that in
Yoshizawa, a caller must be a 1) subscriber, 2) have a password, 3)
sufficient bank funds etc., suggests that comprehensive information on
a caller exists and that there is no need to take any additional data that
is initially stored for subsequent identification of the caller. Any
password data or registration data provided by a caller is already
known to the system. Therefore, such data cannot characterized as
being initially stored. The only possible data provided by a caller that
may be initially stored is a bet placed by the caller. However, the bet
is the wager placed by a caller rather than a form of identification to
subsequently identify the caller. Therefore, in Yoshizawa, there is no
teaching of this claimed limitation. The rejection that claim 137 is
anticipated by Yoshizawa is incorrect. (See Klein III, ¶¶ 28-29).

Br. 51.
The Klein6 Declaration referred to states:
28. Specifically, claim 137 recites the limitation "and for initially
storing said additional identification data signals in said record
structure for subsequent identification of said callers." The plain
meaning of "initially" is "occurring at the beginning; first." See
Websters Encyclopedic Unabridged Dictionary.

6 See footnote 5.
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29. Yoshizawa states:

A member, viz. subscriber is required to open an account with a
specified bank. Upon completion of this procedure, the
subscriber can make bets through any push-button telephone
set, in a private home, or on street corner. Yoshizawa,
page 216, left-hand column.

Yoshizawa teaches that a caller must be a subscriber and must have a
password to place bets in the system before making a call to the
system. Therefore, information already exists for the subscriber. Any
password data or registration data provided by a caller is already
known to the system. Therefore, such data cannot [be] characterized
as being initially stored. The only possible data provided by a caller
that may be initially stored is a bet placed by the caller. However, the
bet is the wager placed by a caller rather than a form of identification
to subsequently identify the caller. Therefore, in Yoshizawa, there is
no teaching of this claimed limitation. The rejection that claim 137 is
anticipated by De Bruyn is incorrect.

Klein Declaration ¶¶ 28-29.
The Examiner states that Appellant takes the word "initially" out of
context. The Examiner states that "[a]ll this passage of the claim requires is
that the data be initially stored before it is used for identification" (Ans. 47)
and not "that the 'additional identification data signals' received 'on-line' be
the very first data placed in the record structure for the caller" (Ans. 47).

Analysis
We agree with the Examiner's interpretation that "initially storing said
additional identification data signals in said record structure for subsequent
identification of said callers" only requires storing additional identification
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data signals before a subsequent step of using the additional identification
data signals for identification of the callers. That is, "initially storing" is
storing in the computer and "subsequent identification of said callers" can be
identification by comparing to previously stored numbers. Appellant and
Klein interpret "initially storing" to mean that the information in the
additional identification data signals represents new information that has not
been previously stored in the system. This is not required by claim 137.
The step of "initially storing" identification data received online in claim 137
is a preliminary step to the step of "subsequent identification" and says
nothing about other information already stored in the system.
The subscriber number in Yoshizawa corresponds to the
"identification data signals for specific individual callers" and the password
in Yoshizawa corresponds to the "additional identification data signals
[received] on-line." The password has to be stored in the computer for
comparison to a stored password for that subscriber number and the
comparison must take place subsequent to the step of storing. Accordingly,
Yoshizawa teaches "initially storing said additional identification data
signals in said record structure for subsequent identification of said callers."
We do not agree with the Examiner's interpretation that Yoshizawa's
statement that "[c]onversation with the subscriber is recorded, to provide
against any trouble that may occur" (p. 218) means that the caller's voice
data is recorded and can be the claimed "additional identification data
signals." The user in Yoshizawa communicates entirely by pushing buttons,
so the user's voice is not recorded. What is recorded is the system's voice
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response and the user's digital input. Nevertheless, this alternative finding
by the Examiner is not necessary to the rejection.
We do not rely on the registration number as "additional identification
data signals" since it is no better teaching than the password.

Conclusion
Yoshizawa teaches "means for receiving additional identification data
signals on-line . . . and for initially storing said additional identification data
signals in said record structure for subsequent identification of said callers,"
as recited in claim 137.
The rejection of claim 137 is affirmed. Appellant does not argue the
separate patentability of dependent claims 148 and 149, so the rejection of
these claims is affirmed.

4.
Appellant argues that dependent "[c]laims 141, 143, 150, 151, and
153 depend on claim 137 and define additional limitations in combination
with those recited in claim 137, which are not met by Yoshizawa" (Br. 51).
The Examiner's rejection addressed each of these claims (Final Rej. 28-29)
and Appellant has not attempted to show the error in the rejection. We have
considered the Examiner's reasoning and the rejection of claims 141, 143,
150, 151, and 153 is affirmed for the reasons stated by the Examiner.

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(3) Emerson
Claim 9 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Emerson.

Facts - Emerson
Emerson describes that voice response "[s]ystems being installed
today can authorize the acceptance of credit cards and checks, repairs under
warranty and the shipments of merchandise" (p. 100).
Figure 2 of Emerson shows a credit card authorization process in
which the "[v]oice response system answers and prompts caller
identification and other information" and the article states "[t]hen, depending
on the system's function, it may request the caller's identity--a customer or
user number--and asks what information the caller needs" (p. 101).
Emerson describes that "[o]nce the voice response system identifies
the caller and his needs" it locates a data base "by converting the Touch-
Tone inputs into the format of the proper data base" (p. 101).
Emerson describes that a paper-based ordering system can be replaced
by a telephone ordering system using operators, but "[a] better solution is
voice response technology. Using different access codes for customers,
sales people, and managers, voice response systems automatically accept,
confirm, change, delete, and report on orders without the expensive
terminals and communication lines of authorization centers." P. 103.

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Issue: Does Emerson teach "qualifying . . . callers based on at least two
forms of distinct identification including caller customer number data and
. . . personal identification data," as recited in claim 9?

Claim limitations at issue
Claim 9 recites, in part:

qualification structure coupled to said record structure for
qualifying said individual callers based on at least two forms of
distinct identification including caller customer number data and at
least one other distinct identification data element consisting of
personal identification data provided by a respective one of said
individual callers.

Contentions
The Examiner refers to the order entry example in Emerson at
page 103, center column, and states:

In order to distinguish among all customers, each customer must have
a "customer number." Similar would hold true for distinguishing
among all managers or all sales people. Accordingly, the "other
distinct identification data" is taken to be the code distinguishing
customers from sales persons from managers. In this regard, Emerson
states,

"Once the voice response system identifies the caller and his
needs [i.e. analysis] it must locate the necessary data base,
which is either on its own memory or in that of another
computer system. It does so by converting the Touch-Tone
inputs into the format of the proper data base. The system then
accesses memory in a manner similar to that used by a standard
computer terminal." (p. 101, left-most col.; emphasis added.)

Final Rej. 34.
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Appellant argues that there is no teaching of qualification based on
two forms of distinct identification where one must be personal
identification data:

The Examiner asserts that each customer must have a customer
number in order to distinguish among all customers, and the "one
other distinct identification data element," is satisfied by the code that
distinguishes customers from sales persons and managers etc. The
Examiner ignores the additional recitation that the "one other distinct
identification data element" must be "personal identification data" of
the caller. A code shared by many that fall within a particular
classification is not personal identification data. For personal
identification data, the Patentee points to Figures 2 and 5 of the '707
specification, which indicate several examples of the types of data that
is personal to a caller, such as a caller's name, address, telephone
number, initials, age, etc. Accordingly, the Patentee respectfully
submits that all the limitations of claim 9 are not met by Emerson.

Br. 52.
The Examiner "maintains that the code distinguishing customers,
managers, and sales persons identify the person as customers, managers, and
sales persons and therefore reads on the construction of personal
identification data within the meaning of the '707 patent" (Ans. 48-49).

Analysis
Appellant argues that the Examiner errs in finding that the "different
access codes for customers, sales people, and managers" (Emerson, p. 103)
constitutes "one other distinct identification data element consisting of
personal identification data" because "[a] code shared by many that fall
within a particular classification is not personal identification data" (Br. 52).
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We agree that the access codes in the order entry system of Emerson are not
"personal identification data" that identify a particular person because shared
codes are not "personal" to the caller. While providing for additional kinds
of identification in the various examples of Emerson may have been obvious
to a person in the art, this is an anticipation rejection.
Emerson refers to "caller identification and other information" (Fig. 2)
in a credit card authorization process. The "caller identification" suggests
"personal identification data" since it is identifying a caller instead of a class
of callers. However, the text of Emerson refers to a "caller's identity--a
customer or user number" which indicates that the identification information
is a customer number data, the first kind of distinct identification recited in
claim 9. Emerson does not describe an example expressly having both
"caller customer number data and . . . personal identification data." Since
this is an anticipation rejection, gaps in the disclosure cannot be filled by
obviousness reasoning.

Conclusion
Emerson does not teach "qualifying . . . callers based on at least two
forms of distinct identification including caller customer number data and
. . . personal identification data," as recited in claim 9.
The rejection of claim 9 as anticipated by Emerson is reversed.

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(4) Moosemiller
Claims 169, 170, 172, and 176-180 are rejected under 35 U.S.C.
§ 102(b) as anticipated by the article by Moosemiller.

Facts - Moosemiller
Moosemiller was published in "Mar./Apr. 1986."
Moosemiller describes an IVR system in which "[t]he basic product
uses touch-tone signaling and voice response" (p. 89).
Applications for Moosemiller's IVR system include financial services,
credit authorization, wholesale and retail distribution, sales order entry,
direct marketing, transportation scheduling and dispatching, college
registration, and communication services (p. 88), and "stock quotations,
catalog ordering, airline reservations, dial-it information menus, caller
destination control, and telephone banking" (p. 92).
Moosemiller describes logging into a service by voice entry of an
numeric ID (p. 91), but notes that a speech recognizer is used "only if the
caller does not have a tone signaling telephone" (p. 91).
In a stock quotation application, the IVR system supports "a stock
quotation service for customers of Fidelity Brokerage Services, a major
discount brokerage house in Boston" (p. 93) where "[t]he service provides
on-demand quotations for 6000 stocks, stock option quotations, a personal
stock watch list for convenience, and the current Dow Jones Industrials
Average" (p. 93).
In the stock quotation service, the system "determines how many
quotes to provide per call" and "[o]nly a few carefully defined messages
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need be exchanged with the data base machine to support the application,
and they are strictly informational messages" (p. 93).
The tasks include "LOG -- validates user ID number, returns stock
watch list," "DOW -- returns Dow plus time and date," and "STA -- uploads
accumulated system transaction statistics" (p. 93).

1.
Issue: Is Moosemiller prior art to claim 169?

Claim limitations at issue
Claim 169 recites, in part:

interface structure coupled to said communication facility to
interface said terminals for voice and digital communications . . .;

. . .

record memory . . . for accessing a file and storing data relating
to certain select ones of said individual callers including voice data
and digital data developed by said terminals.

Contentions
Appellant argues that Moosemiller is not prior art as to claims 169 and
176-178 (Br. 66). Appellant does not dispute that Moosemiller is prior art as
to claims 170, 172, 179, and 180.
Moosemiller was published in "Mar./Apr. 1986."
The Examiner concludes that Moosemiller is prior art because there is
no written description support for the limitation "receiving voice data from
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said individual callers and recording said voice data" prior to the filing date
of the '707 patent application on October 18, 1993 (Final Rej. 47).
Appellant argues that claims are entitled to the July 10, 1985, priority
date of the ancestor '299 application (Br. 66).
Appellant states that the '299 application discloses "a telephone
terminal T1" with "a hand piece 10 (microphone and earphone) and a
panel 12 provided with a rectangular array of push buttons 14" and it is
argued that "[t]he microphone is for callers to provide voice data, which is
recorded as the digital data is recorded" (Br. 67).
Appellant states that the '299 application discloses that
"[s]ubsequently, during a data acquisition phase, the computer 22 receives
data from individual stations T1-Tn (through the communication facility C)
which data is organized, identified, and stored," and it is argued that "[t]here
is no indication that the data is only digital and not voice" (Br. 68).
The Examiner states that the fact that a telephone has a hand piece for
voice communication does not provide support for "recording said voice
data" by an IVR system since telephones are used for communication with
other people (Ans. 51).
The Examiner states that "there is not one single example in the '707
specification or drawings that a caller's voice can be recorded" (Ans. 50) and
"the only written descriptive support [for voice recording] in the '707 patent
is the claims themselves" (Ans. 52).
Appellant argues that the '707 patent discloses that a caller's voice can
be recorded because "[t]he '707 specification discloses the Centrum 9000 as
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one example of an IVR, which clearly includes the capability to receive and
record voice data" (Reply Br. 19), as shown by Exhibit A to the Reply Brief.

Analysis
The fact that all telephones are capable of producing voice signals
does not imply that the voice signals are recorded. The fact the computer in
the '299 application stores data does not imply that it records voice data
since the purpose of the '299 application is to receive and record digital data
from callers using push-button telephones. For example, the voice generator
formulates speech which might be "Please give us your telephone number by
actuating the call buttons on your telephone instrument" ('299 application,
p. 9, ll. 9-10) and "if the caller responds with a proper telephone number, the
operation sequences to record the response as indicated by the block 54"
('299 application, p. 9, ll. 33-35). Another example is "the voice generator
might request information by stating: 'Please use the telephone buttons to
indicate the initials of your first and last names using the asterisk button for
the letters Q and Z'" ('299 application, p. 10, l. 35 to p. 11, l. 2). Appellant
has not pointed to any description where the caller's voice is used by the IVR
system much less recorded. Appellant's argument that "[t]here is no
indication that the data is only digital and not voice" (Br. 68) is not
persuasive since recording of voice is not supported by silence.
Accordingly, we agree with the Examiner that there is no written
description of storing voice data in the '299 application and, therefore, the
'707 patent is not entitled to the priority date of the '299 application.
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Because § 112 issues may not be raised in reexamination proceedings
for original patent claims, we do not decide whether the '707 patent provides
written description support for storing voice data. Thus, we do not decide
whether the fact that one optional feature of the Centrum 9000 is voice
recording supports storing voice data.

Conclusion
Moosemiller is prior art to claim 169.

2.
Issue: Does Moosemiller teach "structure . . . for providing computer
generated numbers to said individual callers and storing said computer
generated numbers in said record memory," as recited in claim 169?

Issue: Does Moosemiller teach that the "computer generated numbers
provided to callers are indicative of sequence data," as recited in claim 176?

Claim limitations at issue
Claim 169 recites, in part:

structure selectively coupled to said interface structure and said
record memory for providing computer generated numbers to said
individual callers and storing said computer generated numbers in
said record memory.

Claim 176 depends on claim 169 and recites "wherein said computer
generated numbers provided to callers are indicative of sequence data."

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Contentions
The Examiner finds that the stock quotes at page 95 of Moosemiller
are computer generated numbers:

In the stock quote example of Moosemiller, Fig. 3 on p. 92 shows the
claimed "structure" (the F.A.Q.S. Stock Quote Data Base) selectively
coupled to the Conversant TM system and therefore to the interface
structure and the record memory. The Conversant TM system's
command "DOW" "returns Dow plus time and date" (p. 93, left-most
col.). These are computer-generated numbers, generated by the
computer that is the Stock Quote Data Base. The stock quote is
transaction order data. Because there is a time/date stamp provided
along with the stock quote, the order or sequence of the transaction of
stock quotes is provided to callers.

Because the Stock Quote Data Base data is provided in speech form to
the caller requesting the quote, the data must be converted into
speech. Conversion to speech requires storage in the system's record
memory in order to know what data to convert into speech.
Additionally, the Conversant TM system's command "STA" "uploads
accumulated transaction statistics." In order to accumulate such
statistics the computer must generate the statistics. Statistics are
numbers; therefore, the Conversant TM system generates and stores
numbers in the from of accumulated statistics. Accordingly, the stock
quote example provides one example of the "analysis structure"
presently claimed . . . .

Final Rej. 49.
Appellant argues:

[S]tock quotes are current values for a particular stock that vary from
day to day. The quotes are not data that is generated by the computer
to identify a particular order. Moreover, a time/date stamp is not an
indication of sequence (as established by prosecution history, see
section VII(c)2 here). In Moosemiller, several callers calling at the
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same instance would be accorded identical time/date stamps. In
contrast, the Patentee's claimed system generates sequence data to
indicate the sequence or order in which callers call the system.

Br. 68-69.
The Examiner maintains that stock "quotes identify a particular order
for the person; otherwise, the person could not be billed for the stock quote
request" (Ans. 53).
The Examiner states that stock quotes are computer generated because
the caller cannot be given the stock quote if the computer does not generate
the number (Ans. 53).

Analysis - computer generated numbers
The only limitations argued with respect to claim 169 are "providing
computer generated numbers to said individual callers and storing said
computer generated numbers in said record memory."
As noted in the claim interpretation section for "computer generated
numbers," we interpret "computer generated data" to mean data that is
created by the computer, not just selecting existing data. See Scroggie,
170 Fed. Appx. at 135 ("The term 'generating page data' means that the page
data is 'generated,' not merely 'selected.'"). Moosemiller describes that the
task "DOW -- returns Dow plus time and date" (p. 93). We find that the
"time and date" are computer-generated numbers because time is expressed
as number and the time must inherently be generated by the computer from
an internal clock, as opposed to just reading stock data from memory.
Appellant does not contest the Examiner's finding that "[c]onversion to
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speech requires storage in the system's record memory in order to know
what data to convert into speech" (Final Rej. 49). Thus, we find that the
time and date generated by the computer in Moosemiller inherently have to
be stored for use by the voice response system and that Moosemiller teaches
"storing said computer generated numbers in said record memory." The
storing step does not preclude storing the numbers only temporarily.
The Examiner also relies on the Dow, the stock quotations, and the
STA command which uploads accumulated system transaction statistics as
the "computer generated numbers." The Dow and stock quotations are
numbers read from memory and there is a question whether these numbers
are "generated." While, perhaps, the voice generated numbers to the users
could be broadly considered to be "computer generated numbers," there is
then a problem with the limitation of storing the numbers in the record
memory because there is no discussion of recording the transaction. In any
case, because the Dow and stock quotations cannot meet being "indicative of
sequence data" in claim 176, discussed in the next issue, we do not rely on
these numbers. We also do not rely on the accumulated transaction
statistics, STA, because these numbers are not provided to the callers, as
claimed, but are transmitted to the host machine as shown in Figure 3
(although this does indicate that numbers can be generated by the computer).

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Conclusion - computer generated numbers
Moosemiller teaches "providing computer generated numbers to said
individual callers and storing said computer generated numbers in said
record memory."
The rejection of claim 169 is affirmed. Appellant does not argue the
separate patentability of claims 170, 172, 179, and 180, so the rejection of
these claims is affirmed.

Analysis - sequence data
Claim 176 recites "wherein said computer generated numbers
provided to callers are indicative of sequence data." The time and data given
to the callers in Moosemiller is "indicative of" a chronological sequence. As
discussed in the claim interpretation section, assuming there can be a tie in
the time and data given to two callers, which Appellant has not shown can
happen, the time and date are still "indicative of sequence data" because they
indicate that two persons called in at the identical time in the overall
sequence of callers. As also discussed in the claim interpretation section, the
'707 patent describes data indicating the "chronological sequence of the call"
(col. 8, ll. 1-2) and describes that "signals from the clock CL (FIG. 1) are
introduced to indicate the sequence of bidders" (col. 15, ll. 31-33), which
indicates that a date/time stamp is indicative of sequence data. The fact that
Appellant argued in a related patent that a date/time stamp is not sequence
data because two persons may be given the same date/time stamp does not
bind the Board to that interpretation. Moreover, the term "indicative of
sequence data" is broader than just "sequence data" and can be any data
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relating to sequence, such as a date/time stamp. It is noted that claim 176
does not recite that the system does anything with the sequence data except
provide it to callers. Thus, the time and data numbers in Moosemiller are
"indicative of sequence data."

Conclusion - sequence data
Moosemiller teaches that the "computer generated numbers provided
to callers are indicative of sequence data," as recited in claim 176.
The rejection of dependent claim 176 is affirmed. Claims 177 and
178 depend directly or indirectly from claim 176 and are not separately
argued, so the rejection of these claims is affirmed.

(5) Barger
Claims 9, 22, 23, 137, 141, 144-146, 150, 151, 154, 156, and 167 are
rejected under 35 U.S.C. 102(b) as anticipated by Barger.

Facts - Barger
Barger describes a telephone system for marketing merchandise or
services capable of being demonstrated to prospective customers over
telephone lines, such a records, tapes, books, and plays (col. 1, ll. 8-13).
Brief prerecorded demonstrations are connected to a customer's
telephone line by a switching system in response to a code entered by a
human customer service operator or a code entered directly by the customer
through his push-button telephone, and after the demonstration the customer
indicates whether or not he wishes to purchase the merchandise or services
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either to the operator or directly to the processor by telephone push-button
operation (abstract).
Barger describes an operator attended mode where an operator "greets
the customer and elicits from the customer identification data such as name,
address, and account or credit card number. The operator 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, lines 62-67.
Barger describes that "the functions of the customer service operator
may be replaced by programmed subroutines in the data processor and
messages prerecorded on channels of the audio program repeater. The
customer responds by keying codes into the data processor through a push-
button telephone." Col. 6, lines 38-43.
Barger describes, with reference to Figure 4, "a routine for receiving a
push-button telephone call. The first part of the routine is similar to
receiving a call in the operator attended mode for playing the 'hello'
message, except that the message is one which concludes with an instruction
for the customer to enter his account number." Col. 11, lines 18-23.

1.
Issue: Does Barger teach "qualifying . . . callers based on at least two forms
of distinct identification including caller customer number data and . . .
personal identification data," as recited in claim 9?

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Claim limitations at issue
Claim 9 recites, in part:

qualification structure coupled to said record structure for
qualifying said individual callers based on at least two forms of
distinct identification including caller customer number data and at
least one other distinct identification data element consisting of
personal identification data provided by a respective one of said
individual callers.

Contentions
The Examiner notes that Barger teaches an operator "elicits from the
customer identification data such as name, address, and account or credit
card number" (col. 4, ll. 62-64) and that "the functions of the customer
service operator may be replaced by programmed subroutines" (col. 6,
lines 38-39) (Final Rej. 56).
Appellant argues that Barger describes a routine for receiving a
push-button telephone call at column 11, lines 18 et seq., in which the
customer is prompted to enter his account number and, therefore, "for its
interactive automated operation, Barger does not teach a qualification
structure that requires at least two forms of distinct identification" (Br. 69).
The Examiner states that "[n]owhere do the claims require the caller
to enter the data directly via the phone" (Ans. 55), but even if the claim were
so interpreted, Appellant ignores the part of Barger stating that the functions
of the operator may be replaced by programmed subroutines (Ans. 55).
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Appellant responds (Reply Br. 20) that claim 9 recites "including
means to provide caller data signals representative of data relating to said
individual callers developed by said remote terminals."

Analysis
The Examiner finds that Barger anticipates the limitation at issue
because: (1) claim 9 does not define over the human operator entering
identification data; and (2) in any case, Barger teaches that the functions of
the operator can be replaced by programmed subroutines.
It is not clear that claim 9 reads on a human operator listening to
customer voice data and entering identification data. The preamble recites 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," so it refers to voice and digital data. Claim 9 recites
interface structure "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," so voice and digital data is received from the terminals.
It is not clear that "caller data signals . . . developed by said remote
terminals" refers to the "data" from the "digital input means," because voice
data is a form of data signal and is developed by a microphone in the remote
terminal and because voice is received by the interface. Claim 9 also recites
a "record structure . . . connected to receive said caller data signals from said
interface structure for accessing a file and storing callers data." This
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limitation does not seem to preclude an operator from using received caller
voice data signals and using them for accessing a file and storing callers'
data. Similarly, the "qualification structure . . . for qualifying said individual
callers based on at least two forms of distinct identification . . . provided by
a respective one of said individual callers" does not seem to preclude an
operator using the qualification structure to qualify callers because "for
qualifying" implies a use of the structure as opposed to the qualification
structure performing the qualification function. However, because it is
debatable whether the "caller data signals" are digital data signals and
whether the qualification structure must operate without a human, and
because Barger teaches the limitation without the need to decide a close call
of claim interpretation, we do not rely on the human operator disclosure.
Barger expressly teaches that the functions of the operator can be
replaced by programmed subroutine voice messages where the customer
directly keys codes into the data processor. Thus, the operator's request for
"customer identification data such as name, address, and account or credit
card number" (col. 4, ll. 66-64) would be replaced by voice messages and
the operator's keying in the identification data (col. 4, ll. 64-67) would be
replaced by the "customer . . . keying codes into the data processor through a
push-button telephone" (col. 6, ll. 41-43). Appellant does not address this
teaching relied upon by the Examiner. Although Barger teaches a
push-button telephone mode in Figure 4 where only the account number is
requested, this does not negate the other teachings of Barger. Figure 4
appears to be a simplified version using only the account number instead of
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the "name, address, and account or credit card number" previously
described. Accordingly, we find that Barger teaches qualifying callers based
on two forms of identification where one is personal identification.

Conclusion
Barger teaches "qualifying . . . callers based on at least two forms of
distinct identification including caller customer number data and . . .
personal identification data," as recited in claim 9.
The rejection of claim 9 over Barger is affirmed. Appellant has not
argued the separate patentability of claims 22 and 23 and therefore the
rejection of these claims is affirmed.

2.
Issue: Does Barger teach "means for receiving additional identification data
signals on-line . . . and for initially storing said additional identification data
signals in said record structure for subsequent identification of said callers,"
as recited in claim 137?

Claim limitations at issue
Claim 137 recites, in part:

record structure including memory and control means for
storing answer data signals and for receiving identification data
signals for specific individual callers, said record structure further
including means for receiving additional identification data signals
on-line for said specific individual callers and for initially storing said
additional identification data signals in said record structure for
subsequent identification of said callers.

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Contentions
The Examiner finds (Final Rej. 56) that Barger describes an operator
attended mode where "[t]he operator keys the identification data into the
data processor through the terminal 19 for credit verification" (col. 4,
ll. 64-66) and describes that "the functions of the customer service operator
may be replaced by programmed subroutines in the data processor and
messages prerecorded on channels of the audio program repeater. The
customer responds by keying codes into the data processor through a push-
button telephone." Col. 6, lines 38-41.
The Examiner finds (Final Rej. 57) that the "subsequent
identification" is indicated by Barger's description of an operator service
transaction where the operator can view "all of the data for that customer's
call including any historical and credit verification data which the processor
has recovered from memory using the customer's account or credit card
number" (col. 5, ll. 33-37).
Appellant argues (Br. 70) that Barger does not teach "receiving
additional identification data signals on-line for said specific individual
callers and for initially storing said additional identification data signals in
said record structure for subsequent identification of said callers" where
"initially" means "at the beginning" (Br. 70) and "[t]his additional data is
'initially stored' (and therefore does not exist as part of the caller record) and
used for subsequent identification" (Reply Br. 20).
Appellant argues that the Examiner relies on the operator eliciting
information and keying it into Barger's system for credit verification, but
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"that there is no evidence of this recitation being taught in the automated
operations that are disclosed by Barger" (Br. 70).

Analysis
We do not rely on the human operator mode in Barger because it is
not clear that the "data signals" include voice data signals and because it is
unnecessary to decide this difficult claim interpretation issue in view of
other teachings in Barger.
As discussed in connection with the rejection of claim 9 over Barger,
Barger teaches that the functions of the customer service operator may be
replaced by a data processor routine with voice messages and the customer
entering data directly through a push-button telephone. The functions of the
operator include eliciting from the customer identification data such as
name, address, and account or credit card number, and then keying the
identification data into the data processor for credit verification. Thus,
Barger teaches receiving identification signals and additional identification
data signals online and storing the additional identification data signals in
said record structure for subsequent identification of the callers.
As discussed in the rejection of claim 137 over Yoshizawa, we
interpret "for initially storing said additional identification data signals in
said record structure for subsequent identification of said callers" to require
only that "initially storing" identification data occurs prior to "subsequent
identification of said callers," where the procedure "for subsequent
identification of said callers" (which is undefined) can be comparing the
additional identification data signals to previously stored numbers. We do
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not agree with Appellant that "initially storing" is limited to storing new
information that has not been previously stored in the system.

Conclusion
Barger teaches "means for receiving additional identification data
signals on-line . . . and for initially storing said additional identification data
signals in said record structure for subsequent identification of said callers,"
as recited in claim 137.
The rejection of claim 137 is affirmed.

3.
Appellant argues that claims 141, 144-146, 150, 151, 154, 156, and
167, which depend on claim 137, "recite additional limitations, resulting in
combinations that are not met by Barger" (Br. 70). The Examiner's rejection
addressed each of these claims (Final Rej. 57-59) and Appellant does not
present any arguments why the Examiner erred. We have considered the
Examiner's reasoning and the rejection of claims 141, 144-146, 150, 151,
154, 156, and 167 is affirmed for the reasons stated by the Examiner.

Obviousness
"[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art."
In re Keller, 642 F.2d 413, 425 (CCPA 1981). A rejection under 35 U.S.C.
§ 103(a) is based on the following factual determinations: (1) the scope and
content of the prior art; (2) the level of ordinary skill in the art; (3) the
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differences between the claimed invention and the prior art; and (4) any
objective indicia of non-obviousness. DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)
(citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)). Whether there is
motivation to combine or modify the references is a question of fact drawing
on the factors of Graham. See McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1351-52 (Fed. Cir. 2001). "[H]owever, 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 Int'l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1741 (2007).

Scope and content of prior art
References must be within the scope of the prior art, i.e., they must be
from analogous art. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1535 (Fed. Cir. 1983) ("The scope of the prior art has been defined as that
'reasonably pertinent to the particular problem with which the inventor was
involved'."). There is no dispute that the applied references are within the
scope of the prior art.
The content of the references will be discussed in the facts for each
rejection if not already discussed in the anticipation rejections.

Level of ordinary skill in the art
The USPTO has no way to take testimony about the level of ordinary
skill in the art. Guessing at the level of education and experience possessed
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by a person of ordinary skill in the art is meaningless because it says nothing
about what the hypothetical person of ordinary skill in the art would be
expected to actually know. What is really important is how persons skilled
in the art think and what approach to solving a problem immediately comes
to mind. If an express finding is required, the level of ordinary skill in the
art is evidenced by the references. See In re Oelrich, 579 F.2d 86, 91
(CCPA 1978) ("the PTO usually must evaluate both the scope and content of
the prior art and the level of ordinary skill solely on the cold words of the
literature"); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (the
Board did not err in adopting the approach that the level of skill in the art
was best determined by the references of record).
A person of ordinary skill in the art has certain presumed qualities,
some of which overlap. First, a person of ordinary skill in the art must be
presumed to know something about the art apart from what the references
expressly disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Second, "the hypothetical person of ordinary skill in the pertinent art is
presumed to have the 'ability to select and utilize knowledge from other arts
reasonably pertinent to [the] particular problem' to which the claimed
invention is directed." Cable Elec. Products, Inc. v. Genmark, Inc.,
770 F.2d 1015, 1025 (Fed. Cir. 1985). That is, skill in the art must be
presumed. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). Third, a
person of ordinary skill has ordinary creativity and is capable of making
changes within his or her technical ability without an express teaching or
suggestion in a reference. The obviousness "analysis need not seek out
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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, 127 S. Ct. at 1741.
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 1742. Fourth, a person of ordinary skill is presumed to
be able to solve known problems using ordinary skill. "One of the ways in
which a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent's claims." Id. Thus, "[w]hen
there is a design need or market pressure to solve a problem and there are a
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue known options within his or her technical grasp." Id.
Of course, it cannot be expected that every possible modification which
would have been obvious to one of ordinary skill in the art will be
implemented or written down to become prior art.

Differences
The argued differences between the claimed subject matter and the
references will be noted in connection with each rejection.

Objective evidence is not entitled to weight
Issue: Has Appellant demonstrated sufficient nexus between the evidence of
commercial success and the merits of the claimed invention for the evidence
to be entitled to weight in the obviousness determination?

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Principles of law
Objective evidence of nonobviousness (also called "secondary
considerations") must always be considered in making an obviousness
decision. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d at 1538-39. However,
it is not necessarily conclusive. Ashland Oil, Inc. v. Delta Resins & Refrac.,
Inc., 776 F.2d 281, 306 (Fed. Cir. 1985); Asyst Technologies, Inc. v. Emtrak,
Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ("[E]vidence of secondary
considerations does not always overcome a strong prima facie showing of
obviousness.") (citing Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed.
Cir. 2007)).
A "nexus" is a legally and factually sufficient connection between the
objective evidence and the claimed invention, such that the objective
evidence should be considered in the determination of nonobviousness.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). A "nexus" is required between the merits of the claimed
invention and the evidence of secondary considerations in order for the
evidence to be given substantial weight in an obviousness decision.
Stratoflex, 713 F.2d at 1539; GPAC, 57 F.3d at 1580 ("To the extent that the
patentee demonstrates the required nexus, his objective evidence of
nonobviousness will be accorded more or less weight."); In re Huang,
100 F.3d 135, 139 (Fed. Cir. 1996) ("Even assuming that Huang had
sufficiently demonstrated commercial success, that success is relevant in the
obviousness context only if there is proof that the sales were a direct result
of the unique characteristics of the claimed invention – as opposed to other
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economic and commercial factors unrelated to the quality of the patented
subject matter."); Asyst Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310,
1316 (Fed. Cir. 2008) ("While the evidence shows that the overall system
drew praise as a solution to a felt need, there was no evidence that the
success of the commercial embodiment . . . was attributable to the . . . only
material difference between [the prior art] and the patented invention.").
The burden of proving commercial success (and other types of
secondary considerations, such as long felt need) during prosecution is on
the applicant or patent owner. See Huang, 100 F.3d at 139-140 (Fed. Cir.
1996) ("In the ex parte process of examining a patent application . . . the
PTO lacks the means or resources to gather evidence which supports or
refutes the applicant's assertion that the sales constitute commercial success.
Cf. Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)
(evidentiary routine of shifting burdens in civil proceedings inappropriate in
ex parte prosecution proceedings because examiner has no available means
for adducing evidence). Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial success."). The burden of
proving a nexus between the commercial success and the merits of the
claimed invention during prosecution is also on the applicant or patent
owner. Huang, 100 F.3d at 140 ("In sum, Huang simply has not carried his
burden to prove that a nexus existed between any commercial success and
the novel features claimed in the application."). This is the opposite of the
burden during infringement litigation, where a patentee may make a prima
facie showing of nexus by evidence that the thing that is successful
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embodies the invention, because the alleged infringer has the ability to find
evidence to rebut the showing through discovery and at trial.
"It is well settled 'that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.'" In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (citing
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). The objective evidence is not
commensurate (coextensive) in scope with the claimed subject matter if the
claims are broader in scope than the scope of the objective evidence, e.g., if
the product included elements or features not recited in the claims which
may be responsible for the commercial success or praise. See Joy
Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229-30 (D.D.C. 1990) (and
cases cited therein), aff'd, 459 F.2d 226 (Fed. Cir. 1992). This is related to
the nexus requirement: where the objective evidence of nonobviousness is
not commensurate in scope with the claimed invention, it is more difficult
(but not impossible) to show that objective evidence is due to the merits of
the claimed invention as opposed to unclaimed features.

Facts
Appellant submitted a Declaration Under 37 C.F.R. § 1.132 of Joel
Krauss, a principal in Market Strategy Group, LLC, dated February 3, 2006
(Krauss I Declaration), with an attached marketing investigation by Market
Strategy Group, LLC, entitled Investigation of the Interactive Voice
Response Industry and Use of its Technical and Functional Capabilities,
Including the Following Applications: Prescription Refills, Credit Card
Activation, Prepaid Calling Cards (February 2006) (IVR Report).
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Appellant also submitted a Second Declaration of Joel Krauss dated
November 28, 2006 (Krauss II Declaration).
Appellant submitted "TABLE 4 Showing Nexus for All Claims
Rejected U.S.C. § 103" with the Appeal Brief (Br. 96-131).
The IVR Report describes the expansion of the Interactive Voice
Response (IVR) industry from 1988 to the mid-2000s, especially during the
1990s, when the industry grew at a very rapid rate (IVR Report 2).
The IVR Report describes that from 1993 to 2000, IVR vendors'
revenues grew at 14.1% per year (IVR Report 3).
The Interactive division of West Teleservices Corp., which focused on
large volume IVR services, grew in revenues from zero in 1988 to $98.6
million in 1995. "Interactive provided IVR services for a wide range of
applications, including, 'secure automated credit card activation, information
and entertainment services, polling and surveying, cellular fraud prevention
service, automated product information requests, database management and
enhancement.'" IVR Report 4, quote from 1996 West S-1 filing.
"A consistent benefit of the implementation of the more advanced
IVR technical and functional capabilities addressed by this report was the
cost reduction made possible by replacing or reducing human functions with
sophisticated capabilities of IVR systems." IVR Report 6.
The IVR Report describes the growth in use of IVR systems for
prescription refills, credit card activation, and prepaid calling cards
(IVR Report 8-24).
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Appellant states that Mr. Krauss has no personal interest in the
proceeding and was paid for submitting the declarations at a reasonable rate
based on the time spent in preparing the declarations (Br. 92).
Mr. Krauss states that he has "over 30 years of work and research
experience in market and business strategy and analysis" (Krauss I
Declaration ¶ 2); that he has "worked with executive level personnel to
develop and implement successful market strategies in the
telecommunications, financial services, computer, electronics, transportation
and pharmaceutical industries, as well as for governments" (Krauss I
Declaration ¶ 4) (there is no ¶ 3); and that he and "those under my direct
supervision and control have conducted the marketing investigation of the
Interactive Response Industry reflected in the attached report, which is
incorporated herein" (Krauss I Declaration ¶ 4).
Mr. Krauss states:

3. The inventions claimed by [the claims rejected under § 103]
embody features and functionalities which were first offered by third
party service bureaus beginning in the early 1990's. In 1991 or 1992,
credit card issuers and third-party service bureaus began offering
automated phone activation of credit cards as one of their major
services. By the early 2000s, phone-based activation of credit cards
using IVR systems was the industry standard, used with
approximately 100% of the 150 million new credit cards issued every
year. West Corporation, one of the major third-party service bureaus,
helped major U.S. credit card issuers activate over 9 million bank
cards in 2001.

Krauss II Declaration ¶ 3.
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Mr. Krauss states:

4. To my knowledge, West Corporation and First Data were
among the first to implement the inventions (many initiated during
1989) claimed by [the claims rejected under § 103]. Prior to the
offering of these inventions by First Data and West Corporation, those
combinations of features and functionalities were not available. To
my knowledge, First Data and West were the leading providers in
terms of market share of these combinations of features and
functionalities in the early to mid 90s.

Krauss II Declaration ¶ 4.
Mr. Krauss states:

5. To my knowledge, third party service bureaus such as West
Corporation and First Data do not engage in mass marketing. Further,
to my knowledge, during the early 1990s when West and First Data
first implemented the inventions claimed by [the claims rejected under
§ 103]; neither engaged in extensive advertising of those
combinations of features and functionalities.

Krauss II Declaration ¶ 5.

Contentions
The Examiner states that there is no nexus between the '707 patent
claims and the commercial success in the IVR Report (Final Rej. 155).
Appellant refers (Br. 90) to "TABLE 4 Showing Nexus for All Claims
Rejected U.S.C. § 103" (Br. 96-131) and the Krauss II Declaration submitted
with the Appeal Brief.
The Examiner states that opinions on the ultimate legal conclusion are
not entitled to weight (Final Rej. 155).
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Appellant argues that the "Market Strategy Report . . . includes factual
evidence taken from many market sources that are indicated within the
Report" (Br. 91) and does not opine on the ultimate legal question of
obviousness, but "is a study of the actual operations in various industries that
have utilized the combinations of features and functionalities claimed in the
'707 patent" (Br. 91).
The Examiner states that the interest of the expert in the outcome may
be considered in assessing the probative value of the expert opinion and the
declarations of Krauss do not discuss this aspect (Final Rej. 156).
Appellant states that Mr. Krauss has no personal interest in the
proceeding and was paid for submitting the declarations at a reasonable rate
based on the time spent in preparing the declarations (Br. 92).
The Examiner states that the IVR Report points out that there are 35
vendors of IVR systems, but the IVR Report does not evidence that the
growth in the IVR industry was due to the subject matter of the '707 patent
(Final Rej. 156).
Appellant argues:

The first declaration of Krauss referenced the number of vendors to
provide an appreciation for the growth in the IVR industry as a whole.
The growth in the vendors clearly indicates increased IVR operations
and use by companies including third party service bureaus. A second
declaration of Krauss (see EXHIBIT KRAUSS I) further establishes
that a relevant market is third party service bureaus, citing West
Corporation and First Data.

Br. 92.
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The Examiner notes that the Krauss Declaration (actually referring to
the IVR Report) states that "Before late 1988, IVR systems were primarily
used to direct callers to the appropriate live customer service representative
(CSR), and/or to play recorded messages such as store hours of operations"
(IVR Report, p. 2, Sec. 1.2) which fails to address the IVR systems in the
references of record and evidences Mr. Krauss's inaccurate recollection of
the state of the art (Final Rej. 156-158).
Appellant argues that the Examiner misunderstands Krauss because
Mr. Krauss accurately indicates that the "primary" use of IVR before 1988
was to direct callers to customer service representatives and/or play recorded
messages (Br. 92-93) and Mr. Krauss elaborates on the IVR market in the
Krauss II Declaration ¶ 3 (Br. 93).
Appellant further argues that "each of the prior art references cited by
the Examiner do not teach the claimed combinations and are not examples of
the sophisticated types of IVR system operations demonstrated by Krauss
that correlate to the rejected claims" (Br. 93).
The Examiner discusses the examples in the IVR Report in detail and
states that the examples are not coextensive in scope with the '707 patent
claims because the claims are all broader than the examples relied upon to
show commercial success and, therefore, there is no showing that the
claimed subject matter is responsible for the commercial success
(Final Rej. 158-170).
Appellant argues that "the claims, although broader, are coextensive
because the actual operations and implementations of each example correlate
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to the claimed combinations of features and functionalities that are shown in
TABLE 4" (Br. 93-94; Reply Br. 31) and the "Examiner imposes an extreme
standard in determining what is 'coextensive'" (Br. 94; Reply Br. 31).
Appellant argues that "commercial success must be shown to have
in some way been due to the nature of the claimed invention, as opposed to
other economic and commercial factors unrelated to the technical quality of
the patented subject matter" (Br. 94; Reply Br. 31), that "the commercial
success requirement does not require a nexus for only specific features of the
claims, but rather requires a nexus for the claims considered as a whole,"
(Br. 94; Reply Br. 31), and that "the Krauss evidence does indeed
demonstrate sufficient nexus and co-extensiveness for all of the
combinations of features of the claims of the '707 patent because they attest
to the commercial success of various combinations as claimed in the '707
patent. (see TABLE 4 . . .)." (Br. 94; Reply Br. 31).
The Examiner states that Krauss II Declaration ¶ 3 is not persuasive
because the examples mentioned are not coextensive in scope with the
claims of the '707 patent (Ans. 104).
The Examiner states that Krauss II Declaration ¶ 4 does not address
the essential relevant prior art (Ans. 105).
The Examiner states that Krauss II Declaration ¶ 5 is not persuasive
because personal knowledge is not objective evidence that First Data and
West Corporation did not engage in mass marketing and the fact that West
Corporation advertises that it is protected by the licensing of Ronald Katz's
patents contradicts Mr. Krauss's knowledge about advertising (Ans. 106).
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Appellant argues:

Krauss's personal knowledge that neither West Corporation nor First
Data engaged in mass marketing (around the time of the inventions
indicated in the declaration) is based on personal knowledge derived
from undertaking an investigation and study of existing factual
evidence taken from many market sources that are indicated within
the Report. Therefore, the Krauss Declaration cannot merely be
characterized as opinion testimony and therefore dismissed.
Respectfully, the Examiner cites an example of advertising by West
Corporation today to potential investors and uses that to dismiss
Krauss' knowledge, indicating that it contradicts the evidence of
record. But the evidence that the Examiner presents does not
represent West's "state of mind" on advertising at the time of the
invention, some 20 years ago.

Reply Br. 32-33.

Analysis
Appellant's Appeal Brief and Reply Brief do not discuss the
IVR Report or the Krauss declarations (other than repeating statements
therein), but only argue that the Examiner failed to give fair weight to the
factual evidence provided by Krauss and argue why the Examiner's reasons
are not persuasive. Board rules require that all arguments relied upon be
included in the brief. See 37 C.F.R. § 41.37(c)(1)(vii) ("Any arguments or
authorities not included in the brief or a reply brief filed pursuant to § 41.41
will be refused consideration by the Board, unless good cause is shown.").
It is not the Board's responsibility to comb through the prosecution history
looking for previously-made arguments to support Appellant's position.
Thus, we address the IVR report and declarations as we see them.
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The IVR Report unquestionably demonstrates that IVR systems are
commercially successful in many applications. The issue is whether this
commercial success has been shown to be due to the merits of the '707
patent claims so as to be persuasive evidence of nonobviousness.
Appellant does not manufacture and sell IVR systems. Appellant
licenses patents of Mr. Katz. Appellant does not allege that it has first hand
knowledge of the technical aspects of the systems that achieved commercial
success in the IVR Report. Thus, Appellant is not in a good position to
demonstrate the nexus between commercial success and the patent claims.
Appellant makes no effort to show how the commercial success in the
IVR Report is due to the merits of the '707 patent claims as opposed to the
claims in other patents. There are four ancestor patents in the chain of
applications of the '707 patent going back to ancestor Application
06/753,299, filed July 10, 1985. Also, the inventor on the '707 patent,
Ronald A. Katz, also has 42 patents which claim the benefit of the '299
Application, most of which appear to claim IVR. Appellant does not
mention these other patents or make any effort to show any nexus between
the commercial success in the IVR Report and the merits of the '707 patent
claims as opposed to the subject matter of the other patents.
None of the applications described in the IVR Report are described in
the '707 patent. Thus, there is no direct correspondence between the
examples described in the IVR Report and the disclosed and claimed subject
matter in the '707 patent from which nexus could be argued. It is possible
that a new use for existing IVR equipment could be patentable. It is also
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possible that the commercial success is due to improvements made by
others. See In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 n.5
(Fed. Cir. 1985) ("the commercial success of a machine ‘claimed’ may be
due entirely to improvements or modifications made by others to the
invention disclosed in a patent. Such success, we are holding, is not
pertinent to the non-obviousness of the invention disclosed."). Appellant has
not shown that the success is due to the '707 patent claims.
Appellant argues that the nexus is established by Table 4, which
purports to show where claim limitations find correspondence in the
examples in the IVR Report. This table does not show a nexus between the
commercial success and the merits of the claimed invention, but shows at
most that certain claimed features are found in applications which have been
commercially successful. Many of the individual features of IVR systems
were known in the prior art and Appellant makes no effort to explain how
"the success of the commercial embodiment . . . was attributable to the . . .
only material difference between [the prior art] and the patented invention."
Asyst Technologies, 544 F.3d at 1316. Appellant does not take a claimed
difference over the prior art and show that commercial success was
attributable to that difference. For example, the arguable difference between
claim 96 and the prior art in De Bruyn is whether the calling number
identification data is automatically provided by the telephone company.
Appellant does not show that automatically providing the telephone number
was responsible for the commercial success. As another example, Appellant
does not show how asking for information about a caller's age in claim 10 or
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a caller's initials in claim 11 are responsible for commercial success in the
IVR Report. Moreover, Table 4 does not always clearly identify the
correspondence, e.g., claim 10 recites that the "personal identification data is
indicative of a caller's age" and Appellant points to Sec. 3.1 of the IVR
Report which states that the system will "ask for additional information"
which is not commensurate in scope with the claim. One skilled in the art
would not be convinced that commercial success was due in any way to
asking for additional information just because it is mentioned.
Appellant has also not carried its burden of proving nexus because it
fails to demonstrate that the commercial success was not due to economic
and commercial factors unrelated to the technical quality of the patented
subject matter. The IVR Report describes many business reasons affecting
the adoption rates of new IVR technical and functional capabilities (p. 3,
bottom). Market forces and business reasons are not evidence of technical
incompatibility that is relevant to the nonobviousness issue. See Friskit, Inc.
v. Real Networks, Inc., slip op. 13-14 (Fed. Cir. Jan. 12, 2009)
(nonprecedential) and cases cited therein. The IVR Report states that a
"consistent benefit of the implementation of the more advanced IVR
technical and functional capabilities addressed by this report was the cost
reduction made possible to replacing or reducing human functions with
sophisticated capabilities of IVR systems" (p. 6). The other references
demonstrate that IVR was being more accepted in the market for a variety of
uses, such as for business purposes in Emerson, for betting and other
applications described in Yoshizawa, for advertising and telepromotion in
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Norris, etc. This suggests that companies may have decided to use IVR
technologies to reduce costs and because others were starting to use IVR
rather than for technical reasons.
The IVR Report does not establish a prima facie nexus to the merits of
the '707 patent claims. The fact that there was a great expansion in the IVR
industry from 1988 to the mid-2000s and that IVR vendors' revenues grew at
14.1% per year from 1993 to 2000 does not establish a connection between
the commercial success and the technical merits of the '707 patent claims.
The IVR Report describes features of IVR systems but does not explain how
commercial success is due to particular ones of those features. For example,
it is stated that "it is estimated that in the mid-1980's only 5% of United
States companies offered toll-free lines as compared to approximately 75%
today" (IVR Report 2). There appears to be no connection between IVR
toll-free lines and the features argued by Appellant, such as requiring
multiple forms of identification. As another example, it is stated that the
Interactive division of West Teleservices Corp., which focused on large
volume IVR services, grew in revenues from zero in 1988 to $98.6 million
in 1995. "Interactive provided IVR services for a wide range of
applications, including, 'secure automated credit card activation, information
and entertainment services, polling and surveying, cellular fraud prevention
service, automated product information requests, database management and
enhancement.'" IVR Report 4. There is no showing or allegation that West's
many IVR services used the '707 patent claims.
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Nor does the IVR Report suggest that there were technical problems
in the IVR art that were overcome by features attributable to the '707 patent.
The report states that "[w]hile the basic underlying telephone and computer
hardware was available, the more sophisticated IVR technical and functional
capabilities discussed below had not yet been implemented" (IVR Report 2).
The fact that technical and functional capabilities had not been implemented
does not imply that the capabilities were unknown or that implementation
required any more than ordinary skill in the art. Functional capabilities such
as ANI and DNIS were known in art.
Appellant makes no effort to show a nexus by showing that the
examples in the IVR Report are commensurate in scope with the claimed
inventions. The 2006 IVR Report states: "IVR systems range from simple to
very complex. Their cost is usually a few hundred thousand dollars, but can
range from $25,000 to millions of dollars, depending on the number of ports
(which governs how many simultaneous calls a particular IVR system can
handle), and their technical and functional capabilities." P. 2. An IVR
system includes complicated equipment, programming, software, support,
etc., all of which are necessary to the success of the system. Nexus is
lacking if the product included elements not recited in the claims which may
be responsible for the commercial success or praise. See Joy Technologies
v. Manbeck, 751 F. Supp. at 229-30; Marconi Wireless Tel. Co. v. United
States, 320 U.S. 1, 35 n.20 (1943) ("Marconi's specifications disclose a large
number of details of construction, none of which is claimed as invention in
this patent."); White v. Jeffrey Mining Machinery Co., 723 F.2d 1553, 1559
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(Fed. Cir. 1983) ("That Jeffrey's miner enjoyed commercial success does not
support an implication that the jury found that a nexus existed between such
success and the claimed invention, because the Jeffrey machine included
several features not disclosed or claimed in the White patent.").

Krauss declarations
The Krauss declarations are not persuasive. Appellant states that
Mr. Krauss is a disinterested third party who was only paid for his time in
preparing his declarations.
The first Krauss declaration submits the IVR Report, which has been
discussed supra.
Mr. Krauss states in his second declaration that phone-based
activation of credit cards has become an industry standard (Krauss II
Declaration ¶ 3). This makes no effort to show how the commercial success
of credit card activation is tied to the merits of the '707 patent claims, i.e., to
the differences over the prior art.
Mr. Krauss states:

4. To my knowledge, West Corporation and First Data were
among the first to implement the inventions (many initiated during
1989) claimed by [the claims rejected under § 103]. Prior to the
offering of these inventions by First Data and West Corporation, those
combinations of features and functionalities were not available. . . .

Krauss II Declaration ¶ 4. Mr. Krauss does not state the factual basis for his
"knowledge." This knowledge is not based on anything in the IVR Report.
We have no idea whether Mr. Krauss has actual knowledge of what was
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implemented by West and First Data or how this corresponds to the claims
or whether others might have implemented. There is no explanation of how
what was implemented by West and First Data corresponds to the claims.
In the second Krauss declaration, Mr. Krauss states that:

5. To my knowledge, third party service bureaus such as West
Corporation and First Data do not engage in mass marketing. Further,
to my knowledge, during the early 1990s when West and First Data
first implemented the inventions claimed by [the claims rejected under
§ 103]; neither engaged in extensive advertising of those
combinations of features and functionalities.

Krauss II Declaration ¶ 5. Mr. Krauss does not state the factual basis for his
"knowledge." This knowledge is not based on the IVR Report which does
not mention marketing or advertising. Thus, we have no idea whether he is
correct in his statements about "mass marketing" or "extensive advertising",
or even what his definition is of those terms. Assuming, arguendo, that the
commercial success was not due to marketing or advertising, it may have
been due to the business and cost reduction factors mentioned above.

Conclusion
Appellant has not demonstrated sufficient nexus between the evidence
of commercial success and the merits of the claimed invention for the
evidence to be entitled to weight in the obviousness determination.
Accordingly, the IVR Report and Krauss declarations will not be further
discussed in the obviousness analysis.

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(6) De Bruyn and Maxon or Streisand
Claims 18, 19, 26, 32-34, 96-102, 106-108, 115, 119-123, 131, 132,
135, 183-190, 196-200, 202, and 203 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over De Bruyn considered with either of Maxon or
Streisand.

Facts - Maxon and Streisand
Maxon discloses that "[i]t is common practice to provide automatic
number identification (ANI) equipment in a PBX [private branch exchange]
which transmits information to a central office identifying the calling station
and trunk number" (information in brackets added) (col. 1, ll. 12-15).
Streisand discloses a calling identification system (caller ID) wherein
the calling customer can be identified "by using conventional automatic
number identification (ANI) equipment" (col. 1, ll. 66-67).

Issue: Assuming that De Bruyn does not teach automatically providing
"calling number identification data," would it have been obvious to
automatically provide the caller telephone numbers in De Bruyn using ANI
as taught by Maxon and Streisand?

Contentions
The Examiner states that if De Bruyn does not teach providing
"calling number identification data," ANI or the like, then this may be a
difference, and each of Maxon and Streisand evidence that ANI systems
were well known (Final Rej. 60).
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The Examiner concludes:

It would have been obvious for one of ordinary skill in the art, at the
time of the invention to use ANI capability as the means by which the
telephone number of the calling terminal was identified in De Bruyn,
because De Bruyn system (1) must automatically receive the
telephone number of the caller from the exchange (De Bruyn at p.4,
line 29 to p.5, line 6), and (2) identifies the subscriber by telephone
number in order to charge him (De Bruyn at page 6, lines 24-25), such
that one of ordinary skill would [have] be[en] motivated to use
conventional well known means the carry out functions (1) and (2),
such as the ANI capability taught to be conventional in each of Maxon
and Streisand. Additional motivation would be to reduce the human
error and time wasted having the user enter the telephone number
from which he is calling. Additionally, fraud could be avoided by
preventing the caller from entering an erroneous telephone number to
place additional stakes, since the telephone number would be
automatically provided using ANI capability.

Final Rej. 60.
Appellant argues: "De Bruyn does not teach ANI or similar capability
to indicate a calling number for use at a user interface. The analysis in
De Bruyn is based on data provided by a caller, not information provided by
the telephone network at a user interface." Br. 73.
Appellant argues: "The Examiner, however, asserts that 'all that is
required of rejected '707 claims is that the communication facility has ANI
capability.' The Patentee respectfully maintains that the '707 claims require
receiving ANI signals at a user interface (IVR), which is quite different from
the communication facility, the PSTN, having the capability." Br. 73.
Appellant argues that Maxon discloses use of ANI in the context of a
PBX and Streisand discloses that conventional ANI equipment may be used
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for caller ID, but "[n]either reference discloses receiving ANI signals (via
the telephone networks) at a user interface for the purpose of using those
signals at the user interface for user interface" (Br. 75).
Appellant argues that De Bruyn does not teach other limitations
besides ANI in claims 26, 96, and 183, which arguments have been fully
addressed in the anticipation rejection over De Bruyn.
Appellant argues that "[t]he Examiner fails to appreciate that the
receipt and use of ANI signals at the user interface (not within the call
placement and routing operations of a telephone company represented by the
words 'communication facility' within the claims at issue) is not disclosed in
De Bruyn" (Reply Br. 21).

Analysis
The Examiner finds that a possible difference between the subject
matter of the rejected claims and De Bruyn is automatically providing
calling number identification data.7 The other limitations argued by
Appellant have been addressed in the anticipation rejection over De Bruyn
and will not be discussed again.
We found in the anticipation rejection that De Bruyn impliedly
teaches automatically providing caller number identification data because
De Bruyn describes in detail the steps of placing a Lotto bet (i.e., the caller
picks up and dials the telephone, hears voice messages to enter selected

7 Therefore, claims 9, 22, 23, 137, 141-147, 150, 151, 153, 165, 166,
in the anticipation rejection over De Bruyn are not included in this rejection
because they do not include calling number identification data.
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Lotto numbers, enters the numbers using the telephone set, the system
records the selected Lotto numbers and telephone number, the system
accepting/refusing the stake, the caller verifying the Lotto numbers, and
terminating the call), and recording the telephone number, but does not state
that caller is asked to enter his or her own telephone number, or verify his or
her telephone number. Appellant's argument that "[t]he analysis in
De Bruyn is based on data provided by a caller, not information provided by
the telephone network at a user interface" (Br. 73) does not point to any
disclosure of the telephone number being provided by the caller.
However, since De Bruyn does not expressly state that the telephone
numbers are automatically provided, the Examiner alternatively concludes
that it would have been obvious to automatically provide calling number
identification data in view of ANI taught by Maxon or Streisand. Maxon
and Streisand both teach that ANI was conventional. The Examiner
concludes that one of ordinary skill in the art would have been motivated to
use ANI, which is taught to be conventional by Maxon and Streisand, to
provide the calling telephone number in De Bruyn for billing purposes, to
reduce human error in entering the number (i.e., for accuracy), and to
prevent fraud (Final Rej. 60). Appellant does not address this reasoning and
shows no error in the Examiner's obviousness rationale. We find the
Examiner's reasoning to be persuasive and conclude that it would have been
obvious to provide the telephone numbers in De Bruyn by ANI as taught in
Maxon or Streisand based on the Examiner's reasons.
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Appellant's arguments that De Bruyn does not teach providing ANI at
the user "interface" and not just within the telephone company have been
addressed in anticipation rejection. We held, consistent with a district
court's claim interpretation, and with Appellant's arguments in the district
court, that the limitation "interface structure coupled to said communications
facility" does not require that the "communications facility" is the call
placement and routing operations of the public telephone company and that
the interface is separate from that portion of the public telephone company.
Furthermore, we noted that the Lotto voice response system in De Bruyn is
attached to a PABX, a private exchange attached to the main telephone
exchange, so the interface is separate from the telephone company.

Conclusion
Assuming that De Bruyn does not teach automatically providing
"calling number identification data," it would have been obvious to
automatically provide the caller telephone numbers in De Bruyn using ANI
as taught by Maxon and Streisand.
The rejection of claims 18, 19, 26, 32-34, 96-102, 106-108, 115,
119-123, 131, 132, 135, 183-190, 196-200, 202, and 203 as unpatentable
over De Bruyn in view of Maxon or Streisand is affirmed.

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(7) De Bruyn and St. Jean
Claims 10, 11, 16, 109, 110, 163, 164 and 168 stand rejected under
35 U.S.C. § 103(a) as unpatentable over De Bruyn and St. Jean.

Facts - St. Jean
St. Jean describes "methods and apparatus for verifying that the
identity code presented by the bearer of a credit card, security card or the
like is the same as that associated with such card" (col. 1, ll. 6-9).
St. Jean describes that there is a need to determine whether a credit
card or security card user is an authorized user and to verify the identity of
the user to guard against fraud (col. 1, ll. 10-41; col. 2, ll. 14-22).
St. Jean states in the background of the invention:

Furthermore, as a large amount of digital information may be
nonviewably encoded on a card similar in form to the conventional
credit card format, cards of this type will soon be available for
purposes which are wholly unrelated to either a credit or security
function. For instance, identification cards may be developed upon
which are encoded in machine readable form an individual's birth
certificate information, physical characteristics, social security
number, service record, employer's identification, employee's
number, residential telephone number, life insurance policies, next
of kin information, fingerprint classification number and/or any
other form of suitable identifying data with which he may
periodically have to identify himself. . . . However, regardless of the
function or functions of the card being considered, apparatus capable
of verifying the identity of the user would be required in each case to
ensure that the bearer is not attempting to perpetrate a fraud . . . .
[Emphasis added.]

Column 1, line 42, to column 2, line 17.
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St. Jean describes that the authorized party is issued a security code
which is associated with the account number on the credit card but is in no
way indicated on the credit card. The security code is derived from selected
digits of the account number using a decoding technique and used to check
that the person presenting the credit card is an authorized user at least to the
extent that the person has the security code. Column 5, lines 13-45.
St. Jean states that the disclosed invention is "applicable to validating
any card or other token bearing an account number or similar indicia which
is used for credit purposes, access to a security system, the actuating of lock
devices or any other identification purposes" (col. 4, ll. 21-25).

Issue: Would it have been obvious to one of ordinary skill in the
authentication art to request additional or different kinds of identification
data in the Lotto system of De Bruyn in view of St. Jean?

Claims limitations at issue
The rejected claims recite more specific identification data: "said
personal identification data is indicative of a caller's age" (claim 10), "said
personal identification data is indicative of a caller's initials" (claim 11),
"said personal identification data comprises caller social security number
data" (claim 16), "said record structure stores caller name data" (claim 109),
"said record structure stores caller address data" (claim 110), "said
identification data signals include signals indicative of caller social security
number data" (claim 163), "said additional identification data signals include
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digital signals indicative of caller PIN number data" (claim 164), and "said
additional identification data includes caller initial data" (claim 168).

Contentions
The Examiner finds that De Bruyn does not teach the specific types of
identification data in the dependent claims.
The Examiner finds that St. Jean describes identifying information of
the kinds recited and concludes that:

It would have been obvious for one of ordinary skill in the art at the
time of the invention to require the caller to provide any of the
additional identification data indicated in the St. Jean list, alone or in
combination --beyond the telephone number and secret code-- for
storage in the De Bruyn record structure, in order to verify that the
caller is, in fact, the individual authorized to play the Lotto. This
additional identification data would thereby provide security for calls
from telephone numbers accessing and capable of playing the Lotto
and prevent unauthorized users claiming to be rightful owners of the
identity code from fraudulently accessing and using the system
without proper verification, as taught by St. Jean (St. Jean, col. 1, lines
4-27; col. 2, lines 14-22).

Final Rej. 61-62.
Appellant argues that there is no suggestion to combine because
"De Bruyn relies on pre-existing data within the telephone network rather
than data provided by the caller once interfaced" (Br. 77) and "St. Jean
teaches a dedicated apparatus for the purpose of verifying credit cards (for
credit authorization) that does not involve use of a conventional telephone to
interact with an automated interactive system that provides voice prompts to
a caller via a public telephone switched network to provide data" (Br. 77).
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Appellant argues that the claims require entering a social security
number, "which is a number issued by the federal government rather than a
vendor" (Br. 77).
Appellant states that the expert's declaration, Klein Declaration ¶ 56,
traverses the Examiner's premise for rejecting the claims.
The Klein Declaration states:

56. I find that a person having ordinary skill in the art at the time
the '707 patent was filed would not have been motivated to combine
De Bruyn and St. Jean in the way that the Examiner proffers because
there is no explicit or implied suggestion to combine them in either
reference. De Bruyn teaches relying on pre-existing data within the
carrier rather than data provided by the caller at an interface. The
Examiner states that St. Jean teaches using a serial access medium
(i. e., magnetic tape) for storing data. However, a serial access
medium (as opposed to a random access medium) does not provide
the response time necessary for the real-time data storage and access
necessary for interfacing with a caller as taught by the "707.
Therefore, to provide all the additional forms of data such as age,
social security-number, initials or PIN data, physical characteristics,
etc. would not be logical to one of ordinary skill to implement in
De Bruyn. Furthermore, St. Jean teaches a method and dedicated
apparatus for validating credit cards (check credit balance for
authorization of charges). That is not the same as providing credit
card information for identification. It would not have been logical to
one of ordinary skill in the art to combine the dedicated apparatus of
St. Jean with the end user interface apparatus of De Bruyn where a
caller is billed for lottery plays with his or her telephone company
bills.

Klein Declaration ¶ 56.

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Analysis
Claims 109 and 110 do not recite that caller name data and caller
address data in the record structure are provided by the caller during the
telephone call. It would have been apparent to one skilled in the art that the
telephone company in De Bruyn would store this name and address
information for billing purposes. The rejection of claims 109 and 110 is
affirmed. In addition, we consider these claims with the claims that require
that the personal identification data is provided by the callers.
St. Jean's invention is directed to a method and apparatus for verifying
that the security code (assigned to a card holder by the card issuer) provided
by a person matches the security code that can be derived from certain digits
of the card number. The rejection does not propose combining St. Jean's
described invention with De Bruyn. Thus, Appellant's and Klein's
arguments and the statement in the July 2006 Klein Declaration that the
dedicated apparatus of St. Jean cannot be combined with De Bruyn are not
persuasive because they do not address the actual rejection.
The Examiner relies on St. Jean's description of the need to initially
identify a person to prevent fraud and the kinds of information that may be
used to identify a person for credit, security, or other purposes. As we see it,
the issue is whether one of ordinary skill in the authentication art have been
motivated to request additional or different kinds of identification data in the
Lotto system of De Bruyn in view of St. Jean.
De Bruyn identifies persons by telephone number and, optionally,
with a secret code. St. Jean describes the need to identify and authorize
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credit card users, but describes the kinds of information that may be used to
identify persons for any purpose, e.g., identification cards which are encoded
with "an individual's birth certificate information, physical characteristics,
social security number, service record, employer's identification, employee's
number, residential telephone number, life insurance policies, next of kin
information, fingerprint classification number and/or any other form of
suitable identifying data with which he may periodically have to identify
himself" (col. 1, ll. 48-56) (emphasis added). The Examiner concludes that
one of ordinary skill in the art would have considered it obvious to require
the caller to provide additional or different kinds of identification
information "in order to verify that the caller is, in fact, the individual
authorized to play the Lotto" (Final Rej. 61) and to "prevent unauthorized
users claiming to be rightful owners of the identity code from fraudulently
accessing and using the system without proper verification" (Final
Rej. 61-62).
We agree that a person of ordinary skill in the art of authorizing credit
transactions would have known from St. Jean, as well as from general
knowledge, that many kinds of identification information could be used to
identify or authorize a caller and would have been motivated to require
additional identification if the telephone number and secret code in
De Bruyn was insufficient security. Given a known problem of identifying a
person over the telephone to verify or authorize a credit transaction, the
solution of requiring the caller to provide any number and kind of
information that identifies the caller would have been an obvious solution.
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See KSR, 127 S. Ct. at 1742 ("One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the patent's claims."). There is no question that those
skilled in the art of credit verification/authorization knew to use different
kinds of identification data. As evidence of the level of skill in the credit
authorization art, Mr. Katz's previous U.S. Patent 3,212,063, reissued
April 14, 1981, as Reissue 30,579, describes a system for authenticating
persons "on the basis of arbitrary identification (e.g. driver's license) and
physical characteristic identification (e.g. eye color, birth date)" (col. 2,
ll. 22-25) or any "arbitrary and characteristic identification" (col. 2, l. 29).
For example, if the Lotto system was concerned with the problem of
underage players, the solution of requiring identification information relating
to age (e.g., a Social Security number, a credit card number, or driver's
license number) would have been obvious to one in the art. As another
example, one of ordinary skill in the verification art would have considered
it obvious to verify identify by having the caller enter information already
stored in the Lotto system of De Bruyn, such as the address, name, and
account number for the telephone number which the system stores for billing
purposes. Moreover, the secret code provided by the caller in De Bruyn
could be any kind of identifying information, such as one of the kinds taught
by St. Jean, and is not limited to a single kind of information. A person of
ordinary skill in the art must capable of making changes to the types of date
required for verification or authentication without an express teaching or
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suggestion in the references. "As our 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, 127 S. Ct. at 1741. "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 1742.

Conclusion
It would have been obvious to one of ordinary skill in the
authentication art to request additional or different kinds of identification
data in the Lotto system of De Bruyn in view of St. Jean.
The rejection of claims 10, 11, 16, 109, 110, 163, 164, and 168 is
affirmed.

(8) Yoshizawa and St. Jean
Claims 10, 11, 16, 163, 164, 168, and 173-175 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Yoshizawa and St. Jean.

Facts
The contents of Yoshizawa and St. Jean have been discussed, supra.

Issue: Would it have been obvious to one of ordinary skill in the
authentication art to request additional or different kinds of identification
data in the betting system of Yoshizawa in view of St. Jean?

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Claim limitations at issue
The rejected claims recite more specific identification data: "said
personal identification data is indicative of a caller's age" (claim 10), "said
personal identification data is indicative of a caller's initials" (claim 11),
"said identification data signals include signals indicative of caller social
security number data" (claim 163), "said additional identification data
signals include digital signals indicative of caller PIN number data"
(claim 164), "said additional identification data includes caller initial data"
(claim 168), "certain of said data . . . includes physical characteristic data"
(claim 173), "certain of said data . . . includes age data" (claim 174), and
"certain of said data . . . includes caller telephone number data" (claim 175).

Contentions
The Examiner finds that Yoshizawa does not describe the claimed
kinds of identification data.
The Examiner finds that St. Jean describes kinds of information that
can be used for identification and concludes that it would have been obvious
to require the caller to provide additional identification data of the kinds
indicated in St. Jean in the system of Yoshizawa to provide additional
verification that the caller is authorized to place bets (Final Rej. 62).
Appellant argues:

The Patentee maintains that Yoshizawa proposes a telephone
betting system designed to enable horse race fans to purchase pari-
mutuel tickets by phone. A person who wishes to use this system, i.e.,
a subscriber, must enter into a membership agreement with the Japan
Racing Association and open an account with a specified bank. After
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completing this registration process, the subscriber can make bets
through any push-button telephone set from a private home.
Payments for tickets are made automatically by deducting from the
back account. Accordingly, in this environment additional identifying
data, other than the account number indicated by the subscriber is
entirely unnecessary. Payments are not made by the caller whereby it
becomes necessary to authenticate the identity of a person before
running a charge. Accordingly, a combination with St. Jean is
prompted by hindsight.

Br. 78; Reply Br. 22.
Appellant argues that St. Jean is directed to a dedicated apparatus for
verifying credit cards (Br. 79; Reply Br. 22).

Analysis
Again, the Examiner relies on St. Jean's description of the need to
initially identify a person to prevent fraud and the kinds of information that
may be used to identify a person for credit, security, or other purposes,
rather than the specific credit card authorization apparatus.
Yoshizawa discloses a system in which a member is required to enter
into a membership agreement with the Japan Racing Association and to open
an account with a specific bank after which the member can makes bets from
any push-button telephone after inputting his or her account number,
password number, and desired parimutuel tickets. "Users are not the general
public but are limited to subscribers." Yoshizawa, p. 216. We agree with
Appellant that the subscriber number and password number are all that is
described as necessary to identify a person in Yoshizawa. However, one of
ordinary skill in the authentication and verification art had sufficient skill to
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recognize that additional identification data could be gathered in Yoshizawa
of the kinds taught in St. Jean if additional security and verification was
desired, at the expense of requiring additional time and steps. A person of
ordinary skill in the art was capable of making changes without an express
teaching or suggestion in the references. KSR, 127 S. Ct. at 1741.

Conclusion
It would have been obvious to one of ordinary skill in the
authentication art to request additional or different kinds of identification
data in the betting system of Yoshizawa in view of St. Jean.
The rejection of claims 10, 11, 16, 163, 164, 168, and 173-175 over
Yoshizawa and St. Jean is affirmed.

(9) Emerson and St. Jean
Claims [9]8, 10, 11, 16, 137, 154 and 156-168 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Emerson and St. Jean.

Issue: Would it have been obvious to one of ordinary skill in the
authentication art to request additional or different kinds of identification
data, as claimed, in the system of Emerson in view of St. Jean?

Facts
The contents of Emerson and St. Jean have been discussed, supra.

8 See conclusion for this section.
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Claim limitations at issue
Claims 10, 11, and 16 depend on independent claim 9 and recite that
the "personal identification data" is "indicative of a caller's age" (claim 10),
"indicative of a caller's initials" (claim 11), or "comprises caller social
security number data" (claim 16).
Independent claim 137 recites, in part:

record structure including memory and control means for
storing answer data signals and for receiving identification data
signals . . . [and] further including means for receiving additional
identification data signals on-line for said specific individual callers
and for initially storing said additional identification data signals in
said record structure for subsequent identification of said callers.

Claims 154 and 156-168 recite limitations on identification data and
verification and transferring calls to an operator: "said individual callers
provide caller credit card number data as said answer data" (claim 154), "at
least certain of said caller credit card number data is tested for credit
verification" (claim 156), "said certain of said caller credit card number data
is tested for unacceptable numbers" (claim 157), "said identification data
signals are indicative of caller customer number data and a credit
verification test is performed on said caller customer number data"
(claim 158), "said caller customer number data is tested against a look-up
table" (claim 159), "said credit verification test also tests said caller
customer number data to determine if it is on a list of unacceptable numbers"
(claim 160), "said credit verification test determines if a caller transaction
has exceeded a caller credit limit" (claim 161), "said additional identification
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data signals comprise digital signals indicative of a caller PIN number"
(claim 162), "said identification data signals include signals indicative of
caller social security number data" (claim 163), "said additional
identification data signals include digital signals indicative of caller PIN
number data" (claim 164), "said identification data signals comprise signals
indicative of caller telephone number data" (claim 165), "said additional
identification data signals comprise digital signals indicative of caller PIN
number data" (claim 166), "said callers are transferred to any one of a
plurality of operator terminals with data relating to calls" (claim 167), and
"said additional identification data includes caller initial data" (claim 168).

Contentions
The Examiner finds that Emerson does not describe the specific kinds
of claimed additional identification data.
The Examiner finds that St. Jean describes the need for authentication
and the kinds of information that can be used for identification and
concludes that it would have been obvious to require the caller to provide
additional identification data of the kinds indicated in St. Jean in Emerson to
provide additional verification that the caller is authorized and to prevent
fraud (Final Rej. 63-66).
Appellant argues:

St. Jean proposes such a special authorization terminal, which is not
compatible with voice response technology and teaches away from the
voice response technology proposed by Emerson for such
transactions. The Patentee submits that there is no motivation to
combine these references because Emerson is directed to voice
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response technology and St. Jean is dedicated to dedicated
authorization terminals. If they were combined, the combination
would not meet the claims that are rejected here.

Br. 80-81; Reply Br. 23.

Analysis
The anticipation rejection of claim 9 over Emerson was reversed
because Emerson describes a credit card authorization method in Figure 2
which "prompts caller identification and other information" (Figure 2) and
describes that "depending on the system's function, it may request the
caller's identify--a customer or user number" (p. 101), but does not describe
that the system requests "personal identification data" in addition to the
customer number. Nevertheless, the rejection of the dependent claims can
be affirmed if St. Jean cures the deficiencies of Emerson.
St. Jean describes "methods and apparatus for verifying that the
security code presented by the bearer of a credit card, security card or the
like is the same as that associated with the card" (col. 1, ll. 6-9). Thus,
St. Jean teaches verifying identity using a security code (i.e., a PIN)
associated with the credit card number. The security code (PIN) is a type of
personal identification data as evidenced by claim 19 of the '707 patent.
Therefore, in verifying a credit card in Emerson one of ordinary skill in the
art would have been motivated to request a security code (personal
identification data) in addition to the customer number (the credit card
number) as taught by St. Jean to verify the identity of the person.
Accordingly, the subject matter of claim 9 would have been obvious over the
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combination of Emerson and St. Jean. Claim 137 which recites receiving
"identification data signals" and "additional identification data signals
on-line" would likewise have been obvious over the combination of
Emerson and St. Jean since the combination teaches multiple forms of
identification to be used for identification of the callers.
St. Jean describes identification cards which are encoded with "an
individual's birth certificate information, physical characteristics, social
security number, service record, employer's identification, employee's
number, residential telephone number, life insurance policies, next of kin
information, fingerprint classification number and/or any other form of
suitable identifying data with which he may periodically have to identify
himself" (col. 1, ll. 48-56) (emphasis added). Thus, St. Jean discloses that
many kinds of identifying data may be used to identify a person. One of
ordinary skill in the art of fraud prevention had sufficient skill to recognize
that any kind or number of types of identification data could be required in
Emerson, such as the kinds taught in St. Jean, if additional security and
verification was desired. Appellant does not dispute that the kinds of
personal identification information in claims 10, 11, 16, 154, and 156-168
are taught by St. Jean.
Appellant's argument that St. Jean's authorization terminal "is not
compatible with voice response technology and teaches away from the voice
response technology proposed by Emerson for such transactions" is not
persuasive because it does not address the reasons for the rejection. St. Jean
is applied because it describes the need for authentication and different kinds
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of identification information, not because the rejection proposes to use the
apparatus of St. Jean in Emerson. St. Jean does not teach away from voice
response technology. St. Jean describes a method and apparatus for
verifying the correspondence between a security code (PIN) and the credit
card number where the security code is not stored anywhere on the card.
Since the security code is not stored on the card, the method and apparatus
of St. Jean could be used to authorize a credit card over the telephone using
only the credit card number and code.
Appellant's argument that "there is no motivation to combine these
references because Emerson is directed to voice response technology and St.
Jean is dedicated to dedicated authorization terminals" (Br. 81) is not
persuasive because Emerson describes a credit card authorization application
using IVR in Figure 2 and St. Jean is applied for its teachings of different
kinds of personal identification data to identify a person for credit
transactions in the background of the invention. The rejection does not
propose using the apparatus of St. Jean in Emerson. One of ordinary skill in
the arts of authentication and verification would have been motivated to use
any kind of identification to verify the credit card transaction in Emerson,
such as those listed in St. Jean.

Conclusion
It would have been obvious to one of ordinary skill in the
authentication art to request additional or different kinds of identification
data, as claimed, in the system of Emerson in view of St. Jean.
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The rejection of claims 10, 11, 16, 137, 154, and 156-168 over
Emerson and St. Jean is affirmed. Since the rejection of claims 10, 11, and
16 is affirmed, the rejection of independent claim 9 from which they depend
is also affirmed. See Aventis Pharma Deutschland GmbH v. Lupin, Ltd.,
499 F.3d 1293, 1300 (Fed. Cir. 2007); Ormco Corp. v. Align Tech., Inc.,
498 F.3d 1307, 1319-20 (Fed. Cir. 2007) (law of the case that a dependent
claim was obvious means the parent claim must also have been obvious);
In re Muchmore, 433 F.2d 824, 825 (CCPA 1970) ("Since we agree with the
board's conclusion of obviousness as to these narrow claims, the broader
claims must likewise be obvious.").

(10) Moosemiller and St. Jean
Claims 173-175 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moosemiller and St. Jean.

Facts
The contents of Moosemiller and St. Jean have been discussed, supra.

Issue: Would one of ordinary skill in the IVR and authentication arts have
been motivated to request additional or different kinds of data relating to
callers in Moosemiller in view of St. Jean?

Claim limitations at issue
Claim 169 recites a "record memory connected to said interface
structure for accessing a file and storing data relating to certain select ones
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of said individual callers including voice data and digital data developed by
said terminals."
Claims 173-175 depend on claim 169 and recite more specific data:
"said data relating to certain select ones of said individual callers includes
physical characteristic data" (claim 173); "said data relating to certain
select ones of said individual callers includes age data" (claim 174); and
"said data relating to certain select ones of said individual callers includes
caller telephone number data" (claim 175).

Contentions
The Examiner finds that Moosemiller does not describe the specific
kinds of claimed data but finds that St. Jean describes the need for
authentication and kinds of information that can be used for identification
and concludes that it would have been obvious to require the caller to
provide additional identification data of the kinds indicated in St. Jean in
Moosemiller to provide additional verification (Final Rej. 66-67).
Appellant argues:

Claims 173-175 depend on claim 169, which is distinct from
Moosemiller at the very least on the basis that Moosemiller does not
teach providing computer generated numbers (as also demonstrated
above). Also, Moosemiller teaches a voice response system,
configured to work with conventional telephones via the PSTN. To
fill voids in Moosemiller's voice response technology with teachings
from St. Jean, which discloses a dedicated apparatus for credit card
authorization is possible only with the benefit of hindsight. The
Patentee negates the combination and requests the Board to reverse
the rejection and to confirm claims 173-175.

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Br. 82; Reply Br. 24.

Analysis
The rejection proposes that a person of ordinary skill in the art would
have been motivated to use any kind of information relating to the caller to
verify the caller in Moosemiller, including the kinds of personal
identification information taught in St. Jean. The rejection does not propose
using the credit card authorization apparatus of St. Jean in Moosemiller;
thus, Appellant's argument that it would have been unobvious to combine
the dedicated apparatus of St. Jean with the voice response system of
Moosemiller does not address the rejection.
Since the stock quote application in Moosemiller is a service for
customers of a brokerage house, one of ordinary skill in the art would have
appreciated that some logon identification is required, such as the numeric
ID described at page 91, right column, of Moosemiller. One of ordinary
skill in the identification art would have appreciated that many different
kinds of identification information could be requested for identification in
Moosemiller, as a matter of choice, such as those enumerated in St. Jean.
While, perhaps, stock quotation information is not so valuable a service that
multiple forms of identification are necessary (unlike, for example, buying
stock on credit), Moosemiller discloses that other uses for the voice system
include financial services and credit authorization where one skilled in the
art would want multiple kinds of identification. The rejection is based on
obviousness and a person skilled in the authentication and verification art
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would have sufficient skill to appreciate that any kind and number of types
of information could be used for identification.

Conclusion
One of ordinary skill in the IVR and authentication arts would have
been motivated to request additional or different kinds of data relating to
callers in Moosemiller in view of St. Jean.
The rejection of claims 173-175 is affirmed.

(11) De Bruyn and Moosemiller
Claims 14, 15, 28, 29, 103, 104, 124, 138-140, and 191-195 are
rejected under 35 U.S.C. § 103(a) as unpatentable over De Bruyn and
Moosemiller.
Appellant argues that the independent claims from which these
dependent claims depend are "distinct from De Bruyn" and [a]ccordingly, a
combination of De Bruyn with Moosemiller would not render the claims
rejected here obvious" (Br. 82). Thus, Appellant does not argue the separate
patentability of these claims. Because we affirm the rejection of the
independent claims, the rejection of claims 14, 15, 28, 29, 103, 104, 124,
138-140, and 191-195 is affirmed. See 37 C.F.R. § 41.37(c)(1)(vii).

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(12) De Bruyn and Yoshizawa
Claims 30, 31, 105, 125-127, 204, and 205 stand rejected under
35 U.S.C. § 103(a) as unpatentable over De Bruyn and Yoshizawa.

Facts
The contents of De Bruyn and Yoshizawa have been discussed, supra.

Issue: Does Yoshizawa teach "sequence data" which includes "caller
transaction order data"?

Claim limitations at issue
Claims 30, 125, and 204 recite generating numbers "indicative of
sequence data" with respect to the individual callers and claim 105 recites
"sequence signals indicating the calling order sequence of calls."
Claims 31, 126, and 205 depend on claims 30, 125, and 204,
respectively, and recite that the sequence data indicates "caller transaction
order data."
Claim 127 depends on claim 125 and recites that the "computer
generated number data is stored in said record structure."

Contentions
The Examiner finds that De Bruyn does not recite sequence data, as
claimed (Final Rej. 69).
The Examiner finds that Yoshizawa's betting system provides a
registration time and registration number to the caller to allow the person to
cancel his or her bet, and that the registration number corresponds to
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"sequence data" which includes "caller transaction order data" and where the
transaction is recorded (Final Rej. 70).
The Examiner concludes that it would have been obvious "to include
computer generated numbers indicative of sequence data (i.e. registration
numbers) in the system of De Bruyn in order to enable a caller to later verify
and change his Lotto stakes before the drawing, as taught by Yoshizawa"
(Final Rej. 70), where "[t]he registration number and time stamp ensure that
the caller has proof of his/her purchase and when it was made" (Final
Rej. 70-71).
Appellant argues that the claims are patentable for the reasons stated
with respect to the independent claims from which they depend (Br. 83).
Appellant argues that "[i]n addition, the Patentee respectfully requests
the Board to construe the term 'sequence' to exclude a time/date stamp
(many callers may share the same time/date stamp, therefore, the system
would not establish a sequential order with no duplicates as established by
prior prosecution history)" (Br. 83) and to reverse the rejection.

Analysis
The rejection relies on the "registration number" in Yoshizawa as the
"sequence data" which includes "caller transaction order data." Appellant's
argument that the "registration time" in Yoshizawa is a time/date stamp that
is not sequence data does not address this reasoning. Nevertheless, as
discussed in the claim interpretation section, Appellant's argument that a
time/date stamp ("registration time") cannot be sequence data contradicts the
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teachings of the '707 patent that "signals from the clock CL (FIG. 1) are
introduced to indicate the sequence of bidders" (col. 15, ll. 31-33).
We agree with the Examiner's implicit conclusion that a person of
ordinary skill in the art would have understood the registration numbers in
Yoshizawa to be assigned in sequence or that assigning the numbers in
sequence would at least have been an obvious way to assign registration
numbers to sequential callers. Furthermore, the combination of "registration
time" and "registration number" in Yoshizawa would necessarily provide
unique sequence data since two people cannot have the same registration
number even if it is possible to have the same registration time.
Appellant does not challenge the motivation for combining
Yoshizawa and De Bruyn. Nevertheless, we find the Examiner's stated
motivation to be persuasive because both De Bruyn and Yoshizawa are
betting systems and one skilled in the art would have been motivated to
provide a registration time and registration number in De Bruyn given the
teachings of Yoshizawa; the registration time and registration number
provide additional verification of transaction to the caller and allows a
cancellation method as taught by Yoshizawa.

Conclusion
Yoshizawa teaches "sequence data" which includes "caller transaction
order data." The combination of Yoshizawa with De Bruyn is not contested.
The rejection of claims 30, 31, 105, 125-127, 204, and 205 is
affirmed.

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(13) Emerson, St. Jean, and Gentile
Claim 155 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Emerson in view of St. Jean further in view of Gentile.

Facts
The contents of Emerson and St. Jean have been discussed, supra.
Figure 5 of Gentile describes an automatic banking machine terminal
and process. Credit cards are inserted into remote terminals and a person
enters a personal ID code, the card is read and checked against the ID code,
and then the card is verified in a card verification routine by checking the
card expiration date, and number of daily transaction withdrawals:

During an off-line transaction, the terminal computer of the electronic
module performs the verification routine 68 to determine if the credit
card data is within established limits to assure invalid cards are not
accepted. The first verification subroutine 70 determines the credit
card expiration date and compares this data to the current calendar
date. If the expiration date is less than or equal to the calendar date,
card verification continues, if not, the transaction terminates.

Col. 5, lines 36-45.

Issue: Would one of ordinary skill in the art of credit card verification have
been motivated to prompt callers for credit card expiration data in the credit
card authorization system of Figure 2 of Emerson in view of Gentile?

Claim limitation at issue
Claim 155 depends on claim 154 and recites "wherein said callers
provide expiration data for said caller credit card number data."
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Contentions
The Examiner finds that the combination of Emerson and St. Jean
does not disclose the limitation of claim 155 (Final Rej. 72).
The Examiner states:

Gentile teaches an automated credit authorization system which
includes the determination of the expiration of the credit card and the
verification that the card is still valid as of the date upon which a
request is be processed (col. 5, lines 40- 45).

It would have been obvious for one of ordinary skill in the art, at the
time of the invention to have the caller provide the expiration date in
Emerson, to ensure that the card was, in fact, still valid as of the date
the order is requested, as taught to be known in Gentile.

Final Rej. 72.
Appellant argues:

Claims 137 and 154 are distinct from the combination of Emerson and
St. Jean as demonstrated above. Even if it is assumed for purposes of
argument the Gentile satisfies the recitation of claim 155, which it
does not, the combination of the three references would still not
render the claim obvious. In addition, Gentile teaches providing
expiration date data in the context of an automatic banking system
involving automatic dispensing terminal banking machines. This is
not the same as providing credit card expiration data in voice response
systems.

Br. 84; Reply Br. 25.
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Analysis
Gentile describes that it was known to verify the expiration date of a
credit card as part of a verification process to ensure the card has not expired
before allowing a transaction. As noted by Appellant, Gentile describes an
automatic banking machine where the machine reads the card information
and not an IVR system where the caller enters the information via the
telephone keypad. Nevertheless, we agree with the Examiner that one of
ordinary skill in the art of verifying credit cards would have been motivated
to modify the IVR credit card authorization process in Figure 2 of Emerson
to prompt the caller to enter the card expiration date as part of the
verification process to ensure that the card is valid since the IVR process in
Emerson already "prompts caller identification and other information." One
of ordinary skill in the IVR and credit card verification arts would have
appreciated that the caller has to be prompted to enter the information using
the telephone since there is no machine to read the card as in Gentile.

Conclusion
One of ordinary skill in the art of credit card verification would have
been motivated to prompt callers for credit card expiration data in the credit
card authorization system of Figure 2 of Emerson in view of Gentile.
The rejection of claim 155 is affirmed.

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(14) De Bruyn and Flanagin
Claim 35 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over De Bruyn and Flanagin.

Facts - '707 patent and Flanagin
The '707 patent mentions a clock at several places: (1) Figure 4 is
described as having a clock 105 connected to a processing unit 92, but
without a description of the function (col. 10, l. 20); (2) in an auction sale
example, "As the selection process proceeds, signals from the clock CL
(FIG. 1) are introduced to indicate the sequence of bidders" (col. 15,
ll. 31-33); (3) in a game show example, in the event callers may call after the
broadcast of a program "sequence or time clocking may be very important to
limit or control individual interfaces to a specific time or geographic
'window'" (col. 17, ll. 2-4); and (4) in a quiz show example where time is
important, "the clock 105 (FIG. 4) may be utilized to limit the response
period allowed each caller" (col. 19, ll. 18-20).
Flanagin discloses "telephone system interface circuitry for
controlling the full duplex exchange of asynchronous serial bit signal
information between the system's station equipment and the central
equipment matrix switch" (col. 2, ll. 23-26), which uses a central equipment
master clock (col. 2, ll. 28-29).

Issue: Would the limitation that "said voice and digital communication is
controlled by a clock" in claim 35 have been obvious over the combination
of De Bruyn and Flanagin?
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Claim limitation at issue
Claim 35 depends on claim 26 and recites that "said voice and digital
communication is controlled by a clock."

Contentions
The Examiner finds that De Bruyn does not disclose the clock
limitation of claim 26.
The Examiner finds that "Flanagin teaches that a PBX interface is
controlled by a master clock for proper synchronization of data flow of voice
and digital communication (Abstract; col. 2, lines 28-42; especially col. 4,
lines 20-33)" (Final Rej. 72).
The Examiner concludes that "[i]t would have been obvious for one of
ordinary skill in the art, at the time of the invention to control voice and
digital communication through the PBX interface of De Bruyn with a clock
in order to properly synchronize the processor operation and thereby data
flow between the caller and the voice response unit, as taught by Flanagin"
(Final Rej. 72).
Appellant argues that "[c]laim 35 depends on claim 26 and is distinct
at least for the reasons urged above with respect to claim 26" (Br. 84).
Appellant also argues that there is no motivation in either reference
that invites the combination suggested by the Examiner:

De Bruyn discloses a lottery system involving communications
with callers in real time. Flanagin discloses a TDM (time division
multiplexer) clocking circuitry for synchronizing timing slots within
an electronic system, which is different from a clock that keeps track
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of real time communications between De Bruyn's lottery system and
the telephone company subscribers. To use Flanagin's clocking circuit
in De Bruyn would have been of no use to accomplish the purpose in
De Bruyn. Further, Flanagin's clocking circuitry is completely
distinct from the type of use and purpose of a clock described in the
'707 patent (see Klein III, ¶ 77).

Br. 85; Klein Declaration ¶ 77 (identical arguments).

Analysis
Claim 35 recites that "said voice and digital communication is
controlled by a clock," but does not describe the nature of the "control." The
'707 patent shows a clock attached to a processing unit 92 and describes
using the clock to indicate the sequence of bidders or using the clock to limit
the response period for each caller. In each case, the only "control" by the
clock is generation of clock signals which are used by the program to
perform some function; a clock by itself does not have the capacity to
control anything directly. All computers inherently have clocks (indicated in
advertisements by their frequency, e.g., 2 GHz) and the claimed clock could
simply be the system clock attached to the computer as shown in Figure 4 of
the '707 patent absent any claim to the control function. Claim 35 does not
distinguish over De Bruyn where the computer controlling communications,
such as generating voice responses and receiving and storing caller data,
must inherently be have a clock to clock instructions through the computer.
For this reason, we conclude that the subject matter of claim 35 would have
been obvious over the clock which is inherent to the computer controlled
system of De Bruyn (and all computers).
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We do not rely on Flanagin. There is no evidence that the function of
controlling the full duplex exchange of asynchronous serial bit signal
information between the system's station equipment and the central
equipment matrix switch in Flanagin has anything to do with the telephone
equipment in De Bruyn and, hence, there is no reason for the combination.
However, since Flanagin is not required for the rejection, the rejection over
De Bruyn and Flanagin is affirmed over De Bruyn alone.

Conclusion
The limitation that "said voice and digital communication is
controlled by a clock" in claim 35 would have been obvious over De Bruyn
alone.
The rejection of claim 35 is affirmed.

(15) Yoshizawa in view of Moosemiller
Claims 170 and 172 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoshizawa in view of Moosemiller.

Facts
The contents of Yoshizawa and Moosemiller have been discussed,
supra. In addition, Moosemiller describes:

The Dialed Number Identification Service (DNIS) has been used with
a Direct Inward Dialing (DID) trunk interface to receive dialed digits
as part of the call setup protocol. This allows advance classification
of incoming calls for different applications which are greeted by
appropriate transaction prompts. The DNIS feature is useful for
service bureaus or for multiple-user applications.
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P. 88, right column.

Issue: Has Appellant shown any error in the Examiner's rejection of
claims 170 and 172?

Claim limitations at issue
Claim 170 depends on claim 169 and recites "means to control
processing formats of said analysis structure in accordance with signals
automatically provided by said communication facility indicative of one of a
plurality of called numbers (DNIS)."
Claim 172 depends on claim 170 and recites "said one of a plurality of
called numbers (DNIS) identifies a select format from a plurality of
operating formats."

Contentions
The Examiner finds that Yoshizawa does not teach the limitations of
claims 170 and 172 and finds that caller in Yoshizawa must select the race
course by dialing the numeric code for the race course (Final Rej. 73-74).
The Examiner finds that Moosemiller automatically classifies calls
based on a DNIS signal and concludes that it would have been obvious:

to use DNIS signals to automatically classify the calls at least as to
race course location in Yoshizawa, in order to enhance the operation
of the Yoshizawa system by pre-classifying calls according to race
course location, thereby reducing race-bet entry time and more
quickly freeing up the telephone lines to other subscribers which
would allow more bets to be entered per race.

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Additionally, it would have been obvious for one of ordinary skill in
the art, at the time of the invention to provide a different telephone
number for each different race course locations in order to save the
caller the trouble of entering the race course location and thereby
prevent user error, as suggested by Moosemiller.

Final Rej. 74.
Appellant argues that claims 170 and 172 depend on claim 169 and
are distinct for the reasons claim 169 is patentable (Br. 86).
Appellant further argues:

Moreover, Yoshizawa shows in Table 1, p. 217 that the caller must
provide the location of the race course by dialing the numeric code of
the race course, for example "05" for Tokyo. By that, Yoshizawa
teaches selection by the caller for a particular location to which the
caller is routed. In the claimed system, the system selects an
appropriate format in accordance with DNIS (signals to identify a
called number automatically provided by the PSTN and not the
caller).

Br. 86; Reply Br. 26.

Analysis
Because we affirm the rejection of independent claim 169, claim 170
and 172 are not patentable just because they depend on claim 169.
Appellant describes the teachings of Yoshizawa, which the Examiner
found did not teach the limitations of claims 170 and 172. Appellant does
not address the Examiner's reasoning regarding the combination with
Moosemiller and, therefore, has shown no error in the rejection. The
Examiner presents a reasonable basis for the modification. Moosemiller
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describes an IVR system and states that DNIS "allows advance classification
of incoming calls for different applications" (p. 88) and that "[t]he DNIS
feature is useful for service bureaus or for multiple-user applications"
(p. 88). One of ordinary skill in the IVR art would have been motivated use
DNIS in Yoshizawa for its known advantage of classifying incoming calls in
order to route calls for different race courses to different telephone numbers.
One of ordinary skill in the IVR art also would have known that IVR
systems can have multiple users, e.g., the race course may be one of several
users of an IVR system, and would have considered it obvious to use DNIS
to route calls to the correct application. Absent any persuasive arguments
against the Examiner's rejection, it must be affirmed.

Conclusion
Appellant has not shown any error in the Examiner's rejection of
claims 170 and 172.
The rejection of claims 170 and 172 is affirmed.

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(16) Yoshizawa and Emerson
Claims 179 and 180 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoshizawa and Emerson.
Appellant argues that claims 179 and 180 depend on claim 169 and
are distinct for the reasons claim 169 is distinct. Because we affirm the
rejection of claim 169, and because Appellant does not present any
arguments for the separate patentability of claims 179 and 180, the rejection
of claims 179 and 180 is affirmed.

(17) Norris and Moosemiller
Claim 206 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Norris and Moosemiller.

Facts
Norris has a publication date of "February 6, 1986."
Moosemiller has a publication date of "Mar/Apr 1986."
The Examiner now acknowledges that the "calling number
identification data" or ANI is entitled to the priority date of the '968 patent
of February 24, 1987 (Ans. 74).

Issue: Should the alternative limitation to "called number identification
data," which Appellant admits is not entitled to a priority date before Norris
and Moosemiller, be read out of claim 206 to uphold its patentability?

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Claim limitations at issue
Claim 206 recites, in part, "wherein said communication facility has a
capability to automatically provide digital data, including calling number
identification data or called number identification data" (preamble) and
"digital data automatically provided by said communication facility."

Contentions
The Examiner finds that "called number identification data" or DNIS
first appeared in the '739 patent which has a filing date of May 16, 1988
(Final Rej. 76).
Appellant does not dispute that "called number identification data" is
not entitled to a priority date before May 16, 1988.
Appellant argues that the priority data of ANI in claim 206 is the
filing date of the '968 patent and Appellant "urges the Board to construe the
'digital data automatically provided by said communication facility' as ANI
data and not DNIS because the preamble indicates that the 'communication
facility has a capability to automatically provide digital data, including
calling number identification data or called number identification data'"
(Br. 87-88; see also Reply Br. 26).
Appellant does not argue the merits of the rejection.

Analysis
"A CIP application can be entitled to different priority dates for
different claims. Claims containing any matter introduced in the CIP are
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accorded the filing date of the CIP. " Waldemar Link GmbH & Co. v.
Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994).
Appellant argues that we should give claim 206 a narrow construction
to uphold its patentability by ignoring the alternative limitation "or called
number identification data," i.e., DNIS data, for which there is no written
description support before 1988. There is no authority for ignoring
limitations in claims. See In re Wilder, 429 F.2d 447, 450 (CCPA 1970)
("every limitation positively recited in a claim must be given effect in order
to determine what subject matter that claim defines"). Claim 206 is not
entitled to a priority date before 1988 and, thus, Norris and Moosemiller are
prior art. Moreover, Appellant apparently only argues that the priority data
of ANI in claim 206 is the filing date of the '968 patent in 1987, not the
filing date of parent application Application 06/753,299, filed in 1985.
Since the '968 filing date in 1987 is not before the 1986 publication dates of
Norris and Moosemiller, Appellants' argument is ineffective even if the
claim was limited to "calling number identification data" or ANI.
Appellant does not argue the patentability of claim 206 if Norris and
Moosemiller are prior art.

Conclusion
The alternative limitation to "called number identification data,"
which Appellant admits is not entitled to a priority date before Norris and
Moosemiller, cannot be read out of claim 206 to uphold its patentability.
The rejection of claim 206 over Norris and Moosemiller is affirmed.

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(18) Norris and Moosemiller in view of Yoshizawa
Claim 207 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Norris and Moosemiller as applied to claim 206, further in
view of Yoshizawa.

Facts
The contents of Norris, Moosemiller, and Yoshizawa have been
discussed, supra.

Issue: Would it have been obvious to provide numbers "indicative of
sequence data including caller transaction order data" to the callers in the
system of Norris and Moosemiller given the teaching of providing a
registration number and registration time in Yoshizawa?

Claim limitations at issue
Claim 207 depends on claim 206 and further recites "structure
coupled to said interface structure for providing computer generated
numbers to said individual callers indicative of sequence data including
caller transaction order data."

Contentions
The Examiner finds that the combination of Norris and Moosemiller
does not teach the limitations of claim 207, but concludes that it would have
been obvious to provide numbers indicative of sequence data in view of the
registration number and registration time provided in Yoshizawa for the
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reasons stated in the rejection of claims 62, 63, and 68 over Norris,
Moosemiller, and Yoshizawa, infra (Final Rej. 79).
"The Patentee respectfully requests the Board to sustain the validity of
claim 207 because of the reasons urged above with respect to claim 206 and
because it recites 'sequence data.'" Br. 88.

Analysis
We refer to the analysis stated in the rejection of claims 62, 63, and 68
over Norris, Moosemiller, and Yoshizawa, in rejection (20), infra, which
involves the same limitations in process claims.

Conclusion
It would have been obvious to provide numbers "indicative of
sequence data including caller transaction order data" to the callers in the
system of Norris and Moosemiller given the teaching of providing a
registration number and registration time in Yoshizawa.
The rejection of claim 207 is affirmed.

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Process claims 37-95
Obviousness
(19) Norris and Moosemiller
Claims 37, 38, 42-51, 53-59, 64, 65, 70, 74, 76, and 87 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Norris and Moosemiller.

Facts - Norris
Norris is a newspaper article describing interactive voice response and
touch-tone telephones for sales (e.g., selling a book or horoscope) and
promotions (e.g., a trivia quiz or sweepstakes).
Norris describes one promotion as follows:

Dial Info also is preparing a promotion for a cereal marketer
that features a telephone sweepstakes. Consumers will use a toll-free
line to call in a personal identification number that has been placed in
each box of cereal. The computer will announce whether the number
wins a prize.

"Again, this idea focuses on the instant win possibility and
instant gratification of the telephone," Mr. Hertel says. "But the really
nice part of this idea is that the computer will be able to keep track of
the personal identification numbers so that if someone tries to call in a
second time with the same number the computer would merely inform
this caller the number has already been used. That would encourage
consumers to make more purchases of the product."

Issue: Has the Examiner provided motivation for combining the DNIS call
setup feature of Moosemiller with the IVR system described in Norris?

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Claim limitations at issue
Claim 37 is representative of this group of claims.

37. A process for controlling operations of an interface with a
telephonic communication system 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
telephonic communication system has a central capability to
automatically provide call data signals, indicative of calling number
identification data or called number identification data (DNIS) or
both, said process including the steps of:

providing products carrying participation numbers
specifying limits on use to entitle individual callers to access
said operations of the interface with said telephonic
communication system;

receiving said call data signals indicative of called
number identification data including a called number (DNIS)
dialed by a respective one of said individual callers to select a
specific operating format from a plurality of operating
formats of said operations of the interface;

coupling said remote terminals to said interface for
providing voice signals to said individual callers and generating
said voice signals for actuating said remote terminals as to
provide vocal operating instructions to specific ones of said
individual callers;

receiving digital identification data from said individual
callers responsive to said voice signals including said
participation numbers for said individual callers and answer
data developed by said remote terminals under control of said
individual callers;
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qualifying said individual callers by testing to determine
if said individual callers are entitled to access said operations of
the interface based on said limits on use specified by said
participation numbers for said individual callers and
accordingly providing approval signals for qualified individual
callers;

conditionally accessing a memory with said participation
numbers and storing data relating to calls from said individual
callers;

processing at least certain of said answer data responsive
to said approval signals; and

providing on-going accounting data to said individual
callers at intervals during calls from said individual callers.

Contentions
The Examiner finds that Norris discloses an IVR system where callers
dial a telephone number and are prompted to enter voice or data information;
the cereal boxes with "personal identification number" example in Norris
correspond to the claimed "products carrying participation numbers
specifying limits on use"; receiving personal identification number in Norris
corresponds to "receiving digital identification data . . . responsive to said
voice signals including said participation numbers"; testing to determine if
the personal identification numbers have already been used in Norris
corresponds to "qualifying . . . callers by testing to determine if said . . .
callers are entitled to access said operations of the interface based on said
limits on use" as recited in claims 37 and 64 (Final Rej. 81-83).
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The Examiner finds that Norris teaches the claimed invention except
for the use of DNIS (Dialed Number Identification Service) to select a
specific operating format (Final Rej. 83).
The Examiner finds that Moosemiller teaches the use of DNIS to
receive dialed digits as part of the call setup protocol which "allows advance
classification of incoming calls for different applications which are greeted
by appropriate prompts" (Moosemiller, p. 88) (Final Rej. 83-84).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to use the Moosemiller IVR system as the system
in Norris because Norris describes multiple contests and other applications
that could be handled with DNIS routing (Final Rej. 84).
Appellant argues that "there is no suggestion in Norris that invites a
combination with Moosemiller as suggested by the Examiner. It is only with
the benefit of hindsight that the Examiner is able to suggest such a
combination." Br. 88.
Appellant argues that "[t]he expert declaration (see Klein I, ¶116)
traverses the Examiner's reasoning because a person having ordinary skill in
the art at the time the '707 patent was filed would not have been motivated to
combine Norris in view of Moosemiller in the way that the Examiner
suggests" (Br. 88).
Appellant's arguments (Br. 88-89) mostly repeat following statements
in the July 2006 Klein Declaration:

116. I find that a person having ordinary skill in the art at the time
the '707 patent was filed would not have been motivated to combine
Norris in view of Moosemiller in the way that the Examiner suggests
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because there is no explicit or implied teaching in the primary
reference Norris to describe how the combination should be
implemented by one of ordinary skill to result in the '707 patent. No
description or specifics are described in Norris that would teach one
of ordinary skill at the end user interface, the necessary system
architecture and logic flow to configure and modify Moosemiller's
system and to program the application software (see Fig. 2 and
description on page 91 in Moosemiller) to implement the application
(interactive telepromotion) suggested by Norris. Norris is an
advertising clip on an interactive telepromotion for a cereal marketer
that features a telephone sweepstakes. Consumers use a toll-free line
to call in a personal identification number that has been placed in each
box of cereal. The computer will announce whether the number wins
a prize. This idea focuses on the instant win possibility and instant
gratification of the telephone. One of ordinary skill in the art would
have to rely on the system and logic flow designs set forth in the '707
patent to implement a system combining the teaching in Moosemiller
with the application suggested in Norris.

Klein Declaration ¶ 116.

Analysis
Appellant does not challenge the Examiner's finding that Norris
teaches the claimed subject matter except for the use of DNIS "to select a
specific operating format from a plurality of operating formats of said
operations of the interface." Appellant argues that it would not have been
obvious to combine Norris in view of Moosemiller because "there is no
explicit or implied teaching in the primary reference Norris to describe how
the combination should be implemented by one of ordinary skill to result in
the '707 patent" (Br. 89; Klein Declaration ¶ 116) after which Appellant
describes the teachings of Norris.
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The Supreme Court has stated that an obviousness "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,
127 S. Ct. at 1741. Thus, the Examiner does not need to point to a specific
teaching, suggestion, or motivation in the reference to make a proposed
modification. Moosemiller teaches an IVR system which uses DNIS to
receive dialed digits as part of the call setup protocol which "allows advance
classification of incoming calls for different applications which are greeted
by appropriate prompts. The DNIS feature is useful for service bureaus or
for multiple-user applications." Moosemiller, p. 88. Thus, Moosemiller
teaches the advantages of DNIS for routing calls to different applications,
for service bureaus, and for multiple-user applications. One of ordinary skill
in the IVR art would have been motivated to use the Moosemiller IVR
system as the system in Norris for the stated advantages of DNIS to allow
one IVR service bureau to handle several different customers or promotions.
Furthermore, Norris describes an IVR application, but does not
describe the IVR architecture and hardware. One of ordinary skill in the art
would have been motivated to implement the Norris application on
Moosemiller's IVR system having DNIS because Moosemiller describes a
known IVR system. See, e.g., In re Translogic Tec., Inc., 504 F.3d 1249,
1262 (Fed. Cir. 2007) ("A person of ordinary skill in the art would have
appreciated that any conventional multiplexer circuit could be utilized to
implement the 2:1 multiplexer circuits in Gorai. . . . In other words, in
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looking for a multiplexer circuit for the individual 2:1 multiplexers disclosed
in Gorai, a person of ordinary skill in the art would have solved this design
need by 'pursu[ing] known options within his or her technical grasp.'" [KSR,
127 S. Ct.] at 1742). Accordingly, we conclude that there is motivation for
combining Norris and Moosemiller to arrive at the claimed invention.

Conclusion
The Examiner provided motivation for combining the DNIS call setup
feature of Moosemiller with the IVR system described in Norris.
The rejection of claims 37, 38, 42-51, 53-59, 64, 65, 70, 74, 76,
and 87 over Norris and Moosemiller is affirmed.

(20) Norris, Moosemiller, and Yoshizawa
Claims 62, 63, and 68 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Norris and Moosemiller further in view of Yoshizawa.

Facts
The contents of Norris, Moosemiller, and Yoshizawa have been
discussed, supra.

Issue: Would it have been obvious to provide numbers "indicative of
sequence data" to the callers in the system of Norris and Moosemiller given
the teaching of providing a registration number and registration time in
Yoshizawa?

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Claim limitations at issue
Claim 62 depends on claim 37 and recites "providing computer
generated numbers . . . indicative of sequence data"; claim 63 depends on
claim 62 and recites that "said sequence data includes caller transaction
data"; and claim 68 depends on claim 64 and recites "providing computer
generated numbers . . . indicative of caller transaction sequence data."

Contentions
The Examiner finds that the combination of Norris and Moosemiller
does not teach sequence data.
The Examiner finds that Yoshizawa describes providing a registration
time and registration number (p. 217, step 5) in an IVR system which
correspond to "caller transaction sequence data" and concludes that it would
have been obvious to provide the caller in Norris with caller transaction
sequence data to "ensure that the caller has proof of his/her contest entry and
prize and when it was made" (Final Rej. 90).
Appellant argues that claims 62, 63, and 68 are patentable for the
reasons stated with respect to claim 37 (Br. 89).
Appellant further argues:

A further combination of the Norris in view of Moosemiller with
Yoshizawa still falls short of the claims because as demonstrated
above, Yoshizawa's registration numbers together with a time stamp
does not reflect sequence data. Sequence data places callers in an
order relative to one another. In the Yoshizawa system, two or more
callers calling at the same time may be accorded the very same time
stamp. Sequence data establishes an order to multiple callers calling
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at the same time, therefore, unique number would have to given to
ensure that a sequence record is not duplicative of individual callers.

Br. 89; Reply Br. 28.

Analysis
Appellant argues that "Yoshizawa's registration numbers together with
a time stamp does not reflect sequence data" (Br. 89) because a time/date
stamp may not be unique.
As discussed in rejection (12) over De Bruyn and Yoshizawa, the
rejection relies on the "registration number" in Yoshizawa as the "sequence
data" which includes "caller transaction order data." Appellant's argument
that the "registration time" in Yoshizawa is a time/date stamp which is not
sequence data does not address this reasoning. We agree with the
Examiner's implicit conclusion that one of ordinary skill in the art would
have understood that the registration numbers in Yoshizawa are assigned in
sequence or that assigning the numbers in sequence would at least have been
an obvious way to assign registration numbers to sequential callers. In
addition, the combination of "registration time" and "registration number" in
Yoshizawa would necessarily provide unique sequence data and caller
transaction data since two people cannot have the same registration number
even if it is possible to have the same registration time.
Also, as discussed in the claim interpretation section, Appellant's
argument that the "registration time" in Yoshizawa cannot be sequence data
contradicts the teachings of the '707 patent that "signals from the clock CL
(FIG. 1) are introduced to indicate the sequence of bidders" (col. 15,
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ll. 31-33). The claims only require numbers "indicative of sequence data"
where "indicative of" does not require uniqueness. Appellant only
speculates that the registration times in Yoshizawa may not be unique.
Nevertheless, it would have been obvious to make the registration times in
Yoshizawa unique to further identify the transaction. And, as noted, the
combination of "registration time" and "registration number" in Yoshizawa
would necessarily provide unique sequence data and caller transaction data.

Conclusion
It would have been obvious to provide numbers "indicative of
sequence data" to the callers in the system of Norris and Moosemiller given
the teaching of providing a registration number and registration time in
Yoshizawa.
The rejection of claims 62, 63, and 68 over Norris, Moosemiller, and
Yoshizawa is affirmed.

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CONCLUSION
Anticipation
(1) The rejection of claims 9, 18, 19, 22, 23, 26, 32-34, 96-102, 106-108,
115, 119-123, 131, 132, 135, 137, 141-147, 150, 151, 153, 165, 166,
183-190, 196-200, 202, and 203 under 35 U.S.C. § 102(b) over De Bruyn is
affirmed.
(2) The rejection of claims 9, 20, 21, 137, 141, 143, 148-150, 151, 153,
169, 176-178, 181, and 182 under § 102(b) over Yoshizawa is affirmed.
(3) The rejection of claim 9 under § 102(b) over Emerson is reversed.
(4) The rejection of claims 169, 170, 172, and 176-180 under § 102(b)
over Moosemiller is affirmed.
(5) The rejection of claims 9, 22, 23, 137, 141, 144-146, 150, 151, 154,
156, and 167 under § 102(b) over Barger is affirmed.
Obviousness
(6) The rejection of claims 18, 19, 26, 32-34, 96-102, 106-108, 115, 119-
123, 131, 132, 135, 183-190, 196-200, 202, and 203 under § 103(a) over
De Bruyn and either of Maxon or Streisand is affirmed.
(7) The rejection of claims 10, 11, 16, 109, 110, 163, 164, and 168
§ 103(a) over De Bruyn and St. Jean is affirmed.
(8) The rejection of claims 10, 11, 16, 163, 164, 168, and 173-175 under
§ 103(a) over Yoshizawa and St. Jean is affirmed.
(9) The rejection of claims 9, 10, 11, 16, 137, 154 and 156-168 under
§ 103(a) over Emerson and St. Jean is affirmed.
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(10) The rejection of claims 173-175 stand rejected under 35 U.S.C.
§ 103(a) over Moosemiller and St. Jean is affirmed.
(11) The rejection of claims 14, 15, 28, 29, 103, 104, 124, 138-140,
and 191-195 under § 103(a) over De Bruyn and Moosemiller is affirmed.
(12) The rejection of claims 30, 31, 105, 125-127, 204, and 205 under
§ 103(a) over De Bruyn and Yoshizawa is affirmed.
(13) The rejection of claim 155 under § 103(a) over Emerson in view of
St. Jean further in view of Gentile is affirmed.
(14) The rejection of claim 35 under § 103(a) over De Bruyn and Flanagin
is affirmed.
(15) The rejection of claims 170 and 172 under § 103(a) over Yoshizawa
in view of Moosemiller is affirmed.
(16) The rejection of claims 179 and 180 under § 103(a) over Yoshizawa
and Emerson is affirmed.
(17) The rejection of claim 206 under 35 U.S.C. § 103(a) over Norris and
Moosemiller is affirmed.
(18) The rejection of claim 207 stands rejected under § 103(a) over Norris
and Moosemiller is affirmed.
(19) The rejection of claims 37, 38, 42-51, 53-59, 64, 65, 70, 74, 76,
and 87 under § 103(a) over Norris and Moosemiller is affirmed.
(20) The rejection of claims 62, 63, and 68 under § 103(a) over Norris and
Moosemiller further in view of Yoshizawa is affirmed.
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Summary
One or more rejections of 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 are affirmed. No claims that
were rejected have had all rejections reversed.
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

Patent Owner

Reena Kuyper, Esq.
Byard Nilsson, Esq.
9255 Sunset Boulevard
Suite 810
Los Angeles, CA 90069

Third-party Requester

Donald E. Stout, Esq.
Antonelli, Terry, Stout & Kraus, LLP
1300 North Seventeenth Street, Suite 1800
Arlington, VA 22209