Ex Parte 6970695 et al

Patent Trial and Appeal Board

Apr 21, 2015

95002109 (P.T.A.B. Apr. 21, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,109 08/29/2012 6970695 14100.1003 7318
25099 7590 04/21/2015
DAVID M QUINLAN, PC
32 NASSAU STREET
SUITE 300
PRINCETON, NJ 08542
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/21/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE, INC.,
Requester,

v.

CLASSCO INC.,
Patent Owner.
____________

Appeal 2015-000186
Reexamination Control 95/002,109
Patent 6,970,695 B1
Technology Center 3900
____________

Before STEPHEN C. SIU, DAVID M. KOHUT, and ERIC B. CHEN,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 95/002,109
Patent 6,970,695 B1

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Patent Owner (Classco Inc.) appeals under 35 U.S.C. §§ 134 and 315
(pre-AIA) the Examiner’s rejections of claims 2–5, 7, 9, 10, 14, 17, 18, 23,
26-30, and 34 over various grounds.1 Claims 1, 11–13, 15, 16, 19–22, 25,
31–33, 35, and 36 are cancelled.2 We have jurisdiction under 35 U.S.C.
§§ 134 and 315. An Oral Hearing was conducted on March 11, 2015.

STATEMENT OF THE CASE
This proceeding arose from a request by Apple, Inc. (“Requester”) for
an inter partes reexamination of claims of U.S. Patent 6,970,695 B1, titled
“Calling Party Announcement Apparatus” and issued to David J. Luneau, on
November 29, 2005 (“the ’695 patent”).
The ’695 patent describes a calling party announcement apparatus.
Spec. Abstract.

Claim 2 reads as follows:

2. A caller announcement apparatus for a telephone
system that provisions a telephone call between a caller telephone
at a caller station and a called telephone at a called station, where
the caller station is associated with an identity, where the
telephone system provides signals to the called station that
include caller identification signals representative of the identity
associated with the caller station and voice signals representative
of audio detected by an audio transducer of the caller telephone,
and where the voice signals are processed by the called telephone

1 We cite to “Patent Owner Appeal Brief” dated April 28, 2014 (“PO App.
Br.”).
2 Ex Parte Reexamination Certificate Issued Under 35 U.S.C. § 307.
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to produce audio using an audio transducer at the called station,
the caller announcement apparatus comprising:
a signal receiver at the called station operatively connected
to the telephone system to receive signals therefrom, the signal
receiver being operative to extract caller identification signals
from the signals received from the telephone system and to
provide caller identification data corresponding to the extracted
caller identification signals;
a processing unit operatively connected to the signal
receiver to receive caller identification data therefrom, the
processing unit being operative to provide identity information
associated with the caller identification data;
an audio announcing circuit operatively connected to the
processing unit to receive identity information therefrom, the
audio announcing circuit being operative to use the identity
information to produce audio using the audio transducer at the
called station,
wherein the processing unit comprises memory storage for
storing identity information associated with the caller
identification data.

The cited references are as follows:

Fujioka US 4,894,861 Jan. 16, 1990
Gulick US 5,199,064 Mar. 30, 1993
Marui US 4,998,291 Mar. 5, 1991
Iwaya JP H2-177648 July 10, 1990

Patent Owner appeals the following rejections:
1) Claims 2–5, 7, 9, 10, 14, 17, 18, 23, 26–30, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Fujioka and Gulick (RAN 3); and
2) Claims 2–5, 7, 9, 10, 14, 17, 18, 26–30, and 34 under 35 U.S.C. §
103(a) as unpatentable over the combination of Fujioka and Marui
(RAN 11) or the combination of Iwaya and Gulick (RAN 18-19).
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ISSUE

Did the Examiner err in rejecting claims 2–5, 7, 9, 10, 14, 17, 18, 23,
26–30, and 34?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Fujioka and Gulick

The Examiner finds that “Fujioka does not specifically disclose
outputting [the] call announcing audio signal with identity information
through the same audio transducer that produces the voice signals received
at the called station from the caller” but that “Gulick . . . teaches using the
same audio transducer to output a ringing signal announcing an incoming
call as well as the audio signal received from the caller (column 3, lines 3-
16; column 9, lines 27-38).” RAN 4-5. The Examiner further finds that
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“[t]he combination of these known elements according to known methods
would yield predictable results.” RAN 5. We agree with the Examiner.
For example, Fujioka discloses “transferring voice signals in the
ISDN” to a speaker in handset 4 and “deriv[ing] the calling party’s name or .
. . identification . . . and transfer[ring] it to” a speaker. Fujioka 5:34–36, 51–
54, Fig. 3. Hence, Fujioka discloses speakers (in a telephone system) that
produce audio derived from voice signals and audio derived from identity
information. As Patent Owner’s declarant (Mr. James R. Bress) points out,
Gulick discloses a speaker that produces audio derived from “tonal ringing
call-alerting” and also from “caller voice signals.” Second Declaration of
James R. Bress, dated October 15, 2013, “Bress 2nd Dec.,” ¶ 22. In other
words, based on Gulick, one of ordinary skill in the art would have
understood that a speaker in a telephone system may (and does) produce
audio derived from multiple types of data in a telephone system, including
“tonal ringing call-alerting” and “caller voice signals.”
We agree with the Examiner that the combination of the known
disclosure of Fujioka of the use of speakers to produce audio derived from
data in a telephone system (e.g., voice signals or identity information) with
the known disclosure of Gulick that a speaker in a telephone system can
produce audio derived from multiple types of data within a telephone system
(e.g., voice signals or “tonal ringing call-alerting”) would have resulted in no
more than the predictable result of the use of a speaker in the telephone
system that produces audio derived from data in a telephone system, the data
being any of voice signals, identity information, or “tonal ringing call-
alerting,” for example. “The combination of familiar elements according to
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known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
Patent Owner argues that Fujioka and Gulick fail to disclose
“outputting both associated identity information and the call itself from the
same speaker” and that it would not have been obvious to one of ordinary
skill in the art to have combined the teachings of Fujioka and Gulick
because, according to Patent Owner, “using the same speaker for associated
identity information and caller voice signals is not necessary to . . . [provide]
‘a non-handset external speaker output . . . [to] enable the called person to
communicate with the caller in a hands-free . . . manner’.” PO App. Br. 12,
22. We need not consider whether it would have been “necessary” or not for
one of ordinary skill in the art to have used a “same speaker,” because the
inquiry is whether it would have been obvious to one of ordinary skill in the
art and not whether it would have been necessary to one of ordinary skill in
the art to have combined the teachings of Fujioka and Gulick. We are not
persuaded by Patent Owner’s arguments.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the known features of Fujioka and
the known features of Gulick to achieve a predictable result because,
according to Patent Owner, “the methods of combining” “the known
‘elements’ [of Fujioka and Gulick]” “are not ‘known’ from the prior art” and
the Examiner fails to “explain[] what the term ‘predictable results’ means in
the present context.” PO App. Br. 13, 16. We are not persuaded by Patent
Owner’s arguments. As previously described, we agree with the Examiner
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that it would have been within the purview of one of ordinary skill in the art,
having produced audio associated with various types of data in a telephone
system (e.g., either voice data or identification data) with speakers of
Fujioka to have produced audio from either one of voice data or
identification data with speakers, particularly given the disclosure by Gulick
that producing audio derived from multiple types of data in a telephone
system with a speaker was known to one of ordinary skill in the art.
For at least the previously stated reasons, we also are not persuaded
by Patent Owner’s argument that the combination of Fujioka and Gulick
would not result in a “predictable result.” As previously discussed, we agree
with the Examiner that such a combination would have resulted in a
predictable result. Patent Owner does not explain sufficiently how using a
speaker that produces audio from different types of data in a telephone
system would have been unpredictable or unexpected to one of ordinary skill
in the art, particularly in view of such a disclosure by Gulick, for example.
Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Fujioka and
Gulick because “Fujioka [discloses] loudspeaker 6” and “Gulick . . . use[s]
the same loudspeaker . . . which would be a third speaker.” PO App. Br. 15
(citing Bress Dec. ¶ 22). Hence, Patent Owner appears to argue that it
would not have been obvious to one of ordinary skill in the art to have
bodily incorporated Gulick into Fujioka. We are not persuaded by Patent
Owner’s argument at least because “[t]he test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference.... Rather, the test is what the combined
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teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
Regarding claim 14, Patent Owner argues that the Examiner
misconstrued the term “identity information” and that under a proper
construction of the term, Fujioka and Gulick fail to disclose or suggest
“identity information.” See, e.g., PO App. Br. 24–25. Patent Owner notes
that “the specification of the ’695 patent nowhere uses the exact term
‘identity information’” but argues that the proper construction of the term
“identity information” is “not . . . an abstract concept,” is “concrete ‘identity
information’,” and “does not mean two separate items of identity
information that are related to two caller station identities.” PO App. Br. 24,
25. We agree with the Examiner that Fujioka, for example, discloses
“identity information.” Fujioka discloses that “the central processing unit
derives the calling party’s name . . . corresponding to the originating
subscriber’s number in the memory 15.” Fujioka 5:51–54. Patent Owner
does not explain sufficiently how the “calling party’s name,” for example,
differs from the claimed “identity information.” In both cases, the
information indicates an “identity” (e.g., a name).
Patent Owner argues that “ClassCo products” correspond to the
claimed invention and that the “ClassCo products” received industry praise.
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Based on this alleged “praise,” Patent Owner contends that the claimed
invention would not have been obvious to one of ordinary skill in the art.
PO App. Br. 27–28. In particular, Patent Owner argues that the “ClassCo
products” was praised by “[a]n article in N.H. Business Review, July 31-
Aug. 1998 (Luneau Exhibit 1)” for “the ability to produce identity
information over the same speaker used for caller voice signals (claim 1), the
ability to store identity information (claim 2), and the ability to associate one
item of identity information with plural telephone numbers (claim 14).” PO
App. Br. 27–28. Patent Owner cites additional articles as allegedly
“praising” claim features of the ’695 patent. PO App. Br. 28–29 (citing
Teleconnect Magazine, October 1995, at pages 40–41 (Luneau Exhibit 2);
Computer Telephony, July 1996, at page 114; The Dallas Morning News
(the Archive), Oct. 20, 1998 (Exhibit 4); “Testimonials from purchasers
collected in Luneau Exhibit 3”; and “news releases collected in Luneau
Exhibit 5”). We are not persuaded by Patent Owner’s arguments.
Patent Owner’s declarant (Mr. David J. Luneau) testifies that the
claimed invention received praise (Second Declaration of David J. Luneau,
dated October 15, 2013, “2nd Luneau Dec.,” 5 (citing N.H. Business
Review)). Specifically, Dr. Luneau testifies that N.H. Business Review
describes a phone system (presumably, the claimed invention) that “can
store between 20-40 names” and enables a user to “listen to the voice
announcement coming from the box via the phone itself” so that the user
“can choose to either take the call or let it continue on to the answering
machine.” First, N.H. Business Review appears to merely state objectively
the alleged features of the phone system rather than providing “praise.”
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Even if such objective statements could be construed as “praise,” we are still
not persuaded by Patent Owner that such “praise” is sufficient to refute the
prima facie showing of obviousness of the claimed invention over the prior
art. For example, Patent Owner does not demonstrate or assert that the
ability of the system to “store between 20-40 names” or producing a “voice
announcement coming from the box via the phone itself” is recited in the
claims. In other words, Patent Owner does not demonstrate a sufficient
nexus between the alleged “praise” and the claimed invention. In addition,
as previously discussed, storing identification data and producing a voice
announcement (i.e., audio corresponding to identification data of a caller) is
disclosed by Fujioka. Under these circumstances, the alleged “praise” stems
from what was known in the prior art so that there can be no nexus. Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
Mr. Luneau also cites the following:
1) Teleconnect Magazine, October 1995 as stating that the telephone
device has a “switch marked ‘handset’” that enables the user to
“lift the handset without ‘answering the call’” and that pressing the
“RECORD button” enables the user to “record [a] five-second
voice announcement that will be used . . . to announce this caller”;
2) Computer Telephony, July 1996, as stating that the user may
“record a voice message for up to 20 different numbers” and that
the system “play[s] the name of the caller” when the user picks up
the phone;
3) The Dallas Morning news, October 20, 1998, as stating that the
system includes “Full Caller ID,” that the system can “introduce
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[a] number when it comes through,” that “the call will be
announced through the handset” when using a cordless phone, and
that the “machine stores the numbers for 64 incoming calls”;
4) A Philips news release, April 1995, that states that the system is a
“voice-capable caller ID unit”, “can store up to 30 names available
for voice announcing” “can also store multiple phone numbers for
the same name,” and “works with existing telephone sets”;
5) A second Philips news release, January 1996, as stating that the
system “stores up to 30 recorded names or numbers,” “works with
existing telephone sets, including cordless telephones,” and allows
“the user to hear who’s calling even from outside the home.
2nd Luneau Dec. 6, 8, 9.
We disagree with Patent Owner that these objective statements of
features of the alleged telephone system constitute “praise” in the context of
obviousness of the claimed invention. Even if any of these statements
constitute such “praise,” Patent Owner does not assert or demonstrate
sufficiently that any of the stated features (e.g., “lifting the handset without
‘answering the call’” or “record[ing a] five-second voice announcement”
upon depression of a “RECORD button,” for example) is recited in the
claims. In other words, we agree with the Examiner that Patent Owner has
not demonstrated a sufficient nexus between the alleged “praise” and the
claimed invention.
Patent Owner also argues that “there is also evidence of long-felt need
in the industry.” PO App. Br. 28. Specifically, Patent Owner argues that
“Caller ID customers with ClassCo products were highly satisfied, more so
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than users of other Caller ID devices, and Luneau Exhibit 1 makes it clear
that the reason was because they incorporated features claimed in the ’695
patent.” PO App. Br. 23 (citing Luneau Exhibit 1, Second Luneau
Declaration, at paras. 10). First, Patent Owner provides insufficient
evidence to demonstrate persuasively that customers were, indeed, “highly
satisfied” and to what extent the customers were “satisfied.” Second, even if
customers were “satisfied” to a sufficient extent, Patent Owner does not
explain how the level of customer satisfaction correlates with a “long-felt
need in the industry.” Indeed, the level of satisfaction of customers does not
appear to relate to whether or not there was a long-felt need in the industry.
Most importantly, however, even if customers were sufficiently “satisfied”
and that the level of customer satisfaction was somehow indicative of a
“long-felt need in the industry,” Patent Owner provides insufficient evidence
of a nexus between a specific claimed feature and any potential “long-felt
need in the industry.”
Patent Owner argues commercial success of “‘ClassCo products’ with
the features in claim 2 (via claim 1) and claim 14.” PO App. Br. 29–30
(citing Second Luneau Declaration, at ¶¶ 12–17). Mr. Luneau testifies that
he “consider[s] the sales volumes and growth of market share of ClassCo
products . . . to be strong evidence of the commercial success of ClassCo
products.” 2nd Luneau Dec. ¶ 16. However, even if Mr. Luneau is correct
that “ClassCo’s share of that [$82,000,000] market was 0.8%” and that
“ClassCo products held a 3.7% share [of a $31,000,000 market]” (2nd
Luneau Dec. 15) and even if such market share values constituted
“commercial success” in the context of secondary considerations of non-
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obviousness of the claimed invention, we are still not persuaded by Patent
Owner’s arguments for at least the reasons set forth by the Examiner and
Requester. RAN 32–33, 3PR Resp. Br. 17–20. For example, Mr. Luneau
states that the market included “total number of units capable of audible
announcement based on Caller ID” but does not demonstrate that the claims
recite the system as “capable of audible announcement based on Caller ID.”
Therefore, Patent Owner does not demonstrate a sufficient nexus between
the alleged commercial success and the claimed invention. Even if the
claims recited that the system has “audible announcement based on Caller
ID,” we note that Fujioka discloses, for example, a telephone system “for
notifying an originating party’s number” and provides “an audible indication
of the ID information corresponding to the registered subscriber’s number.”
Fujioka, Abstract. Hence, at best, the alleged commercial success would
stem from a feature disclosed in the prior art so that there can be no nexus.
Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011).
Patent Owner argues that “the features of claim 2 (via claim 1) and
claim 14 were primary reasons why Philips took a license from ClassCo”
and that “the features of claim 2, particularly the audio announcing circuit
and memory storage, were prime reasons why the licenses were taken.” PO
App. Br. 30 (citing 2nd Luneau Dec. ¶¶ 18–19 and “Luneau Exhibit 5”). We
have carefully reviewed Patent Owner’s “Luneau Exhibit 5” and we do not
find specific evidence demonstrating why “Philips took a license from
ClassCo” and what specific claim features caused Philips to take the alleged
license(s), if any. To the extent that “audio announcing” and “memory
storage” were the reasons for the license, as seemingly alleged by Patent
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Owner, we note that Fujioka discloses “an audible indication of the ID
information corresponding to the registered subscriber’s number” (i.e.,
“audio announcing”) and “memory 15” (i.e., “memory storage”). Fujioka,
Abstract; Fig. 2. As explained previously, reasons stemming from features
disclosed in the prior art are insufficient to demonstrate a nexus between the
alleged reasons and the claimed invention.

Other appealed grounds

Patent Owner also appeals the rejection of claims 2–5, 7, 9, 10, 14, 17,
18, 26–30, and 34 as unpatentable over Fujioka and Marui or over Iwaya and
Gulick. We do not address these additional rejections because the affirmance
of the rejection for claims 2–5, 7, 9, 10, 14, 17, 18, 26–30, and 34 as
unpatentable over Fujioka and Gulick render it unnecessary to reach the
propriety of the Examiner’s decision to reject those claims on a different
basis. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).
CONCLUSION
We affirm the Examiner’s decision to reject claims 2–5, 7, 9, 10, 14,
17, 18, 23, 26–30, and 34 under 35 U.S.C. § 103(a) as unpatentable over
Fujioka and Gulick.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for
extensions of time in this inter partes reexamination proceeding are
governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
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appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

PATENT OWNER:

DAVID M. QUINLAN, PC
32 Nassau Street
Suite 300
Princeton, NJ 08542

THIRD PARTY REQUESTER:

MORRISON & FOERSTER LLP
707 Wilshire Boulevard
Los Angeles, CA 90017