Ex Parte 7680256 et al

Patent Trial and Appeal Board

Nov 13, 2013

95001409 (P.T.A.B. Nov. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,409 08/13/2010 7680256 51783-2 (256) 6267
52450 7590 11/14/2013
KRIEG DEVAULT LLP
ONE INDIANA SQUARE
SUITE 2800
INDIANAPOLIS, IN 46204-2079
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/14/2013 PAPERPAPER
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
____________

GOOGLE, INC.
Requester and Appellant

v.

ONE NUMBER CORPORATION
Patent Owner and Respondent
____________

Appeal 2013-005028
Reexamination Control 95/001,409
Patent 7,680,256 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, KARL D. EASTHOM, and STEPHEN C. SIU,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
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Patent 7,680,256 B2

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Requester/Google, Inc. appeals under 35 U.S.C. §§ 134 and 315 the
Examiner’s refusal to adopt the proposed rejections of claims 1-4, 10, 12-14,
16-19, and 21-43. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
An Oral Hearing was conducted on July 24, 2013.

STATEMENT OF THE CASE
This proceeding arose from a request by Google, Inc. for an inter
partes reexamination of U.S. Patent 7,680,256 B2, titled “Contact Number
Encapsulation System” and issued to Brandon D. McLarty and Frederick
Wittekind IV on March 16, 2010 (the ’256 patent).
The ’256 patent describes a method and system for allowing telephone
users to cause multiple phone lines to ring when a calling party dials a single
primary contact number (col. 1, ll. 8-10).

Claim 1 reads as follows:

1. A system, comprising:
a web browser based control panel allowing a user to
designate a plurality of contact numbers correlated to a primary
contact number assigned to said user, said web browser based
control panel including means for allowing said user to enter a
plurality of contact numbers that are linked to said primary
contact number and temporarily activate and deactivate select
contact numbers contained in said plurality of contact numbers
to identify each of said contact numbers as an activated contact
number or a deactivated contact number;
a database for storing said plurality of contact numbers
linked to said primary contact number in memory;
a call routing server operable to receive a call to said
primary contact number, wherein said call routing server is in
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communication with an Internet based communication network
and said call routing server is configured to receive said call
from said Internet based communication network and route said
call;
a call processing server connected with said call routing
server by said Internet based communication network, wherein
said call processing server is configured to receive said call
from a calling terminal designating said primary contact
number that is routed to said call processing server from said
call routing server;
a lookup application executable by said call processing
server configured to query said database to retrieve said
activated contact numbers from said plurality of contact
numbers as a function of said primary contact number;
a calling application executable by said call processing
server configured to forward said call to a plurality of call
reception terminals that are each associated with a respective
one of said activated contact numbers thereby simultaneously
notifying said call reception terminals of said call, said calling
application being operable to generate calling commands sent
via said Internet based communication network to at least a
public switched telephone communication network, and a
wireless communication network, wherein said plurality of
contact numbers are associated with respective call reception
terminals that are operable to communicate using at least a
respective one of said communication networks; and
a connection application executable by said call
processing server for establishing a voice based communication
session between said calling terminal and a respective one of
said plurality of call reception terminals via said Internet based
communication network if said user accepts said call.

The cited references are as follows:

Ram US 6,625,258 B1 Sep. 23, 2003
Straub US 7,194,079 B1 Mar. 20, 2007
Hakusui US 7,248,577 B2 Jul. 24, 2007
Singh US 7,257,201 B2 Aug. 14, 2007
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Hariri US 7,379,543 B2 May 27, 2008

Kundan Singh, et al., Columbia University, CINEMA:
Columbia InterNet Extensible Multimedia Architecture (May
2002) (“Cinema”);

Tekelec, Inc., System Applications and Description, 620-
05600010A, Software Release 5.6, 2000-2003 (“Tekelec”); and

airBand Configuration of Find-Me Feature Version 3
(May 11, 2005) (“airBand”).

Requester appeals the Examiner’s refusal to adopt the following
proposed rejections:1
Claims 10 and 12 under 35 U.S.C. § 102(e) as anticipated by Hariri
(3PR App. Br. 25-27);2
Claims 1 and 4 under 35 U.S.C. § 102(e) as anticipated by Hakusui
(3PR App. Br. 35);3

1 A proposed rejection of claim 15 under U.S.C. § 103(a) as unpatentable
over Cinema, Hakusui, and Ram was not made by Requester or considered
by the Examiner during Reexamination and is therefore not subject to appeal
(RAN 6-9).
2 The ’256 patent was filed August 18, 2005 and has an issue date of March
16, 2010. The Hariri reference was filed June 5, 2001, published September
12, 2002, and issued May 27, 2008. Hariri published after the filing date of
the ’256 patent. Therefore, we assume that the Examiner refuses to adopt
the rejection of claims 10 and 12 under 35 U.S.C. § 102(e) as anticipated by
Hariri.
3 The ’256 patent was filed August 18, 2005 and has an issue date of March
16, 2010. The Hakusui reference was filed December 5, 2003, published
September 2, 2004, and issued July 24, 2007. Hakusui published after the
filing date of the ’256 patent. Therefore, we assume the Examiner refuses to
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Claims 1-4, 10, 14, 28-35, and 41 under 35 U.S.C. § 102(b) as
anticipated by Cinema (3PR App. Br. 27, 38-44);4
Claims 21-27, 36, 37, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Cinema and Hakusui (3PR App. Br. 37);5
Claim 38 under 35 U.S.C. § 103(a) as unpatentable over Cinema,
Hakusui and Singh (3PR App. Br. 46);6
Claims 16-19 under 35 U.S.C. § 103(a) as unpatentable over Cinema
and Ram (3PR App. Br. 29-31);
Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Cinema, Ram
and Straub (3PR App. Br. 31);
Claim 43 under 35 U.S.C. § 103(a) as unpatentable over the Cinema
and one of Tekelec or AirBand (3PR App. Br. 31-33);
Claims 1, 2, and 4 under 35 U.S.C. § 103(a) as unpatentable over
Cinema, Tekelec and AirBand (3PR App. Br. 46);7

adopt the rejection of claims 1 and 4 as anticipated by Hariri under 35
U.S.C. § 102(e).
4 A proposed rejection of claims 13, 15, 36-40, and 43 under U.S.C. § 102(b)
as anticipated by Cinema was not made by Requester or considered by the
Examiner during Reexamination and is therefore not subject to appeal (RAN
6).
5 A proposed rejection of claims 1-4 and 14 under U.S.C. § 103(a) as
unpatentable over Cinema and Hakusui was not made by Requester or
considered by the Examiner during Reexamination and is therefore not
subject to appeal (RAN 7).
6 A proposed rejection of claim 3 under U.S.C. § 103(a) as unpatentable over
Cinema, Hakusui, and Singh ’201 was not made by Requester or considered
by the Examiner during Reexamination and is therefore not subject to appeal
(RAN 6, 7, and 9).
7 A proposed rejection of claims 3, 14, 36, 37, 39, or 40 under U.S.C.
§ 103(a) as unpatentable over Cinema, Tekelec, and airBand was not made
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Claim 42 under 35 U.S.C. § 103(a) as unpatentable over Cinema and
airBand (3PR App. Br. 47-48); and
Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Hariri,
Cinema, and Straub (3PR App. Br. 44-45).

ISSUE

Did the Examiner err in refusing to reject claims 1-4, 10, 12-14, 16-
19, and 21-43?

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

Hariri - Claims 10 and 12

by Requester or considered by the Examiner during Reexamination and is
therefore not subject to appeal (RAN 8).
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Claim 10, which depends from claim 5, recites a web based control
panel that is configured to allow a user to temporarily activate and deactivate
one or more numbers contained in the plurality of contact numbers. The
Examiner states that Hariri discloses profiles that include “a list of various
destinations to which incoming calls may be routed” but does not disclose
“whether any number within that profile is activated or deactivated” (RAN
89). We disagree with the Examiner for at least the reasons set forth by the
Requester (3PR App. Br. 26).
As the Requester points out, Hariri discloses that a subscriber
indicates a “preferred point of contact” (col. 5, ll. 60-61; Fig. 4). For
example, in one embodiment, the subscriber “has designated his or her first
business telephone line as the telephone number at which the subscriber
prefers to be called” (col. 7, ll. 54-56) and the system “uses the preferred
contact information . . . to establish a connection” (col. 7, l. 67 – col. 8, l. 1).
Hariri discloses that “if three telephone numbers are returned as the
preferred contact points, the requestor unit . . . can initiate three telephone
calls at the same time” (col. 10, ll. 21-24). In other words, Hariri discloses a
system in which a user selects preferred points of contact (and does not
select non-preferred points of contact) and the system establishes a
connection with the selected preferred points of contact (and does not
establish a connection with the non-selected points of contact that are non-
preferred). The Examiner does not persuasively demonstrate a difference
between activating and deactivating contact numbers, as recited in claim 10,
for example, and Hariri’s disclosure of a user selecting points of contact for
use in establishing a connection (and not selecting points of contact such that
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non-selected points of contact are not used to establish a connection). In
both cases, certain selected points of contact are “activated” for use in
establishing a connection while certain non-selected points of contact are
“deactivated” such that the non-selected (or deactivated) points of contact
are not used in establishing a connection.
Claim 12 depends from claim 10 and the Examiner does not provide
additional findings with respect to claim 12 and the Hariri reference.
The Examiner erred in refusing to adopt the rejection of claims 10 and
12 as anticipated by Hariri.

Hakusui - Claims 1 and 4
Claim 1 recites a web browser based control panel including means
for allowing said user to enter a plurality of contact numbers and temporarily
activate and deactivate select contact numbers contained in the plurality of
contact numbers to identify each of the contact numbers as an activated or a
deactivated contact number. The Examiner states that Hakusui fails to
disclose this feature (RAN 98). In particular, the Examiner indicates that
Hakusui discloses that “the user selects numbers that will be called” but does
not disclose “that non-selected numbers are identified by the user as being
deactivated” (RAN 98). We disagree with the Examiner for at least the
reasons set forth by the Requester (3PR App. Br. 35-37).
As the Requester explains, Hakusui discloses a “central line setup
screen” (col. 7, l. 37, Fig. 3) with “extension phone numbers 104 to be called
simultaneously” (col. 7, ll. 41-42). One of ordinary skill in the art would
have understood that the call line setup screen contains a pull-down menu
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(Fig. 3, element 104) that may be used to select a telephone extension
number or may be set to “none” (as illustrated in Fig. 3). We agree with the
Requester that when a user selects “none” for a telephone extension to be
dialed, no telephone extension corresponding to the “none” selection will be
dialed because no telephone number was selected. In other words, telephone
numbers that were not selected would not be dialed and would therefore be
“deactivated.”
The Examiner erred in refusing to adopt the rejection of claims 1 and
4 as anticipated by Hakusui.

Cinema - Claims 1-4, 10, 14, 28-35, and 41

Claim 41
Claim 41 recites a call routing server connected with an Internet based
communication network that is configured to receive a call and a call
processing server connected with the Internet based communication
network. The Examiner states that Cinema fails to disclose this feature
(RAN 18-20). In particular, the Examiner finds that “[t]he call processing
server is also connected to the call router via the same Internet based
communication network” (RAN 20). However, the Examiner does not
sufficiently demonstrate that claim 41 requires a call processing server that
is connected to a call router “via the same” communication network. Rather,
claim 41 merely requires that the call routing server and the call processing
server are connected to the network.
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Cinema discloses a system in which a caller (i.e., “Alice”) “sends the
call to its ‘outbound’ server” (p. 5) that “handles all calls destined for
addresses outside” the caller’s network (id.). The “outbound” server of
Cinema is connected to the Internet (p. 5, Fig. 1) because the “outbound”
server contacts the “server acme.com” (id.) via the Internet. Likewise, the
“server acme.com” is connected to the Internet (id.). The Examiner does not
persuasively demonstrate a difference between the system of Cinema in
which an “outbound” server receives a call from a caller and is connected to
the Internet and a “server acme.com” that is also connected to the Internet
and the recited claim feature of claim 41 of a call routing server connected
with an Internet based communication network that is configured to receive
a call and a call processing server connected with the Internet based
communication network. In both cases, both servers are connected to the
Internet and one of the servers receives a call from a caller.
The Examiner erred in refusing to adopt the rejection of claim 41 as
anticipated by Cinema.

Claims 1-4, 14, and 28
Claim 28, for example, recites a call router that receives an incoming
call through an Internet based network and a server that receives the
incoming call from via the Internet based network routed from the call
router. Claim 1 recites a similar feature. The Examiner states that Cinema
fails to disclose this feature (RAN 18-23). In particular, the Examiner finds
that Cinema fails to disclose “that the gateway determines to use TRIP
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routing to connect to the sipd via an Internet based communication network”
(RAN 20). We agree with the Examiner.
Requester argues that Cinema discloses “three ‘legs’ of the call are
transmitted over the public Internet” (3PR App. Br. 43, citing Cinema, Fig.
1, p. 5). Cinema discloses a system in which a caller (i.e., “Alice” who is
within the “Wonderland” network) places a call to a callee (i.e., “Bob” who
is “located on the Internet” at “acme.com” – see p. 5 and Fig. 1). In the
Cinema embodiment, the caller (i.e., “Alice”) “sends the call to its
‘outbound’ server . . . that handles all calls destined for addresses outside
wonderland.com” (p. 5). In other words, in Cinema, a component (i.e., “call
router”) receives a call (from the caller) over a network (i.e.,
“wonderland.com”) and is connected to the “server” (or the “acme.com”
server) via the Internet (i.e., a network that differs from the
“wonderland.com” network). The “wonderland.com” server (or “call
router”) is connected to the “acme.com” server via the Internet but the
“wonderland.com” server receives the call from the caller via a different
network, namely, the “wonderland.com” network. As the Examiner points
out, this is contrary to the claim requirement of a call router connected to the
server and receiving a call from a caller over the (same) Internet based
network.
Requester also argues that Cinema discloses a “public-Internet based
routing system in its TRIP embodiment” (3PR App. Br. 44) in which “calls
can . . . propagate from gateway (router) to call processing server” (id.,
citing Cinema at pp. 24-25). In this embodiment, Cinema discloses an
“external telephone user” placing a call (i.e., “9397134”) to a PBX, which
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forwards the call to a corresponding gateway (which Requester equates with
the claimed “call router”). The gateway (or “call router”) forwards the call
to the IP address of the “sipd,” which Requester presumably equates with the
claimed “server” (see Cinema at 24-25; Fig. 11). We agree with Requester
that Cinema discloses calls that can “propagate from gateway (router) to call
processing server” (3PR App. Br. 44) because Cinema discloses that a call
can be forwarded from the gateway (or “call router”) to the “sipd” (or
“server”). However, claim 28 requires that the call router receives a call
from a communication network and a server connected to the call router by
the communication network. As the Examiner points out, Cinema discloses
that the gateway (or “call router”) receives a call from an “internal T1/CAS”
network but does not disclose that the server (i.e., sipd) is connected to the
call router by the “internal T1/CAS” network. Rather, Cinema discloses that
the sipd (i.e., “server”) is connected to the gateway (or “call router”) via an
“Ethernet” network.
Claim 1 recites a similar feature as claim 28. Claims 2-4 and 14
depend from claim 1. The Examiner did not err in refusing to reject claims
1-4, 14, and 28 over Cinema.

Claim 10
Claim 10 recites a call answering application associated with the call
processing server configured to establish an initial communication session
between the calling terminal and the server. The Examiner states that
establishing an “initial communication session” as recited in claim 10
requires that the server answer the call and that Cinema fails to disclose that
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the server answers the call (RAN 15). We disagree with the Examiner for at
least the reasons set forth by the Requester (3PR App. Br. 27-29).
As Requester explains, claim 10 recites a call answering application
configured to establish an initial communication session between the calling
terminal and the server. Claim 10 does not recite an application that answers
a call. Therefore, even assuming that Cinema fails to disclose answering a
telephone call as the Examiner states, we disagree with the Examiner that
Cinema fails to disclose the features of claim 10.
The ’256 patent Specification discloses that “an answering module
may answer the incoming call thereby establishing a communication session
between the calling terminal and the call processor server” (col. 3, ll. 6-9).
Hence, the Specification discloses establishing a communication session but
does not disclose establishing an “initial” communication session, as recited
in claim 10. Even assuming the Specification discloses an answering
module may answer the incoming call thereby establishing “an initial
communication session” between the calling terminal and the call processor
server” (the Specification does not provides such a disclosure, however), the
Specification would still not require that establishing an “initial
communication session” would require “answering a call.” Rather, the
Specification would merely disclose that establishing a communication
session may be accomplished by answering the incoming call and would not
require that the incoming call be answered in order to establish the “initial”
communication session.
As the Requester also points out, Cinema discloses an embodiment in
which a callee “sends the call to its ‘outbound’ server” and the server
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“handles all calls” (p. 5; Fig. 1). We agree with the Requester that when a
callee “sends the call” to the server, an “initial communication session” is
established because the callee (or the “calling terminal”) would be in
“communication” with the server in order to send a call to the server.
Hence, we agree with the Requester that Cinema discloses establishing an
initial communication session between the calling terminal and the server.
The Examiner erred in refusing to adopt the rejection of claim 10 as
anticipated by Cinema.

Claims 29-35
The Requester argues that the Examiner refuses to adopt the proposed
rejection of claim 29 (and dependent claims 30-35) because Cinema
allegedly fails to disclose “selecting a particular call processing server based
on the primary contact number” and “a plurality of call processing servers
that the call router selects among” (3PR App. Br. 39).
Claim 29, for example, recites that the call routing server uses the
primary contact number to retrieve an address associated with the call
processing server and routes the call to the call processing server as a
function of the primary contact number. The Examiner states that Cinema
fails to disclose “that the server is determined and selected based on the
primary contact number” (RAN 22).
As the Requester points out, claim 29 does not recite that the server is
“determined and selected based on the primary contact number.” In any
event, Cinema discloses that a caller “calls” a number (e.g., “9397134”) and
the call is forwarded to the gateway connected to an internal T1 line that
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carries the extension (p. 24). The gateway then forwards the call “to the
preconfigured IP address of the sipd (the SIP proxy server)” (id.). An
example of such a configuration in Cinema is as follows:

dial-peer voice 1 voip
preference 1
destination-pattern 713[0-9]
voice-class codec 1
session protocol sipv2
session target ipv4:128.59.19.62
Cinema, p. 24-25.
The Examiner finds that Cinema fails to disclose a user temporarily
activating and deactivating one or more numbers contained in the plurality
of contact numbers, thereby identifying each of the plurality of contact
numbers as an activated contact number or a deactivated contact number, as
recited in claim 29. The Requester argues that Cinema discloses “q values
. . . [that] indicate the order in which contact numbers are called” and that “q
values . . . activate (if the q values are the same) or deactivate (if the q values
are different or nonexistent) each contact number for simultaneous calling”
(3PR App. Br. 40, citing Cinema at 20).
We agree with the Requester that Cinema discloses “q-values” that
indicate the “preference values” of contacts (p. 20). Cinema discloses, for
example, if “multiple contacts have the same or similar q values,” then the
call is forwarded to each of the contacts having the same or similar q values
(id.). However, we agree with the Examiner that Cinema fails to disclose
that any of the contacts are deactivated. In fact, Cinema explicitly discloses
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that the call is forwarded to each of the contacts (i.e., each of the contacts are
“activated”).8
The Examiner did not err in refusing to adopt the rejection of claims
29-35 as anticipated by Cinema.
Cinema and Hakusui - Claims 21-27, 36, 37, 39, and 40
Cinema, Hakusui, and Singh – Claim 38

Claims 21-27
Claim 21, for example, recites a control panel that allows a user to
temporarily activate and deactivate select contact numbers contained in a
plurality of contact numbers by way of a selection item, thereby identifying
each of the plurality of contact numbers as an activated contact number or a
deactivated contact number. The Examiner states that the combination of
Cinema and Hakusui fails to disclose or suggest this feature. In particular,
the Examiner finds that while Cinema “discloses that the user can designate
specific numbers to be ‘activated’ . . . [t]he user simply does not indicate or
identify or have the ability to ‘temporarily deactivate’ a contact number as
claimed” (RAN 65-66).
As indicated above and by the Requester, however, the proposed
rejection of claims 21-27 is obviousness over the combination of Cinema
and Hakusui as opposed to the Cinema reference in isolation. The Examiner

8 Cinema discloses an example in which 5 locations (rep1, rep2, rep3,
senior-rep, and manager) have “preferences” or “q values” of 1.0, 1.0, 0.8,
0.3, and 0.3, respectively, and a call that is forwarded to rep1 and rep2, then
rep3, then to senior-rep and manager simultaneously. In other words,
Cinema discloses forwarding the call to each of the locations (i.e., each of
the locations are “activated” and none are “deactivated” (Cinema at 20-21).
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has not persuasively demonstrated that Hakusui also fails to disclose or
suggest deactivating a contact number (3PR Ap. Br. 37). One cannot show
nonobviousness by attacking references individual where the proposed
rejections are based on combination of references. In re Keller, 642 F.2d
413 (CCPA 1981).
The Examiner erred in refusing to adopt the rejection of claims 21-27
as obvious over the combination of Cinema and Hakusui.

Claims 36, 37, 39, and 40 (and claim 38)
Claim 36, for example, recites a call router that receives an incoming
call via an Internet based network and a call processing server that receives
the incoming call routed from the call router over the Internet based
network. The Examiner states that the combination of Cinema and Hakusui
fails to disclose or suggest this feature (RAN 66-68). Requester argues that
Cinema discloses this feature. As noted above, however, we disagree with
the Requester.
Claim 38 depends from claim 37. The Requester does not
persuasively demonstrate that Singh cures the deficiencies of Cinema and
Hakusui with respect to claim 38.
The Examiner did not err in refusing to adopt the rejection of claims
36, 37, 39, and 40 over Cinema and Hakusui or the rejection of claim 38
over Cinema, Hakusui, and Singh.

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Cinema and Ram - Claims 16-19
Claims 16 and 19 depend from claim 10 (discussed above). The
Examiner states that the combination of Cinema and Ram fails to disclose or
suggest that the server answers the call (see discussion above) (RAN 54).
As described above, we disagree with the Examiner that claims 16-19, which
depend from claim 10, recite a server that answers a call. Rather, claim 10
(and claims 16-19) recites an application configured to establish an initial
communication session between the calling terminal and server. Also as
noted above, the Specification fails to disclose that establishing an initial
communication session must include answering a call.
The Examiner also states that Cinema and Ram fail to disclose or
suggest claims 16-19 because, according to the Examiner, Ram “does not
specifically disclose which specific device queries the caller for their name”
(RAN 55). We disagree with the Examiner for at least the reasons set forth
by the Requester (3PR App. Br. 30).
The Examiner erred in refusing to adopt the rejection of claims 16-19
as obvious over Cinema and Ram.

Cinema, Ram and Straub - Claim 12
Claim 12 depends from claim 5 and recites a control panel that is
configured to allow the user to temporarily activate and deactivate one or
more numbers contained in the plurality of contact numbers. The Examiner
states that the combination of Cinema, Ram, and Straub fails to disclose or
suggest this feature (RAN).
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Requester argues that “Ram and CINEMA both teach SIP-based one
number systems” and that “[i]t would have been obvious to one of ordinary
skill in the art to combine Ram with CINEMA and Straub” (3PR App. Br.
31). However, Requester does not persuasively demonstrate error in the
Examiner’s finding that Ram, Cinema, and/or Straub fails to disclose or
suggest temporarily activating and deactivating one or more numbers
contained in the plurality of contact numbers.
The Examiner did not err in refusing to adopt the rejection of claim 12
as obvious over Cinema, Ram, and Straub.

Cinema and airBand – Claims 42 and 43
Claim 43
The Examiner states that Requester has failed to demonstrate “how
airBand met the limitations set forth in [claim 5] as a primary reference” and
that it “would not have been proper to propose a rejection to claim 5 over
airBand since this would be a new ground of rejection” (RAN 113).
The Examiner adopts the rejection of claim 5 (from which claim 43
depends) as anticipated by Cinema (ACP 9, 12, 15-18). Patent Owner does
not provide persuasive arguments in support of claim 5 over Cinema.
Instead, Patent Owner cancels claim 5 (Patent Owner Response to Action
Closing Prosecution, dated April 11, 2011, at 1 and 4). Hence, the Examiner
finds (and Patent Owner does not refute) that Cinema discloses each and
every limitation of claim 5 (from which claim 43 depends). Therefore, we
disagree that Requester’s alleged failure to demonstrate how airBand
discloses each of the limitations of claim 5 bears relevance to the question of
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whether the combination of Cinema and airBand discloses or suggests the
features recited in claim 5 (or claim 43, which depends from claim 5).
To the extent that the Examiner refuses to adopt the rejection of claim
43 as obvious over airBand and Cinema (but would adopt the rejection of
claim 43 as obvious over Cinema and airBand), the Requester argues that the
order in which the references are listed in a stated rejection “is irrelevant
when evaluating a utility patent” (3PR App. Br. 34, citing In re Bush, 296
F.2d 491, 496 (CCPA 1961) and In re Keller, 642 F.2d 413, 425 (CCPA
1981). The Examiner and Patent Owner do not persuasively refute
Requester’s contention. Therefore, we agree with the Requester.
The Examiner erred in refusing to adopt the rejection of claim 43 as
obvious over the combination of Cinema and airBand.
Reversal of the Examiner’s confirmation of claim 43 based on Cinema
and airBand renders it unnecessary to reach the propriety of the Examiner’s
decision not to reject claim 43 on a different basis. Cf. In re Gleave, 560
F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need not reach the propriety
of the Examiner’s confirmation of claim 43 over Cinema and Tekelec.

Claim 42
Claim 42 depends from claim 1 and recites a call routing server that
receives a call via an Internet based network and a call processing server that
is connected with the call routing server by the Internet based network and
receives the call from the call routing server. As described above and by the
Examiner, Requester has not adequately demonstrated that Cinema discloses
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this feature or that airBand cures the deficiencies of Cinema (3PR App. Br.
47-48).
The Examiner did not err in refusing to adopt the rejection of claim 42
over Cinema and airBand.

Cinema, Tekelec, and airBand - Claims 1, 2, and 4
The Examiner states that the combination of Cinema, Tekelec, and
airBand fails to disclose or suggest “a plurality of contact numbers that can
be identified as being deactivated or activated” (RAN 109). For at least the
previously stated reasons, we agree with the Examiner that Cinema fails to
disclose or suggest deactivated contact numbers. The Requester does not
sufficiently demonstrate that Tekelec and/or airBand cure the deficiencies of
Cinema (3PR App. Br. 46-47).
The Examiner did not err in refusing to adopt the rejection of claims
1, 2, and 4 as obvious over Cinema, Tekelec, and airBand.

Hariri, Cinema, and Straub - Claim 13
Claim 13 recites a call routing server receiving an incoming call over
an Internet-based network and a server receiving the incoming call
forwarded by the call routing server over the Internet-based network. As
described above and by the Examiner (RAN 93-94), Cinema fails to disclose
this feature. Requester does not sufficiently demonstrate that Hariri and/or
Straub cure the deficiencies of Cinema (3PR App. Br. 44-45).
The Examiner did not err in refusing to adopt the rejection of claim 13
as obvious over Cinema, Hariri, and Straub.
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CONCLUSION
The Examiner did not err in refusing to reject claims 2, 3, 13, 14, 28-
40, and 42. The Examiner erred in refusing to reject claims 1, 4, 10, 12, 16-
19, 21-27, 41, and 43.
DECISION
We affirm the Examiner’s decision not to reject claims 1-4, 14, and
28-35 under 35 U.S.C. § 102(b) as anticipated by Cinema; claim 12 under
35 U.S.C. § 103(a) as unpatentable over Cinema, Ram, and Straub; claim 42
under 35 U.S.C. § 103(a) as unpatentable over Cinema and airBand; claims
36, 37, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over Cinema
and Hakusui; claim 38 under 35 U.S.C. § 103(a) as unpatentable over
Cinema, Hakusui, and Singh; and claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Cinema, Hariri, and Straub.
We reverse the Examiner’s decision not to reject claims 10 and 12
under 35 U.S.C. § 102(b) as anticipated by Hariri; claims 1 and 4 under 35
U.S.C. § 102(b) as anticipated by Hakusui; claims 10 and 41 under 35
U.S.C. § 102(b) as anticipated by Cinema; claims 16-19 under 35 U.S.C.
§ 103(a) as unpatentable over Cinema and Ram; claim 43 under 35 U.S.C.
§ 103(a) as unpatentable over Cinema and airBand; and claims 21-27 under
35 U.S.C. § 103(a) as unpatentable over Cinema and Hakusui.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes
a new ground of rejection. Section 41.77(b) provides that “a new ground of
rejection . . . shall not be considered final for judicial review.” That section
also provides that Patent Owner, WITHIN ONE MONTH FROM THE
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DATE OF THE DECISION, must exercise one of the following two options
with respect to the new grounds of rejection to avoid termination of the
appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
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2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
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.

AFFIRMED-IN-PART
37 C.F.R. 41.77

peb

THIRD PARTY REQUESTER:

Christine H. Mccarthy
Richard B. Lazarus
Barnes & Thornburg LLP
1717 Pennsylvania Ave NW.
Suite 500
Washington, Dc 20006-4623

PATENT OWNER:

Dean E. Mcconnell, Esquire
Krieg DeVault
One Indiana Square, Suite 2800
Indianapolis, Indiana 46204-2079