Ex Parte 7680256 et al

Patent Trial and Appeal Board

May 5, 2014

95001409 (P.T.A.B. May. 5, 2014)

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 05/06/2014
KRIEG DEVAULT LLP
ONE INDIANA SQUARE
SUITE 2800
INDIANAPOLIS, IN 46204-2079
EXAMINER
ESCALANTE, OVIDIO
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/06/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GOOGLE, INC.
Requester

v.

ONE NUMBER CORPORATION
Patent Owner

____________________

Appeal 2013-005028
Inter partes Reexamination Control No. 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 REQUEST FOR REHEARING
In papers filed December 13, 2013, Patent Owner requests a rehearing
under 37 C.F.R. § 41.79 from the Decision on Appeal of the Patent Trial and
Appeal Board, dated November 19, 2013. In the Decision, we reversed the
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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 (Decision 22).

Claims 10 and 12 – Hariri
Patent Owner argues that we overlooked and/or misapprehended the
fact that Hariri supposedly “does not teach „deactivating‟” (Req. Reh‟g. 6).
We disagree with Patent Owner for at least the reasons previously discussed
in the Decision (see, e.g., Decision 7-8).
Claim 10 (and claim 12), for example, recites a call processing server
configured to establish an initial communication session between the calling
terminal and the server. Patent Owner also argues that Hariri fails to
disclose “a system including a server” (Req. Reh‟g 7, citing PO Resp. Br. 3-
4, “Hariri‟s server does not make or establish any calls”). Requester
previously argued that Hariri discloses a call processing server configured to
establish an initial communication session between a calling terminal and
Hariri‟s server (Orig Req. at 115-116, citing Hariri at 4:58-65, 6:65-7:7, and
10:12-36), for example, a server providing “a greeting or other functionality
during that initial communication session” (id.).
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Hariri discloses “a voice response unit (VRU) . . . for receiving voice
signals . . . and converting them to textual information” (col. 4, ll. 63-65)
that is “programmed to prompt the caller to speak the email address and
indicate verbally the type of contact” (col. 7, ll. 1-3). In addition, Hariri
discloses that in the disclosed system, a “call[] can be initiated” (col. 10, l.
30). Patent Owner merely provides a general statement that Hariri
supposedly fails to disclose a system that includes a server, but does not
demonstrate persuasively specific differences between the system of Hariri
in which a server receives signals, converts the signals into a message, the
system initiating calls, and the claim feature of a server that is configured to
establish an initial communication session between the calling terminal and
the server.
We are not persuaded by Patent Owner‟s arguments.

Claims 1 and 4 – Hakusui
Patent Owner argues that Hakusui fails to disclose, “identifying
deactivated contact numbers” (Req. Reh‟g 7) because, according to Patent
Owner, Hakusui fails to disclose allowing, “a user to „visibly‟ recognize
which contact numbers are activated and which numbers are deactivated”
(Req. Reh‟g 8). Patent Owner further contends that the Specification
discloses an example in which “the user [is able] to visibly identify [a
number] as activated or deactivated” (Req. Reh‟g 8, citing Spec. at Fig. 5),
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and, presumably, claims 1 and 4 therefore require that identifying must
include the non-recited limitation of “visibly” identifying.
Based on Patent Owner‟s arguments, we are not persuaded that we
overlooked or misapprehended any points with respect to this issue for at
least the reasons previously discussed (see, e.g., Decision 8-9).
While Patent Owner argues that a specific limitation disclosed in a
single embodiment in the Specification should be imported into the claim
(i.e., “visibly” identifying rather than merely “identifying,” as recited in
claim 1), Patent Owner has not provided a persuasive rationale as to why
importing a single feature from one embodiment into the claim would be
appropriate in this instance. In any event, we note that even if we imported
the feature of “visibly” identifying into claim 1, Hariri discloses the display
of numbers on a pull-down menu and either selecting the number (i.e.,
“activating”) or setting to “none” (i.e., “deactivating”) (see, e.g., Decision 8-
9). Patent Owner does not demonstrate a sufficient difference between the
“visible” identification of Hariri (i.e., as numbers displayed in a pull-down
menu) and the selected feature from the single embodiment (i.e., “visibly”
identifying) that Patent Owner proposes should be imported into the claim.
We are not persuaded by Patent Owner‟s arguments.
Requester argues that Hakusui discloses the features recited in claim
4 (Original Request for Inter Partes Reexamination dated August 13, 2010,
at 68 and Ex. G), which depends from claim 1. The Examiner refused to
adopt Requester‟s proposed ground of rejection of claim 4 over Hakusui
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because, according to the Examiner, Hakusui fails to disclose that “numbers
are identified by the user as being deactivated” (RAN 98). Hence, the
Examiner refused to adopt the rejection of claim 4 as anticipated by Hakusui
for the same reasons as those set forth by the Examiner for claim 1. Patent
Owner argues that “the Opinion overlooks Requestor‟s waiver of this
argument [by Requester pertaining to the rejection of claim 4 as anticipated
by Hakusui]” (Req. Reh‟g 10) but does not demonstrate sufficiently that
Requester, in fact, waived the arguments as originally presented in the
original request for Inter Partes Reexamination dated August 13, 2010.
We are not persuaded by Patent Owner‟s arguments.

Claims 21-27 – Cinema and Hakusui
Regarding claims 21 and 24, Patent Owner argues that “Cinema does
not discuss a web browser based control panel that allows a user to designate
contact numbers as being either activated or deactivated” (Req. Reh‟g 19).
This argument was fully addressed in the Decision (see, e.g., Decision 16-
17). We are not persuaded by Patent Owner‟s argument.
Regarding claims 21 and 24, Patent Owner argues that “Hakusui does
not teach (i) adding a contact number not to be called or (ii) identifying such
as a deactivated contact number in its web based control panel” (Req. Reh‟g.
19). This argument was fully addressed in the Decision (see, e.g., Decision
8-9) and above. We are not persuaded by Patent Owner‟s argument.
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Patent Owner reiterates that the combination of Cinema and Hakusui
fails to disclose or suggest “activat[ing] and deactivat[ing] contact numbers
by way of a selection item” (Req. Reh‟g. 19). We disagree with Patent
Owner for at least the previously discussed reasons (see above and
Decision).
Claim 21 recites a web based control panel that allows a user to
activate and deactivate an option to forward a notification of voicemail
messages to a user designated email account. Patent Owner argues that
Cinema “discloses a web based voicemail/email interface” (Req. Reh‟g 20)
but that the combination of Cinema and Hakusui fails to disclose or suggest
“the ability to activate and deactivate this feature using the web-based
control panel” or “the option to allow the user [to] designate different email
accounts to which the notifications are sent via the web based control panel”
(claim 21) (Req. Reh‟g 20-21). As previously discussed, Hakusui discloses
identifying numbers as activated or deactivated via a web based control
panel. As Patent Owner points out, Cinema discloses a “web based
voicemail/email interface.” Patent Owner does not rebut Petitioner‟s
showing and the Board‟s finding that the combination of the known system
of identifying contact numbers as activated or deactivated in a web-based
control panel (e.g., Hakusui) with the known system of contact information
(i.e., voicemail and email information) in the web based interface would not
have resulted in the mere predictable result of contact information, including
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voicemail or email information (e.g., Cinema), in a web-based control panel
(in which data may be activated or deactivated – Hakusui).
Claim 21 recites that the web based control panel allows a user to
change a personal identification code and to activate and deactivate a do-not-
disturb option. Similarly, claim 27 recites a web based control panel that
allows a user to change a personal identification number and claim 26 recites
a web based control panel that allows a user to activate and deactivate a do
not disturb feature. Patent Owner argues that the combination of Cinema
and Hakusui fails to disclose or suggest a control panel “that allows the user
to change a personal identification code and to allow the user to temporarily
activate and deactivate a do not disturb option” (Req. Reh‟g. 21), as recited
in one or more of claims 21, 26, or 27. As Requester points out, however,
Cinema discloses an option permitting a user to change a personal
identification code (Requester Comments on Owner‟s Response and First
Office Action, dated January 21, 2011 (“3PR Comments”) at p. 36, citing
Cinema at 16) and an option selected by a user to indicate “don‟t disturb
me” (id. at p. 36, citing Cinema at 21). Patent Owner does not point out
sufficient differences between changing an identification code and a “do not
disturb” option as disclosed by Cinema and the corresponding disputed
claim limitations recited in claims 21, 26, or 27.
Claim 22 recites a web based control panel that allows a user to
activate and deactivate a call screening feature. Patent Owner argues that
the combination of Cinema and Hakusui fails to disclose or suggest this
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feature (Req. Reh‟g. 21). Requester argues that Cinema discloses a “do not
disturb” option that “can be implemented to screen calls” (3PR Comments at
p. 36, citing Cinema at 21). Patent Owner does not point out specific
differences between this disclosure of Cinema and the disputed claim
limitation.

Claim 43 – Cinema and airBand (or Cinema and Tekelec)
The Examiner previously determined that Cinema discloses each
limitation of claim 5, from which claim 43 depends (see, e.g., Decision 19,
citing ACP 9, 12, 15-18). Patent Owner did not previously dispute the
Examiner‟s determination.
Patent Owner now argues that the combination of Cinema and
airBand fails to disclose or suggest a control panel “to allow a user to
temporarily activate and deactivate contact numbers” (Req. Reh‟g 22).
Claim 5 (from which claim 43 depends) recites that the “web based control
panel is configured to allow said user to temporarily activate and deactivate
one or more numbers contained in said plurality of contact numbers.”
We agree with Patent Owner. As discussed in the Decision, we agree
with the Examiner that Cinema fails to disclose or suggest deactivated
contact numbers and that Requester has not sufficiently demonstrated that
airBand cures the deficiencies of Cinema (see, e.g., Decision 21 and 3PR
App. Br. 46-47). The Examiner also refuses to adopt the rejection of claim
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43 over Cinema and Tekelec (RAN 9). Because Requester also does not
demonstrate sufficiently that Tekelec cures the deficiencies of Cinema (see,
e.g., 3PR App. Br. 21, 33, citing Tekelec at 82), we affirm the Examiner‟s
decision not to adopt the proposed rejection of claim 43 as obvious over
Cinema and Tekelec.

Claims 10 and 41 –Cinema
Claims 16-19 – Cinema and Ram

Claim 41 recites a “web based control panel [that] is configured to
allow said user to temporarily activate and deactivate one or more numbers
contained in said plurality of contact numbers to identify each of said
plurality of contact numbers as an activated contact number or a deactivated
contact number.” Claims 10 and 16-19 depend from claim 5, which recites a
similar feature. As previously discussed above and in the Decision, we agree
that Cinema fails to disclose or suggest deactivating contact numbers (see
e.g., Decision 21). With respect to claims 16-19, Requester does not
demonstrate sufficiently that Ram cures the deficits of Cinema in this regard.
We affirm the Examiner‟s decision not to adopt the proposed rejection
of claims 10 and 41 as anticipated by Cinema and of claims 16-19 as
unpatentable over the combination of Cinema and Ram.

SUMMARY
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Inter partes Reexamination Control No. 95/001,409
US Patent 7,680,256 B2

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Patent Owner‟s arguments do not persuade us that our Decision has
misapprehended or overlooked any point of fact or law regarding the
reversal of the Examiner‟s refusal to adopt the rejection of 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; and claims 21-27 under 35
U.S.C. § 103(a) as unpatentable over Cinema and Hakusui. We decline to
modify the Decision with respect to these issues.
However, Patent Owner‟s Request for Rehearing is granted to the
extent that we affirm the Examiner‟s decision not to adopt the rejection of
claim 43 under 35 U.S.C. 103(a) as unpatentable over the combination of
Cinema and one of airBand or Tekelec; the rejection of claims 16-19 under
35 U.S.C. § 103(a) as unpatentable over Cinema and Ram; and the rejection
of claims 10 and 41 under 35 U.S.C. § 102(b) as anticipated by Cinema.

GRANTED-IN-PART

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Inter partes Reexamination Control No. 95/001,409
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alw

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