Ex Parte Countryman et al

Board of Patent Appeals and Interferences

Jun 14, 2004

09533805 (B.P.A.I. Jun. 14, 2004)

The opinion in support of the decision being entered
today was not written for publication and
is not binding precedent of the Board.
Paper No. 20

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ELIZABETH COUNTRYMAN, TIMOTHY J. LORELLO,
MARK TITUS AND DARA UNG
_____________
Appeal No. 2003-0330
Application No. 09/533,805
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and BLANKENSHIP, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-38, which
constituted all the claims in the application. A first amendment
after final rejection was filed on January 9, 2002 and was
entered by the examiner. This amendment cancelled claims 3, 15,
24 and 33. A second amendment after final rejection was filed on
Appeal No. 2003-0330
Application No. 09/533,805
2
June 6, 2002 and was also entered by the examiner. Accordingly,
this appeal is directed to the rejection of claims 1, 2, 4-14,
16-23, 25-32 and 34-38.
The disclosed invention pertains to a method and
apparatus for managing a call between an originator and a
destination in a telecommunication network. More particularly,
the invention relates to prepaid telephone calls, and the
invention routes call signaling, but not the call itself, to a
service control point if the call is associated with a prepaid
service.
Representative claim 1 is reproduced as follows:
1. A method of managing a call between an
originator and a destination in a telecommunications
network, comprising:
receiving a call initiation from an originator;
determining one of a plurality of service types
associated with a call relating to said call
initiation;
routing call signaling and not said call itself to
a service control point if said service type is a
prepaid service type, said service control point having
a database of profiles of a plurality of subscribers in
a telecommunications network; and
establishing a communication link between said
originator and said destination.
Appeal No. 2003-0330
Application No. 09/533,805
3
The examiner relies on the following references:
Donovan et al. (Donovan) 6,075,982 June 13, 2000
(filed Sep. 23, 1997)
Granberg 6,195,543 Feb. 27, 2001
(filed June 01, 1998)
Claims 1, 2, 4-14, 16-23, 25-32 and 34-38 stand rejected
under 35 U.S.C. § 103(a). As evidence of obviousness the
examiner offers Donovan in view of Granberg.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellants’
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
Appeal No. 2003-0330
Application No. 09/533,805
4
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in the
claims on appeal. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert. denied, 488
U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys.,
Appeal No. 2003-0330
Application No. 09/533,805
5
Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a prima
facie case of obviousness. Note In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). If that burden is
met, the burden then shifts to the applicant to overcome the
prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the
relative persuasiveness of the arguments. See Id.; In re Hedges,
783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976). Only those arguments actually made by appellants
have been considered in this decision. Arguments which
appellants could have made but chose not to make in the brief
have not been considered and are deemed to be waived by
appellants [see 37 CFR § 1.192(a)].
With respect to independent claims 1, 13, 23 and 32, the
examiner essentially finds that Donovan teaches the claimed
invention except that Donovan does not specifically disclose
Appeal No. 2003-0330
Application No. 09/533,805
6
routing call signaling and not the call itself to a service
control point. The examiner notes that the prepaid platform in
Donovan inherently could be a service control point. The
examiner cites Granberg as teaching a system which routes call
signaling and not the call itself to a service control point.
The examiner finds that it would have been obvious to the artisan
to modify Donovan to route the call signaling and not the call
itself to a service control point as taught by Granberg [answer,
pages 3-4].
Although appellants nominally assert that independent
claims 1, 13, 23 and 32 stand or fall separately, appellants make
the identical arguments for each of these claims so that we will
consider them together. Appellants argue that Donovan and
Granberg relate to two entirely different systems, and the
artisan would not have been motivated to combine Donovan and
Granberg for this reason. Appellants also argue that neither
Donovan nor Granberg involves a Signal Transfer Point (STP) as
the claimed invention does. Appellants also argue that neither
Donovan nor Granberg teaches routing call signaling and not the
call itself to a service control point for prepaid calls [brief,
pages 4-7].
Appeal No. 2003-0330
Application No. 09/533,805
7
The examiner responds that although Donovan implies that
both the call signaling and the call itself are routed through
the prepaid platform, Donovan also indicates the need to send
call signaling only in order to save funds on setting up
telephone line infrastructure. The examiner also asserts that
prepaid calling is a type of service like call forwarding and
call waiting which are taught by Granberg. The examiner also
disputes appellants’ contention that the teachings of Donovan and
Granberg cannot be combined because they relate to different
systems [answer, pages 7-11].
Appellants respond that the examiner is incorrect in
asserting that Donovan suggests a need to send call signaling and
not the call itself because Donovan specifically routes both the
call signaling and the call itself to the prepaid platform.
Appellants also dispute the examiner’s unsupported contention
that prepaid calls are similar to types of service such as call
waiting and call forwarding. Appellants argue that there is no
teaching that the SCP of Granberg can be used for prepaid calls
[reply brief, pages 1-3].
Appeal No. 2003-0330
Application No. 09/533,805
8
We will not sustain the examiner’s rejection of
independent claims 1, 13, 23 or 32 or of any of the claims which
depend therefrom for essentially the reasons argued by appellants
in the briefs. Although we agree with the examiner that the
teachings of Donovan and Granberg are combinable for at least
some purposes, we agree with appellants that the combined
teachings fail to support the examiner’s rejection. Most
importantly, the examiner’s finding that prepaid calls can be
routed through the SCP of Granberg is unsupported by the
reference. The examiner simply equates prepaid calling with call
forwarding and call waiting although there is nothing in Granberg
which supports this assertion. There is nothing in Granberg
which suggests that the supplementary services, such as call
waiting, call forwarding and call barring, can include a service
such as prepaid calls. Appellants argue that the SCP of Granberg
does not apply to prepaid calling. On this record, there is no
evidence to support the examiner’s assertion that the prepaid
calls of Donovan can be routed in the claimed manner by using
SCPs as taught by Granberg. Although the collective teachings of
Donovan and Granberg suggest that in some cases call signaling
Appeal No. 2003-0330
Application No. 09/533,805
9
and not the call itself can be routed to an SCP, there is no
teaching within these references that prepaid calls can be routed
in this manner.
With respect to independent claims 37 and 38, the
examiner finds that Donovan teaches determining whether a call
requires one of a prepaid call service or postpaid call service
based on Translation Type mapping capability of at least one of a
Signaling Control Connection Part (SCCP) layer of Signaling
System 7 (SS7) and SS7 User Part (ISUP) messaging [answer, pages
5-6]. Appellants argue that Donovan and Granberg both fail to
teach determination of a service type, e.g., either a prepaid
call service type or postpaid call service type, based on
Translation Type mapping or Translation Type capability [brief,
pages 13-14]. The examiner responds that Donovan uses the same
standards disclosed by appellants [answer, pages 13-14].
Appellants respond that Donovan fails to teach how the
determination is made as to what the service type is. Appellants
argue that nowhere does Donovan teach determining a service type
based on Translation Type mapping or Translation Type capability
[reply brief, page 3].
Appeal No. 2003-0330
Application No. 09/533,805
10
We will not sustain the examiner’s rejection of claims 37
and 38 for the reasons argued by appellants in the briefs. The
applied prior art references say nothing about making service
type determinations based on Translation Type mapping capability.
The examiner simply states that “Donovan in view of Granberg
shows determining if the call is one of a prepaid type and a
postpaid type based on Translation Type mapping capability of at
least one of a Signaling Control Connection Point (SCCP) layer of
Signaling System 7 (SS7) and SS7 User Part (ISUP) messaging
[answer, pages 13-14]. We have carefully reviewed the applied
references, but we can find nothing in these references which
supports the examiner’s assertion. The examiner’s position is
tantamount to saying that Translation Type mapping capability is
inherent in the operation of Donovan. There is no evidence on
this record to support the examiner’s position. Obviousness
cannot be established on the examiner’s unsupported opinions.
Appellants argue that “Donovan fails to teach how the
determination is made as to what the service type is. Nowhere
does Donovan teach determining a service type based on
Translation Type mapping or Translation Type capability” [reply
brief, page 3]. Appellants’ position with respect to Donovan
Appeal No. 2003-0330
Application No. 09/533,805
11
appears to be correct. Therefore, on this record, we are unable
to sustain the examiner’s rejection of claims 37 and 38.
In summary, we have not sustained the examiner’s
rejection of any of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 1, 2, 4-14, 16-23,
25-32 and 34-38 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
JS/vsh
Appeal No. 2003-0330
Application No. 09/533,805
12
FARKAS & MANELLI PLLC
WIIIAM H. BOLLMAN
2000 M STREET N W
SUITE 700
WASHINGTON, DC 20036-3307