Ex Parte 5255309 et al

Board of Patent Appeals and Interferences

Sep 28, 2010

90007884 (B.P.A.I. Sep. 28, 2010)

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.
90/006,976 03/26/2004 5255309 6646-140BBRE 3472
35554 7590 09/28/2010
REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9229 SUNSET BOULEVARD
SUITE 630
LOS ANGELES, CA 90069
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2010 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
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.
90/007,092 06/18/2004 5255309 1321.43975REX 7125
35554 7590 09/28/2010
REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9229 SUNSET BOULEVARD
SUITE 630
LOS ANGELES, CA 90069
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2010 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
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.
90/007,884 01/20/2006 5255309 6646-140BB, -150B, -180 3879
35554 7590 09/28/2010
REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9229 SUNSET BOULEVARD
SUITE 630
LOS ANGELES, CA 90069
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD A. KATZ TECHNOLOGY LICENSING L.P.
Appellant
____________
Appeal 2009-009808
Reexamination Control Nos. 90/006,976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309
Technology Center 3900
____________

Before KENNETH W. HAIRSTON, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009808
Reexamination Control Nos. 90/006,976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

2
This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 1-10, 12-22, 31, 36, 38-40, 57 and 58. The Examiner has
confirmed the patentability of claims 11, 23-30, 32-35, 37 and 41-56. We
have jurisdiction under §§ 134(b) and 306.
An oral hearing was held on July 22, 2009. The record includes a
written transcript of the oral hearing.
We affirm-in-part.
STATEMENT OF THE CASE
Merged Reexamination Proceedings
The Director of the U.S. Patent and Trademark Office, on his own
initiative, ordered reexamination of U.S. Patent No. 5,255,309 (the ‘309
patent) on March 26, 2004, Reexamination Control No. 90/006,976, for
reexamination of claim 23. A second request for ex parte reexamination was
filed on June 18, 2004, on behalf of an anonymous third party requester by
Donald E. Stout of Antonelli, Terry, Stout & Kraus, LLP, Reexamination
Control No. 90/007,092, for claims 23, 31-33, 36, 38-41, 43-46, 53 and 57.
A third request for ex parte reexamination was filed on January 20, 2006, on
behalf of an anonymous third party requester by Donald E. Stout,
Reexamination Control No. 90/007,884, for claims 1-58. The reexamination
proceedings have been merged.
The ‘309 patent, entitled “Telephonic-Interface Statistical Analysis
System,” issued October 19, 1993, to Ronald A. Katz, is said to be a division
of Application No. 07/640,337 (the ‘337 application), filed January 11,
Appeal 2009-009808
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90/007,884 (merged)
U.S. Patent No. 5,255,309

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1991, which is said to be a continuation of Application No. 07/335,923, filed
April 10, 1989, which is said to be a continuation of Application No.
07/194,258, filed May 16, 1988, now U.S. Patent No. 4,845,739, issued
July 4, 1989, which is said to be a continuation-in-part of Application No.
07/018,244, filed February 24, 1987, now U.S. Patent No. 4,792,968, issued
December 20, 1988, which is said to be a continuation-in-part of Application
No. 06/753,299, filed July 10, 1985, now abandoned.
The ‘309 patent is said to be assigned to Ronald A. Katz Technology
Licensing L.P., said to be the real party in interest. The ‘309 patent is said to
have an expiration date of December 20, 2005 by virtue of a terminal
disclaimer. (App. Br. 8.) Thus, the ‘309 patent is now expired.
Related Litigation
The ‘309 patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix. (App. Br. 116-129.)
Appellant’s Invention
Appellant’s invention relates to a telephonic-interface statistical
analysis system including a multiplicity of individual terminals of a
communications facility (Abstract; col. 4, ll. 25-26), processing systems and
an associated series of automatic call distributors (col. 4, ll. 25-28; fig. 1).
The communications facility is connected to the processing systems through
the automatic call distributors. (Col. 4, ll. 25-28.) The processing systems
include an interface with dialed number identification service (DNIS),
automatic number identification (ANI), capability and voice interface
capabilities. (Col. 4, ll. 59-62.) The processing system can include a
Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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qualification unit (col. 10, ll. 29-30; fig. 4) for screening callers (col. 5,
ll. 25-26) and a designation unit (col. 10, ll. 31-32; fig. 4) for designating
callers by significance and identification (col. 5, ll. 35-54). The processing
system can also be interconnected to an audio unit. (Col. 4, ll. 45-48.)
Callers using the individual terminals are prompted by voice-generated
instructions to provide digital data that are stored for processing. (Abstract.)

The Claims
Independent claims 1, 31 and 57 are exemplary and reproduced
below:

1. A controlled interface system for use with a telephonic
communication facility including remote terminals for individual
callers, wherein said remote terminals may comprise a conventional
telephone instrument, and wherein said telephone communication
facility may provide called terminal DNIS signals, said controlled
interface system comprising:
function unit means for supplying information of various
formats, at least one of said formats being associated with an audio of
a broadcast;
interface means for interfacing said telephonic communication
facility with said function unit means for voice and digital
communication including means to receive terminal formed digital
signals and means to provide signals representative of vocal
communication to individual callers; and
coupling means for coupling a caller at a terminal through said
interface means to said function unit means for selective
communication in accordance with a specific one of said formats
under control of said called terminal DNIS signals.

Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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31. An analysis control system for use with a communication
facility 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, said analysis control system comprising:
an interface structure coupled to said communication facility to
interface each of 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;
voice generator structure coupled through said interface
structure for actuating each of said remote terminals as to provide
vocal operating instructions to each of said individual callers;
record structure, including memory and control means,
connected to receive said caller data signals from said interface
structure for initiating a file and storing digital caller data relating to
said individual callers provided from said digital input means through
said interface structure; and
designation structure coupled to said interface structure and said
record structure for developing individual designations for said
individual callers, indicative of caller significance, and storing said
designations in said record structure.

57. 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, and
wherein said facility may provide called terminal DNIS signals, said
analysis control system comprising:
an 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;
Appeal 2009-009808
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U.S. Patent No. 5,255,309

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voice generator structure coupled through said interface
structure for actuating said remote terminals as to provide vocal
operating instructions to said individual callers;
record structure, including memory and control means,
connected to receive said caller data signals from said interface
structure for addressing a file and storing digital data relating to said
individual callers provided from said digital input means through said
interface structure to store representations indicative of the calling
order sequence of said individual callers and other data provided by
said individual callers; and
qualification structure controlled by said record structure for
restricting the extent of access to said system by said individual
callers to a one time only use.

The Rejections
Claims 1-6, 13, 15-19, 21 and 22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Moosemiller (John P. Moosemiller, AT&T’s
Conversant TM I Voice System, SPEECH TECH. 88-93 (1986)).
Claims 1-6, 9, 13, 15-19, 21 and 22 stand rejected under § 103(a) as
being obvious over Moosemiller and Bruns (Don Bruns, Agency Service
Review: Phone System Cross-Sells Customers, NAT’L UNDERWRITER,
Oct. 26, 1987, at 38).
Claims 1-6, 13, 15-19, 21 and 22 stand rejected under § 103(a) as
being obvious over Moosemiller and Galaxy (Rockwell International,
Galaxy Switching Products Integrated Switching System (ISS) Call
Processing Functional Description, Aug. 1984, at 1-44).
Claims 1-6, 9, 10, 13, 15-19, 21 and 22 stand rejected under § 103(a)
as being obvious over Moosemiller and Kempner (U.S. Patent 4,451,700).
Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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Claims 1-10, 13 and 15-22 stand rejected under § 103(a) as being
obvious over Moosemiller and Whalen (Bernie Whalen, Marketers Expand
Applications of Dial-It 900 Technology, MARKETING NEWS, Nov. 26, 1982,
at 23).
Claims 1-6, 9, 12, 13, 15-19 and 22 stand rejected under § 103(a) as
being obvious over Moosemiller and Lazarus (George Lazarus, Pepsi Also
Won the Super Bowl, CHI. TRI., Jan. 30, 1987, at 4).
Claim 14 stands rejected under § 103(a) as being obvious over
Moosemiller and Norris (Eileen Norris, Phone Offers Action at Push of
Button, ADVERTISING AGE, Feb. 6, 1986, at 29-30), or obvious over
Moosemiller, either Bruns, Kempner or Whelan, and further in view of
Norris.
Claims 31, 36, 38 and 57 stand rejected under 35 U.S.C. § 103(a) as
being obvious over De Bruyn (Canadian Patent 1,162,336) and Yoshizawa
(Kanichiro Yoshizawa et al., Voice Response System for Telephone Betting,
26 HITACHI REV. 215-220 (1977)).
Claims 39 and 40 stand rejected under 35 U.S.C. § 103(a) as being
obvious over De Bruyn, Yoshizawa and St. Jean (U.S. Patent 3,702,392).
Claims 57 and 58 stand rejected under 35 U.S.C. § 103(a) as being
obvious over De Bruyn, Yoshizawa and Moosemiller.
Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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Appellant relied upon the following2 in rebuttal to the Examiner’s
rejection:
Declaration under 37 C.F.R. § 1.132 of Todd Christensen, dated
November 23, 2005 (“Christensen Declaration” or “Christensen
Decl.”) (Exhibit A).
Declaration under 37 C.F.R. § 1.132 of Cheryl Bacon, dated
November 23, 2005 (“Bacon Declaration” or “Bacon Decl.”)
(Exhibit B).
Declaration under 37 C.F.R. § 1.132 of Joel Krauss, dated May 26,
2006 (“First Krauss Declaration” or “First Krauss Decl.”)
accompanying Market Strategy Group, LLC, Investigation of the
Interactive Voice Response Industry and Use of its Technical and
Functional Capabilities, In Various Applications Including
Prescription Refill Applications (May 2006) (“IVR Report”).
Declaration under 37 C.F.R. § 1.132 of Joel Krauss, dated
November 28, 2006 (“Second Krauss Declaration” or “Second Krauss
Decl.”)
Statements by Financial Industry Leaders (“Industry Statements”)
(App. Br. 91-92).
Declaration under 37 C.F.R. § 1.132 of Jerry A. Klein, dated May 30,
2006 (“Klein Declaration” or “Klein Decl.”).
Declaration under 37 C.F.R. § 1.132 of Jerry A. Klein, dated
November 29, 2006 (“Supp. Klein Declaration” or “Supp. Klein
Decl.”).

2 This opinion only addresses arguments made by Appellant. Arguments
not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). We have
considered the declaration evidence to the extent raised by Appellant’s
arguments.

Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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ISSUES
§ 102 Rejection - Moosemiller
Appellant argues that Moosemiller does not teach “at least one of said
formats being associated with an audio of a broadcast,” as recited in claims 1
and 22. (App. Br. 24-35; see also Reply Br. 11-16.) In particular, Appellant
argues that the Examiner improperly construed the claim term “an audio of a
broadcast” by not requiring it to be external to a “function unit means” and,
under the proper construction, Moosemiller does not disclose an audio of a
broadcast. (App. Br. 28-35.)
Appellant’s arguments present the following issue:
Has the Examiner erred in finding that Moosemiller teaches “an audio
of a broadcast”?
§ 103 Rejection – Moosemiller/Bruns
Appellant argues that the combination of Moosemiller and Bruns does
not teach or suggest “at least one of said formats being associated with an
audio of a broadcast.” (App. Br. 38-40; see also Reply Br. 17-20) In
particular, Appellant argues that “with the correct interpretation of ‘audio of
a broadcast,’ Moosemiller does not meet the specific recitation in claims 1
and 22 of ‘at least one of the formats being associated with an audio of a
broadcast’” and “Bruns also does not disclose a ‘broadcast’ through a source
external to an automated interface system (IVR system), with which callers
interact.” (App. Br. 39.)
Appeal 2009-009808
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Appellant’s arguments present the following issue:
Has the Examiner erred in finding that the combination of
Moosemiller and Bruns teaches or suggests “at least one of said formats
being associated with an audio of a broadcast”?
§ 103 Rejection – Moosemiller/Galaxy
Appellant argues that the combination of Moosemiller and Galaxy
does not teach or suggest “at least one of said formats being associated with
an audio of a broadcast.” (App. Br. 40-41; see also Reply Br. 21-22.) In
particular, Appellant argues that “with the correct interpretation of ‘audio of
a broadcast,’ Moosemiller does not meet the specific recitation in claims 1
and 22 of ‘at least one of the formats being associated with an audio of a
broadcast’” (App. Br. 40; Reply Br. 21) and “Galaxy does not disclose a
‘broadcast’ through a source external to an automated interface system (IVR
system)” (App. Br. 41; Reply Br. 22).
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. Br. 56-68,
91-92.)
Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of
Moosemiller and Galaxy teaches or suggests “at least one of said formats
being associated with an audio of a broadcast”?
2. Has the Examiner properly considered Appellant’s evidence of
commercial success?
Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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§ 103 Rejection – Moosemiller/Kempner
Appellant argues that the combination of Moosemiller and Kempner
does not teach or suggest “at least one of said formats being associated with
an audio of a broadcast.” (App. Br. 41-43; see also Reply Br. 23-28.) In
particular, Appellant argues that “with the correct interpretation of ‘audio of
a broadcast,’ Moosemiller does not meet the specific recitation in claims 1
and 22 of ‘at least one of the formats being associated with an audio of a
broadcast.’” (App. Br. 42-43.)
Appellant also argues that “it would not be obvious to combine the
[Moosemiller and Kempner] references as the Examiner suggests” and
points to an “expert declaration” as evidence (App. Br. 43) and that “[a]ny
effort to merge Kempner with Moosemiller would require a change in the
principal operation of Moosemiller” (Reply Br. 24).
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. Br. 56-68,
91-92.)
Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of
Moosemiller and Kempner teaches or suggests “at least one of said formats
being associated with an audio of a broadcast”?
2. Has the Examiner erred by improperly combining Moosemiller and
Kempner?
3. Has the Examiner properly considered Appellant’s evidence of
commercial success?
Appeal 2009-009808
Reexamination Control Nos. 90/006976, 90/007,092 and
90/007,884 (merged)
U.S. Patent No. 5,255,309

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§ 103 Rejection – Moosemiller/Whalen
Appellant argues that the combination of Moosemiller and Whalen
does not teach or suggest a “means to receive terminal formed digital signals
and means to provide signals representative of vocal communication to
individual callers.” (App. Br. 43-45; see also Reply Br. 28-30.) In
particular, Appellant argues that “Whalen describes passive systems” and
thus does not teach or suggest a “means to receive terminal formed digital
signals and means to provide signals representative of vocal communication
to individual callers.” (App. Br. 44; Reply Br. 29.)
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. 56-68,
91-92.)
1. Has the Examiner erred in finding that the combination of
Moosemiller and Whalen teaches or suggests a “means to receive terminal
formed digital signals and means to provide signals representative of vocal
communication to individual callers”?
2. Has the Examiner properly considered Appellant’s evidence of
commercial success?
§ 103 Rejection – Moosemiller/Lazarus
Appellant argues that the combination of Moosemiller and Lazarus
does not teach or suggest “at least one of said formats being associated with
an audio of a broadcast.” (App. Br. 45; see also Reply Br. 30-32.) In
particular, Appellant argues that “even if Lazarus’ suggestion of a ‘telecast’
broadcast is combined with Moosemiller, there is no teaching in
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Moosemiller of an external device (separate from the voice generator of the
IVR) that would suggest that a telecast broadcast would be desirable.”
(App. Br. 45.)
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. Br. 56-68,
91-92.)
Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of
Moosemiller and Lazarus teaches or suggests “at least one of said formats
being associated with an audio of a broadcast”?
2. Has the Examiner properly considered Appellant’s evidence of
commercial success?
§ 103 Rejection – Moosemiller/Bruns, Kempner or Whalen/Norris
With respect to dependent claim 14, Appellant argues that the
combination of Moosemiller and Norris or the combination of Moosemiller,
either Bruns, Kempner or Whalen, and Norris does not teach or suggest
“wherein a consumable key test restricts access by callers to a single use.”
(Reply Br. 46; see also Reply Br. 32-33.)
Appellant’s arguments present the following issue:
Has the Examiner erred in finding that the combination of
Moosemiller and Norris or the combination of Moosemiller, either Bruns,
Kempner or Whalen, and Norris teaches or suggests “wherein a consumable
key test restricts access by callers to a single use”?
Appeal 2009-009808
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90/007,884 (merged)
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§ 103 Rejection – De Bruyn/Yoshizawa
With respect to independent claim 31, Appellant argues that the
combination of De Bruyn and Yoshizawa does not teach or suggest a
“designation structure . . . for developing individual designations for said
individual callers, indicative of caller significance, and storing said
designations in said record structure.” (App. Br. 46-49; see also Reply
Br. 35-39.) Independent claims 36 and 38 recite similar limitations.
With respect to independent claim 31, Appellant also argues that the
combination of De Bruyn and Yoshizawa does not teach or suggest a
“record structure . . . for initiating a file.” (App. Br. 49.) Independent
claims 36 and 38 recite similar limitations.
With respect to independent claims 31, 36, 39 and 57, Appellant
further argues that the combination of De Bruyn and Yoshizawa does not
teach or suggest “[a]n analysis control system.” (Reply Br. 34.)
With respect to independent claim 57, Appellant argues that the
combination of De Bruyn and Yoshizawa does not teach or suggest a
“qualification structure controlled by said record structure for restricting the
extent of access to said system by said individual callers to a one time only
use.” (App. Br. 49; see also Reply Br. 40.) In particular, Appellant argues
that the Examiner improperly construed the claim term “only.” (App.
Br. 49; see also Reply Br. 40.)
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. Br. 56-68,
91-92.)
Appeal 2009-009808
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90/007,884 (merged)
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Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of
De Bruyn and Yoshizawa teaches or suggests a “designation structure . . .
for developing individual designations for said individual callers, indicative
of caller significance, and storing said designations in said record structure”?
2. Has the Examiner erred in finding that the combination of
De Bruyn and Yoshizawa teaches or suggests a “record structure . . . for
initiating a file”?
3. Has the Examiner erred in finding that the combination of
De Bruyn and Yoshizawa teaches or suggests “[a]n analysis control
system”?
4. Has the Examiner erred in finding that the combination of
De Bruyn and Yoshizawa teaches or suggests a “qualification structure
controlled by said record structure for restricting the extent of access to said
system by said individual callers to a one time only use”?
5. Has the Examiner properly considered Appellant’s evidence of
commercial success?
FINDINGS OF FACT
Moosemiller
1. Moosemiller relates to the AT&T CONVERSANT™ I Voice System,
“a voice response and speech recognition product for the growing
market of automated information services” that “accesses data bases
via the public telephone network.” (P. 88, col. 1, ¶ 1.) The system
can be used with both rotary and touch-tone phones. (P. 88, col. 1,
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¶ 1.) Applications for Moosemiller’s IVR (interactive voice response)
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, col. 1), and “stock quotations, catalog ordering, airline
reservations, dial-it information menus, caller destination control, and
telephone banking” (p. 92, col. 1).
2. The CONVERSANT™ I Voice System includes a system controller,
a voice switch (p. 88, col. 2, ¶ 2; fig. 1), speech subsystems (p. 88,
col. 2, ¶ 2), voice response units (p. 88, col. 3, ¶ 1; fig. 1) and many
common trunk interfaces (p. 88, col. 3, ¶ 2; fig. 1). The speech
subsystems are connected to the system controller by a General
Purpose Interface Bus (GPIB). (P. 88, col. 2, ¶ 2.)
3. The “voice switch supports the bridging of speech units [also referred
to as a Voice Response Unit (see e.g., fig. 1)] to each incoming voice
channel.” (P. 88, col. 2, ¶ 3.) “One-to-may connections are possible”
between the speech units incoming voice channel. (P. 88, col. 2, ¶ 3.)
In one example, after the trunk interface answers a call, a voice
greeting prompts a user to a dial “1” tone input. (P. 88, col. 3, ¶ 5;
fig. 1, “Connd Digit Recognizers.”) If no tone signal is detected, the
voice switch activates and “the voice response unit . . . generates
prompts and the speech recognizer . . . accepts the user’s voice
commands.” (P. 89, col. 1, ¶ 1; fig. 1, “Voice Response Unit.”)
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4. For advanced classification of incoming calls to their appropriate
greeting, a Dialed Number Identification Service (DNIS) can be used
with a Direct Inward Dialing (DID) trunk interface to receive dialed
digits as part of the call setup protocol. (P. 88, col. 3, ¶ 2.) “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 for multiple-user
applications.” (P. 88, col. 3, ¶ 2.)
De Bruyn
5. De Bruyn relates to “a device for permitting the use of the telephone
for immediately entering a gambling stake, right up to a short time
before the drawing of the winning numbers, on the Lotto or on any
other authorized game of chance.” (P. 1, ll. 1-5.) A telephone set 1 is
connected to a local telephone exchange 2 and a main exchange 3
which is “used for international telephone traffic and to which is
connected the entire Lotto computer device described hereinafter.”
(P. 3, ll. 5-7; fig.)
6. The main exchange 3 is connected to a “Lotto computer device” that
“may consist of several groups of electronic apparatus assembled in
the same manner, each group of which is intended for the processing
of a specific language and shall preferably be connected to the same
central computer 4.” (P. 3, ll. 4-11.) The “groups of electronic
apparatus” includes a connection device 5 (p. 3, ll. 10-12), a PABX
apparatus 7, a telephone reply apparatus 8, a memory 9, an extra
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memory 10 (p. 3, l. 20 to p. 4, l. 2) and a scanning unit 12 (p. 4, ll. 8-
11). “A memory 9 is connected to each telephone line in order to
record the selected Lotto figures and the subscriber’s telephone
number.” (P. 3, ll. 26-28.)
7. “[T]he subscriber selects the telephone number which has been
awarded to the Lotto game, whereby he is automatically connected to
the Lotto computer device.” (P. 4, ll. 20-23.) If the phone number is
“attributed to a Dutch subscriber, the connection device 5 will switch
the subscriber to the group of Dutch language [devices].” (P. 4,
ll. 23-26.) The reply apparatus 8 conveys the following voice
message: “You are connected to the central computer of the national
Lotto. After hearing the first signal, please select your first chose
number by means of the selector device of your telephone set. After
each signal you select the following numbers, in arithmetic order.
After your last choice of numbers, the computer will repeat the chosen
numbers. Best of luck, and start now.” (P. 4, l. 28 to p. 5, l. 6.) The
memory 9 stores the telephone number and the Lotto numbers
selected by the subscriber. (P. 5, ll. 6-11.) Additionally, the extra
memory 10 is referenced to determine if “the phone number of the
subscriber has already been recorded for the current Lotto game”
(p. 5, ll. 11-14) drawn weekly (p. 5, ll. 14-19). If “the stake is
accepted, the information of memory 9 is transferred to the conversion
and reply apparatus 11, which converts the information to spoken
language and informs the telephone subscriber thereof, so that the
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latter can check whether the correct Lotto numbers have been
recorded.” (P. 5, ll. 22-26.)
8. After hanging up, “an impulse is transmitted to memory 9, which
passes on the subscriber’s number and the Lotto numbers to the
scanning unit 12 and to the central computer 4.” (P. 6, ll. 5-8; see also
p. 4, ll. 8-11.) The central computer 4 can “identify the subscriber and
charge him [for] the phone call and stake cost to his usual telephone
bill.” (P. 6, ll. 24-26.)
9. The subscriber’s number and Lotto number are recorded on a
magnetic tape (p. 6, ll. 5-8), which is sealed and stored away before
the drawing of the winning Lotto numbers (p. 7, ll. 3-7). After the
drawing, “the computer is programmed with the winning numbers and
the magnetic tape is then read in at high speed.” (P. 7, ll. 5-7.) The
computer identifies the winners by searching for “the number and the
value of the selected figures and the amount which is charged on the
telephone bill.” (P. 7, ll. 7-10.)
Bruns
10. Bruns teaches that “Hold It Systems is a marketing system that
connects to the music-on-hold feature in insurance agency phone
systems and helps cross-sell products to existing customers.”
(Abstract.)
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Galaxy
11. Galaxy relates to an integrated switching system (ISS) for call
processing including incoming analog telephone trunks, a computer-
controlled digital switch and voice services equipment. (P. 3, § 2.01;
fig. 1.) Consoles connected to the digital switch allow agents and
supervisors to answer or terminate incoming calls. (P. 4-5, § 2.09.)
Voice services equipment can provide service announcements or
record nuisance or emergency calls. (P. 4, § 2.07.) Program modules
stored in a computer “repetitively scan all incoming lines and all agent
sets and, based on the instantaneous condition of each, distribute calls
in a manner which optimizes and evenly distributes the work load of
the agent force.” (P. 3, § 2.01.)
12. The ISS includes an optional audio response unit option (ARU) that
“allows the ISS to handle routine transaction calls, such as credit card
verification, automatically without human interaction.” (P. 26,
§ 3.150.) Calls to the ARU are placed in a first-in-first-out queue.
(P. 26, § 3.152.) A delayed caller in the queue can be provided with
“[a]dditional voice services, such as music on hold and delay
announcements.” (P. 26, § 3.153.)
13. The ISS also includes a music option for callers “waiting for service
or have been placed on hold.” (P. 7, § 3.11.) “[T]he music option
requires a music source such as an FM tuner or tape player (customer-
supplied) and at least one music port.” (P. 7, § 3.13.)
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Kempner
14. Kempner relates to “the field of telephony, and more particularly, to
an automatic audience survey system.” (Col. 1, ll. 5-7.) In the
“Background of the Invention” section, Kempner describes that a
telephone-based audience survey systems can be used “to handle a
high caller volume at a relatively low cost in a manner which insures
wide audience acceptability and which provides highly reliable data.”
(Col. 1, ll. 18-22.) “Typically, the question of interest is broadcast via
the transmitter of a televison [sic] or radio station and individuals in
the station audience are invited to express their opinion in regard to
the matter by the use of their telephone sets.” (Col. 1, ll. 15-19.)
Kempner also states that as an alternative to a “survey . . . conducted
manually by operators” (col. 1, ll. 25-27) “it is desirable to provide an
automatic audience survey system which can be housed and
controlled in the television or radio station, which permits the
participants to call a single telephone number, which requires a
minimum of labor, and which is faster and far less costly than the
known automatic audience survey systems” (col. 1, ll. 31-37).
15. Kempner further describes an automatic audience survey system
housed at the radio or television station with equipment that holds an
incoming call in an off-hook condition, provides a voice-message that
queries a response to a pre-selected question, and recognizes the
response and provides data reflecting the responses in pre-selected
categories. (Col. 1, ll. 41-49.) As illustrated in Figure 1A, “[t]he
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automatic audience survey system 10 includes a microprocessor based
automatic telephone polling station 12 connected to a rotary-type
telephone exchange 14 via a plurality of telephone line interface
control subsystems 16.” (Col. 3, ll. 22-28.) “In operation, a
preselected media such as a television or radio station 30 transmits
over an aerial 32 a survey question and a single, pre-assigned
telephone number.” (Col. 3, ll. 40-42.) Figure 1A illustrates that the
television or radio station 30 is external to the automatic audience
survey system 10. “[T]he microprocessor-based poll station 12 is
operative to synthesize a voice message designated 56 to the
telephone tip and ring lines of the active telephone line interface
control subsystems.” (Col. 4, ll. 5-9.)
Whalen
16. Whalen describes a “Dial-It 900” technology that permits callers to
call a 900 number in which “[t]housands of callers can simultaneously
hear . . . [a] recorded message or express an opinion” for a flat fee.
(P. 23, col. 1, ¶ 4.) Whalen describes that the Dial-It 900 service can
be used for advertising (see, e.g., p. 23, col. 3, ¶ 4 to col. 5, ¶ 3) or
polling (see, e.g., p. 23, col. 2, ¶¶ 2-4). In one example, TV viewers
were asked to call a 900 number to voice an opinion during the
Reagan-Carter Presidential date. (P. 23, col. 2, ¶ 2.) In another
example, NBC-TV used Dial-It to conduct a poll for “Saturday Night
Live.” (P. 23, col. 2, ¶ 3.) In yet another example, sponsored by
NASA, callers used the Dial-It program “to listen to air-to-ground
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conversations during the space shuttle orbiter Columbia’s fourth
mission.” (P. 23, col. 2, ¶ 6.)
Lazarus
17. Lazarus describes a sweepstakes sponsored by Pepsi-Cola during
“CBS’s telecast of Super Bowl XXI” for “making sure viewers saw its
commercials” for the purpose of “reaching viewers and delivering a
message.” (P. 4, ¶¶ 4-5.) Super Bowl viewers participated in the
sweepstakes by “calling an 800 number . . . with the score of the game
when the second Slice commercial aired” (p. 4, ¶ 6). When they
dialed in, the callers received information about Slice “followed by a
touch-tone process that enabled them to record their names and
addresses if they reported the score and the time of the commercial”
(p. 4, ¶ 7). Pepsi reported that “more than 50,000 viewers dialed the
800 number.” (P. 4, ¶ 8.)
Yoshizawa
18. Yoshizawa relates to “a telephone betting system utilizing the voice
response unit in cooperation with the Japan Racing Association.”
(P. 215, col. 1, ¶ 4.) The telephone betting system includes a public
telephone network, a voice response unit and a central processing unit.
(P. 215, col. 2, ¶ 6; fig. 1.)
19. After opening an account with a specified bank, a “subscriber can
make bets through any push-button telephone set” by calling a
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telephone betting center and inputting “account number, password
number and the desired parimutuel tickets.” (P. 216, col. 1, ¶ 1.)
20. During the process of placing a bet, a “Voice output to push-button
telephone” provides a “Registration time” (Table 1, “(a) When
making a bet,” Item 5) and a “Registration number” (Table 1, “(a)
When making a bet,” Items 5, 6). Similarly, during the process of
cancelling a bet, the “Voice output to push-button telephone” requests
the subscriber to enter the previously assigned “Registration number
(number assigned when bet was made)” (Table 1, “(b) When
canceling a bet,” Item 2). Betting data from the voice response unit
are used to reset “a new purchase limit” by deducting the bet amount
from the daily maximum of 100,000 yen. (P. 219, col. 1, ¶ 1.)
“Conversation with the subscriber is all recorded, to provide against
any trouble that may occur.” (P. 218, col. 1, ¶ 1.)
Norris
21. Norris describes “an interactive telephone/computer” from Dial Info,
in which a caller dials a toll-free telephone number using a
Touch-Tone phone and follows the computer’s instructions. (P. 29,
col. 2, ¶¶ 2, 5.) In one example, Norris describes “a promotion for a
cereal marketer that features a telephone sweepstakes” where a
consumer calls a toll-free line “to call in a personal identification
number that has been placed in each box of cereal” and then “[t]he
computer will announce whether the number wins a prize.” (P. 30,
col. 2, ¶ 2.) The computer tracks “if someone tries to call in a second
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time with the same number” and “inform[s] the caller the number has
already been used.” (P. 30, col. 2, ¶ 3 to col. 3, ¶ 1.) This message
“encourage[s] consumers to make more purchases of the product.”
(P. 30, col. 3, ¶ 1.)
‘309 Patent
22. The ‘309 patent relates to “a telephonic-interface system and related
process for selectively utilizing both analog (voice) and digital
telephonic communication in a variety of different interface formats
or programs, as to select or qualify a set of callers, enable positive
identification of at least certain of the callers in the set, acquire data
from callers in the set, statistically analyze acquired data, as in
combination and in association with external data (time independent),
and accordingly to isolate a subset of the callers with verifiable
identification.” (Col. 1, l. 59 to col. 2, l. 1.) “Different program
formats variously control the processing of statistical data as for
auction sales, contests, lotteries, polls, commercials and so on.”
(Abstract.)
23. The telephonic-interface system includes remote terminals T1 to Tn
operative through a communication facility C coupled to a central
station D. (Col. 3, ll. 17-20.) “Collectively, the processing systems
P1-Pn are interconnected with a command computer terminal CT, at
least one interface terminal IT, at least one printer PR and an audio
unit AD.” (Col. 4, ll. 45-48.) Figure 1 illustrates that the processing
systems P1-Pn as separate from the audio unit AD. “[T]he processing
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systems P1 through Pn each contain a number of individual function
units or processors PR1 through PRn,” but “various other
configurations and arrangements may be employed.” (Col. 4,
ll. 50-53.)
24. In one example, a program format includes an auction sale “associated
with television as, for example, in the form of a cable channel for
dedicated use during an interval of an auction sale.” (Col. 14,
ll. 51-53.) Persons interested in bidding at a remote terminal T1-Tn
can dial the auction number to access processing systems P1 to Pn.
(Col. 15, ll. 19-22.) “[T]he audio may be variously coordinated
through the telephone communication facility C and the audio channel
of the caller’s television” (col. 15, ll. 42-44) or “the audio unit AD
(FIG. 1) may be employed” (col. 15, ll. 47-48).
25. In another example, a program format includes polling operations in
“association with a television broadcast addressing a matter of current
interest as, for example, a political issue or election.” (Col. 20,
ll. 60-62.) Callers at a remote terminal T1-Tn can interface with the
access processing systems P1 to Pn. (Col. 21, ll. 12-15.) “In one
arrangement, with the consummation of a communication interface
between a caller and a processor unit, the audio of the television
broadcast is keyed from the audio unit AD through the switch 21
(FIG. 1) for communication to the caller.” (Col. 21, ll. 63-68.)
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ANALYSIS
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 Claims
Appellant states that the ‘309 patent “expired on December 20, 2005,
pursuant to a terminal disclaimer.” (App. Br. 8.) Appellant argues 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.”
(App. Br. 17.)
Patent claims in a reexamination proceeding in the USPTO are
ordinarily given their broadest reasonable interpretation consistent with the
patent disclosure. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). When the patent has not expired, construing claims of an
unexpired patent broadly is not unfair to the patentee because the patentee
has the opportunity to amend the claims to obtain more precise claim
coverage. See id. However, patent claims of an expired patent may not be
amended. 37 C.F.R. § 1.530(j).
The standard of claim construction for the claims of an expired patent
in reexamination was addressed in Ex parte Papst-Motoren, 1 USPQ2d 1655
(BPAI 1986). The Board noted that In re Yamamoto, 740 F.2d 1569 (Fed.
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Cir. 1984), held that claims in a reexamination proceeding should be given
their broadest reasonable interpretation, consistent with the specification,
because applicants had the right to amend, whereas in a district court,
“claims should be so construed, if possible, as to sustain their validity.”
Yamamoto, 740 F.2d at 1571 n.* (citing ACH Hosp. Systems, Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). The Board 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.

Papst-Motoren, 1 USPQ2d at 1656; Ex parte Bowles, 23 USPQ2d 1015,
1017 (BPAI 1991) (both nonprecedential).3 The Board also held in both
Papst-Motoren and Bowles that it would be error to read “inferential
limitations” into the claims. Papst-Motoren, 1 USPQ2d at 1657; Bowles,
23 USPQ2d at 1017.
Papst-Motoren’s holding that “claims should be so construed, if
possible, as to sustain their validity” is another way of saying that the
USPTO does not apply the “broadest reasonable interpretation” in
construing the claims of an expired patent in a reexamination proceeding.

3 Although Papst-Motoren is not designated as precedential, it was decided
by an expanded panel of the Board of Patent Appeals and Interferences,
including the Commissioner, the Deputy Commissioner, the Chairman of the
Board, and an Examiner-in-Chief.
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The policy reason is that the claims in an expired patent cannot be amended.
However, the maxim that “claims should be so construed, if possible, as to
sustain their validity” is sometimes misunderstood and the Federal Circuit
has clarified the maxim since Papst-Motoren. In accordance with those
cases, it is clear that any claim construction must be in accord with the rules
of claim construction and claims may not be redrafted. See Generation II
Orthotics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001)
(“[C]laims can only be construed to preserve their validity where the
proposed claim construction is ‘practicable,’ is based on sound claim
construction principles, and does not revise or ignore the explicit language
of the claims.”); Lucent Techs., Inc. v. Gateway, Inc.,
525 F.3d 1200, 1215-16 (Fed. Cir. 2008) (“This court has repeatedly held
that courts may not redraft claims to cure a drafting error made by the
patentee, whether to make them operable or to sustain their validity. To do
so ‘would unduly interfere with the function of claims in putting competitors
on notice of the scope of the claimed invention.’”) (citations and footnote
omitted)). The maxim is limited “to cases in which ‘the court concludes,
after applying all the available tools of claim construction, that the claim is
still ambiguous.’” Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir.
2005) (en banc) (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898,
911 (Fed. Cir. 2004)). Importantly, it is “error . . . to use the possible
invalidity of those claims, if broadly construed, as a basis for construing
them narrowly.” The Saunders Group, Inc. v. ComforTrac, Inc., 492 F.3d
1326, 1335 (Fed. Cir. 2007); Tate Access Floors, Inc. v. Interface
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Architectural Resources, Inc., 279 F.3d 1357, 1367 (Fed. Cir. 2002)
(“Fairness and the public notice function of the patent law require courts to
afford patentees the full breadth of clear claim language, and bind them to it
as well. Consequently, where such claim language clearly reads on prior art,
the patent is invalid.”); Phillips, 415 F.3d at 1327 (“[W]e have certainly not
endorsed a regime in which validity analysis is a regular component of claim
construction.”); Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999)
(“[I]f the only claim construction that is consistent with the claim’s language
and the written description renders the claim invalid, then the axiom does
not apply and the claim is simply invalid.”).
The maxim does not mean that claims should be construed more
narrowly than is required by the rules of claim construction, as is sometimes
misunderstood from cases such as In re Prater, 415 F.2d 1393, 1404 n.30
(CCPA 1969) (“By construing a claim as covering only patentable subject
matter, courts are able, in appropriate cases, to hold claims valid in order to
protect the inventive concept or the inventor’s contribution to the art. The
patentee at that time usually may not amend the claims to obtain protection
commensurate with his actual contribution to the art.”) and Yamamoto,
740 F.2d at 1572 (“District courts may find it necessary to interpret claims to
protect only that which constitutes patentable subject matter to do justice
between the parties.”).
Papst-Motoren does not describe what sources of claim construction
can be used. We assume for this appeal that a patentee is entitled to rely on
any of the various intrinsic and extrinsic sources of claim meaning discussed
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in Phillips. It is patentee’s burden to show how an argued claim
construction is supported by the evidence.
Papst-Motoren also does not state what methodology of claim
construction should be used, e.g., whether the USPTO should consider all
sources of evidence considered by district courts. Nevertheless, the USPTO
always considers the specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written description . . . .”).
For purposes of this appeal, we assume that any type of evidence of claim
meaning identified by Phillips, including prosecution history of the original
patent, can be considered since patentee may not amend.
Interpretation of Specific Claim Terms
“an audio of a broadcast”
Appellant argues that “[t]he proper interpretation of the term ‘audio of
a broadcast,’ as understood by those skilled in the art and by its plain
meaning, is a transmission or communication from one source to many
recipients, which is accomplished via another hardware device other than the
function unit means.” (App. Br. 25.) To support this position, Appellant
relies on paragraph 14 of the Klein Declaration (App. Br. 25) and also points
to the prosecution history of the ‘309 patent (App. Br. 22-23).
The Examiner views Appellant’s claim construction that “the source
of the audio must be ‘external to the IVR [interactive voice response]
system’” as improper because such an interpretation imports limitations
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from the Specification of the ‘309 patent into the claims. (Ans. 8-9.) We do
not agree with the Examiner.
The ‘309 patent describes the audio unit AD as “interconnected” with
processing systems P1-Pn. (FF 23.) Figure 1, the only figure that shows the
audio unit AD, illustrates that the audio unit AD is separate from, but
connected to, each of processing systems P1-Pn. (FF 23.) The most natural
reading of the Specification is that the audio unit AD is located externally to
all of the processing units, P1-Pn, rather than being located internally to one
of the processing units and externally to the rest of the processing units.
Reading the ‘309 patent as a whole, we agree that the audio unit AD is
external to the processing systems P1-Pn. Therefore, reading the claim term
in the context of the entire patent, we agree with the Appellant that “an audio
of a broadcast” requires the broadcast to be from a source external to the
“function unit means.”
§ 102 Rejection – Moosemiller
We are convinced by Appellant’s arguments (App. Br. 28-35) that
Moosemiller does not teach “an audio of a broadcast,” as recited in claims 1
and 22.
The Examiner found that the voice response unit coupled with the
voice switch of Moosemiller corresponds to “an audio of a broadcast.”
(Ans. 8.) However, under the Examiner’s analysis, the audio of the
broadcast is not from an external source.
Therefore, the Examiner has erred in finding that Moosemiller teaches
“an audio of a broadcast,” as recited in claims 1 and 22.
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We conclude that the Examiner has erred in rejecting claims 1 and 22
under 35 U.S.C. § 102(b). Claims 2-6, 13, 15-19, and 21 depend from
independent claim 1, and we likewise conclude that the Examiner has erred
in rejecting these claims under 35 U.S.C. § 102(b), for the reasons discussed
with respect to independent claim 1.
§ 103 Rejection – Moosemiller/Bruns
We are convinced by Appellant’s arguments (App. Br. 39) that the
combination of Moosemiller and Bruns does not teach or suggest “at least
one of said formats being associated with an audio of a broadcast,” as recited
in claims 1 and 22.
In the alternative, the Examiner found that Moosemiller teaches all the
features of claims 1 and 22 except the limitation at “an audio of a
broadcast.” (Ans. 15.) The Examiner cited Bruns for the disclosure of
“Hold It Systems,” a marketing system that connects to a music-on-hold
feature in a phone system. (Ans. 15-16; FF 10.) The Examiner concluded
that claims 1 and 22 would have been obvious over the combination of
Moosemiller and Bruns. (Ans. 16.) We do not agree.
As discussed previously, under the proper claim construction, “an
audio of a broadcast” requires broadcasting from a source external to the
“function unit means.” However, Bruns does not teach or suggest that the
music from the “Hold It Systems” marketing system is broadcast from a
source external to the phone system. (See FF 10.)
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Therefore, the Examiner has erred in finding that the combination of
Moosemiller and Bruns teaches or suggests “at least one of said formats
being associated with an audio of a broadcast.”
§ 103 Rejection – Moosemiller/Galaxy
We are not convinced by Appellant’s arguments (App. Br. 40-41; see
also Reply Br. 21-22) that the combination of Moosemiller and Galaxy does
not teach or suggest “at least one of said formats being associated with an
audio of a broadcast,” as recited in claims 1 and 22.
In the alternative, the Examiner found that Moosemiller teaches all the
features of claims 1 and 22 except the limitation at “an audio of a
broadcast.” (Ans. 17.) The Examiner cited Galaxy for the disclosure of an
integrated switching system (ISS) for call processing that includes an audio
response unit (ARU) that plays music on hold. (Ans. 17-18; FF 11-13.) The
Examiner concluded that claims 1 and 22 would have been obvious over the
combination of Moosemiller and Galaxy. (Ans. 18.) We agree with the
Examiner.
Moosemiller relates to a voice responsive and speech recognition
product that accesses databases via the public telephone network. (FF 1.)
Galaxy relates to an integrated switching system (ISS) for call processing
that includes an audio response unit (ARU) that plays music on hold.
(FF 11-12.) In another embodiment, Galaxy discloses a “music option” that
requires a music source (e.g., an FM tuner) and a music port. (FF 13.) In
other words, Galaxy teaches that the ISS receives radio broadcasts via the
FM tuner from an external source connected via the music port. (See
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FF 11-13.) Thus, we agree with the Examiner that modifying Moosemiller
to include the ARU music-on-hold feature with an FM tuner of Galaxy
would have been obvious. (Ans. 18.) A person of ordinary skill in the art
would recognize that incorporating the music-on-hold feature of Galaxy with
Moosemiller’s system would provide an additional capability of permitting
callers to listen to music while placed on hold. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). We agree with the Examiner that this
combination would be no more than common sense.
First, Appellant argues that “with the correct interpretation of ‘audio
of a broadcast,’ Moosemiller does not meet the specific recitation in claims 1
and 22 of ‘at least one of the formats being associated with an audio of a
broadcast.’” (App. Br. 40; Reply Br. 21.) However, as discussed
previously, the Examiner cited to Galaxy for the limitation “an audio of a
broadcast.” (Ans. 17-18; FF 11-13.)
Second, Appellant argues that “Galaxy does not disclose a ‘broadcast’
through a source external to an automated interface system (IVR system).”
(App. Br. 41; Reply Br. 22.) However, as discussed previously, Galaxy
teaches an integrated switching system for call processing that receives radio
broadcasts via an FM tuner from an external source connected via a music
port. (FF 13.)
Last, Appellant argues that the “on-hold system” of Galaxy is
different from IVR. (App. Br. 41; Reply Br. 22.) To support this position,
Appellant points to the Supplemental Klein Declaration for support. (App.
Br. 41; Reply Br. 22.) However, as discussed previously, the rationale for
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the combination of Moosemiller and Galaxy is based on common sense and
the improvement of a similar device in the same way as in the prior.
Therefore, the Examiner has not erred in finding that the combination
of Moosemiller and Galaxy teaches or suggests “at least one of said formats
being associated with an audio of a broadcast.”
§ 103 Rejection – Moosemiller/Kempner
We are not convinced by Appellant’s arguments (App. Br. 40-43; see
also Reply Br. 23-28) that the combination of Moosemiller and Kempner
does not teach or suggest “at least one of said formats being associated with
an audio of a broadcast,” as recited in claims 1 and 22. We are also not
convinced by Appellant’s arguments (Reply Br. 24) that the Examiner erred
by improperly combining Moosemiller and Kempner.
In the alternative, the Examiner found that Moosemiller teaches all the
features of claims 1 and 22 except the limitation at “an audio of a
broadcast.” (Ans. 19.) The Examiner cited Kempner for the disclosure of
telephone-based audience survey systems in which a question of interest is
broadcast via television or radio. (Ans. 19; FF 14-15.) The Examiner
concluded that claims 1 and 22 would have been obvious over the
combination of Moosemiller and Kempner. (Ans. 19.) We agree with the
Examiner.
Moosemiller relates to a voice responsive and speech recognition
product that accesses data bases via the public telephone network. (FF 1.)
Kempner relates to an automatic audience survey system 10 in which a
question of interest is broadcast from a television or radio station 30 (FF 15)
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to reach a wide audience base (FF 14). Thus, we agree with the Examiner
that modifying Moosemiller to conduct audience surveys including
broadcasting questions of interest from a television or radio station would
have been obvious. (Ans. 19.) A person of ordinary skill in the art would
recognize that incorporating Kempner’s feature of broadcasting from a
television or radio station with Moosemiller’s system would provide the
advantage of reaching a wide audience base. See KSR, 550 U.S. at 417.
First, Appellant argues that “with the correct interpretation of ‘audio
of a broadcast,’ Moosemiller does not meet the specific recitation in claims 1
and 22 of ‘at least one of the formats being associated with an audio of a
broadcast.’” (App. Br. 42-43; Reply Br. 27) However, as discussed
previously, the Examiner cited to Kempner for the limitation “an audio of a
broadcast.” (Ans. 19; FF 14-15.)
Second, Appellant argues that “it would not be obvious to combine
the references as the Examiner suggests in the first place” and points to the
Supplemental Klein Declaration for support. (App. Br. 43.) Paragraph 5 of
the Supplemental Klein Declaration states that “Kempner describes
equipment for access by a single telephone number” and thus “[a]
combination with an IVR system such as one described in Moosemiller,
which accepts calls for multiple telephone numbers would not result in the
claimed inventions.” (Supp. Klein Decl. ¶ 5.) Likewise, Appellant also
argues that “[e]ven if the references were combined as the Examiner
suggests, a television or radio broadcast would be associated with an
external device (Kempner’s device) that could only accommodate a single
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telephone number.” (App. Br. 43; Reply Br. 27.) However, the Examiner's
obviousness rationale did not rely on the bodily incorporation of Kempner
and the Examiner did not cite Kempner for the disclosure of a single
telephone number. (Ans. 19.) Instead, as discussed previously, the
Examiner cited to Kempner for the limitation “an audio of a broadcast.”
(Ans. 19; FF 14-15.) The Examiner cited to Moosemiller for the disclosure
of a system that can handle multiple calls from multiple telephone numbers.
Third, Appellant argues that Kempner does not teach or suggest “at
least one of said formats being associated with an audio of a broadcast”
because “in Kempner, the interface control system provides the same
message for every survey, allowing the operator in control to select the
appropriate one of several alternative responses, e.g. ‘yes/no, A/B,
like/dislike.’” (Reply Br. 23-24.) However, the Examiner does not rely
upon Kempner’s synthesized voice message that queries audience response
for the disclosure of the claim features of “at least one of said formats being
associated with an audio of a broadcast.” Instead, the Examiner relies upon
Kempner’s question of interest, which is broadcast via television or radio,
for the disclosure of this claim feature. (Ans. 19; FF 14-15.)
Fourth, Appellant argues that “by its operator-free advantage,
Moosemiller virtually teaches away from operator use and thus, away from
the teachings of Kempner [that use an operator].” (Reply Br. 24.) However,
Kempner teaches an automatic audience survey system 10 including a
microprocessor-based polling station 12 that generates a synthesized voice
message (FF 15), similar to the speech units or voice response unit of
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Moosemiller (FF 2-3) as an alternative to a manual operator (FF 14). In
other words, contrary to Appellant’s argument (Reply Br. 24), the automatic
audience survey system 10 does not exclusively utilize a manual operator
(FF 14-15).
Last, Appellant argues that no “articulated reasoning with some
rational basis” exists for combining Kempner and Moosemiller. (Reply
Br. 24-26.) However, as discussed previously, the combination of
Moosemiller and Kempner is based on the improvement of a similar device
in the same way as in the prior art.
Therefore, the Examiner has not erred finding that the combination of
Moosemiller and Kempner teaches or suggests “at least one of said formats
being associated with an audio of a broadcast” and has not erred by
improperly combining Moosemiller and Kempner.
§ 103 Rejection – Moosemiller/Whalen
We are not convinced by Appellant’s arguments (App. Br. 43-44; see
also Reply Br. 28-30) that the combination of Moosemiller and Whalen does
not teach or suggest a “means to receive terminal formed digital signals and
means to provide signals representative of vocal communication to
individual callers,” as recited in claims 1 and 22.
The Examiner found that the process in Moosemiller of answering a
call and prompting a user to dial a tone input corresponds to a “means to
receive terminal formed digital signals.” (Ans. 10; FF 3.) The Examiner
also found that the voice switch of Moosemiller that activates a voice
response unit to generate voice prompts and to accept a caller’s voice
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commands corresponds to a “means to receive terminal formed digital
signals and means to provide signals representative of vocal communication
to individual callers.” (Ans. 10-11; FF 3.) In the alternative, the Examiner
acknowledged that Moosemiller does not teach “an audio of a broadcast”
(Ans. 21-22) and cited Whalen for the disclosure of “Dial-It 900”
technology where audiences could call a 900 number to participate in a poll
conducted via a television broadcast. (Ans. 21; FF 16.) The Examiner
concluded that claims 1 and 22 would have been obvious over the
combination of Moosemiller and Whalen. (Ans. 21-22.) We agree with the
Examiner.
Moosemiller relates to a voice responsive and speech recognition
product that accesses data bases via the public telephone network. (FF 1.)
Whalen relates to “Dial-It 900” technology that permits callers to dial a 900
number to express an opinion, for example, participating in a poll conducted
via a television broadcast. (FF 16.) Whalen also teaches that the Dial-It 900
service has applications in both polling and advertising and has the ability to
reach “thousands.” (FF 16.) Thus, we agree with the Examiner that
modifying Moosemiller to include Whalen’s feature of conducting polling
via a television broadcast would have been obvious. (Ans. 22.) A person of
ordinary skill in the art would recognize that incorporating Whalen’s feature
of conducting polling or advertising via a television broadcast with the
system of Moosemiller would provide the additional capabilities of reaching
a wide audience base. See KSR, 550 U.S. at 417.
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Appellant argues that “Whalen describes passive systems (not
interactive as defined by claims 1 and 22 requiring ‘means to receive
terminal formed digital signals and means to provide signals representative
of vocal communication to individual callers’).” (App. Br. 44; Reply
Br. 29.) However, the Examiner does not rely upon Whalen for the claim
feature “means to receive terminal formed digital signals and means to
provide signals representative of vocal communication to individual callers.”
(Ans. 21-22.) Instead, as discussed previously, the Examiner cited to
Whalen for teaching or suggesting “an audio of a broadcast.” (Ans. 21;
FF 16.)
Therefore, the Examiner has not erred in finding that the combination
of Moosemiller and Whalen teaches or suggests a “means to receive terminal
formed digital signals and means to provide signals representative of vocal
communication to individual callers.”
§ 103 Rejection – Moosemiller/Lazarus
We are not convinced by Appellant’s arguments (App. Br. 45; see
also Reply Br. 30-32) that the combination of Moosemiller and Lazarus does
not teach or suggest “at least one of said formats being associated with an
audio of a broadcast,” as recited in claims 1 and 22.
In the alternative, the Examiner found that Moosemiller teaches all the
features of claims 1 and 22 except the limitation at “an audio of a
broadcast.” (Ans. 26.) The Examiner cited Lazarus for the disclosure of a
sweepstakes sponsored by Pepsi-Cola aired during a television broadcast of
the Super Bowl that viewers entered by calling an 800 number. (Ans. 26; FF
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17.) The Examiner concluded that claims 1 and 22 would have been
obvious over the combination of Moosemiller and Lazarus. (Ans. 26.) We
agree with the Examiner.
Moosemiller relates to a voice responsive and speech recognition
product that accesses databases via the public telephone network. (FF 1.)
Lazarus relates to a sweepstakes sponsored by Pepsi-Cola aired during a
television broadcast of the Super Bowl, where the purpose of the
sweepstakes was to increase the number of commercial viewers. (FF 17.)
Lazarus describes that more than 50,000 viewers entered the sweepstakes by
calling an 800 to receive product information and following a touch-tone
process to record their name and address. (FF 17.) Thus, we agree with the
Examiner that modifying Moosemiller to conduct Lazarus’ sweepstakes via
a television broadcast would have been obvious. (Ans. 26.) A person of
ordinary skill in the art would recognize that incorporating Lazarus’
sweepstakes via a television broadcast with Moosemiller’s system provides
the advantage of advertising to a wide audience base. See KSR, 550 U.S. at
417.
Appellant argues that “even if Lazarus’ suggestion of a ‘telecast’
broadcast is combined with Moosemiller, there is no teaching in
Moosemiller of an external device (separate from the voice generator of the
IVR) that would suggest that a telecast broadcast would be desirable.”
(App. Br. 45; Reply Br. 31-32.) However, the Examiner does not rely on
Moosemiller for the claim feature of “an audio of a broadcast.” (Ans. 26.)
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Instead, as discussed previously, the Examiner cites to Lazarus for this claim
feature. (Ans. 26; FF 17.)
Appellant also argues that “[t]here are no disclosures [in Lazarus] of
how the callers are identified in the first call, how and if predictions are
recorded, how callers are prompts, if and how callers are qualified for the
lottery.” (Reply Br. 31.) However, the Examiner cites Lazarus for the claim
feature “an audio of a broadcast” rather than the processing of incoming
calls. (Ans. 26; FF 17.)
Therefore, the Examiner has not erred in finding that the combination
of Moosemiller and Lazarus teaches or suggests “at least one of said formats
being associated with an audio of a broadcast.”
§ 103 Rejection – Moosemiller/Bruns, Kempner or Whalen/Norris
We are not convinced by Appellant’s arguments (App. Br. 46; see
also Reply Br. 32-33) that the combination of Moosemiller and Norris or the
combination of Moosemiller, either Bruns, Kempner or Whalen, and Norris
does not teach or suggest “wherein a consumable key test restricts access by
callers to a single use,” as recited in dependent claim 14.
The Examiner found that Moosemiller, alone or in combination with
Bruns, Kempner or Whalen teaches all the features of dependent claim 14
except for “a consumable key test [that] restricts access by callers to a single
use designation structure.” (Ans. 27-28.) The Examiner cited Norris for the
disclosure of a telephone sweepstakes in which a consumer calls a toll-free
number and inputs a personal identification number in which a computer
tracks if the number has been previously used. (Ans. 27-28; FF 21). The
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Examiner concluded that claim 14 would have been obvious over the
combination of Moosemiller and Norris or over the combination of
Moosemiller, Bruns, Kempner or Whalen, and Norris. (Ans. 27-28.) We
agree with the Examiner.
Moosemiller relates to a voice responsive and speech recognition
product that accesses databases via the public telephone network. (FF 1.)
Norris relates to an interactive telephone/computer where a caller dials a
toll-free telephone number and follows the computer’s instructions. (FF 21.)
In one example, a cereal marketer conducts a sweepstakes where a consumer
calls the interactive telephone/computer with a personal identification
number (i.e., the claimed “consumable key test”) to enter the sweepstakes.
(FF 21.) The computer tracks if the number was previously used, which
encourages the consumer to buy more of the cereal. (FF 21.) Thus, we
agree with the Examiner that modifying Moosemiller to conduct Norris’s
product promotional sweepstakes using an interactive telephone/computer
with a one time use personal identification number would have been
obvious. (Ans. 28.) A person of ordinary skill in the art would recognize
that incorporating Norris’s sweepstakes including the one time use personal
identification number with Moosemiller’s system provides the advantage of
encouraging the consumer to purchase more of the product being promoted.
See KSR, 550 U.S. at 417.
First, Appellant argues that “with the correct interpretation of ‘audio
of a broadcast,’ Moosemiller does not meet the specific recitation in claim 1
of ‘at least one of the formats being associated with an audio of a
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broadcast.’” (App. Br. 46; Reply Br. 32.) However, as discussed
previously, Kempner (Ans. 19; FF 14-15) and Whalen (Ans. 21-22; FF 16)
disclose this claim feature.
Second, Appellant argues that “[t]he Norris article merely refers to a
promotion that is in preparation” and “question[s] . . . whether the promotion
was ever completed” (Reply Br. 33), which we interpret as an argument that
Norris does not provide an enabling disclosure. However, “any reference,
patent or otherwise” is presumed to be enabled. See In re Moreton, 288 F.2d
708, 711 (CCPA 1961). Appellant has not presented any persuasive
arguments or evidence to show otherwise.
Last, Appellant argues that Norris “is merely . . . for avoiding repeated
awards based on the same PIN” and the “[c]onsumable key is directed to
access, not merely detecting duplication.” (Reply Br. 33.) However, Norris
teaches that the consumer uses the personal identification number to enter
(i.e., to gain access to) the sweepstakes. (FF 21.)
Therefore, the Examiner has not erred in finding that the combination
of Moosemiller and Norris or the combination of Moosemiller, either Bruns,
Kempner or Whalen, and Norris teaches or suggests “wherein a consumable
key test restricts access by callers to a single use.”
§ 103 Rejection - De Bruyn/Yoshizawa
Claims 31, 36 and 38
With respect to the first issue, we are not convinced by Appellant’s
arguments (App. Br. 46-49; see also Reply Br. 33-40) that the combination
of De Bruyn and Yoshizawa does not teach or suggest a “designation
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structure . . . for developing individual designations for said individual
callers, indicative of caller significance, and storing said designations in said
record structure,” as recited in independent claim 31. Appellant presents
similar arguments for claims 36 and 38, which recite similar limitations.
(App. Br. 46-49.)
The Examiner found that De Bruyn teaches all the features of
claim 31, except for a “designation structure.” (Ans. 35-37.) The Examiner
cited Yoshizawa for the disclosure of a telephone betting system that
provides a subscriber with a registration time and registration number when
placing a bet (i.e., designations). (Ans. 35-37; FF 18-20). The Examiner
also found that Yoshizawa’s registration time and registration number
corresponds to the claimed “caller significance.” (Ans. 36; FF 20.) The
Examiner concluded that claim 31 would have been obvious over the
combination of De Bruyn and Yoshizawa. (Ans. 37.) We agree with the
Examiner.
De Bruyn relates to a device for telephonic connection to a Lotto
computer device for entering a gambling stake before the drawing of the
winning numbers. (FF 5.) Yoshizawa relates a telephone betting system
using voice response unit technology (FF 18) that provides a subscriber with
a registration time and a registration number when placing a bet that
facilitates the subscriber’s ability to later cancel the same bet (see FF 20).
Yoshizawa also teaches that all conversations with subscribers are recorded.
(FF 20.) Thus, we agree with the Examiner that modifying Moosemiller to
incorporate Yoshizawa’s feature of assigning a registration time and a
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registration number when placing a bet would have been obvious. (Ans. 36-
37.) A person of ordinary skill in the art would recognize that incorporating
Yoshizawa’s feature of assigning a registration time and registration number
provides the advantage of facilitating cancellation of the bet and provides the
advantage of enabling a particular voice recording with a subscriber to be
located to prevent trouble that may occur. See KSR, 550 U.S. at 417.
First, Appellant argues that “[a] telephone number given at the time
that a caller subscribes to a telephone service (as in De Bruyn) is not a
designation assigned by the analysis control system during the course of a
call with a caller” (App. Br. 47) and “claim 38 is distinct [from De Bruyn]
because it recites that the ‘designations include representations indicative of
the calling order sequence of said individual callers”’ (App. Br. 48).
However, the Examiner does not rely on De Bruyn for the claimed
“designation structures” or “designations.” (Ans. 36-37.) Instead, the
Examiner cites to Yoshizawa for these claim features. (Ans. 36-37; FF 20.)
Second, Appellant argues that De Bruyn does not disclose the
“designation structure” of independent claim 36, the recorded calling
numbers of De Bruyn are not “designations” and De Bruyn does not disclose
the limitation “indicative of caller significance” recited by claims 31 and 38.
(Reply Br. 34-38.) However, the Examiner cites Yoshizawa instead of De
Bruyn for the disclosure of these claim features. (Ans. 36-37; FF 20.)
Finally, Appellant argues that Yoshizawa does not teach or suggest
the claim feature “indicative of caller significance.” (Reply Br. 38-39.) In
particular, Appellant argues that “the registration number [of Yoshizawa] is
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assigned at the conclusion of the communication, and the communications
take different periods of time, the registration numbers are not in the
sequence of the calling order.” (Reply Br. 39.) However, although
Appellant is attempting to distinguish over Yoshizawa by arguing that caller
significance is based on calling order at the starting time of the phone call,
this feature is not claimed.
Therefore, the Examiner has not erred in finding that the combination
of De Bruyn and Yoshizawa teaches or suggests a “designation structure . . .
for developing individual designations for said individual callers, indicative
of caller significance, and storing said designations in said record structure,”
as recited in claim 33 and the similar limitation recited by claims 36 and 38.
With respect to the second issue, we are not convinced by Appellant’s
arguments (App. Br. 48) that the combination of De Bruyn and Yoshizawa
does not teach or suggest a “record structure . . . for initiating a file,” as
recited in claim 31. Appellant presents similar arguments for claims 36 and
38, which recite similar limitations. (App. Br. 47, 49.)
The Examiner found that De Bruyn teaches or suggest a “record
structure . . . for initiating a file.” (Ans. 32.) In particular, the Examiner
found that the central computer 4, memory 9 and extra memory 10
collectively correspond to the claimed “record structure.” (Ans. 31; FF 5.)
The Examiner also found that De Bruyn stores the telephone number and the
Lotto numbers selected by the subscriber and confirms that the subscriber
has not already selected Lotto numbers for the current week, thus
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corresponding to “initiating a file.” (Ans. 32; FF 6-7.) We agree with the
Examiner.
De Bruyn teaches that the Lotto computer device includes a memory 9
to store the telephone number and the Lotto numbers selected by the
subscriber and an extra memory 10 to determine if the phone number of the
subscriber has already played the current Lotto game. (FF 6.) These
numbers are transmitted to the central computer 4 and recorded on a
magnetic tape which is sealed and stored away before the drawing of the
winning Lotto numbers. (FF 7.) Because the winning Lotto numbers are
drawn weekly (FF 7), the process of recording Lotto numbers selected by the
subscriber and the telephone number of the subscriber on the magnetic tape
is also repeated. In other words, De Bruyn teaches a “record structure . . .
initiating a file,” because the process of recording Lotto numbers and
telephone numbers for the current drawing creates, and thus initiates, new
files on the magnetic tape.
Appellant argues that “claim 38 is distinct from Yoshizawa because as
demonstrated before Yoshizawa does not teach ‘initiating a file’” and points
to paragraph 35 of the Klein Declaration for support. (App. Br. 49.)
However, the Examiner does not rely on Yoshizawa for the claim feature of
“initiating a file.” (Ans. 32.) Instead, the Examiner cites to De Bruyn for
this claim feature. (Ans. 32; FF 6-7.) In addition, for the reasons stated by
the Examiner (Ans. 65-66), we agree that Yoshizawa also teaches “initiating
a file,” as claimed.
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Therefore, the Examiner has not erred in finding that the combination
of De Bruyn and Yoshizawa teaches or suggests a “record structure . . .
initiating a file,” as recited in claim 31. Claims 36 and 38 recite similar
limitations.
With respect to the third issue, we are not convinced by Appellant’s
arguments (Reply Br. 34) that the combination of De Bruyn and Yoshizawa
does not teach or suggest “[a]n analysis control system,” as recited in
claims 31, 36 and 38. In particular, Appellant argues that “[t]he De Bruyn
interface system does not analyze” but “involves simply recording a
magnetic discloses tape with the placed stakes” and “the determination of
winners, (analysis) is not performed as part of an interface operation.”
(Reply Br. 34.)
The Examiner found that “[t]he De Bruyn system analyzes lottery data
to determine winnings, and thus is . . . ‘an analysis control system.’”
(Ans. 29.) We agree with the Examiner.
De Bruyn teaches that after the Lotto the computer is programmed
with the winning numbers, the magnetic tape is read to identify the winners.
(FF 9.) Thus, De Bruyn teaches or suggests “[a]n analysis control system.”
Therefore, the Examiner has not erred in finding that the combination
of De Bruyn and Yoshizawa teaches or suggests “[a]n analysis control
system,” as recited in claims 31, 36 and 38.
Claim 57
With respect to the fourth issue, we are convinced by Appellant’s
arguments (App. Br. 49; see also Reply Br. 40) that the combination of
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De Bruyn and Yoshizawa does not teach or suggest a “qualification structure
controlled by said record structure for restricting the extent of access to said
system by said individual callers to a one time only use.”
The Examiner found that the extra memory 10 of De Bruyn
corresponds to the claimed “qualification structure.” (Ans. 34-35.) The
Examiner also found that because the extra memory 10 determines if the
phone number of the subscriber has already been recorded for the current
Lotto game, the extra memory 10 can “restrict[] the extent of access to said
system by said individual callers to a one time only use” per week.
(Ans. 34-35.) We do not agree.
Instead, we agree with Appellant’s argument that “[t]he limitation
‘only,’ which means ‘without others or anything further’” as defined by the
Merriam-Webster Dictionary (App. Br. 49) and that “‘one time only’ clearly
and explicitly means once” (Reply Br. 40). The relevant plain meaning of
“only” is “as a single fact or instance and nothing more or different.”
Webster’s Ninth New Collegiate Dictionary 825 (1990). However, the extra
memory 10 of De Bruyn restricts a subscriber from playing the Lotto more
than once per week. (FF 7.) Yoshizawa restricts a subscriber from betting
more than 100,000 yen per day. (FF 20.) However, neither De Bruyn nor
Yoshizawa restricts the subscriber from placing a bet at the frequency of “a
single . . . instance and nothing more” or “one time only.”
Therefore, the Examiner has erred in finding that the combination of
De Bruyn and Yoshizawa teaches or suggests a “qualification structure
controlled by said record structure for restricting the extent of access to said
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system by said individual callers to a one time only use,” as recited in
claim 57.
§ 103 Rejection - De Bruyn/Yoshizawa/St. Jean
Although Appellant nominally argues the rejection of independent
claims 39 and 40 separately (App. Br. 50; see also Reply Br. 40-41), the
arguments presented do not point out with particularity or explain why the
limitations of the dependent claims are separately patentable. Instead,
Appellant merely reiterates the arguments previously presented that “by
giving the claim recitation ‘designation structure’ its proper interpretation as
established in the grounds for patentability so far established [with respect to
independent claim 31],” independent claims 39 and 40 are patentable. (App.
Br. 50; Reply Br. 41.) Therefore, we will sustain the rejection of claim 39
and 40 for the reasons discussed with respect to claim 31.
§ 103 Rejection - De Bruyn/Yoshizawa/Moosemiller
In the alternative, the Examiner rejected independent claim 57 under
35 U.S.C. § 103(a) as being obvious over De Bruyn, Yoshizawa and
Moosemiller. (Ans. 38-39.) As discussed previously, the Examiner has
erred in finding that the combination of De Bruyn and Yoshizawa teaches or
suggests the claim feature of a “qualification structure controlled by said
record structure for restricting the extent of access to said system by said
individual callers to a one time only use,” as recited in claim 57.
Moosemiller, which was relied upon by the Examiner for its teaching of
“wherein said facility may provide called terminal DNIS signals” (Ans. 38-
39) does not cure the above-noted deficiencies of De Bruyn and Yoshizawa.
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Claim 58 depends from independent claim 57 and the Examiner has
erred in rejecting this claims for the reasons discussed previously with
respect to independent claim 57.
Secondary Considerations
To rebut the Examiner’s obviousness rejections, Appellant points to
evidence of commercial success. (App. Br. 51-92.) In particular, Appellant
submitted the Bacon Declaration, the Christensen Declaration, the First
Krauss Declaration accompanying the IVR Report, the Second Krauss
Declaration, and Industry Statements as evidence of commercial success.
(App. Br. 51-92.) Appellant argues that a nexus has been established
between the claims of the ‘309 patent and the commercial success and points
to a summary provided in Table 4. (App. Br. 56-91.)
The Examiner (Ans. 68-96) provides a detailed discussion and
analysis of Appellant's evidence and finds that a nexus has not been
established between Appellant's proffered evidence of commercial success
and the '309 patent claims.
Objective evidence of nonobviousness (also called "secondary
considerations") must always be considered in making an obviousness
determination, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39
(Fed. Cir. 1983), but it is not necessarily conclusive, Ashland Oil, Inc. v.
Delta Resins & Refrac., Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). 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.
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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. In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995); Stratoflex, 713 F.2d at 1539. 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 In re Huang, 100 F.3d 135, 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."). 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
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
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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 Techs.,
Inc. v. Manbeck, 751 F. Supp. 225, 229-30 (D.D.C. 1990) (and cases cited
therein). 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.
We agree with the Examiner (Ans. 68-96) that a sufficient nexus has
not been demonstrated. Initially, we note that Appellant and the Examiner
disagree on whether the declarants have an interest in the outcome of these
proceedings. (App. Br. 54-55; Ans. 68-69; Reply Br. 42-44.) For the
reasons stated by the Examiner (Ans. 68-69), we agree that the declarants
appear to have an interest in the outcome of these proceedings. We further
agree, for the reasons stated by the Examiner, that:
(1) the Bacon declaration is entitled to little weight because the
evidence does not adequately show that the commercial success is directly
derived from the invention claimed, see In re Mageli, 470 F.2d 1380, 1384
(CCPA 1973) (Ans. 71-77), the evidence does not adequately show that the
'309 patent claims were actually the thing sold and responsible for the
commercial success (Ans. 77-78), and the evidence of commercial success is
not commensurate in scope with the claims (Ans. 78-81);
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(2) the Christensen Declaration does not provide adequate factual
support of commercial success (Ans. 81-82), does not adequately show that
the commercial success is directly derived from the invention claimed, see
In re Mageli, 470 F.2d 1380, 1384 (CCPA 1973) (Ans. 82-84), does not
adequately show that the '309 patent claims were actually the thing sold and
responsible for the commercial success (Ans. 84), and the evidence of
commercial success is not commensurate in scope with the claims
(Ans. 85-86);
(3) the First Krauss Declaration accompanying the IVR Report is
entitled to little weight because it does not appear to be probative of the state
of the IVR industry since other evidence of record demonstrates that more
sophisticated features than those described in the declaration were known in
the prior art (Ans. 86-91), does not adequately show that the '309 patent
claims were responsible for the commercial success (Ans. 91-92), and the
evidence of commercial success is not commensurate in scope with the
claims (Ans. 91-92); and
(4) the Second Krauss Declaration des not establish a nexus between
the claims and the commercial success (Ans. 93) and does not adequately
show that the commercial success is directly derived from the invention
claimed, see In re Mageli, 470 F.2d 1380, 1384 (CCPA 1973) (Ans. 93).
In addition, Appellant has not made an adequate showing that the
Industry Statements contained in the Brief (App. Br. 91-92) are
commensurate in scope with the claims. Each of the statements refers
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generally to the "patent portfolio," "Katz portfolio," "Katz patents," or
similar language in reference to multiple patents.
Therefore, the Examiner has properly considered Appellant's
proffered evidence of commercial success.

CONCLUSIONS
Based on the findings of fact and analysis above, we conclude that:
(1) The Examiner has erred in rejecting claims 1-6, 13, 15-19, 21
and 22 under 35 U.S.C. § 102(b) as anticipated by Moosemiller.
(2) The Examiner has erred in rejecting claims 1-6, 9, 13, 15-19, 21
and 22 under 35 U.S.C. § 103(a) as being obvious over Moosemiller and
Bruns.
(3) The Examiner has not erred in rejecting claims 1-6, 13, 15-19,
21 and 22 under 35 U.S.C. § 103(a) as being obvious over Moosemiller and
Galaxy.
(4) The Examiner has not erred in rejecting claims 1-6, 9, 10, 13,
15-19, 21 and 22 under 35 U.S.C. § 103(a) as being obvious over
Moosemiller and Kempner.
(5) The Examiner has not erred in rejecting claims 1-10, 13 and
15-22 under 35 U.S.C. § 103(a) as being obvious over Moosemiller and
Whalen.
(6) The Examiner has not erred in rejecting claims 1-6, 9, 12, 13,
15-19 and 22 under 35 U.S.C. § 103(a) as being obvious over Moosemiller
and Lazarus.
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(7) The Examiner has not erred in rejecting claim 14 under
35 U.S.C. § 103(a) as being obvious over Moosemiller and Norris, or
obvious over Moosemiller and either Bruns, Kempner or Whelan, and
Norris.
(8) The Examiner has not erred in rejecting claims 31, 36 and 38
under 35 U.S.C. § 103(a) as being obvious over De Bruyn and Yoshizawa.
(9) The Examiner has erred in rejecting claim 57 under 35 U.S.C.
§ 103(a) as being obvious over De Bruyn and Yoshizawa.
(10) The Examiner has not erred in rejecting claims 39 and 40 under
35 U.S.C. § 103(a) as being obvious over De Bruyn, Yoshizawa and
St. Jean.
(11) The Examiner has erred in rejecting claims 57 and 58 under
35 U.S.C. § 103(a) as being obvious over De Bruyn, Yoshizawa and
Moosemiller.
DECISION
(1) The rejection of claims 1-6, 13, 15-19, 21 and 22 under
35 U.S.C. § 102(b) as being anticipated by Moosemiller is reversed.
(2) The rejection of claims 1-6, 9, 13, 15-19, 21 and 22 under
35 U.S.C. § 103(a) as being obvious over Moosemiller and Bruns is
reversed.
(3) The rejection of claims 1-6, 13, 15-19, 21 and 22 under
35 U.S.C. § 103(a) as being obvious over Moosemiller and Galaxy is
affirmed.
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(4) The rejection of claims 1-6, 9, 10, 13, 15-19, 21 and 22 under
35 U.S.C. § 103(a) as being obvious over Moosemiller and Kempner is
affirmed.
(5) The rejection of claims 1-10, 13 and 15-22 under 35 U.S.C.
§ 103(a) as being obvious over Moosemiller and Whalen is affirmed.
(6) The rejection of claims 1-6, 9, 12, 13, 15-19 and 22 under
35 U.S.C. § 103(a) as being obvious over Moosemiller and Lazarus is
affirmed.
(7) The rejection of claim 14 under 35 U.S.C. § 103(a) as being
obvious over Moosemiller and Norris, or obvious over Moosemiller and
either Bruns, Kempner or Whelan, and Norris is affirmed.
(8) The rejection of claims 31, 36 and 38 under 35 U.S.C. § 103(a)
as being obvious over De Bruyn and Yoshizawa is affirmed.
(9) The rejection of claim 57 under 35 U.S.C. § 103(a) as being
obvious over De Bruyn and Yoshizawa is reversed.
(10) The rejection of claims 39 and 40 under 35 U.S.C. § 103(a) as
being obvious over De Bruyn, Yoshizawa and St. Jean is affirmed.
(11) The rejection of claims 57 and 58 under 35 U.S.C. § 103(a) as
being obvious over De Bruyn, Yoshizawa and Moosemiller is 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-IN PART

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saw

FOR PATENT OWNER:

REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
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