Ex Parte 5259023 et al

Board of Patent Appeals and Interferences

Sep 22, 2010

90006977 (B.P.A.I. Sep. 22, 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.
90/006,977 03/26/2004 5259023 6646-140CCRE 3471
35554 7590 09/23/2010
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
09/23/2010 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 2009-000020
Reexamination Control Nos. 90/006,977 and 90/007,058 (merged)
U.S. Patent No. 5,259,023
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 2009-000020
Reexamination Control Nos. 90/006,977 and 90/007,058 (merged)
U.S. Patent No. 5,259,023

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This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final
rejection of claims 11-14 and 22-25. The Examiner has confirmed the
patentability of claims 1-10, 15-21, 26 and 27. 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.
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. 5,259,023 (the ‘023
patent) on March 26, 2004, Reexamination Control No. 90/006,977, for
reexamination of claims 22 and 23. A subsequent request for ex parte
reexamination was filed on June 2, 2004, on behalf of an anonymous third
party requester by Donald E. Stout of Antonelli, Terry, Stout & Kraus, LLP,
Reexamination Control No. 90/007,058, for claims 1, 7, 8, 22-25 and 27.
The reexamination proceedings have been merged.
The ‘023 patent, entitled “Telephonic-Interface Statistical Analysis
System,” issued November 2, 1993, to Ronald A. Katz, is said to be a
division of Application No. 07/640,337 (the ‘337 application), filed
January 11, 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
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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 ‘023 patent is said to be assigned to Ronald A. Katz Technology
Licensing L.P., said to be the real party in interest. The ‘023 patent is said to
have an expiration date of December 20, 2005 by virtue of a terminal
disclaimer. (App. Br. 6.) Thus, the ‘023 patent is now expired.
Related Litigation
The ‘023 patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix. (App. Br. 86-98.)
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) and
automatic number identification (ANI) capability as well as voice interface
capabilities. (Col. 4, ll. 59-62.) The processing system also can 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 is stored for processing. (Abstract.)

Appeal 2009-000020
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U.S. Patent No. 5,259,023

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The Claims
Independent claims 11 and 22 are exemplary and reproduced
below:

11. 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, said interface means further
including means for voice communication to cue callers for actuating
said remote terminals to provide terminal-formed signals; 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.

22. 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 and wherein said communication facility has a
capability (ANI) to provide terminal digital data, for example,
indicating a calling number, said analysis control system comprising:
interface structure coupled to said communication facility to
interface said terminals for voice and digital communication and
including means to provide caller data signals representative of data
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relating to said callers developed by said terminals and said terminal
digital data indicative of the calling number using said capability
(ANI);
analysis structure for processing said caller data signals
representative of data relating to said callers developed by said
terminals to compose and store said terminal digital data indicative of
the calling number and said data relating to said callers developed by
said terminals in a specific format; and
control structure for controlling said analysis structure in
accordance with said terminal digital data indicative of the calling
number.

The Rejections
Claims 11-14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Moosemiller (John P. Moosemiller, AT&T’s ConversantTM I
Voice System, Speech Technology, March/April 1986, pp. 88-93).
Claims 22-25 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by De Bruyn (Canadian Patent 1,162,336).
Claims 22-25 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Daudelin (U.S. Patent 4,922,519).
Claims 11-14 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Moosemiller and either Butcher (U.S. Patent 4,429,187) or
Balzer (U.S. Patent 4,149,042).
Claims 22-25 stand rejected under 35 U.S.C. § 103(a) as being
obvious over De Bruyn and either Maxon (U.S. Patent 3,725,596) or
Streisand (U.S. Patent 3,725,597).
Appeal 2009-000020
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U.S. Patent No. 5,259,023

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Appellant relied upon the following2 in rebuttal to the Examiner’s
rejection:
Joan Lebow, American Express and AT&T Form Interactive Phone
Marketing Venture, WALL ST. J., Aug. 3, 1989, at B4 (“Wall Street
Journal Article”) (Exhibit A1).
FDC/Call Interactive, CBS: America on the Line 1-13 (Jan. 28, 1992)
(“CBS News”) (Exhibit A).
FDC/Call Interactive, Monday Night Football: 20th Anniversary Poll
& Upsell 1-13 (Sept. 1989) (“ABC Sports”) (Exhibit B).
FDC/Call Interactive, Scrabble Telephone Contest 1-12 (Jan. 1990)
(“Scrabble”) (Exhibit D).
FDC/Call Interactive, Singapore Fling 1-12 (Mar. 1989) (“Singapore
Fling”) (Exhibit E).
FDC/Call Interactive, Home Show: Cold Cash Sweepstakes 1-11 (Apr.
1990) (“Home Show”) (Exhibit F).
FDC/Call Interactive, Wheel of Fortune: Cruise and Cash Splash 1-13
(Nov. 1990) (“Cruise and Splash”) (Exhibit G).
Examples of Statements by Representatives from Many Industries
That Use the Patented Technology, submitted November 4, 2005
(“Examples of Statements”) (Exhibit L).
Declaration under 37 C.F.R. § 1.132 of Charles O’Rourke, dated
October 28, 2005 (“O’Rourke Declaration” or “O’Rourke Decl.”)
(Exhibit M).
Declaration under 37 C.F.R. § 1.132 of Nancee Berger, dated
October 28, 2005 (“First Berger Declaration” or “First Berger Decl.”)
(Exhibit N).

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.

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Declaration under 37 C.F.R. § 1.132 of Gene Chevalier, dated
October 31, 2005 (“Chevalier Declaration” or “Chevalier Decl.”)
(Exhibit O).
Declaration under 37 C.F.R. § 1.132 of Eric Cherry, dated October 31,
2005 (“Cherry Declaration” or “Cherry Decl.”) (Exhibit P).
Declaration under 37 C.F.R. § 1.132 of Cheryl Bacon, dated
November 1, 2005 (“Bacon Declaration” or “Bacon Decl.”)
(Exhibit Q).
Declaration under 37 C.F.R. § 1.132 of Joel Krauss, dated June 13,
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 (June 2006) (“IVR Report”).
Declaration under 37 C.F.R. § 1.132 of Jerry A. Klein, dated June 14,
2006 (“Klein Declaration” or “Klein Decl.”).
Second Declaration under 37 C.F.R. § 1.132 of Nancee Berger, dated
November 13, 2006 (“Second Berger Declaration” or “Second Berger
Decl.”).
Declaration under 37 C.F.R. § 1.132 of Joel Krauss, dated
November 13, 2006 (“Second Krauss Declaration” or “Second Krauss
Decl.”)
ISSUES
§ 102 Rejection - Moosemiller
Appellant argues that Moosemiller does not teach “an audio of a
broadcast,” as recited in claim 11. (App. Br. 17-27; see also Reply Br. 7-8.)
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. 19.)
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Appellant’s arguments present the following issue:
Has the Examiner erred in finding that Moosemiller teaches “an audio
of a broadcast”?
§ 102 Rejection - De Bruyn
Appellant argues that De Bruyn does not teach “wherein said
communication facility has a capability (ANI) to provide terminal digital
data, for example, indicating a calling number,” as recited in claim 22.
(App. Br. 27-28; see also Reply Br. 8-9.) In the alternative, Appellant
argues that even if De Bruyn teaches ANI, there is no teaching of using ANI
for user interface operations. (App. Br. 28-30.)
Appellant also argues that De Bruyn does not teach “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,” as recited in
claim 22. (App. Br. 31-32; see also Reply Br. 9.) In particular, Appellant
argues that De Bruyn does not teach a (DTMF) Touch Tone™ Telephone.
(App. Br. 31-32; see also Reply Br. 9.)
With respect to dependent claim 24, Appellant argues that De Bruyn
does not teach “wherein said analysis structure including means for initiating
a file and storing data relating to at least one specific of said callers and
whereby said control structure controls access by said specific of said callers
to said analysis structure.” (App. Br. 32-33.)
Appeal 2009-000020
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Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that De Bruyn teaches “wherein
said communication facility has a capability (ANI) to provide terminal
digital data, for example, indicating a calling number”?
2. Has the Examiner erred in finding that De Bruyn teaches “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”?
3. Has the Examiner erred in finding that De Bruyn teaches “wherein
said analysis structure including means for initiating a file and storing data
relating to at least one specific of said callers and whereby said control
structure controls access by said specific of said callers to said analysis
structure”?
§ 102 Rejection - Daudelin
Appellant argues that Daudelin does not teach an “interface structure
. . . including means to provide caller data signals representative of data
relating to said callers developed by said terminals and said terminal digital
data indicative of the calling number using said capability (ANI),” an
“analysis structure for processing said caller data signals representative of
data relating to said callers developed by said terminals to compose and
store said terminal digital data” and a “control structure for controlling said
analysis structure in accordance with said terminal digital data indicative of
the calling number,” as recited in claim 22. (App. Br. 34-36; see also Reply
Br. 9.)
Appeal 2009-000020
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Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that Daudelin teaches an
“interface structure . . . including means to provide caller data signals
representative of data relating to said callers developed by said terminals and
said terminal digital data indicative of the calling number using said
capability (ANI)”?
2. Has the Examiner erred in finding that Daudelin teaches an
“analysis structure for processing said caller data signals representative of
data relating to said callers developed by said terminals to compose and
store said terminal digital data”?
3. Has the Examiner erred in finding that Daudelin teaches a “control
structure for controlling said analysis structure in accordance with said
terminal digital data indicative of the calling number”?
§ 103 Rejection – Moosemiller/Butcher or Balzer
Appellant argues that the combination of Moosemiller and either
Butcher or Balzer does not teach or suggest “at least one of said formats
being associated with an audio of a broadcast,” as recited in claim 11. (App.
Br. 39-41.) In particular, Appellant argues that “Moosemiller does not
discuss ‘audio’ from an external source” and “neither Balzer nor Butcher
disclose a ‘broadcast’ through a source external to an automated capability
of the interface system.” (App. Br. 40.)
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. Br. 49, 54,
69-77.)
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Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of
Moosemiller and Butcher or Balzer 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 –De Bruyn/Maxon or Streisand
Appellant argues that the combination of De Bruyn and Maxon or
Streisand does not teach or suggest “a capability (ANI) to provide terminal
digital data.” (App. Br. 41-43.) In particular, Appellant argues that “De
Bruyn does not teach ANI or similar capability to indicate a calling number
for use at a user interface” (App. Br. 42) and “[n]either reference discloses
receipt of ANI signals that are received via the telephone networks at a user
interface for the purpose of using those signals at the user interface to the
system” (App. Br. 43).
Appellant further argues that the Examiner has not properly
considered Appellant’s evidence of commercial success. (App. Br. 49, 54,
69-77.)
Appellant’s arguments present the following issues:
1. Has the Examiner erred in finding that the combination of De
Bruyn and either Maxon or Streisand teaches or suggests “a capability (ANI)
to provide terminal digital data”?
2. Has the Examiner properly considered Appellant’s evidence of
commercial success?
Appeal 2009-000020
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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,
¶ 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.)
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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). 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 latter can check whether the
correct Lotto numbers have been recorded.” (P. 5, ll. 22-26.)
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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.) 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).
Daudelin
9. Daudelin relates to “[a] method and apparatus for identifying the class
of an operator assistance call in order to reduce the operator work time
for serving such a call.” (Abstract.) “A customer dials 0 or 0 plus a
directory number and is connected to a program controlled operator
assistance system or switch,” (Abstract) which “initially connects the
calling customer to a voice processing unit and prompts the customer
to speak a command or key a command code” (Abstract). “The
command or command code is recognized and used to direct the flow
of the control program to selectively defer a connection to an
operator.” (Abstract.) In an exemplary embodiment (fig. 1), a
telecommunications switch 1 (col. 3, ll. 26-29) is connected to
interconnecting networks 30 and 32 (col. 5, ll. 7-8). A calling
terminal 40 is connected to the switch 1 through an interconnection
network 30. (Col. 5, ll. 17-18.) The directory number of the calling
terminal 40 can be identified by automatic number identification
(ANI) and transmitted to the switch 1. (Col. 5, ll. 30-35.) A called
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terminal 46 is connected to the switch 1 through an interconnection
network 32. (Col. 5, ll. 22-24.) The terminals each can be a dual tone
multifrequency (DTMF) terminal. (Col. 4, l. 68 to col. 5, l. 2; see also
col. 1, ll. 29-31.)
10. The switch 1 includes a control 10, a switching network 12, a voice
processing unit 14 (col. 3, ll. 38-53; fig. 1), a local data base 16
(col. 4, ll. 17-19; fig. 1), a remote data base system 20, (col. 4,
ll. 19-20; fig. 1) and a transaction recorder 22 (col. 4, ll. 33-39; fig. 1).
“The voice processing unit [14] receives an input signal which may be
either voice or a dual tone multifrequency (DTMF) signal” (col. 3,
ll. 54-56) and “also generates tones and voice messages to prompt a
customer to speak or key information into the system for subsequent
recognition by the voice processing unit [14]” (col. 3, ll. 59-63). The
voice processing unit 14 can also record a short customer response
(col. 3, ll. 63-65) and the recording can be saved for use in fraud
detection (col. 3, ll. 66-68) or as proof of acceptance of charges in the
event of customer complaints (col. 4, ll. 1-2). The remote data base
system 20 can store data “pertaining to customers for a region.”
(Col. 4, ll. 21-24.) The transaction recorder 22 records data about
calls, such as billing data, and can be used to process customer bills or
for “recording traffic data.” (Col. 4, ll. 33-38.)
11. In one example, a “calling customer or caller” at the calling
terminal 42 places a collect call to a “called customer” at the called
terminal 46. (Col. 5, ll. 49-53.) The caller dials or keys the directory
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number for the called terminal 46. (Col. 5, ll. 56-57.) “Control 10
analyzes this dialed (using a dial terminal) or keyed (using a DTMF
terminal) number and recognizes that calling terminal 42 has placed
some kind of operator assistance call.” (Col. 5, ll. 60-64.) The voice
processing unit 14 prompts the caller at the calling terminal 42 to
either dial a two-digit command code for a DTMF terminal or speak
one of eight phrases to identify a list or options (i.e., collect, calling
card, person, third number, operator, request a Spanish-speaking
operator, conference or billing). (Col. 6, ll. 3-13.)
12. For the collect call, a connection is set up through an interconnecting
network 32 to the called terminal 46. (Col. 6, ll. 25-26.) As a check,
the customer receiving the collect call will receive an announcement
from the voice processing unit 14. (Col. 6, ll. 50-52.)
The announcement “could include the area code, the geographic
locality, or the full directory number of the calling customer in order
to supply the called customer with further call data that he can use in
order to decide whether to accept the call.” (Col. 6, ll. 61-66.)
Butcher
13. Butcher describes a prior art patent that discloses a “well known”
audio program material in telephone systems as “a special service
telephone system for providing subscribers with music, news,
information, etc. from a central distributing source.” (Col. 1,
ll. 11-16.) Additionally, “the use of music has appeared in the area of
key telephone systems to reassure a central office subscriber that a
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connection to the key telephone system still exists when such
subscriber is placed ‘on-hold’ by a key telephone system user.”
(Col. 1, ll. 26-30.)
Balzer
14. Balzer relates “a system for providing music-on-hold signals to a key
telephone line circuit.” (Col. 1, ll. 7-8.) “A modulated RF carrier
signal distributing arrangement, utilizing existing line circuits, is
disclosed for providing entertainment signals to key telephone lines in
the active noncommunicating (hold) state.” (Abstract.) The system
includes a “centralized music transmitter unit.” (Col. 1, ll. 60-61.)
Maxon
15. Maxon relates to “a telephone system and, in particular, to a private
branch exchange (PBX) system having equipment for automatically
identifying the calling station and trunk used on calls outgoing to a
central office.” (Col. 1, ll. 6-10.) In describing the prior art, Maxon
discloses that “[i]t is common practice to provide automatic number
identification (ANI) equipment in a PBX which transmits information
to a central office identifying the calling station and trunk number.”
(Col. 1, ll. 13-15.)
Streisand
16. Streisand “relates to telephone calling line identification systems of
the type that enables the identity of a calling station to be determined
without, however, alerting the calling party.” (Col. 1, ll. 5-8.) In
describing the prior art, Streisand discloses “identify[ing] the calling
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customer . . . by using conventional automatic number identification
(ANI) equipment.” (Col. 1, ll. 64-68.)
‘023 Patent
17. The ‘023 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, ll. 58-68.) “Different program formats
variously control the processing of statistical data as for auction sales,
contests, lotteries, polls, commercials and so on.” (Abstract.)
18. 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
systems P1 through Pn each contain a number of individual function
units or processors PR1 through PRn,” but “various other
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configurations and arrangements may be employed.” (Col. 4,
ll. 50-53.)
19. 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).
20. 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
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.)
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.
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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 ‘023 patent “expired on December 20, 2005,
pursuant to a terminal disclaimer.” (App. Br. 6.) Appellant argues that “a
narrower claim construction that upholds the validity of the claim should be
applied rather than a broad construction that would invalidate the claim”
(App. Br. 10).
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.
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.”
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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 nonprecedential3). 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.
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

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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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
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
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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
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
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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. 19.) To support this position, Appellant
relies on paragraph 33 of the Klein Declaration (App. Br. 19) and also points
to the prosecution history of the ‘023 patent (App. Br. 20-21).
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
from the Specification of the ‘023 patent into the claims. (Ans. 7.) We do
not agree with the Examiner.
The ‘023 patent describes the audio unit AD as “interconnected” with
processing systems P1-Pn. (FF 18.) 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 18.) 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.
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Reading the ‘023 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. 21-26) that
Moosemiller does not teach “an audio of a broadcast,” as recited in claim 11.
The Examiner found that the voice response unit coupled with the
voice switch of Moosemiller corresponds to “an audio of a broadcast.”
(Ans. 7-8.) 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 claim 11.
We conclude that the Examiner has erred in rejecting claim 11 under
35 U.S.C. § 102(b). Claims 12-14 depend from independent claims 11, 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 11.
§ 102 Rejection - De Bruyn
Claim 22
With respect to the first issue, we are not convinced by Appellant’s
arguments (App. Br. 27-28; see also Reply Br. 8-9) that De Bruyn does not
teach “wherein said communication facility has a capability (ANI) to
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provide terminal digital data, for example, indicating a calling number,” as
recited in independent claim 22.
The Examiner found that the local telephone exchange 2 and the main
exchange 3 of De Bruyn corresponds to the claimed “communication
facility.” (Ans. 12; FF 5.) The Examiner also found that De Bruyn
inherently teaches ANI because “the instructions provided to the caller as
detailed in De Bruyn, lack any instruction for the caller to enter a telephone
number” and “the system [of De Bruyn] ‘will identify the subscriber and
charge him.’” (Ans. 13; FF 7-8.) 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.) De Bruyn provides a highly detailed, step by step
description of the operation of the device. When a subscriber calls the Lotto
computer device, a reply apparatus 8 conveys a voice message to the
subscriber to enter a Lotto number using the telephone selector device.
(FF 7.) The memory 9 stores the telephone number and the Lotto numbers
selected by the subscriber and an extra memory 10 determines if the phone
number of the subscriber has already played the current Lotto game. (FF 7.)
Additionally, the central computer 4 of De Bruyn generates billing
information for the cost of the call and Lotto game. (FF 8.) Because the
memory 9 stores the subscriber’s telephone number and the central
computer 4 generating billing information without any teaching that the
subscriber enters the telephone number (see FF 7-9), and given the thorough
and detailed description of the operation by De Bruyn where the subscriber
expressly enters the Lotto numbers (see id.), we agree with the Examiner
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that De Bruyn inherently teaches use of ANI to obtain the subscriber’s
telephone number (Ans. 13).
Appellant argues that “[e]ven if ANI or like capability is taken to be
implied in De Bruyn, it can only be for use within a carrier’s operations for
call placement and routing operations for purposes of billing” and “[t]here is
no mention or implication in De Bruyn of receiving ANI or signals at De
Bruyn’s lottery device (the user interface) for user interface operations.”
(App. Br. 28.) To support this position, Appellant relies on paragraphs
15-17 of the Klein Declaration. (App. Br. 29.)
Paragraph 15 of the Klein Declaration states that “[f]rom my
knowledge of the field, in 1988, ANI was not well recognized among those
of ordinary skill in the art as readily available at a user interface for user
interface applications or services” and “[i]t cannot be fairly assumed that the
Examiner’s assertion that ANI was ‘well recognized’ among those of
ordinary skill in the art at the time for user interface applications is accurate
and I believe that it is incorrect to cite De Bruyn for implicitly teaching ANI
for such applications.” (Klein Decl. ¶ 15.) However, such statements lack
persuasive factual support because the Klein Declaration does not cite to any
corroborating documentation. See Beattie, 974 F.2d at 1313.
Paragraph 16 of the Klein Declaration states that the claim language
“for use with a communication facility” from the preamble of independent
claim 22 must be interpreted as “a user interface system for use with a
telephone network such as the public switched telephone network (i.e., a
carrier network, the PSTN), which is the capability that connects the users at
the remote terminals to user interface system.” (Klein Decl. ¶ 16.) Even if
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we adopt this interpretation, Appellant does not point out with particularity
or explain why this interpretation would distinguish claim 22 over De
Bruyn.
Paragraph 17 of the Klein Declaration states that “[i]f it is assumed
from De Bruyn that one of ordinary skill in the art can glean the use of ANI
. . . De Bruyn assumes that the telephone identification necessary to
implement his lottery system correlates with the billing operations integral to
the carrier call routing operations.” Thus, the Klein Declaration states that
“De Bruyn’s lottery system must be implemented within the call routing and
placement operations of the telephone network (‘the communication facility’
in the ‘023 patent, shown as C in Figure 1) and not as a user interface
configured to work outside the call routing and placement operations of the
telephone network.” (Klein Decl. ¶ 17.) To support this position, the Klein
Declaration points to an express statement in De Bruyn that a central
computer 4 “will identify the subscriber and charge him for the phone call
and the stake cost on his usual telephone bill, which shall also state the
selected Lotto figures and the cost of the stake.” (Klein Decl. ¶ 17.) Thus,
the Klein Declaration argues, “De Bruyn’s lottery system must be integrated
within the call placement operations of the telephone network (i.e. ‘the
communication facility’).” (Klein Decl. ¶ 17.)
However, De Bruyn teaches that a telephone set 1 is connected to a
local telephone exchange 2 and a main exchange 3 “which are used for
international telephone traffic and to which is connected the entire Lotto
computer device described hereinafter.” (FF 5.) Thus, contrary to
paragraph 17 of the Klein Declaration, De Bruyn teaches that the “entire
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Lotto computer device” is separate from the local telephone exchange 2 and
the main exchange 3, rather than being integrated within the call placement
operations of the telephone network. As discussed previously, De Bruyn
inherently teaches the use of ANI to obtain the subscriber’s telephone
number. In other words, De Bruyn teaches the use of ANI for obtaining
subscriber telephone numbers outside the local telephone exchange 2 and the
main exchange 3.
Therefore, the Examiner has not erred in finding that De Bruyn
teaches “wherein said communication facility has a capability (ANI) to
provide terminal digital data, for example, indicating a calling number.”
With respect to the second issue, we are not convinced by Appellant’s
arguments (App. Br. 31-32; see also Reply Br. 9) that De Bruyn does not
teach “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.”
Claim 22 recites that “each of said remote terminals may comprise a
conventional telephone instrument including . . . digital input means in the
form of an array of alphabetic numeric buttons” (emphasis added). In other
words, the limitation “digital input means in the form of an array of
alphabetic numeric buttons” is optional and not required by claim 22.
Therefore, the Examiner has not erred in finding that De Bruyn
teaches “wherein each of said remote terminals may comprise a
conventional telephone instrument including voice communication means
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and digital input means in the form of an array of alphabetic numeric buttons
for providing data,” as recited in independent claim 22.
We conclude that the Examiner has not erred in rejecting claim 22
under 35 U.S.C. § 102(b). Because Appellant has not presented separate
arguments regarding dependent claim 23, we affirm the rejection of this
claim for the same reasons as independent claim 22, from which it depends.
Claim 24
With respect to the third issue, we are not convinced by Appellant’s
arguments (App. Br. 32-33) that De Bruyn does not teach “wherein said
analysis structure includes means for initiating a file and storing data relating
to at least one specific of said callers and whereby said control structure
controls access by said specific of said callers to said analysis structure,” as
recited in dependent claim 24.
The Examiner found that De Bruyn teaches the limitations recited in
dependent claim 24. (Ans. 15-16, 52-53; FF 8.) In particular, the Examiner
found that the memory of De Bruyn that 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 corresponds to a
“means for initiating a file.” (Ans. 15-16, 52-53; FF 7-8.) 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 7.) These
numbers are transmitted to the central computer 4 and recorded on a
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magnetic tape which is sealed and stored away before the drawing of the
winning Lotto numbers. (FF 8.) Because the winning Lotto numbers are
drawn periodically (see FF 7-8), 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 “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 the claim limitation “initiating a file” must be
interpreted as “for when the system has no existing records.” (App. Br. 33.)
To support this position, Appellant relies on the Klein Declaration.4 (App.
Br. 33) Paragraph 23 of the Klein Declaration provides a plain meaning
definition of “initiating” from the IBM Dictionary of Computing as a “means
used to create a file, or to initialize a system, such as in initializing a session
or system.” Thus, the definition of “initiating” from the Klein Declaration
does not support Appellant’s argument.
Therefore, the Examiner has not erred in finding that De Bruyn
teaches “wherein said analysis structure includes means for initiating a file
and storing data relating to at least one specific of said callers and whereby
said control structure controls access by said specific of said callers to said
analysis structure,” as recited in dependent claim 24.

4 Appellant also relies upon the “expert declaration of . . . Berger II” for
providing an interpretation for the claim feature “initiating a file.” (App.
Br. 33.) However, neither the First Berger Declaration nor the Second
Berger Declaration discusses this claim feature.
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We conclude that the Examiner has not erred in rejecting claim 24
under 35 U.S.C. § 102(b).
Claim 25
Although Appellant nominally argues the rejection of dependent
claim 25 separately (App. Br. 33), the arguments presented do not point out
with particularity or explain why the limitations of this dependent claim is
separately patentable. Instead, Appellant summarily alleges that “[c]laim 25
is dependent on claim 22 and is distinct at least for the reasons demonstrated
above with respect to claim 22.” (App. Br. 33.) Therefore, we will sustain
the rejection of claim 25 for the reasons discussed with respect to
independent claim 22, from which claim 25 depends.
§ 102 Rejection - Daudelin
With respect to the first issue, we are not convinced by Appellant’s
arguments (App. Br. 34-35; see also Reply Br. 9) that Daudelin does not
teach an “interface structure . . . including means to provide caller data
signals representative of data relating to said callers developed by said
terminals and said terminal digital data indicative of the calling number
using said capability (ANI),” as recited in claim 22.
The Examiner found that the telecommunications switch 1 of
Daudelin that connects to interconnecting networks 30 and 32 corresponds
to the claimed “interface structure . . . including means to provide caller data
signals representative of data relating to said callers developed by said
terminals and said terminal digital data indicative of the calling number
using said capability (ANI).” (Ans. 18; FF 9.) The Examiner also found
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that the directory number of a calling terminal 40 as identified by ANI
corresponds to “caller data signals.” (Ans. 18-19; FF 9.) We agree with the
Examiner.
Daudelin teaches that an interconnecting network 30 is coupled to a
calling terminal 40 and that an interconnecting network 32 is coupled to a
terminal 46. (FF 9.) The interconnecting networks 30 and 32 are connected
by a telecommunications switch 1. (FF 9.) Daudelin also teaches that the
directory number of the calling terminal 40 can be identified by automatic
number identification (ANI) and transmitted to the switch 1. (FF 9.) Thus,
Daudelin teaches an interface structure that includes a “means to provide
caller data signals representative of data relating to said callers developed by
said terminals and said terminal digital data indicative of the calling number
using said capability (ANI).”
Appellant argues that “Daudelin’s code is not ‘data relating to the
caller’ that is stored in order to build a caller” but “is a ‘code’ that is simply
used to execute the next operation and the ‘code’ is not stored as part of a
record.” (App. Br. 34.) However, the Examiner does not rely upon the two-
digit command code of Daudelin for the disclosure of the claimed “caller
data signals.” Instead, the Examiner relies upon the directory number of a
calling terminal 40 as identified by ANI for the disclosure of the claimed
“caller data signals.” (Ans. 18-19; FF 9.)
Therefore, the Examiner has not erred in finding that Daudelin teaches
an “interface structure . . . including means to provide caller data signals
representative of data relating to said callers developed by said terminals and
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said terminal digital data indicative of the calling number using said
capability (ANI),” as recited in claim 22.
With respect to the second and third issues, we are not convinced by
Appellant’s arguments (App. Br. 34-36; see also Reply Br. 9) that Daudelin
does not teach an “analysis structure for processing said caller data signals
representative of data relating to said callers developed by said terminals to
compose and store said terminal digital data” and “control structure for
controlling said analysis structure in accordance with said terminal digital
data indicative of the calling number,” as recited in claim 22.
The Examiner found that components of the switch 1, the control 10,
the switching network 12, the voice processing unit 14, the local data base
system 16 and the transaction recorder 22 of Daudelin collectively
correspond to the claimed “analysis structure” and “control structure.”
(Ans. 18-19, 53-60; FF 9-10.) We agree with the Examiner.
Daudelin teaches that the switch 1 includes a voice processing unit 14,
a control 10 and a transaction recorder 22. (FF 10.) When a calling
customer at the calling terminal 42 places a collect call to the called
terminal 46, the control 10 analyzes the dialed or keyed number and
activates the voice processing unit 14 to prompt the caller to dial a two-digit
command code or speak one of eight phrases including “collect”, “calling
card” or “billing.” (FF 11.) The voice processing unit 14 can also record a
short customer response which can be saved for fraud detection or as proof
of acceptance of charges. (FF 10.) The transaction recorder 22 records data
about calls which can be used to process customer bills. (FF 10.) In other
words, when the calling customer at the calling terminal 42 places a collect
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call, call data (e.g., directory number of the calling terminal 40 as identified
ANI) are recorded by the transaction recorder 22 to bill the customer. Thus,
Daudelin teaches an “analysis structure for processing said caller data
signals representative of data relating to said callers developed by said
terminals to compose and store said terminal digital data.”
Daudelin also teaches that the transaction recorder 22 can record call
traffic data and that the remote data base system 20 can store customer data
for a region. (FF 10.) Daudelin further teaches that when a collect call is
placed to the called terminal 46, the customer receiving the call receives an
announcement from the voice processing unit 14 regarding the area code, the
geographic locality or the directory number of the calling customer.
(FF 12.) Thus, Daudelin teaches a “control structure for controlling said
analysis structure in accordance with said terminal digital data indicative of
the calling number.”
Appellant argues that “[e]ven if Daudelin’s code is stored for analysis
. . . Daudelin does not teach using terminal data provided by the
communication facility (e.g. ANI) for control of the analysis.” (App. Br. 35.)
As discussed previously, the Examiner relies upon the directory number of a
calling terminal 40 as identified by ANI for the disclosure of the claimed
“caller data signals.” (Ans. 18-19; FF 9-10.) Furthermore, such directory
numbers as identified by ANI are “analyzed” for billing purposes, call traffic
data (FF 10) or to inform a customer of the area code, the geographic
locality or the directory number of a collect call (FF 12).
Therefore, the Examiner has not erred in finding that Daudelin teaches
an “analysis structure for processing said caller data signals representative of
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data relating to said callers developed by said terminals to compose and
store said terminal digital data” and “control structure for controlling said
analysis structure in accordance with said terminal digital data indicative of
the calling number,” as recited in claim 22.
We conclude that the Examiner has not erred in rejecting claim 22
under 35 U.S.C. § 102(b). Because Appellant has not presented separate
arguments regarding dependent claims 23-25, we affirm the rejection of
these claims for the same reasons as independent claim 22, from which they
depend.
§ 103 Rejection – Moosemiller/Butcher or Balzer
We are not convinced by Appellant’s arguments (App. Br. 39-41) that
the combination of Moosemiller and Butcher or Balzer does not teach or
suggest “at least one of said formats being associated with an audio of a
broadcast,” as recited in claim 11.
In the alternative, the Examiner found that Moosemiller teaches all the
features of claim 11 except the limitation “at least one of said formats being
associated with an audio of a broadcast.” (Ans. 21.) The Examiner cited
Butcher for the disclosure of a telephone system that provides music, new or
other information when a subscriber is “on-hold.” (Ans. 21-22; FF 13.) The
Examiner also cited Balzer for the disclosure of telephone lines that provide
entertainment signals during the active non-communicating (hold) state.
(Ans. 22; FF 14.) The Examiner concluded that claim 11 would have been
obvious over the combination of Moosemiller and Butcher or Balzer.
(Ans. 22.) We agree with the Examiner.
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Moosemiller relates to a voice responsive and speech recognition
product that accesses data bases via the public telephone network. (FF 1.)
Butcher relates to audio program material for telephone systems that
provides subscribers with music, news, information from a central source
when a subscriber is placed “on-hold” to confirm a telephonic connection.
(FF 13.) Similarly, Balzer relates to a system for providing music-on-hold
signals to a key telephone line circuit from a centralized music transmitter
unit. (FF 14.) Thus, we agree with the Examiner that it would have been
obvious to modify Moosemiller to include Butcher’s audio program material
for telephone systems in order to provide subscribers with music, news or
information from a central source. (Ans. 21.) A person of ordinary skill in
the art would recognize that Butcher’s audio program material provides an
advantage of confirming a telephonic connection when a subscriber is placed
“on-hold.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Similarly, we agree with the Examiner that modifying Moosemiller to
include Balzer’s system for providing music-on-hold signals from a
centralized music transmitter unit would have been obvious for the same
reasons. (Ans. 22.)
Appellant argues that “Moosemiller is distinguished above from
claim 11 because with the correct interpretation of ‘audio of a broadcast,’
Moosemiller does not meet the specific recitation in claim 11 of ‘at least one
of the formats being associated with an audio of a broadcast.’” (App.
Br. 40.) However, as discussed previously, the Examiner cited to Butcher or
Balzer for the limitation “at least one of said formats being associated with
an audio of a broadcast.” (Ans. 21-22; FF 13-14.)
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Appellant also argues that “neither Balzer nor Butcher disclose a
‘broadcast’ through a source external to an automated capability of the
interface system (voice generator of the IVR system), with which callers
interact.” (App. Br. 40.) However, we agree with the Examiner that, when
combined, the broadcast source taught by Balzer and Butcher is external to
the voice generator of the IVR system taught by Moosemiller. (Ans. 62; see
FF 13, 14.)
Therefore, the Examiner has not erred in finding that the combination
of Moosemiller and Butcher or Balzer teaches or suggests “at least one of
said formats being associated with an audio of a broadcast.”
§ 103 Rejection – De Bruyn/Maxon or Streisand
We are not convinced by Appellant’s arguments (App. Br. 41-43) that
the combination of De Bruyn and Maxon or Streisand does not teach or
suggest “a capability (ANI) to provide terminal digital data,” as recited in
claim 22.
In the alternative, the Examiner found that De Bruyn teaches all the
features of claim 22 except the limitation “a capability (ANI) to provide
terminal digital data.” (Ans. 24.) The Examiner cited Maxon for the
disclosure of a private branch exchange telephone system with automatic
number identification (ANI) equipment. (Ans. 24; FF 15.) The Examiner
also cited Streisand for the disclosure of telephone calling line identification
systems using conventional automatic number identification (ANI)
equipment. (Ans. 24; FF 16.) The Examiner concluded that claim 22 would
have been obvious over the combination of De Bruyn and Maxon or
Streisand. (Ans. 24.) We agree with the Examiner.
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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.) The Lotto computer device of De Bruyn includes
a memory 9 that stores the telephone number and the Lotto numbers selected
by the subscriber and an extra memory 10 determines if the phone number of
the subscriber has already played the current Lotto game. (FF 7.)
Additionally, a central computer 4 of De Bruyn generates billing information
for the cost of the call and Lotto game. (FF 8.) Maxon teaches a telephone
system (e.g., a private branch exchange) having automatic number
identification (ANI) equipment. (FF 15.) Similarly, Streisand teaches a
telephone calling line identification system using conventional automatic
number identification (ANI) equipment. (FF 16.) Thus, we agree with the
Examiner that modifying the Lotto computer device of De Bruyn to include
the automatic number identification (ANI) equipment of Maxon would have
been obvious. (Ans. 24.) A person of ordinary skill in the art would
recognize that Maxon’s ANI equipment provides the ability to automatically
identify the telephone number of a caller to facilitate billing. See KSR, 550
U.S. at 417. Similarly, we agree with the Examiner that modifying the Lotto
computer device of De Bruyn to include Streisand’s automatic number
identification (ANI) equipment have been obvious for the same reasons.
(Ans. 24.)
Therefore, the Examiner has not erred in finding that the combination
of De Bruyn and Maxon or Streisand teaches or suggests “a capability (ANI)
to provide terminal digital data.”
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Secondary Considerations
To rebut the Examiner’s obviousness rejections, Appellant argues that
“[t]he Katz inventions, which include combinations of the functionalities
(including those described in the ‘023 patent) have greatly advanced and
enhanced computer integrated telephony and have revolutionized the manner
in which services and customer care are provided today.” (App. Br. 44.) As
objective evidence, Appellants submitted the following exhibits: CBS News
(Exhibit A); ABC Sports (Exhibit B); Scrabble (Exhibit D); Singapore Fling
(Exhibit E); Home Show (Exhibit F); and Cruise and Splash (Exhibit G).
(App. Br. 46.) Appellant also argues that “[t]he marketplace has clearly
recognized the value of Mr. Katz’s inventions” and points to the licensing of
the interactive call processing patents to over 100 companies. (App. Br. 47.)
We are not convinced by Appellants’ arguments, which we interpret as an
argument for commercial success.
With respect to CBS News, ABC Sports, Scrabble, Singapore Fling,
Home Show, and Cruise and Splash, Appellant has not provided a sufficient
nexus between the rebuttal evidence and the claims of the ‘023 patent. In
particular, Appellant has not demonstrated that the campaigns, sweepstakes,
polls or contests that implemented the interactive call processing technology
were commensurate in scope with the claims of the ‘023 patent. Appellant
also has not identified which features from each of these documents
correspond to the “function unit means,” the “interface means” and the
“coupling means” of claim 11. Thus, claim 11 is not commensurate in scope
with the examples described in CBS News, ABC Sports, Scrabble,
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Singapore Fling, Home Show, and Cruise and Splash. As to claim 22,
theses documents do not refer to “automatic number identification (ANI).”
With respect to the licensing program, Appellant states that “[i]n
1994, Mr. Katz formed Katz Technology Licensing, which acquired the
rights to the entire interactive call processing patent portfolio, including the
rights to the ‘023 patent.” (App. Br. 46.) Appellant also states that “[m]ore
than fifty U.S. patents have issued to Mr. Katz for his inventions in the
interactive call processing field, including the ‘023 patent.” (App. Br. 45.)
However, Appellant has not established a nexus between the success of the
licensing program and the claims of the ‘023 patent. In particular, Appellant
has not demonstrated that the claims of the ‘023 patent were subject to any
licensing agreement with the 100 companies using interactive call
processing technology. Additionally, the licensing activity may be due to
factors unrelated to the unobviousness of the claims of the ‘023 patent such
as the license being mutually beneficial or less expensive than defending
infringement suits. See EWP Corp. v. Reliance Universal, Inc., 755
F.2d 898, 907-08 (Fed. Cir. 1985).
To rebut the Examiner’s obviousness rejections, Appellant also points
to additional purported evidence of commercial success. (App. Br. 47-48,
69-70, 71-76.) In particular, Appellant submitted the Wall Street Journal
Article (Exhibit A1) as evidence of commercial success via a major
investment. (App. Br. 47.) Appellants also submitted the Examples of
Statements (Exhibit L), the O’Rourke Declaration (Exhibit M), the First
Berger Declaration (Exhibit N), the Chevalier Declaration (Exhibit O), the
Cherry Declaration (Exhibit P), the Bacon Declaration (Exhibit Q), the First
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Krauss Declaration accompanying the IVR Report, the Second Berger
Declaration and the Second Krauss Declaration as evidence of commercial
success by industry recognition of the technology. (App. Br. 47-48, 69-70,
71-76.) Appellant argues that a “nexus has been established between the
claims of the ‘023 patent and the demonstrated commercial success” and
points to a summary provided in Table 4. (App. Br. 51.)
We are not convinced by Appellant’s arguments that the Wall Street
Journal Article (App. Br. 47), the multiple declarations and the IVR Report
(App. Br. 47-48, 71-76) have provided as sufficient nexus between the
evidence of commercial success and independent claims 11 and 22.
Wall Street Journal Article
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the Wall Street Journal
Article is commensurate in scope with claims 11 and 22. (Ans. 96-97.)
Appellant states that “[i]n 1988, Mr. Katz presented his technology to
American Express (‘Amex’) after which the company invested about tens of
millions of dollars in a business . . . that reduced to practice the inventions
described in the Katz patents, namely the ‘968 patent and the ‘739 patent
(which shares the same specification as the ‘023 patent)” (emphasis added).
(App. Br. 47.) However, Appellant has not established a nexus between the
purported success of the American Express marketing venture and the
claims of the ‘023 patent.
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O’Rourke Declaration
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the O’Rourke Declaration
is commensurate in scope with claims 11 and 22. (Ans. 77-81.) The
O’Rourke Declaration describes an IVR processing system employed by
First Data Corporation (O’Rourke Decl. ¶ 1) for use in “industries such as
entertainment, order of merchandise, customer care operations, polling etc.”
(O’Rourke Decl. ¶ 5). Paragraph 5 also describes “an IVR processing
system, which received calls from multiple callers via a public switched
telephone system (‘PSTN,’ such as AT&T and MCI networks) . . .
associated with a TV or radio broadcast (S)” and “in some cases, receiving
automatic number identification (‘ANI’) signals from the
telecommunications network provider (U).”
Claim 11 recites “[a] controlled interface system for use with a
telephonic communication facility,” rather than “an IVR processing system
. . . [that] received calls from multiple callers via a public switched telephone
system” (emphasis added) as described in the O’Rourke Declaration.
Because claim 11 recites “[a] controlled interface system” rather than “an
IVR processing system” and claim 11 recites “a telephonic communication
facility” rather than “a public switched telephone system,” this claim differs
in scope from the example described in the O’Rourke Declaration. Claim 11
also recites “at least one of said formats being associated with an audio of a
broadcast,” rather than “associated with a TV or radio broadcast” (emphasis
added) as described in the O’Rourke Declaration. Because claim 11 does
not recite that the “broadcast” originates from “TV or radio,” this claim is
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broader than the IVR system described in the O’Rourke Declaration.
Furthermore, Appellant has not identified which features from paragraph 5
of the O’Rourke Declaration correspond to the “function unit means,” the
“interface means” and the “coupling means.” Thus, claim 11 is not
commensurate in scope with the example described in paragraph 5 of the
O’Rourke Declaration.
Claim 22 broadly recites “[a]n analysis control system for use with a
communication facility including remote terminals for individual callers,”
rather than “an IVR processing system . . . [that] received calls from multiple
callers via a public switched telephone system” as described in the O’Rourke
Declaration. Because claim 22 recites “[a]n analysis control system” rather
than “an IVR processing system” and claim 22 recites “a communication
facility” rather than “a public switched telephone system,” this claim differs
in scope from the example described in the O’Rourke Declaration. Claim 22
also recites “wherein said communication facility has a capability (ANI) to
provide terminal digital data,” rather than “in some cases, receiving
automatic number identification (“ANI”) signals from the
telecommunications network provider (U)” (emphasis added). Use of the
language “in some cases” in the example from the O’Rourke Declaration
indicates that the step of “receiving automatic number identification (‘ANI’)
signals” is optional. Claim 22 also recites a “communication facility” rather
than a “telecommunications network provider.” Furthermore, Appellant has
not identified which features from paragraph 5 of the O’Rourke Declaration
correspond to the “interface structure” the “analysis structure” and the
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“control structure.” Thus, claim 22 is not commensurate in scope with the
example described in paragraph 5 of the O’Rourke Declaration.
First and Second Berger Declarations
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the First and Second
Berger Declarations is commensurate in scope with claims 11 and 22.
(Ans. 87, 89.) The First Berger Declaration describes several examples of
automated services processing systems employed by West Corporation (First
Berger Decl. ¶ 1) that “include automated credit card activation, prepaid
calling card services, automated product information requests, answers to
frequently asked questions, utility power outage reporting, and call routing
and call transfer services etc.” (First Berger Decl. ¶ 3). The First Berger
Declaration further describes that “West’s automated interactive voice
response (hereafter ‘IVR’) processing systems received multiple calls from
callers via a public switched telephone system (‘PSTN,’ such as AT&T and
MCI networks)” in which “calls were received from callers who learned of
these automated interactive services and associated telephone numbers by
advertising via radio or television broadcasts (S)” and “in some cases,
receiving automatic number identification (‘ANI’) signals from the
telecommunications network provider (U).” (First Berger Decl. ¶ 2.)
Additionally, the Second Berger Declaration describes a second example of
the IVR processing system for “receiving automatic number identification
(‘ANI’) signals from the telecommunications network provider.” (Second
Berger Decl. ¶ 3.) Similar to the reasons discussed previously regarding the
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O’Rourke Declaration, claims 11 and 22 are not commensurate in scope
with the examples described in the First and Second Berger Declarations.
Even if the objective evidence of commercial success in the First and
Second Berger Declarations is commensurate in scope with claims 11 and
22, we agree with the Examiner (Ans. 87-89) that Appellant has not
sufficiently demonstrated that the commercial success was directly derived
from the invention claimed, see In re Mageli, 470 F.2d 1380, 1384
(CCPA 1973). The First Berger Declaration states that “West’s interactive
automated service business and customer base continued to expand rapidly
. . . without any modifications to West’s advertising and marketing
approach.” (First Berger Decl. ¶ 3.) The First Berger Declaration also
provides a chart illustrating “[t]he rate of growth of West’s automated
services embodying the various combinations of the functionalities
described above [in paragraph 2].” However, the First Berger Declaration
has not identified which specific combination of functionalities provided in
paragraph 2, subparagraphs 1-7 (i.e., labeled A to W) was responsible for the
revenue growth documented in paragraph 4.
Chevalier Declaration
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the Chevalier Declaration
is commensurate in scope with claim 22. (Ans. 85-87.) The Chevalier
Declaration describes several examples of interactive voice response (IVR)
units employed by First Data Voice Services (FDVS) including card
activation services for major banking organizations (Chevalier Decl. ¶ 1) or
“card activation campaigns (‘CAC’)” (Chevalier Decl. ¶ 4). The Chevalier
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Declaration further describes “an IVR processing system, which received
multiple calls from callers via a public switched telephone system (‘PSTN,’
such as AT&T and MCI networks)” used “in some cases, receiving
automatic number identification (‘ANI’) signals from the
telecommunications network provider (U).” (Chevalier Decl. ¶ 5.) Similar
to the reasons discussed previously regarding the O’Rourke Declaration,
claim 22 is not commensurate in scope with the example described in
paragraph 5 of the Chevalier Declaration. As to claim 11, the Chevalier
Declaration does not expressly refer to a “broadcast.”
Even if the objective evidence of commercial success in the Chevalier
Declaration is commensurate in scope with claim 22, we agree with the
Examiner (Ans. 82-85) that Appellant has not sufficiently demonstrated that
the commercial success was directly derived from the invention claimed, see
Mageli, 470 F.2d at 1384. The Chevalier Declaration states that “[t]he
combinations of functionalities utilized by the FDVS [First Data Voice
Services] in its operations of the CAC [card activation campaigns] services
produced substantial revenue for FDVS from at least 1992 to 1999” and
provides a chart summarizing revenue growth. (Chevalier Decl. ¶ 6.)
However, the Chevalier Declaration has not identified which specific
combination of functionalities provided in paragraph 5, subparagraph 1-7
(i.e., labeled A to W) was responsible for the revenue growth documented in
paragraph 6.
Cherry Declaration
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the Cherry Declaration is
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commensurate in scope with claim 22. (Ans. 89-90.) The Cherry
Declaration describes several examples of interactive voice response units
(IVRUs) employed by ICN Corporation (“ICN”). (Cherry Decl. ¶ 1.) The
Cherry Declaration further describes that “ICN’s platform received multiple
calls from callers via a public switched telephone system (‘PSTN,’ such as
AT&T and MCl networks)” and that “the ICN platform received automatic
number identification (‘ANI’) signals from either the AT&T or MCI
network services for an such calls.” (Cherry Decl. ¶ 3.) Similar to the
reasons discussed previously regarding the O’Rourke Declaration, claim 22
is not commensurate in scope with the example described in paragraph 3 of
the Cherry Declaration. As to claim 11, the Cherry Declaration does not
expressly refer to a “broadcast.”
Even if the objective evidence of commercial success in the Cherry
Declaration is commensurate in scope with claim 22, we agree with the
Examiner (Ans. 89-90) that Appellant has not sufficiently demonstrated that
the commercial success was directly derived from the invention claimed, see
Mageli, 470 F.2d at 1384. The Cherry Declaration states that “[t]he great
success of the automated interactive services operated by ICN . . .
contributed significant growth in the gross revenues of ICN” and provides a
summary of revenue generated from 1991 to 1994. (Cherry Decl. ¶ 4.)
However, the Cherry Declaration has not identified the specific
combinations of functionalities provided in paragraph 3, subparagraphs A
to J, that were directly attributable to the “great success of the automated
interactive services” documented in paragraph 4.
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Bacon Declaration
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the Bacon Declaration is
commensurate in scope with claims 11 and 22. (Ans. 85-87.) The Bacon
Declaration describes several examples of interactive voice response (IVR)
units employed by First Data Corporation (FDC) (Bacon Decl. ¶ 1),
including “credit card authorization and cash management services” (Bacon
Decl. ¶ 3). The Bacon Declaration further describes “an IVR processing
system, which received multiple calls from· callers via a public switched
telephone system (‘PSTN,’ such as AT&T and MCl networks) . . .
associated with a TV or radio broadcast (S)” and “in some cases, receiving
automatic number identification (‘ANI’) signals from the
telecommunications network provider (U).” (Bacon Decl. ¶ 4.) Similar to
the reasons discussed previously regarding the O’Rourke Declaration,
claims 11 and 22 differ in scope from the embodiment described in the
Bacon Declaration.
Even if the objective evidence of commercial success in the Bacon
Declarations is commensurate in scope with claims 11 and 22, we agree with
the Examiner (Ans. 82-85) that Appellant has not sufficiently demonstrated
that the commercial success was directly derived from the invention
claimed, see Mageli, 470 F.2d at 1384. The Bacon Declaration describes
that multiple combinations of functionalities from paragraph 4,
subparagraphs 1-7 (i.e., labeled A to W) have been implemented (Bacon
Decl. ¶ 4) having “handled many millions of calls” (Bacon Decl. ¶ 6). The
Bacon Declaration further articulates that “[s]ince incorporating the
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combinations of such functionalities, FDC has grown this part of its business
into a multimillion dollar enterprise” and “the combinations of such
functionalities contributed to the successful operation and growth of FDC’s
IVR systems.” (Bacon Decl. ¶ 7.) However, the Bacon Declaration has not
identified the specific combinations of functionalities provided in
paragraph 4 directly attributable to FDC’s growth.
The IVR Report5
We agree with the Examiner that Appellant has made no showing that
the purported evidence of commercial success in the IVR is commensurate
in scope with claims 11 and 22. (Ans. 95.) The IVR Report describes an
example from WordPerfect Corporation that “combined their IVR system
with a live broadcast to their on-hold callers” with “queue jockeys” or “hold
jockeys.” (P. 3, § 1.2.3.) “The queue jockey works out of a broadcast
studio, similar to a radio or television studio, but the broadcast is delivered
simultaneously only to the on-hold callers.” (P. 3, § 1.2.3.) The IVR Report
also describes an “Automatic Number Identification (ANI) service [that]
tells the call recipient the phone number of the person who has called them.”
(P. 5, § 1.2.5.)
Claim 11 recites “at least one of said formats being associated with an
audio of a broadcast,” rather than “a live broadcast to their on-hold callers”
with “queue jockeys” or “hold jockeys” as described in the IVR Report.

5 Although the IVR Report was accompanied by the First Krauss
Declaration, this declaration does not present any additional arguments or
evidence regarding a nexus between the purported evidence of commercial
success from the IVR Report and the claims of the ‘023 patent. The Second
Kraus Declaration is also deficient for similar reasons.
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Because claim 11 does not recite that the “broadcast” is “live” with “queue
jockeys” or “hold jockeys,” this claim is broader than the IVR system
described in the IVR Report. Furthermore, Appellant has not identified
which features from the IVR Report correspond to the “function unit
means,” the “interface means” and the “coupling means.” Thus, claim 11 is
not commensurate in scope with the IVR Report.
Claim 22 recites “wherein said communication facility has a
capability (ANI) to provide terminal digital data, for example, indicating a
calling number” rather than an “Automatic Number Identification (ANI)
service [that] tells the call recipient the phone number of the person who has
called” (emphasis added). The language “for example” in claim 22 indicates
that the “terminal digital data” is broader than “a calling number.” Claim 22
recites “terminal digital data” rather than “the phone number of the person
who has called telecommunications network provider.” Furthermore,
Appellant has not identified which features from the IVR Report correspond
to the “interface structure” the “analysis structure” and the “control
structure.” Thus, claim 22 is not commensurate in scope with IVR Report.
Even if the evidence of commercial success is commensurate in scope
with the claims 11 and 22, we agree with the Examiner (Ans. 90) that
Appellant has not sufficiently demonstrated that the commercial success was
directly derived from the invention claimed, see Mageli, 470 F.2d at 1384.
With respect to claim 11, Appellant points to Section 1.2.3 of the IVR
Report, which states that “U.S. West Communications found that businesses
experienced a 20% increase in requests for additional products and services
mentioned on hold, and TeleMarketing Magazine (in a 1992 survey) found
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that 16-20% of callers make a purchase decision based on information heard
while on hold.” (App. Br. 62.) However, the IVR Report does not provide
any further description of the IVR system or if it is the same IVR system
used by WordPerfect Corporation with live broadcasts by “queue jockeys.”
With respect to claim 22, Appellant points to Section 1.2.5 of the IVR
Report, which describes that “[o]ne popular use of ANI is the ‘screen pop.’”
(App. Br. 66.) However, the IVR Report does not provide any evidence of
commercial success related to the ANI.
Moreover, the IVR report states that “[f]rom 1993 to 2000, IVR
vendors’ revenues grew 14.1% per year – 2.5x faster than the economy as a
whole.” (P. 5, § 1.3.) The IVR report further states that “IVR systems range
from simple to very complex” with cost “depending on the number of ports
. . . and their technical and functional capabilities.” (P. 2, § 1.1.) Such
functional capabilities can include assigning significance to callers based on
call sequence (p. 2-3, § 1.2.1), generating random numbers for interactive
contests and promotions (p. 3, § 1.2.2), the IVR use of broadcast messages
(p. 3-4, § 1.2.3), the use of dialed number identification service (DNIS)
(p. 4-5, § 1.2.4) and the use of automatic number identification (ANI) (p. 5,
§ 1.2.5). However, the IVR Report has not identified the specific
combinations of functionalities described in Section 2.1 directly attributable
to the IVR vendors’ revenue growth. See Mageli, 470 F.2d at 1384.
Examples of Statements
Appellant has made no showing that the purported evidence of
commercial success in the Examples of Statements is commensurate in
scope with claims 11 and 22. In all instances, statements from “industry
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leaders” do not articulate that the commercial success of interactive call
processing technology is related to the claims of the ‘023 patent. Instead,
such industry leaders generally refer to the “patent portfolio” (see, e.g., ¶¶ 9,
11, 30, 32), “Katz patents” (see, e.g., ¶¶ 6, 7, 20) or similar language in
reference to multiple patents.
Therefore, the Examiner has properly considered Appellant’s
objective evidence of purported commercial success in rejecting claim 11
under 35 U.S.C. § 103(a) as obvious over the combination of Moosemiller
and either Butcher or Balzer and in rejecting claim 22 under 35 U.S.C.
§ 103(a) as obvious over the combination of De Bruyn and either Maxon or
Streisand.
We conclude that the Examiner has not erred in rejecting claim 11
under 35 U.S.C. § 103(a). Claims 12-14 depend from independent claim 11,
and we likewise conclude that the Examiner has not erred in rejecting these
claims under 35 U.S.C. § 103(a) for the reasons discussed with respect to
independent claim 11.
We further conclude that the Examiner has not erred in rejecting
claim 22 under 35 U.S.C. § 103(a). Claims 23-25 depend from independent
claim 22, and we likewise conclude that the Examiner has not erred in
rejecting these claims under 35 U.S.C. § 103(a) for the reasons discussed
with respect to independent claim 22.
CONCLUSIONS
Based on the findings of fact and analysis above, we conclude that:
(1) The Examiner has erred in rejecting claims 11-14 under 35 U.S.C.
§ 102(b) as anticipated by Moosemiller.
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(2) The Examiner has not erred in rejecting claims 22-25 under 35
U.S.C. § 102(b) as being anticipated by De Bruyn.
(3) The Examiner has not erred in rejecting claims 22-25 under 35
U.S.C. § 102(b) as being anticipated by Daudelin.
(4) The Examiner has not erred in rejecting claims 11-14 under
35 U.S.C. § 103(a) as being obvious over Moosemiller and Butcher or
Balzer.
(5) The Examiner has not erred in rejecting claims 22-25 under
35 U.S.C. § 103(a) as being obvious over De Bruyn and Maxon or Streisand.
DECISION
(1) The rejection of claims 11-14 under 35 U.S.C. § 102(b) as
being anticipated by Moosemiller is reversed.
(2) The rejection of claims 22-25 under 35 U.S.C. § 102(b) as
being anticipated by De Bruyn is affirmed.
(3) The rejection of claims 22-25 under 35 U.S.C. § 102(b) as
being anticipated by De Bruyn is affirmed.
(4) The rejection of claims 11-14 under 35 U.S.C. § 103(a) as
being obvious over Moosemiller and Butcher or Balzer is affirmed.
(5) The rejection of claims 22-25 under 35 U.S.C. § 103(a) as
being obvious over De Bruyn and Maxon or Streisand is affirmed.
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
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FOR PATENT OWNER:

REENA KUYPER, ESQ.
BYARD NILSSON, ESQ.
9255 SUNSET BOULEVARD
SUITE 810
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FOR THIRD PARTY REQUESTER:

DONALD E. STOUT, ESQ.
ANTONELLI, TERRY, STOUT & KRAUS, LLP
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