Ex parte Alleman

Board of Patent Appeals and Interferences

Aug 13, 1998

08252984 (B.P.A.I. Aug. 13, 1998)

Application filed June 2, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES H. ALLEMAN
_____________
Appeal No. 96-2121
Application 08/252,9841
______________
ON BRIEF
_______________
Before BARRETT, LEE and CARMICHAEL, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's non-final rejection of the twice rejected claims 18-
27. Claims 1-17 have been canceled. No claim has been allowed.
References relied on by the Examiner
IDT machine disclosed in (1) Business Week article "Rome To Bonn
Via New Jersey", issued April 13, 1992, and (2) Business Week
article "How Overseas Callers Can Get Stateside Rates", issued
December 2, 1991.
Kahn et al. (Kahn) 4,086,438 Apr. 25, 1978
Appeal No. 96-2121
Application 08/252,984
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Billinger et al. (Billinger) 4,769, 834 Sep. 06, 1988
Srinivasan 5,185,782 Feb. 09, 1993
The Rejections on Appeal
Claims 18-27 have been rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and specifically claim that subject matter which the
appellant regards as his invention.
Claims 18 and 23 have been rejected under 35 U.S.C. § 102(a)
as being anticipated by the IDT machine disclosed in the Business
Week articles.
Claims 18-27 have been rejected under 35 U.S.C. § 103 as
being unpatentable over the IDT machine disclosed in the Business
Week articles.
Claims 18-27 have been rejected under 35 U.S.C. § 103 as
being unpatentable over Kahn, Billinger, and Srinivasan.
The Invention
The invention is directed to a system and method for making
a telephone connection between a caller outside of the United
States to a called telephone station as if it were a call
originating in the United States. There are two independent
claims, i.e., claim 18, an apparatus claim, and claim 23, a
process claim. Claim 18 is representative and is reproduced
Appeal No. 96-2121
Application 08/252,984
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below:
18. A system for establishing a telephone communication
link between a subscriber telephone station and a
destination telephone station, both being connected through
a telephone exchange, comprising:
control means operable for managing a database of
caller information;
storage means connected to the control means and
operable for storing the database of caller
information including a preassigned direct inward
dial telephone number associated with a subscriber
and a subscriber telephone number associated with
the subscriber telephone station;
first telephone connection means connected to the
control means and operable for connecting through
a trunk line to the telephone exchange and for
receiving an incoming direct inward dial telephone
number on the trunk line from the telephone
exchange as part of an incoming call attempt from
the subscriber telephone station, the incoming
direct inward dial telephone number indicating the
number called by the subscriber;
second telephone connection means connected to the
control means and operable for dialing out through
the telephone exchange;
the control means further operable for comparing
the incoming direct inward dial telephone number
to the preassigned direct inward dial telephone
number and, if the incoming direct inward dial
telephone number matches the preassigned direct
inward dial telephone number associated with the
subscriber, the control means is further operable
for:
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Application 08/252,984
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calling the subscriber remote telephone
number through the first telephone connection
means after the subscriber terminates the
incoming call attempt and connecting to the
subscriber telephone station;
receiving from the subscriber a calling
telephone number for the destination station;
calling the calling telephone number through
the second telephone connection means; and
for
bridging the first telephone connection means
to the second telephone connection means so
that the subscriber is connected to the
destination.
Opinion
The Indefiniteness Rejection
With regard to claim 18, the examiner objects to the
appellant’s use in claim 18 of the language "caller information."
According to the examiner, the reference should, instead, be made
to "subscriber information," since only a subscriber’s
information would be stored in the database. The examiner’s view
is misplaced. There is no requirement in the claim that every
caller must have corresponding stored information in the
database. Subscribers are a subset of all possible callers and
thus are themselves callers. We see nothing indefinite about the
appellant’s defining that the database stores caller information.
With regard to line 22 of claim 18, the examiner asserts
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that the reference "the subscriber remote telephone number" has
no antecedent basis. We disagree. The appellant correctly
points out that the subscriber remote telephone number is the
previously set forth subscriber number and it is inherently or
naturally "remote" because the subscriber is connected through a
telephone exchange. We are construing "remote" according to its
broadest reasonable interetation in the context of this
invention. Note also that only a reasonable degree of precision
and particularity is required. See, e.g., In re Johnson, 558
F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA 1977).
With regard to both claim 18 and claim 23, the examiner
objects to the appellant’s reciting "connecting to the subscriber
telephone station" as being indefinite. The examiner states that
it is not clear what is being connected to the subscriber
telephone station. We disagree. It is quite clear that in claim
18 it is the claimed system and in claim 23 the performer of the
claimed method that is "connecting to the subscriber telephone
station." In the answer, the examiner indicates that because the
system of claim 18 has many components, the appellant must
specifically recite which one is connecting to the subscriber
telephone station. That is incorrect. The appellant need not
recite the invention in more detail once it is made clear that
the system is connecting to the subscriber telephone station.
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Breadth should not be confused with indefiniteness. In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971).
For the foregoing reasons, we do not sustain the rejection
of claims 18-27 under 35 U.S.C. § 112, second paragraph.
The anticipation rejection
In Paper No. 26, dated January 20, 1995, the examiner stated
in page 3 that claims 18 and 23 are rejected as being anticipated
by the IDT machine disclosed in the Business Week articles and
admitted by the appellant as prior art. Whether or not the
appellant admitted that the IDT machine constitutes prior art is
irrelevant. An admission is not necessary for the IDT machine to
be regarded as prior art.
A plethora of evidence has been provided by the examiner to
show or demonstrate that the IDT machine was in existence and
operational in the United States more than one year prior to the
"April 24, 1992" effective filing date of the appellant’s
application. See the examiner’s answer at page 18 and Exhibit E1
attached to the examiner’s answer. The appellant chose not to
reply to this body of evidence and has not disputed that the IDT
machine was in existence and operational in the United States
more than one year prior to the appellant’s effective filing date
of April 24, 1992. On pages 16 to 17 of the answer, the examiner
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Application 08/252,984
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further noted that an article submitted by the appellant, "The
Privateers: International Telephone Calls," The Economist,
September 12, 1992 (copy attached), indicates that the IDT
machine has been in operation for 2 and ½ years. In that regard,
the appellant filed no reply and has not disputed the examiner’s
view.
It appears that the § 131 affidavit submitted by the
appellant was only intended to antedate the Business Week
articles rather than the IDT machine itself. But, as is
clarified by the examiner on pages 14-15 of the answer, the prior
art relied on is the IDT machine, and not the Business Week
articles. Accordingly, since the IDT machine pre-dates the
appellant’s effective filing date by more than one year, the
applicable provision of 35 U.S.C. § 102 is § 102(b) and thus the
appellant may not antedate it by use of any § 131 affidavit. The
IDT machine constitutes statutory-bar type of prior art under 35
U.S.C. § 102(b).
The appellant also incorrectly argues that the anticipation
rejection is improperly based on more than a single prior art
reference. The argument is misplaced, since the actual prior art
in this case is the IDT machine, and not the two Business Week
articles which discuss it. The Business Week articles merely are
evidence of the pre-existence of the IDT machine, like the type
Appeal No. 96-2121
Application 08/252,984
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of evidence presented by the examiner in his Exhibit E1. See,
e.g., In re Epstein, 32 F.3d 1559, 1565, 31 USPQ2d 1817, 1821
(Fed. Cir. 1994).
Nonetheless, the IDT machine still must meet each and every
feature of the invention claimed in claims 18 and 23 to support
an anticipation rejection of those claims. In our view, the
examiner has not established prima facie anticipation.
Each of claims 18 and 23 requires that an incoming direct
inward dial telephone number be received from a telephone
exchange as part of an incoming call attempt from the subscriber
telephone station, and that this received direct inward dial
number be compared with preassigned direct inward dial telephone
numbers stored in a database and associated with corresponding
subscribers. When a match is found, a stored telephone number
for that subscriber is used to call the subscriber. The examiner
has not pointed to anything which indicates that this is how the
IDT machine operates. It is not at all clear and it has not been
established that the IDT machine makes use of incoming direct
inward dial numbers generated by the telephone network or
exchange, much less makes use of such in the same manner as is
required by the appellant’s claims.
There are many ways to ascertain the number of the calling
Appeal No. 96-2121
Application 08/252,984
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station to call back a subscriber. For instance, the caller
identification information provided by the telephone network or
exchange may be used. Alternatively, there may be a dedicated
line per subscriber, and if the line rings the caller is
simultaneously identified. According to the New York Times
article referenced on page 4 of the appellant’s specification
(copy attached), the IDT machine operates by having customers buy
access to two telephone lines and by using a black box containing
an automatic dialer and a device that makes conference calls
possible. The IDT machine may have employed dedicated lines for
each customer, like the acknowledged prior art described on pages
3-4 of the appellant’s specification. Note that even the
examiner has found, on page 7 of the answer, that the IDT machine
provides each subscriber with a unique, dedicated input line. If
that is the case, the IDT machine would have no need to receive
and process an incoming direct input dial number provided by the
telephone exchange.
For the foregoing reasons, we do not sustain the rejection
of claims 18 and 23 under 35 U.S.C. § 102 as being anticipated by
the IDT machine.
The obviousness
rejection over the IDT machine
The examiner has failed to demonstrate that the IDT machine
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Application 08/252,984
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reasonably would have suggested making use of the incoming direct
inward dial number provided by a telephone network or exchange to
identify the calling subscriber and to search for a corresponding
telephone number for the subscriber. There exists no reasonable
explanation as to why in light of the IDT machine the features of
the appellant’s claimed invention relating to use of the incoming
direct inward dial number would have been obvious to one with
ordinary skill in the art. The examiner presented no evidence to
support a conclusion that the IDT machine would have reasonably
suggested making use of the direct inward dial number provided by
the telephone network or exchange to identify the calling
subscriber and to ascertain the subscriber’s number by searching
a database of preassigned direct inward dial numbers.
Additionally, the examiner has found (answer at 7) that the
IDT machine operates by using unique dedicated lines for each
subscriber. That is how the prior art as acknowledged by the
appellant in the specification operates. It has not been
explained how that would have reasonably suggested the
appellant’s claimed invention.
For the foregoing reasons, we do not sustain the rejection
of claims 18-27 under 35 U.S.C. § 103 as being unpatentable over
the IDT machine.
Appeal No. 96-2121
Application 08/252,984
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The obviousness rejection over
Kahn, Billinger, and Srinivasan
This combination of references still lacks a reasonable
suggestion for using the incoming direct inward dial number
provided by the telephone network or exchange to identify the
caller and to ascertain the caller’s number by searching a
database of preassigned direct inward dial numbers. Srinivasan,
apparently relied on by the examiner for this feature, discloses
a system which collects both the automatic number identification
information (ANI) and direct inward dial number (DID) provided by
the telephone network or exchange, but uses only ANI which
indicates the calling number to search a database to determine if
the caller is a valid account-holder. See Srinivasan in column
6, lines 5-17. The examiner cites Srinivasan only for teaching
use of ANI and DID in telecommunication services (answer at 10).
However, the appellant’s claimed invention is much more specific.
In the appellant’s claimed invention, it is the direct inward
dial number received from the exchange that is used for looking
up a database of preassigned direct inward dial numbers, for
finding out the telephone number of the caller. It has not been
shown that this is not suggested by any reasonable combination of
Appeal No. 96-2121
Application 08/252,984
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Kahn, Billinger and Srinivasan.
Kahn discloses a call back system wherein the caller has to
manually enter a security code for identification. Billinger
discloses the use of ANI, automatic information on the number of
the calling party, not DID, information on the number called, to
ascertain the identity of a calling subscriber on a resell
telephone communications system. Srinivasan, as described above,
does not teach look up of any preassigned list of direct inward
dial numbers to ascertain the identity or call back number of the
calling party. The combination of these references do not
reasonably suggest the appellant’s claimed invention.
In footnote 3 in the answer, the examiner makes further
reference to other items of prior art. It should be noted,
however, that these references were not positively stated or
otherwise included in the rejection and thus cannot be properly
relied on to show a missing feature. In re Hoch. 428 F.2d 1341,
1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). In any event, the
examiner has not asserted that any of these items of prior art
discloses using the direct inward dial number provided by the
telephone network or exchange to identify a calling subscriber
Appeal No. 96-2121
Application 08/252,984
It should be noted, however, that this rejection should be stated as2
being under 35 U.S.C. § 102(b), not § 102(a).
13
and for searching a database of preassigned direct inward dial
numbers to ascertain the subscriber’s telephone number or other
personal information. We cannot simply assume that they do.
For the foregoing reasons, we do not sustain the rejection
of claims 18-27 under 35 U.S.C. § 103 as being unpatentable over
Kahn, Billinger, and Srinivasan.
Conclusion
The rejection of claims 18-27 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and specifically claim that subject matter which the
appellant regards as his invention, is reversed.
The rejection of claims 18 and 23 under 35 U.S.C. § 102(a)
as being anticipated by the IDT machine disclosed in the Business
Week articles is reversed.2
The rejection of claims 18-27 under 35 U.S.C. § 103 as being
unpatentable over the IDT machine disclosed in the Business Week
articles is reversed.
The rejection of claims 18-27 under 35 U.S.C. § 103 as being
unpatentable over Kahn, Billinger, and Srinivasan is reversed.
Appeal No. 96-2121
Application 08/252,984
14
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Appeal No. 96-2121
Application 08/252,984
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John P. Sutton
Bryan, Hinshaw,
Cohen & Barnet
425 California Street
Suite 900
San Francisco, CA 94101