Ex parte Gammino

Board of Patent Appeals and Interferences

Mar 12, 1998

08186820 (B.P.A.I. Mar. 12, 1998)

Application for patent filed January 25, 1994. According1
to applicant, the application is a continuation of Application
07/911,115 filed July 9, 1992.
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(2) is not binding precedent of the Board.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. 57
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN R. GAMMINO
_____________
Appeal No. 97-4150
Application 08/186,8201
______________
HEARD: March 3, 1998
_______________
Before THOMAS, HAIRSTON, and FLEMING, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
Appeal No. 97-4150
Application No. 08/186,820
Although claims 8, 14, 19 and 21 through 23 were2
officially canceled (paper number 44), claims 6, 12 and 17 were
not officially canceled by amendment (paper number 40) because
the record indicates that the examiner (paper number 42) denied
entry of this amendment. Inasmuch as appellant and the examiner
both agree (Brief, page 3, and Answer, page 1) that claims 6, 12
and 17 are not on appeal, we will limit our review to the
appealed claims 1 through 5, 7, 9 through 11, 13, 15, 16, 18, 20
and 24 through 58.
2
DECISION ON APPEAL
This appeal involves claims 1 through 5, 7, 9 through 11,
13, 15, 16, 18, 20 and 24 through 58.2
The disclosed invention relates to a telecommunications
method and apparatus for evaluating a third plurality of dialing
signals in a dialing sequence to determine whether the dialing
signals are located in the dialing sequence to accomplish
international dialing. If the third plurality of dialing signals
are located in a position for international dialing, then the
telecommunications apparatus prevents the establishment of an
international telephone call.
Claims 1 and 4 are illustrative of the claimed invention,
and they read as follows:
1. Telecommunications apparatus for selectively preventing
establishment of a telephone call to a telephone number having a
central office exchange code, said telecommunications apparatus
being capable of transmitting a dialing sequence which includes a
first plurality of dialing signals, followed by a second
Appeal No. 97-4150
Application No. 08/186,820
3
plurality of dialing signals followed by a third plurality of
dialing signals, said telecommunications apparatus comprising:
means for receiving said dialing sequence prior to receiving
said central office exchange code;
means for evaluating said third plurality of dialing signals
and for preventing establishment of said telephone call if said
evaluated third plurality of dialing signals are determined to a)
be in a location in said dialing sequence to accomplish
international dialing and b) be respective predetermined signals
which are used for international dialing irrespective of said
second plurality of dialing signals.
4. A method for at least partially preventing operation of a
telecommunications device which is capable of transmitting a
plurality of signal values, said method comprising the steps of:
a) receiving said plurality of signal values;
b) comparing at least two of said plurality of signal values
respectively located at predetermined locations used for
international dialing with respective predetermined digit
sequences which are used for international dialing and comparing
a further signal value located at a further predetermined
location with a further predetermined signal value, wherein a
plurality of further signal values are located between said at
least two of said plurality of signal values and said further
signal value; and
c) at least partially preventing operation of said
telecommunications device irrespective of said plurality of
further signal values if said at least two of said plurality of
signal values and any one of said respective predetermined digit
sequences are found to be identical in step b) and if said
further predetermined signal value is found to be identical to
said further signal value.
The references relied on by the examiner are:
Jackson 4,012,602 Mar. 15, 1977
Bimonte et al. (Bimonte) 4,577,066 Mar. 18, 1986
Arbabzadah et al. (Arbabzadah)4,794,642 Dec. 27, 1988
Appeal No. 97-4150
Application No. 08/186,820
The prior art listing (Answer, page 4) does not list any3
regulations. In the rejections, we assume that the examiner is
alluding to FCC Regulations that prevent “the blockage of
interstate calls from public telephones when these calls are
placed using certain access codes” (specification, page 5).
The rejection of claims 30 through 34 under the first4
paragraph of 35 U.S.C. § 112 has been withdrawn by the examiner
(Supplemental Answer, page 3).
4
TCI TEL Controlling, TC-1013SL Programmable Call Controller For
Selective Call Control, 1990, pages 1 through 11.
FCC Regulations3
Claim 42 stands rejected under the second paragraph of
35 U.S.C. § 112 as being indefinite for failing to particularly4
point out and distinctly claim the subject matter which appellant
regards as the invention.
Claims 1 through 3, 15, 16, 18, 20, 24 through 26, 29
through 32, 35 through 37, 39 through 41, 43 through 45, 47, 48,
50, 51, 53, 54 and 56 through 58 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Bimonte in view of FCC
Regulations.
Claims 4, 5, 7, 9 through 11, 13, 27, 28, 33, 34, 38, 42,
49, 52 and 55 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bimonte in view of FCC Regulations and Jackson.
Appeal No. 97-4150
Application No. 08/186,820
5
Claims 1 through 5, 7, 9 through 11, 13, 15, 16, 18, 20 and
24 through 58 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Arbabzadah.
Claims 1 through 5, 7, 9 through 11, 13, 15, 16, 18, 20 and
24 through 58 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the TCI publication.
Reference is made to the briefs and the answers for the
respective positions of the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will reverse all of the rejections.
In the indefiniteness rejection, the examiner states
(Answer, page 6) that:
Claim 42 is confusing because it is unclear under
what condition(s) would the means prevent the apparatus
from transmitting at least a portion of the sequence.
It appears that the means will always and
unconditionally prevent the apparatus from transmitting
at least a portion of any dialing sequence.
Claim 42 depends from claims 2 and 40. Claim 2 has “means for
evaluating said third plurality of dialing signals in a location
in said dialing sequence used for international dialing by
determining if said third plurality of dialing signals are used
to accomplish international dialing,” and “means for transmitting
said dialing sequence to said communications pathway if said
Appeal No. 97-4150
Application No. 08/186,820
6
evaluated third plurality of dialing signals are determined to
not be predetermined signals which are used to accomplish
international dialing irrespective of said second plurality of
dialing signals.” In claim 40, the “means for evaluating said
third plurality of dialing signals” identifies the first
plurality of dialing signals and the second plurality of dialing
signals in order to identify the third plurality of dialing
signals. Claim 42 further comprises “means for preventing said
telecommunications apparatus from transmitting at least a portion
of said dialing sequence to said communications pathway.” None
of the “means” in claims 2, 40 or 42 “will always and
unconditionally prevent the apparatus from transmitting at least
a portion of any dialing sequence” (Answer, page 6). If the
dialing sequence in claim 2 is “not” for international dialing,
then the telecommunications apparatus will transmit the dialing
sequence to the communications pathway. On the other hand, if
the dialing sequence is for international dialing, then the
“means” in claim 42 will certainly stop the transmission of the
dialing sequence to the communications pathway. The
indefiniteness rejection is reversed because there is nothing
indefinite about claim 42.
Bimonte discloses a telephone interexchange call routing
Appeal No. 97-4150
Application No. 08/186,820
7
system. The examiner indicates (Answer, page 8) that “[t]he
reference differs from the claims in that the reference prevents
all 10-XXX or 950-1XXX while the claims prevent 10-XXX or
950-1XXX calls if it is determined that the call is an
international call.” It is the examiner’s belief (Answer,
page 8) that “[s]ince interstate calls (e.g., long distance
calls) cannot be prevented according to the FCC Regulations, then
the Bimonte system can only prevent intrastate (e.g., local) and
international 10-XXX or 950-1XXX calls.” The examiner concludes
(Answer, pages 8 and 9) that “[s]ince international calls are
relatively expensive and it is known that fraudulent
international calls cost the industry millions of dollars every
year, cause fraud-related crimes and allow ‘bad guys’ to
monopolize pay phones, it would have been obvious to one of
ordinary skill in the art to use Bimonte for preventing
international 10-XXX or 950-1XXX calls.” Appellant’s response
(Brief, pages 12 and 13) to the rejection is that:
Nothing in Bimonte performs the act or function of
preventing or restricting the dialing of international
calls based upon the third dialing signals being
determined to be international dialing signals. As
concerns the dialing of 10XXX codes referred to in
Bimonte, Appellant’s claimed invention, as
distinguished from Bimonte, does not restrict dialing
based on the use of predetermined 10XXX codes. To put
the matter in simple terms, Appellant’s claimed
Appeal No. 97-4150
Application No. 08/186,820
8
invention, for example, will prevent a call dialed with
the following sequence: 1 800 950 1XXX 01. The digits
01 of course mean that the call is an international
one. Bimonte will allow this call to go through
because it does not prevent a call based on its
determination that the call is international.
Appellant’s claimed invention will also prevent the
call dialed with the following sequences: 950-1XXX-01
and 10XXX-01. By contrast, Bimonte will allow
950-1XXX-01 calls if the carrier accepts 950-XXXX calls
(see Bimonte, col. 24 line 17). Bimonte will also
allow 10XXX-01 calls if the carrier accepts 10XXX calls
and the dialing is not originating from a terminal from
which any dialing or 10XXX dialing is prohibited. . . .
Appellant summarizes his arguments concerning Bimonte by stating
(Brief, page 13) that “[a]lthough Bimonte discloses the
determination as to whether a call is an international call, no
prevention of the call is disclosed in Bimonte on the basis of
that determination, i.e. the call being an international call.”
With respect to the FCC Regulations, appellant argues (Brief,
page 15) that:
FCC Rules 47 C.F.R. 64.704 and 64.706 state that
(certain types of) access to interstate carriers cannot
be blocked. By contrast, Appellant’s claimed invention
relates to the blocking of certain calls when
international dialing digits are detected in a certain
location in the dialing sequence. Specifically,
Appellant evaluates a third plurality of dialing digits
in the dialing sequence. Appellant’s evaluation of the
third plurality of dialing digits is completely
unrelated to Title 47 of the FCC Regulations.
Again, the FCC Regulations state that blocking
certain calls is prohibited. Compare this to
Appellant’s claimed invention which legally blocks
certain calls without violating the FCC Regulations.
Appeal No. 97-4150
Application No. 08/186,820
9
We agree with appellant that Bimonte and the FCC Regulations
neither teach nor would they have suggested the prevention of
international calls based upon a determination of specific digits
in a dialing sequence. Accordingly, the obviousness rejection of
claims 1 through 3, 15, 16, 18, 20, 24 through 26, 29 through 32,
35 through 37, 39 through 41, 43 through 45, 47, 48, 50, 51, 53,
54 and 56 through 58 based upon the combined teachings of Bimonte
and the FCC Regulations is reversed.
The obviousness rejection of claims 4, 5, 7, 9 through 11,
13, 27, 28, 33, 34, 38, 42, 49, 52 and 55 based upon the combined
teachings of Bimonte, the FCC Regulations and Jackson is reversed
because Jackson’s teachings of prohibiting all but local calls by
disabling the telephone dial circuit “[w]hen the number of digits
dialed exceeds the minimum number required to place a local
telephone call” (column 1, lines 51 through 61) do not cure the
noted shortcomings in the combined teachings of Bimonte and the
FCC Regulations (Brief, page 18).
Arbabzadah discloses control equipment in a customer-owned
public telephone station that prevents a user from making
unauthorized telephone calls on a telephone line (column 1, lines
50 through 53). The equipment is controlled by CPU 106 (Figure
1), and a table of calls to be blocked are stored in EEPROM 113
Appeal No. 97-4150
Application No. 08/186,820
10
(column 3, lines 1 through 12). According to the examiner
(Answer, page 11):
Arbabzadah et al teaches the general scheme of
blocking certain types of calls but does not
specifically teach blocking international calls.
However, a) it is well known in the art (and
acknowledged by Appellant) that fraudulent
international calls cost the industry millions of
dollars every year, cause fraud-related crimes and
allow “bad guys” to monopolize pay phones and b) it is
well known that international calls can be made by
using access codes such as 10-XXX-01.... or
950-1XXX1.... (or the like). The above points (a & b)
represent notoriously well-known FACTS.
Thus, if the owner of the Arbabzadah et al public
telephone desires to prevent the users from making
international calls, this can obviously be achieved by
simply programming the sequence 10-XXX-01 (or the like)
in the table as a prohibited sequence. Programming a
sequence such as 10-XXX-01 or the like is within the
teachings of Arbabzadah et al.
We agree with the examiner that the skilled artisan armed with
the teachings of Arbabzadah would have known to place
international telephone numbers in the EEPROM table 113. On the
other hand, we agree with the appellant that the skilled artisan
would have had to look to appellant’s disclosure and claimed
invention for a teaching of specifically “‘looking for’ a third
plurality of dialing digits and preventing a telephone call if
the third plurality of dialing digits are international dialing
digits” (Brief, pages 19 through 22). The examiner cannot rely
Appeal No. 97-4150
Application No. 08/186,820
11
on prohibited hindsight to establish the obviousness of the
claimed invention. For this reason, the obviousness rejection of
claims 1 through 5, 7, 9 through 11, 13, 15, 16, 18, 20 and 24
through 58 based upon the teachings of Arbabzadah is reversed.
A stored table of prohibited calls in the TCI publication
includes direct dialed international calls (pages 7 and 8). The
examiner states (Answer, page 13) that “if the owner of the TCI
device desires to prevent users from making international calls
by using access codes, this can obviously be achieved by simply
programming the sequence 10-XXX-01 (or any other similar
sequence) in the deny table.” Appellant’s response (Brief, page
23) is that:
As with the Arbabzadah reference, the TCI
reference does not provide a suggestion to be
programmed as . . . argued. More specifically, the TCI
reference does not specify any motivation to program
the TCI device as recited by Appellant’s claims to
evaluate the third plurality of dialing digits and to
block the call if these digits are international
dialing digits. Appellant’s statements regarding the
Arbabzadah reference apply equally to the rejection
based upon the TCI reference. The fact that TCI “could
be” programmed to read on Appellant’s claims is
irrelevant without a teaching or motivation from the
art to make the desired modification.
We agree with appellant that “[h]indsight, alone, is an improper
basis to reject Appellant’s claims” (Brief, page 24). The
obviousness rejection of claims 1 through 5, 7, 9 through 11, 13,
Appeal No. 97-4150
Application No. 08/186,820
12
15, 16, 18, 20 and 24 through 58 based upon the teachings of the
TCI publication is reversed.
In the absence of a prima facie case of obviousness, we see
no need to comment on appellant’s evidence of secondary
considerations.
DECISION
The decision of the examiner is reversed because of the
reversal of all outstanding rejections.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 97-4150
Application No. 08/186,820
13
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