Ex Parte Horton

Patent Trial and Appeal Board

Oct 29, 2013

11041420 (P.T.A.B. Oct. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHAD D. HORTON
__________

Appeal 2011-011094
Application 11/041,420
Technology Center 2600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for processing telephone calls. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellant identifies the Real Party in Interest as Verizon
Communications, Inc. (see App. Br. 3).
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Statement of the Case
Background
The Specification teaches that a “method for processing a call request
is provided. The method includes receiving a group of dialed digits. The
dialed digits include a 3-digit code, followed by a 4-digit code, followed by
a 5-digit code. The method further includes establishing a call using the
group of dialed digits” (Spec. 2 ¶ 0006).
The Claims
Claims 1-9 and 11-28 are on appeal. Claim 1 is representative and
reads as follows:
1. A method comprising:
receiving, by a switch device of a communication system, a
group of dialed digits of a call request, the dialed digits including a 3-
digit code, followed by a 4-digit code, followed by a 5-digit code; and
establishing, by the switch device, a call using the group of
dialed digits.

The issues

A. The Examiner rejected claims 1-7, 9, 11-13, 15-22, 24, and 26-28
under 35 U.S.C. § 103(a) as obvious over Bauer2 and ATIS3 (Ans. 4-12).
B. The Examiner rejected claims 8, 14, 23, and 25 under 35 U.S.C.
§ 103(a) as obvious over Bauer, ATIS, and Morrisey4 (Ans. 12-13).

2 Bauer, W., US 6,061,450, issued May 9, 2000.
3 Alliance for Telecommunications Industry Solutions, North
American Numbering Plan (NANP) Expansion Reference
Document, Industry Number Committee, August 16, 2002,
hereinafter referred to as “ATIS”.
4 Morrisey et al., US 5,418,844, issued May 23, 1995.
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A. 35 U.S.C. § 103(a) over Bauer and ATIS
The Examiner finds that “Bauer discloses a method comprising:
receiving, by a switch device of a communication system, a group of dialed
digits of a call request (col. 3 lines 66 - col. 4 lines 38); and establishing, by
the switch device, a call using the group of dialed digits (col. 3 lines 66 - col.
4 lines 38)” (Ans. 4-5).
The Examiner finds that ATIS teaches “that it was a matter of design
choice that the dialed digits include a 3-digit code (page 82, section B.2.3),
followed by a 4-digit code (page 92, section B.3.4), followed by a 5-digit
code (page 87, section B.3.1)” (Ans. 5). The Examiner finds that ATIS
teaches that “any of the three codes (i.e., area code, community code, and/or
directory number) may be expanded by one bit to accommodate more unique
combination of numbering sequences, i.e. it is a design choice of the
inventor” (Ans. 5).
The Examiner finds it obvious to “modify Bauer with an expanded
dialing plan as taught by ATIS for the purposes of handling an expanding
number of subscribers due to population expansion” (Ans. 5).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Bauer and ATIS render obvious
“dialed digits including a 3-digit code, followed by a 4-digit code, followed
by a 5-digit code” as required by the claims?
Findings of Fact
1. Bauer teaches that
Intelligent Call Diverter (ICD) 202 determines whether an
outgoing call is local or long distance, and routes the call
accordingly. . . . ICD 202 stores the digits dialed by the
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caller and analyzes the digits to determine whether the call is
local or long distance. If the call is local, ICD 202 sends an
offhook signal to LEC 106. . . . . If the call is long distance,
ICD 202 routes it through path 204, to headend 206.

(Bauer, col. 3, l. 67 to col. 4, l. 12).
2. Bauer teaches “ICD 202 takes over the switching functions of
LEC 106” (Bauer, col. 4, ll. 23-24).
3. ATIS discusses “various alternatives for modifying/expanding
the NANP format” for telephone numbers (ATIS 1, section 1.0) in order “to
meet the long-term needs of the telecommunications community” (ATIS 1).
4. ATIS teaches that the
structure of the ITU Recommendation E.164 number
is made up of the following fields:

where:
CC = Country Code
NDC = National Destination Code
SN = Subscriber Number
n = the number of digits in the Country Code
f. The length of the National (Significant) Number in the
expanded NANP will be limited to twelve digits.

(ATIS 4).
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5. ATIS teaches

“NANP Format Expansion Options – This section lists the most probable
options for expanding the existing 10-digit (3+3+4) format of the NANP”
(ATIS 24).
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6. ATIS teaches a summary reproduced below:

(ATIS 16).
7. ATIS teaches that “[a]s the fourth digit in the existing ten-digit
NANP cannot be a ‘0’ or ‘1’, using one of those values in the D digit
position will provide the necessary indication for all switching equipment
and operational systems to ensure identification of an expanded twelve-digit
NANP number” (ATIS 35).
8. ATIS discloses that one option (“Option E3”) to expand the
NANP format “would assign at least a two-digit Network Identification
Code (NIC) immediately after the NPA but preceding the NXX code. . . .
The format would be as follows: NPA (XX) NXX XXXX where:
XX = two digit NIC” (ATIS 82.)
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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Claim 1
Bauer discloses a telephone system that includes “an intelligent call
diverter” that receives a call request and determines whether a dialed call is
local or long distance (FF 1) and handles the call using a switch device (FF
2).
ATIS discloses alternatives for expanding the NANP format in order
to meet long-term needs (FF 3). ATIS teaches that “length of the National
(Significant) Number in the expanded NANP will be limited to twelve
digits” (FF 4). ATIS teaches options with three digit NPA or area codes (see
FF 5, options E4a; FF 6, options 3-A, 3-B, and 3-C). ATIS teaches options
with four digits for the central office (CO)/local exchange codes (see FF 5,
option E4; FF 6 option 3-B). ATIS teaches options with five digit line
numbers (see FF 5, option E6, E6a; FF 6, option 3-C).
The Examiner finds that “if both sections can be expanded as
explained in ATIS then it would have been obvious to one of ordinary skill
in the art to choose a combination where both these sections could be
expanded together to form an expanded 12 digit telephone number” (Ans.
15).
Appellant “submits that ATIS’s separate alleged disclosures of a 3-
digit code (in one numbering scheme), a 4-digit code (in another numbering
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scheme), and a 5-digit code (in yet another numbering scheme), do not
disclose or suggest that these 3-, 4-, and 5-digit codes are, or could be, part
of the same group of dialed digits” (App. Br. 13).
We find that the Examiner has the better position. There is a very
limited set of possible combinations of the number of digits in NPA, CO and
line numbers which would add up to the twelve permitted as the National
(Significant) number (FF 4). If the NANP expansion options disclosed by
ATIS limit the NPA codes to 3, 4, or 5 digits, the CO codes to 3, 4, or 5
digits and the line numbers to 4, 5, or 6 digits, then there are only six
possible combinations which would yield a 12 digit telephone number
(3,3,6; 3,4,5; 3,5,4; 4,3,5; 4,4,4; 5,3,4). We therefore agree with the
Examiner that the particular selection of the species with an NPA code of
three digits, a CO code of four digits, and a line number of five digits is
obvious from the disclosure of these separate elements by ATIS (FF 4-6).
See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
(That the prior art “discloses a multitude of effective combinations does not
render any particular formulation less obvious. This is especially true
because the claimed composition is used for the identical purpose taught by
the prior art.”)
Appellant contends that “ATIS’s disclosure that the above options are
the most probable options for expanding the existing 10-digit format of the
NANP teaches away from the use of a group of digits that includes a 3-digit
code, followed by a 4-digit code, followed by a 5-digit code” (App. Br. 14).
We are not persuaded. While ATIS clearly does not directly teach the
use of a code with 3, 4, and 5 digits as required by claim 1, ATIS does not
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specifically teach away from the use of 3, 4, and 5 digit codes. Disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments. See In re Susi, 440 F.2d
442, 446 n.3 (CCPA 1971).
Appellant “submits that the level of analysis provided by ATIS makes
it clear that one of ordinary skill in the art would not have conceived, in
view of ATIS, a group of dialed digits, the dialed digits including a 3-digit
code, followed by a 4-digit code, followed by a 5-digit code, as recited in
claim 1” (App. Br. 16). Appellant contends that “[i]f such a feature were
obvious, Appellant submits that ATIS would have specifically disclosed the
option and thoroughly analyzed the favorability of the feature (although
Appellant does not admit that ATIS doing so would be sufficient to render
this feature obvious)” (App. Br. 16).
We are not persuaded. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” 550
U.S. at 421. We agree with the Examiner that given the limited number of
possible digit combinations to achieve a twelve digit number, selection of
the digit combinations becomes “a matter of design choice since ATIS
provides the groundwork for how the NANP should be expanded and the
numerous different choices of expanded NANP's so that a person can design
their own choice of an expanded NANP that is not specifically discussed
within ATIS” (Ans. 15-16). This case is therefore, one that falls within the
Supreme Court’s characterization of obviousness as entailing an
improvement that is no “more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
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Claim 28
Appellant contends that “BAUER and ATIS do not disclose or
suggest that a 4-digit code is associated with a plurality of switch devices
of a communication system, as recited in claim 28” (App. Br. 18).
The Examiner finds that
Bauer discloses a logic switch that determines whether or
not a call is for local or long distance (col. 3 lines 66 - col. 4
lines 10). Bauer further discloses analyzing the dialed digits
to determine routing policy (col. 4 lines 5-7). ATIS
specifically discloses analyzing the first digit following an
area [code] is zero (page 35; section 7.3.7). ATIS discloses
that network switches can determine whether a caller is
dialing a ten or twelve digit number by analyzing whether
the fourth and five digits in the telephone number are “0” or
“1”.

(Ans. 17).
We find that the Examiner has the better position. We agree that
when ATIS teaches the use of a four digit code (FF 5-6), the ordinary artisan
would have been able to route the code as local or long distance based upon
the fourth or fifth digits as discussed by the Examiner (Ans. 17). This is
consistent with the teaching by ATIS that “[a]s the fourth digit in the
existing ten-digit NANP cannot be a ‘0’ or ‘1’, using one of those values in
the D digit position will provide the necessary indication for all switching
equipment and operational systems to ensure identification of an expanded
twelve-digit NANP number” (ATIS 35; FF 7).

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Claims 9 and 11-13
Appellant contends that “BAUER and ATIS do not disclose or
suggest receiving, by a switch device of a communication system, a
group of dialed digits that includes three digits, followed by four digits,
followed by five digits, as recited in claim 9” (App. Br. 19).
The Examiner finds that as “supported by ATIS multiple 12- digit
NANP combinations are possible since the hardware is in place to support
such case, and also the interpretation of each digit is also a design choice as
disclosed by ATIS” (Ans. 19).
We find that the Examiner has the better position for the reasons
already given. That is, ATIS teaches options with three digit NPA or area
codes (see FF 5, options E4a; FF 6, options 3-A, 3-B, and 3-C). ATIS
teaches options with four digits for the central office (CO)/local exchange
codes (see FF 5, option E4; FF 6 option 3-B). ATIS teaches options with
five digit line numbers (see FF 5, option E6, E6a; FF 6, option 3-C). We
therefore, agree with the Examiner that the ordinary artisan of ordinary
creativity would have recognized the use of a three digit area code, followed
by a four digit central office code, followed by a five digit line number as no
“more than the predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417.
Claims 15-18
Appellant contends that “BAUER and ATIS do not disclose or
suggest receiving, by a switch device of a communication system, a
group of dialed digits, the dialed digits including a format of NXX
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+XXXX + XXXXX, where N represents a value from 2 to 9 and X
represents a value from 0 to 9” (App. Br. 22).
The Examiner finds that “ATIS suggests that any of the three codes
(i.e., area code, community code, and/or directory number) may be expanded
by one bit to accommodate more unique combination of numbering
sequences, i.e. it is a design choice of the inventor” (Ans. 18-19).
We find that the Examiner has the better position. ATIS teaches
several examples where the first digit of the three digit area code is
represented by “N” where N equals the decimal digits “2” through “9” (see
FF 5, examples E6a, E4a as well as others). ATIS also teaches examples
where the central office code/local exchange is four digits and the line
number is five digits, each represented by “X” where “X” represents the
decimal values from 0 to 9 (see FF 6, example 2-B with four digit CO codes
and example 2-C with five digit line numbers, each represented by X).
Appellant does not identify any unexpected results associated with the
particular arrangement of digits.
Claims 19-22 and 24
Appellant reiterates the argument that Bauer and ATIS do not teach
the 12-digit telephone number comprising a 3-digit area code, followed by a
4-digit central office code, followed by a 5-digit line number code (see App.
Br. 24, 27).
We are not persuaded for the reasons already fully explained above.

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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that Bauer
and ATIS render obvious “dialed digits including a 3-digit code, followed by
a 4-digit code, followed by a 5-digit code” as required by the claims.

B. 35 U.S.C. § 103(a) over Bauer, ATIS, and Morrisey
Appellant contends that “BAUER, ATIS, and MORRISEY do not
disclose or suggest identifying a central office based on a first digit of the
5-digit code, as recited in claim 8” (App. Br. 29). Appellant applies the
same argument to claims 14, 23, and 25 which were subject to the same
rejection.
The Examiner finds that “ATIS discloses the 5-digit code with the
analysis previously argued above. Morrisey discloses analyzing the dialed
digits of the telephone number to determine which central office the call
should be completed through” (Ans. 21). The Examiner finds it obvious
“that the first digit of the code can be used to determine the proper central
office within the NPA region” (Ans. 21).
We find that Appellant has the better position. In the portion cited by
the Examiner, Morrisey teaches that in “normal call processing, the central
office switching system responds to an off-hook and receives dialed digits
from the calling station. The central office switching system analyzes the
received digits to determine if the call is local or not” (Morrisey, col. 10, ll.
58-62).
The Examiner does not identify any teaching in Morrisey that
suggests the use of the first digit of the line number, the five digit code
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component, for identification of the central office. Indeed, the entire
disclosure of the ATIS reference teaches that it is the middle code, the
central office or CO code, which is used to identify the central office, not the
first digit of the line number code. The Examiner provides no reason why
this would have been obvious. “‘[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”’ KSR, 550 U.S. at 418.
SUMMARY
In summary, we affirm the rejection of claims 1-7, 9, 11-13, 15-22,
24, and 26-28 under 35 U.S.C. § 103(a) as obvious over Bauer and ATIS.
We reverse the rejection of claims 8, 14, 23, and 25 under 35 U.S.C.
§ 103(a) as obvious over Bauer, ATIS, and Morrisey.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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