Ex Parte Lasensky et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10947639 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PETER J. LASENSKY, MARK E. FEHRENBACH, and
RICHARD E. ROHMANN
____________________

Appeal 2009-2106
Application 10/947,6391
Technology Center 2100
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Decided:2 June 2, 2009
____________________

Before LEE E. BARRETT, JEAN R. HOMERE, and JOHN A. JEFFERY,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

Dissenting opinion filed by Administrative Patent Judge BARRETT.

1 Filed on September 22, 2004. The real party in interest is Pacific
Datavision Inc. An oral hearing was conducted on this appeal on May 12,
2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 53. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Appellants’ Invention
Appellants invented a method and system for determining an
application associated with a received voice message. (Spec. 5-6, para.
[016].) As shown in the communications system of Figure 2, one or more
transmission devices (702, 704, 706) transmit a voice message to a message
authority (714), which includes one or more collectors (742, 748, 752).
Further, each collector, in turn, includes a receiving device (744, 746, 752)
for receiving a voice message from a respective transmission device. (Spec.
13, para. [038].) The message authority (714) further includes a routing
layer (726) interfaced with the collectors for determining which application
(730-738) to forward the received message to. (Id.) Thus, upon receiving a
voice message, the routing layer (726) correlates the identifier of the
transmission device with the identifier of the receiving device to determine
which of a plurality of applications to route the message to. (Spec. 18-19,
para. [054].)
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Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A message authority comprising:

a collector having a target identification, the collector configured to
receive a voice message from a push-to-talk transmission [sic] device having
a sender identification; and

a routing layer interfaced with the collector, the routing layer
configured to correlate the sender identification and the target identification
to determine an associated application based on the correlation.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Katz US 5,646,839 Jul. 8, 1997

Rejection on Appeal

The Examiner rejects the claims on appeal as follows:
Claims 1 through 53 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Katz.

Appellants’ Contentions
Appellants argue that Katz does not teach a routing layer for
correlating a sender identification with a target identification to determine an
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associated application based on the correlation, as recited in independent
claim 1. (App. Br. 5-10; Reply Br. 5-13.) In particular, Appellants argue
that Katz discloses using only a called number (target id) to identify an
application, whereas the claimed invention allegedly requires correlating a
sender identifier with a target identifier to identify the application. (App. Br.
7, Reply Br. 9-10.)

Examiner’s Findings
The Examiner finds that Katz's disclosure of verifying that a calling
number (sender id) is authorized before using a called number (target id) to
determine where to store a voice message received from the caller teaches
the claimed limitations. (Ans. 7-10.) Further, the Examiner finds that Katz's
disclosure of an employer generating a time card report for a particular
employee also teaches correlating the sender id with the target id to
determine an associated application. (Id.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that the
Katz's disclosure teaches correlating a sender id and a target id to determine
an application associated therewith based on the correlation, as recited in
independent claim 1?

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III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
Katz
1. As depicted in Figure 1, Katz discloses a telephone-based
personnel tracking system wherein an employee (10, 12) calls an employer’s
telephone number (called number) to leave a voice message. In particular,
the employee speaks into a telephone (16) to provide identification data
including access code, and other information indicating his/her arrival or
departure time. The supplied information is routed to a computer (24) in a
central office (20) via a telephone network (22) to generate various reports.
(Col. 5, ll. 1-15.)
2. Upon receiving a call from an employee, an automatic number
identification (ANI) system in the central office identifies the calling number
and subsequently determines whether the calling number is authorized to
leave voice messages. (Col. 6, ll. 26-50.)
3. Upon authenticating the employee’s credentials, the computer
creates in a database a record for the call including the date and time, as well
as the content of the call (e.g. an employee’s arrival/departure time at a
particular work site.) (Col. 3, ll. 30-36, col. 7, ll. 17-32.)
4. The system also provides an employer with the ability to call
various work sites to check whether a designated employee is present. (Col.
8, ll. 3-16.)
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5. The disclosed system evaluates both the employee’s calling
number and the employer’s called number. In particular, the system uses the
called number to determine which services (e.g. leaving voicemail) to
provide an employee with, as well as which report generating function to
provide the employer with. (Col. 11, l. 63- col. 12, l. 3, col. 13, ll. 16-24.)

IV. PRINCIPLES OF LAW
ANTICIPATION
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992)).
Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference. In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude
the public from practicing the prior art, then that claim is anticipated,
regardless of whether it also covers subject matter not in the prior art.

Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999)
(internal citations omitted).

V. CLAIM GROUPING
Appellants argue the patentability of claims 1, 3 through 11, 13
through 25, 27 through 31, and 33 through 53 as a single group. Appellants
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present separate arguments for dependent claims 2, 12, 26, and 32 as a
separate group. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we will
consider claims 3 through 11, 13 through 25, 27 through 31, and 33 through
53 as standing and falling with claim 1. Claims 12, 26, and 32 stand or fall
with claim 2.

VI. ANALYSIS
35 U.S.C. § 102
Independent claim 1 recites in relevant part a routing layer configured
to correlate a sender identification with a target identification to determine
an associated application based on the correlation.
We first consider the scope and meaning of the terms “correlate” and
“determine” which must be given their broadest reasonable interpretation
consistent with Appellant’s disclosure, as explained in In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.

See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims
must be interpreted as broadly as their terms reasonably allow”).
Appellants’ Specification states the following:
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[E]ach project can be associated with a combination of the
receiving device number, or other identifier, and the number, or
identifier associated with transmission device 102, or the user thereof.
Thus, the voice message sent from transmission device 102 can
include the number or identifier associated with transmission device
102. Central system 106 can then look at the combination of the
transmission device identifier and the receiving device identifier to
determine the correct project. (Emphasis added)
(Spec. 11, ¶ [033].) The Specification further states:
Routing layer 726 can thus be configured to perform complex
compound indexing. Complex compound indexing can include the
exemplary embodiments of compound indexing discussed above, and
can also include an additional indexing step by enabling the routing of
data messages not only to a specific storage location or other defined
destination, but also the determination of which of plurality of
applications 730-738 the voice message is associated with. Generally,
this additional indexing step comprises routing layer 726 correlating
the number, or other identifier, associated with transmission device
702, 704 or 706 with the number or address associated with collector
742, 748, or 752 in order to identify and route the voice message to at
least one application such as direct application 730 among several
possible applications 730, 732, 734, 736 and 738. (Emphasis added)
(Spec. 18-19, ¶ [054].)

Our reviewing court further states, “the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire patent.”
Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005.)
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Upon reviewing Appellants’ Specification, we fail to find a definition
for the terms “correlate” and “determine.” We therefore construe the cited
terms consistent with their ordinary meaning as provided in a dictionary.
“Correlate” generally refers to bringing into a causal relation,3 and
“determine” generally refers to establishing or ascertaining definitely after
consideration.4 Consequently, we construe the claimed limitation set forth
above as requiring a routing layer to be configured to establish a causal
relation between a sender identification and a target identification in order to
definitely ascertain, after consideration, an associated application based on
the established causal relation.
As set forth in the Findings of Fact section, Katz discloses that upon
receiving a call from an employee, a central office automatically identifies
the calling number, and grants the employee access to a voice mail system if
the calling number is authorized. (FF 2.) Further, Katz discloses that the
employer associated with the calling number is identified based on the
number that the authorized employee called, such that the authorized
employee can be routed to the appropriate voicemail to leave the message.
(FF 3 and 5.) We find that Katz's disclosure of identifying and
authenticating the calling number to be a pre-requisite and a necessary event
that must take place before an employee can be allowed to be routed to a
voice mail. Further, we find that Katz's disclosure of identifying or

3 Webster’s II New Riverside University Dictionary, 314 (1994).
4 Id. at 369.
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ascertaining, after consideration, the particular voice mail associated with a
number called by the employee establishes a causal relation between the
called number and the calling number. That is, consistent with our
definitions above, Katz teaches correlating the called number with a calling
number to properly route the authorized employee’s call to the appropriate
voice mail (i.e. correlating the called number and the calling number to
determine the proper voice mail application).
We note that the claim only requires the router to be configured to
correlate the identifications to determine an (i.e. a single) application. Thus,
the issue of whether or not Katz teaches the router having the capability of
associating different correlations with different applications exceeds the
scope of the present claim. We nonetheless observe in Katz's disclosure that
while each employer is associated with a particular voicemail via a dedicated
called number, the combination of each calling number with a called number
yields a different correlation, and thereby results in a different employer-
voicemail pair being selected based upon the correlation.
Additionally, we note that the claim limitation is directed to a routing
layer configured to correlate the target identification and sender
identification to determine an application associated therewith. Such
language does not require that the router layer actually correlates these
identifications. Rather, it is a statement of intended use, which is fully met
by an anticipating prior art structure that is capable of performing the
intended use. That is, a statement of intended use in an apparatus claim
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cannot distinguish over a prior art apparatus that discloses all recited
limitations and is capable of performing the recited function. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). See Application of Dense,
156 F.2d 76 (CCPA 1946). See also Ex parte Satchell, Appeal No. 2008-
0071, 2008 WL 4828136 (BPAI 2008) (non-precedential). Appellants’
argument is not commensurate with the scope of the claim. Thus, we agree
with the Examiner that Katz teaches a routing layer configured to correlate a
sender identification with a target identification to determine an associated
application based on the correlation. It follows that Appellants have not
shown that the Examiner erred in finding that Katz anticipates independent
claim 1.
Regarding claim 2, Appellants argue that Katz does not teach a table
configured to store the association of application identifiers with
combinations of senders and target identifiers. (App. Br. 11-12, Reply Br.
14-16.) We do not agree. As detailed above, Katz discloses storing in a
database report (table) calling numbers of employees for each employer.
(FF. 1, 3, and 4.) It follows that Appellants have not shown that the
Examiner erred in finding that Katz anticipates claim 2.

VII. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in finding that
Katz anticipates claims 1 through 53.

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VIII. DECISION
We affirm the Examiner’s decision rejecting claims 1 through 53.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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BARRETT, Administrative Patent Judge, dissenting.

I respectfully dissent.
Appellants argue that Katz does not describe "a routing layer
interfaced with the collector, the routing layer configured to correlate the
sender identification and the target identification to determine an associated
application based on the correlation," as recited in independent claims 1, 11,
21, and 29, or "correlating the sender identification and the target
identification; and determining an associated application based on the
correlation," as recited in independent claim 45 (App. Br. 4). It is argued
that Katz uses ONLY the "called number" only to differentiate between the
different applications, i.e., between voice mail applications to different
employers, and NOT a correlation between the employee's ID and the called
number. By contrast, it is argued, "the Appellant's claimed system
introduces an abstraction layer (i.e., routing layer) to allow the same phone
number (having a target identification) to be called by a transmitting device
(having a sender identification) to access multiple applications" (App. Br. 8).
While it is always possible that the claims can be interpreted more
broadly than an applicant intended, I agree with Appellants that the claim
language here distinguishes over Katz.
I agree with the majority's interpretation that the limitation, "to
determine an associated application based on the correlation," only requires
the routing layer to determine a single application based on the correlation.
I also agree with the majority that "'determine' generally refers to
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establishing or ascertaining definitely after consideration" (slip. op. at 8);
i.e., "determine" requires more than some predetermined relationship. I
disagree with the majority's characterization of Katz as "routing" a call to an
appropriate voice mail because Katz nowhere uses the terms "route" or
"routing" and these terms imply that there has been a determination of an
associated application when that is one of the issues to be addressed.
In this case, the routing layer must "determine" the application "based
on the correlation" between the "sender identification" (calling number or
caller identification) and the "target identification" (called number). This is
not taught by Katz. As Appellants point out, a particular voice mail
application is determined solely by the called number, not a correlation
between the calling number and the called number. Katz states that ""[t]he
system uses the called number to segregate incoming telephone calls
according to employers and to generate the reports 26 on the basis of
employer preferences and specifications" (col. 11, l. 67, to col. 12, l. 3) and
"the system dedicates one or more distinct telephone numbers to each
employer" (col. 13, ll. 19-20), which enable generating unique reports. Katz
does not correlate the calling number with the called number to "determine"
which voice mail application to select ― it always selects the voice mail
application based only on the called number.
The majority apparently interprets the teaching in Katz that calling
numbers are screened to determine whether to allow a caller to access the
voice mail application for a particular called number "to correlate the sender
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identification and the target identification to determine an associated
application based on the correlation" as recited in claim 1. That is, the
majority states that "we find that Katz's disclosure of identifying or
ascertaining, after consideration, the particular voice mail associated with a
number called by the employee establishes a causal relation between the
called number and the calling number" (slip op. at 9). I disagree that
determining whether a calling number has access to the voice mail
application at a called number establishes a "correlation" between the calling
number (sender identification) and the called number (target identification),
as claimed, since only the calling number is being used to control access. In
addition, determining whether to allow access to an application is clearly not
the same thing as determining the application, as claimed.
For these reasons, I would reverse the anticipation rejection of
claims 1-53.
In addition, I do not agree with the majority that "configured to
correlate" in the limitation of "the routing layer configured to correlate the
sender identification and the target identification to determine an associated
application based on the correlation" should be interpreted as a "statement of
intended use" which does not require the routing layer to be able to actually
correlate the identifications. It is true that a statement of intended use does
not limit the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) ("An intended use or
purpose usually will not limit the scope of the claim because such statements
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usually do no more than define a context in which the invention operates.").
Here, however, the limitation recites a function and the reference must
disclose structure capable of performing the function, which it does not.

rwk

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