Ex Parte 5128984 et al

Patent Trial and Appeal Board

Dec 18, 2012

90008325 (P.T.A.B. Dec. 18, 2012)

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.
90/008,325 11/13/2006 5128984 6646-210A 2812
58249 7590 12/18/2012
COOLEY LLP
ATTN: Patent Group
777 - 6th Street, NW
Suite 1100
WASHINGTON, DC 20001
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/18/2012 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.
1
,
Appellant and Patent Owner
____________

Appeal 2012-001424
Reexamination Control No. 90/008,325
Patent 5,128,984
Technology Center 3900
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and
JONI Y. CHANG, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Ronald A. Katz Technology Licensing L.P., Appellant, appeals under
35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1 and 4. We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

1
Ronald A. Katz Technology Licensing L.P. is the Patent Owner and the
real party in interest (Br. 3).
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STATEMENT OF THE CASE
2

This proceeding arose from a request for ex parte reexamination filed
by John L. Welsh on November 13, 2006, of United States Patent 5,128,984
(the '984 Patent). The ‘984 patent, entitled “Telephone Interface Call
Processing System with Call Selectivity,” issued July 7, 1992, to Ronald A.
Katz, and has several patent applications upon which it claims priority, listed
on the face of the '984 Patent. The '984 Patent is said to have expired on
July 9, 2009, by virtue of a terminal disclaimer (Br. 5).
The '223 Patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix (Br. 43-69).
We heard oral arguments from Patent Owner’s representative on April
4, 2012, a transcript
3
of which is part of the record.

CLAIMED INVENTION
Appellant’s invention relates to systems which limit and control
interface access to implement voice-digital communication for statistical
processing, where the systems accommodate calls in different modes, e.g.

2
Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed September 28, 2009), and the Examiner’s Answer (“Ans.,” mailed
December 17, 2009). Appellant also filed a Reply Brief on March 26, 2010,
which was not entered by the Examiner, where the non-entry of that Brief
was subject to petitions by Appellant, which were denied on April 22, 2011
and October 25, 2011. As the Reply Brief is not part of the record, we do
not refer to the arguments proffered therein.
3
Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
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"800," "900," or area code, and incorporate qualifying apparatuses to restrict
against caller misuse (Abs.).
Claims 1 and 4 are subject to reexamination, with original claims 2, 3,
and 5-23 not being subject to reexamination.
Claims 1 and 4 are reproduced below:
1. A telephone call processing system for receiving calls
from a multitude of terminals in different call modes including
an "800" call mode and a "900" call mode for processing to an
interface format and involving digital signals associated with
said terminals as for identification or data, said system
comprising:
first response unit means for receiving calls in said
"800"call mode;
qualification means for qualifying said calls in said
"800" call mode received by said first response unit to provide
qualified calls;
second response unit means for receiving calls in a
second call mode;
means for processing calls in an interface format; and
means for coupling said qualified calls and said calls in a
second mode to said means for processing.

4. A system according to claim 1 wherein said
qualification means comprises means for testing said digital
signals associated with said terminals originating said calls.
(Br. 37, Claims App’x.).

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PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Robert J. Perdue, et al., Conversant I Voice System: Architecture and
Applications, AT&T Tech. J., Sept./Oct. 1986 (hereinafter “Perdue”).
Jim Brown, Sterling Service, Network World, Vol. 6, No. 2, Jun. 1989
at 29, 32, 33, 35, and 50 (hereinafter “Brown”).
Bruce Kushnick, “Turnkey” 900 Service Bureaus, Inbound/Outbound
Magazine, Aug. 1989 at 46-48 (hereinafter “Kushnick”).

The Examiner maintained rejections of the claims on the following
bases:
 claims 1 and 4 under 35 U.S.C. § 102(b) as being anticipated by
Perdue, as evidenced by Kushnick, or in the alternative, as being
rendered unpatentable over Perdue and Kushnick (Ans. 3-10); and
 claims 1 and 4 under 35 U.S.C. § 103(a) as being unpatentable over
Perdue and Brown (Ans. 10-12).

ISSUES
Appellant has asserted numerous arguments as to whether the
Examiner erred in proffering the above-cited rejection, which we detail in
the analysis section below. We have considered in this decision only those
arguments that Appellant actually raised in the Brief. Arguments which
Appellant could have made but chose not to make in the Brief are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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The issues arising from the respective positions of Appellant and the
Examiner, which we consider herein, are:
Did the Examiner err in determining that Perdue anticipates, or
renders obvious in view of Kushnick, the subject matter of claims 1 and 4?
Did the Examiner err in determining that Perdue and Brown render
the subject matter of claims 1 and 4 obvious?

FINDINGS OF FACT
1. Perdue discloses a system which answers telephone calls from
lines and trunks, provides verbal prompts and information to the
caller, such that the caller can request specific information and/or
direct a transaction using either touch-tone or voice input (P. 34, ¶
1).
2. Perdue provides example scripts for caller to make airline
reservations (P. 40) and financial transactions (P. 43), where some
of those calls may be made through the use of toll free telephone
numbers (P. 45).
3. Perdue provides for concurrent processing of calls with a large
number of calls being handled concurrently, with a centralized
switch allowing various subsystems, such as speech recognizers
and voice response units, to be shared among calls (P. 35).
4. Perdue discloses with respect to the financial transactions
application that a caller is required to enter a nine-digit ID code
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and verify the caller’s initials in order to gain access to the system
(P. 43).
5. Perdue relies upon an AT&T CONVERSANT™ I Voice System,
which is also disclosed in Kushnick (P. 34-35).
6. Kushnick discloses that known IVR systems, including AT&T
CONVERSANT™ I Voice System, are capable of handling
applications for both 800 and 900 calls modes (P. 46).

PRINCIPLES OF LAW
Interpretation of Expired Patent Claims
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,
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because applicants had the right to amend, whereas in a district court,
“claims should be so construed, if possible, as to sustain their validity.”
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 nonprecedential
4
). 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

4
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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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
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)
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(“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
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
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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
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.

Anticipation and Obviousness Rejections
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999).
A finite number of solutions within the skill and understanding of
ordinarily skilled artisans can be indicative of obviousness:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

Consideration of Evidence of Secondary Considerations of Nonobviousness
Objective evidence of nonobviousness (also called “secondary
considerations”) must always be considered in making an obviousness
determination, Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39
(Fed. Cir. 1983), but it is not necessarily conclusive, Ashland Oil, Inc. v.
Delta Resins & Refrac., Inc., 776 F.2d 281, 306 (Fed. Cir. 1985). A “nexus”
is a legally and factually sufficient connection between the objective
evidence and the claimed invention, such that the objective evidence should
be considered in the determination of nonobviousness. Demaco Corp. v. F.
Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A
“nexus” is required between the merits of the claimed invention and the
evidence of secondary considerations in order for the evidence to be given
substantial weight in an obviousness decision. In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995); Stratoflex, 713 F.2d at 1539.
The burden of proving commercial success (and other types of
secondary considerations, such as long felt need) during prosecution is on
the applicant or patent owner. See In re Huang, 100 F.3d 135, 139-140
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(Fed. Cir. 1996) (“In the ex parte process of examining a patent application .
. . the PTO lacks the means or resources to gather evidence which supports
or refutes the applicant's assertion that the sales constitute commercial
success.”). The burden of proving a nexus between the commercial success
and the merits of the claimed invention during prosecution is also on the
applicant or patent owner. Huang, 100 F.3d at 140 (“In sum, Huang simply
has not carried his burden to prove that a nexus existed between any
commercial success and the novel features claimed in the application.”).
“It is well settled ‘that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (citing
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). The objective evidence is not
commensurate (coextensive) in scope with the claimed subject matter if the
claims are broader in scope than the scope of the objective evidence, e.g., if
the product included elements or features not recited in the claims which
may be responsible for the commercial success or praise. See Joy Techs.,
Inc. v. Manbeck, 751 F.Supp. 225, 229-30 (D.D.C. 1990) (and cases cited
therein) aff’d 959 F.2d 226 (Fed. Cir. 1992). This is related to the nexus
requirement – where the objective evidence of nonobviousness is not
commensurate in scope with the claimed invention, it is more difficult (but
not impossible) to show that objective evidence is due to the merits of the
claimed invention as opposed to unclaimed features.
[E]vidence of commercial success alone is not sufficient to
demonstrate nonobviousness of a claimed invention. Rather, the
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proponent must offer proof “that the sales were a direct result of
the unique characteristics of the claimed invention—as opposed
to other economic and commercial factors unrelated to the
quality of the patented subject matter.”
In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008) (citations omitted).

Related Federal Circuit Case
Format refers to a call processing flow implemented
by at least one computer program that sets forth the
content and sequence of steps to gather information
from and convey information to callers through pre-
recorded prompts and messages. Selection of, or
branching to, a module or subroutine within a
computer program does not constitute selection of a
separate format. Selection of (or branching to), a
second computer pro-gram by a first computer
program, that together implement a call process flow
application also does not constitute selection of a
separate format.
We agree with Katz that the different call modes
disclosed by the specification identify different formats. For
example, the specification describes asking different questions
to and gathering different information from callers who dial an
800 number, as opposed to those who dial a 900 number.
In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1320 (Fed. Cir. 2011) (quoting District Court, patent citations omitted).

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ANALYSIS
Anticipation & Obviousness over Perdue, Claims 1 and 4
The Examiner has made the rejection of claims 1 and 4 in the
alternative, namely that claims 1 and 4 are anticipated by Perdue, as
evidenced by Kushnick, or as being rendered unpatentable over Perdue and
Kushnick. Since either alternative requires an analysis of Kushnick to
determine the propriety of the rejection, we choose to review the
obviousness rejection of claims 1 and 4 over Perdue and Kushnick.
Further to Appellant’s arguments with respect to claim interpretation
(Br. 6-16), our standard for claim interpretation of expired patent claims is
provided above. That is the standard we apply to claims 1 and 4 in the
analysis below. Additionally, we adopt the definition of “format” espoused
by the Federal Circuit in In re Katz Interactive Call Processing Patent Litig.,
excerpted above. Even with the adoption of this definition, however, we do
not find that Examiner erred in finding that Perdue and Kushnick render the
subject matter of claims 1 and 4 obvious.
Appellant argues that Perdue and Kushnik do not render claims 1 and
4 obvious (Br. 20). More specifically, Appellant argues that Perdue is silent
as to whether calls are accepted in two different modes in combination with
verifying calls to one mode and coupling them for verification (id.).
Appellant also argues that, in Perdue, calls which are qualified could likely
be further processed in some fashion, but it does not follow that coupling for
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processing together with calls to another mode would be inherent or obvious
(Br. 20-21). We do not agree.
As the Examiner finds, claim 1 only requires that the calls be coupled
to the means for processing, and not that the calls be coupled to each other
(Ans. 18). We concur with the Examiner that Perdue provides for such
coupling between calls and the processor of the system controller housing
(Ans. 9; FF 3). Like the Examiner, we do not find that the “means for
coupling” of claim 1 requires more. As such, Appellant’s argument is not
deemed to be persuasive.
Appellant also argues that claim 1 requires the capability that at least
calls to one toll free number are qualified and then coupled to a processor,
which processes calls to another mode as well (Br. 21). However, as the
Examiner finds, claim 1 is a device claim, such that there is no language
requiring calls to be coupled to the processor only after qualification (Ans.
24). A call coupled before being qualified still couples the qualified call to
the processor, once the call is ultimately qualified. We further concur with
the Examiner that there is nothing in claim 1 that requires the qualification
means to reside in a separate location from the means for processing, such
that the means for coupling, per claim 1, could provide coupling to both the
qualification means and the means for processing.
With respect to claim 4, Appellant argues that “digital signals
associated with said terminals” are signals which indicate the calling
telephone numbers of the terminals, which the cited references have not
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been shown to disclose (Br. 21-22). We also note that the limitation “digital
signals associated with said terminals as for identification or data” is also
found in the preamble of claim 1. Appellant also notes that a nine-digit ID
code entered by a caller (FF 4) is not a signal associated with a remote
terminal, per claim 4 (Br. 22). We do not agree.
We agree with the Examiner (Ans. 25-26) that the claim term “digital
signals associated with said terminals” would not have to be the telephone
numbers of those terminals. While the Specification of the '984 Patent
discloses the use of “ANI” equipment to determine a caller phone number,
we do not find the subject claim term must be limited to only the examples
provided in the Specification. Also per the Examiner (Ans. 26), claim 4
only requires that the signals be “associated with” the terminals, such that
we do not find a requirement for a one-to-one correspondence.
“Associated with” can have a broader meaning, as in the context of
the preamble of claim 1, where such signals are used for “identification or
data,” thus not limiting them to identification signals (Ans. 27). We agree
with the Examiner (Ans. 26) that a nine-digit ID code, entered through the
terminal (FF 4), could be considered to be associated with the terminal.
While Appellant argues that such a code would identify the user and not the
terminal (Br. 21-22), we conclude that would satisfy the requirements of
claim 4, namely “said digital signals associated with said terminals
originating said calls,” because the signals would emanate from the
terminal. Moreover, the '984 patent discloses that digital signals, such as
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ANI and DNIS, were known to provide identification of the caller’s
telephone number which would be associated with the terminal (i.e., the
telephone). (See '984 patent, col. 1, ll. 35-43.) As such, Appellant’s
argument is not deemed to be persuasive.
Secondary Considerations
To rebut the Examiner’s obviousness rejections, Appellant points to
evidence of commercial success (Br. 30-35). In particular, Appellant has
provided a list of “at least 83 companies” that have taken a “full portfolio
license including claims 1 and 4” (Br. 30). Appellant has also provided
statements from leaders in the financial industry (Br. 34-35).
With respect to Appellant’s licensing program of the “full portfolio,”
we agree with the Examiner that a sufficient nexus has not been
demonstrated (Ans. 33-35). Although Appellant argues that “[c]laims 1 and
4 clearly have been a contributing factor in the decision to license the
technology covered by the full portfolio license” (Br. 30), Appellant has not
established with convincing documentary evidence a sufficient connection
between the decision of the “at least 83 companies” to obtain a license and
claims 1 and 4 of the '984 Patent. Furthermore, the licensing activity may be
due to factors unrelated to the unobviousness of the claims of the '984 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).
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In addition, Appellant has not made an adequate showing that the
statements from leaders in the financial industry (Br. 34-35) are
commensurate in scope with or have a sufficient nexus with claims 1 and 4.
Each of the statements refers generally to the “Katz portfolio,” “Katz
patents,” “patent portfolio,” or similar language in reference to multiple
patents (Br. 34-35).
Therefore, the Examiner has properly considered Appellant’s
evidence of commercial success.
Accordingly, we sustain the rejection of claims 1 and 40 under 35
U.S.C. § 103(a) over Perdue and Kushnick.

Obviousness over Perdue and Brown, Claims 1 and 4
We do not reach the rejection of claims 1 and 4 over Perdue and
Brown. Affirmance of rejection for all appealed claims based on rejection
discussed supra renders it unnecessary to reach the propriety of the
Examiner’s decision to reject the claims under this additional basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional
rejections).

CONCLUSION
We conclude that the Examiner did not err in finding that Perdue
anticipates, or renders obvious in view of Kushnick, the subject matter of
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claims 1 and 4. We do not reach the rejection of claims 1 and 4 over Perdue
and Brown.

DECISION
We affirm the Examiner’s rejection of claims 1 and 4.
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
ack

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