Ex Parte 5684863 et al

Patent Trial and Appeal Board

Sep 27, 2012

90008095 (P.T.A.B. Sep. 27, 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

WYr'W.uspto.gov

APPLICATION NO. FILING DATE FIRST !'lAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
901008,095 07/14/2006 5684863 A2DL·OO 1127US 9954
305918·20 II
58249 7590 09128i2012
EXAMINER
'COOLEYLLP
ATTN: Patent Group KIELlN, ERIKJ
Suite 1100
ART UNIT PAPER NUMBER 777 6th Street, NW
WASHINGTON, DC 20001 3992
MAIL DATE DELIVERY MODE
09/28/2012 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 PATENT TRIAL AND APPEAL BOARD
____________
Ex parte RONALD A. KATZ TECHNOLOGY LICENSING L.P.
Appellant
____________
Appeal 2010-003524
Reexamination Control No. 90/008,095
U.S. Patent No. 5,684,863
Technology Center 3900
____________

Before SCOTT R. BOALICK, KEVIN F. TURNER, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-003524
Reexamination Control No. 90/008,095
U.S. Patent No. 5,684,863

2
Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal entered December 20, 2010 (“Decision”), which affirmed the
Examiner’s final rejection of claim 27.
On reconsideration, in view of a subsequent Federal Circuit opinion
with respect to several patents-in-suit, including U.S. Patent No. 5,684,863
patent (“the ‘863 patent”), we conclude that the claimed “personal
identification data” has been distinguished over the password number of
Yoshizawa.
We therefore, grant the Request for Rehearing with respect to this
issue. The Request for Rehearing is otherwise denied. Accordingly, the
Request for Rehearing is granted-in-part.
DISCUSSION
Claim Construction
In view of a Federal Circuit opinion, In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303, 1320-22 (Fed. Cir. 2011)
(addressing the claim term “format” with respect to claim 34 of related U.S.
Patent No. 5,974,120), a District Court Markman ruling, Ronald A. Katz
Technology Licensing, L.P. v. AT& T Corp., 63 F.Supp.2d 583, 613 (E.D.
Pa. 1999), and the Specification of the ‘863 patent (see, e.g., column 10,
lines 28-41 and column 6, lines 23-44), Appellant urges the following claim
construction:
(1) a “format” as recited in the ‘863 patent claims involves an
automated exchange of information guided by underlying
computer programming, rather than spontaneous and
contemporaneous live exchanges between a caller and a live
Appeal 2010-003524
Reexamination Control No. 90/008,095
U.S. Patent No. 5,684,863

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operator that is not guided by underlying computer
programming, and (2) selection of, or branching to, a module or
subroutine within a “format” does not constitute selection of a
separate format. Furthermore, the claim recitation of “a select
format of a plurality of different formats” requires that there are
multiple different formats operated concurrently by the overall
system . . . .
(Req. for Reh’g 2-6.)
However, the Specification of the ‘863 patent describes a system D
that interfaces with a multiplicity of individual terminals T1-Tn of a
telephone network facility C, including “[a] break-off control circuit [that]
may terminate the computer interface aborting to a terminal for direct
communication with an operator.” (Abstract (emphasis added).) In another
example, the ‘863 patent describes that “a voice origination apparatus may
prompt individual callers who (after qualification) provide select digital data
to develop a record for further processing” (col. 1, ll. 65-67) such that an
“abort capability allows a caller to remain ‘off hook’ and go to analog
(vocal) communication” and “interface[] directly with an operator” (col. 2,
ll. 5-8 (emphasis added)).
Thus, the claim construction advocated by Appellant is unpersuasive
because such an interpretation of “format” excludes “spontaneous and
contemporaneous live exchanges between a caller and a live operator that is
not guided by underlying computer programming” and therefore is
inconsistent with the Specification of the ‘863 patent. Furthermore, the
District Court Markman ruling cited by Appellant (Req. for Reh’g 2-3)
construes the term “format” to mean “a computer program that sets forth the
content and sequence of steps to gather information from and convey
Appeal 2010-003524
Reexamination Control No. 90/008,095
U.S. Patent No. 5,684,863

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information to callers through pre-recorded voice prompts and messages,”
Katz, 63 F.Supp.2d at 613, but does not expressly exclude “spontaneous and
contemporaneous live exchanges between a caller and a live operator,” as
argued by Appellant (Req. for Reh’g 3, 6).
Barger
Next, Appellant argues that “the ‘third mode’ in Barger simply alludes
to a ‘modified automatic telephone service’ for customers of a licensed
retailer through the ‘equivalent of push buttons,’ which suggests other
equipment by which users can interact with the Barger system,” rather than
“a plurality of formats,” as claimed. (Req. for Reh’g 8-9.) Similarly,
Appellant argues that “[t]here is no evidence that the automated interactions
(the format) are any different between Barger’s ‘second mode’ and ‘third
mode.’” (Req. for Reh’g 9.)
However, Barger states that:
A further object of the invention is to provide a system for
permitting a customer to place orders for merchandise or
services after listening to audio demonstrations as desired and
to arrange for payment by some credit account number or other
means, whereupon the merchandise or services (or tickets for
services) are dispatched to the customer by mail or other
delivery service.
(Col. 1, line 65 to col. 2, lines 4 (emphasis added).) In addition, page 10,
lines 16-21 and page 10, line 25 to page 11, line 2 of the Decision (i.e., FF 2)
state, respectively, that:
In the second mode, the “automatic telephone service . . .
causes the data processor to communicate with the customer
through prerecorded messages played to the customer through
the audio repeating means and codes entered by the customer
Appeal 2010-003524
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U.S. Patent No. 5,684,863

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through his telephone keyboard.” (Col. 2, l. 65 to col. 3, l. 3.)
. . . In the third mode, a modified automatic telephone service is
provided to “customers of a licensed retailer of merchandise or
services through the equivalent of push-button telephones.”
(Col. 3, ll. 8-10.)
In other words, Barger teaches that for the second mode, the customer makes
arrangements for payment (e.g., credit card) and delivery of any
merchandise or services that are ordered. Barger further states that:
A modified automatic telephone service may be provided in a
third mode to customers of a licensed retailer of merchandise or
services through the equivalent of push-button telephones.
After a requested demonstration has been played, the customer
may purchase the merchandise or services directly from the
licensed retailer.
(Col. 3, ll. 7-14 (emphasis added).)
As taught by Barger, when the customer has the option to purchase
merchandise or services directly from a licensed retailer, the customer can
pay directly and take immediate possession, rather than making
arrangements for payment such as providing credit card and delivery
information. Thus, Appellant’s arguments are not persuasive because the
underlying computer programming to operate the second mode of Barger
would differ from the third mode of Barger. Accordingly, Barger teaches a
plurality of automated modes (i.e., the second mode and the third mode).
VCT ’86
Appellant further argues that “VCT ‘86 also does not disclose
concurrent automated formats; it discloses just one operator mode and one
automated mode.” (Req. for Reh’g 10.) In particular, Appellant argues that
“[t]he operator method in VCT ‘86 is not an automated exchange between
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Reexamination Control No. 90/008,095
U.S. Patent No. 5,684,863

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callers and the system that is guided by any underlying computer
programming, and therefore, it is not a ‘format.’” (Req. for Reh’g 10.)
Page 16, lines 5-8 and lines 14-18 of the Decision (i.e., FF 14 and
FF 15) state, respectively, that:
In a first method, the voice response unit directs the call to an
operator called a “Relayer” who asks for and keys in the card
number, merchant number, and purchase amount, which then is
sent to the host for approval. (PP. 1, 5.)
and
“In a second method, specific 800 numbers are handled entirely
by the voice response unit.” (P. 5.) Merchants respond to voice
prompts in order to enter the card number, merchant number,
and purchase amount using the telephone keypad. (P. 5.) The
voice response unit communicates directly with the host,
bypassing the Relayers. (P. 5.)
Thus, the claim term “format,” when properly construed to include
interactions with an operator, is broad enough to encompass the first method
of VCT ’86 (i.e., the voice response unit directs the call to an operator) and
the second method of VCT ’86 (i.e., the voice response unit communicates
directly with caller.)
Yoshizawa
Last, Appellant argues that the Federal Circuit in its In re Katz
Decision “affirms the claim construction of ‘personal identification data’ to
have a meaning distinct from passwords and PIN numbers . . . .” (Req. for
Reh’g 11.) In particular, Appellant argues that “the Federal Circuit affirms
that the password of Yoshizawa . . . is not ‘personal identification data.’”
(Req. for Reh’g 12.)
Appeal 2010-003524
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U.S. Patent No. 5,684,863

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In In re Katz, 639 F.3d at 1324, the Federal Circuit articulated that:
Katz’s disclaimer [in response to the Examiner’s rejection of
claim 99 of the ‘863 patent during reexamination] distinguished
“personal identification data” from all composed passwords,
not just arbitrarily composed passwords. For example, Katz
disclaimed the use of passwords that can be composed and
changed, including passwords that are initially set to telephone
numbers or other personal identification data.
Accordingly, we are persuaded by Appellant’s arguments that the
claim limitation “personal identification data” distinguishes over the
password number of Yoshizawa.
However, this does not change the affirmance of the Examiner’s
rejection because page 29, line 24 to page 30, line 6 of the Decision also
articulates an alternative rationale:
The Examiner also found that the name, address, and account or
credit card number provided by the customer correspond to
“personal identification data.” (Ans. 19-20; FF 2, 4.) The
Examiner acknowledged that “it is not clear if any of the other
personal identification data is used along with the account or
credit card number for qualification to access the system for
placing an order" (Ans. 19-20) and cited Yoshizawa for the
disclosure of a password number to access a telephone betting
system (Ans. 20).
(Emphasis added.)
Although we adopt the Federal Circuit’s claim construction of “personal
identification data” as excluding passwords, we nevertheless find that the
name, address, and account or credit card number of Barger required to fill
an order teaches the claim limitation “personal identification data.”
Appeal 2010-003524
Reexamination Control No. 90/008,095
U.S. Patent No. 5,684,863

8
CONCLUSIONS
The Request for Rehearing has been considered and is granted to the
extent that we find that Yoshizawa does not teach the claim limitation
“personal identification data.” The Request for Rehearing is otherwise
denied. Accordingly, the Request for Rehearing is granted-in-part.
Requests for extensions of time are governed by 37 C.F.R. § 1.550(c).
See 37 C.F.R. § 41.52(b).

REHEARING GRANTED-IN-PART

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