Ex Parte 5828734 et al

Patent Trial and Appeal Board

Dec 18, 2012

90008155 (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.
90/008,155 08/07/2006 5828734 6646-240 5577
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 2012-000959
Reexamination Control No. 90/008,155
Patent 5,828,734
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 claim 81. 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 (App. Br. 4).
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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 August 7, 2006, of United States Patent 5,828,734 (the
'734 Patent). The ‘734 patent, entitled “Telephone Interface Call Processing
System with Call Selectivity,” issued October 27, 1998, to Ronald A. Katz,
and has a large number of patent applications upon which it claims priority,
listed on the face of the '734 Patent. The '734 Patent is said to have expired
on July 7, 2009, by virtue of a terminal disclaimer (App. Br. 6).
The '734 Patent is or has been involved in numerous litigations, as
summarized in the Related Proceedings Appendix (App. Br. 85-111).
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.
"800," "900," or area code, and incorporate qualifying apparatuses to restrict
against caller misuse (Abs.).

2
Our decision will make reference to the Appellant’s Supplemental Appeal
Brief (“App. Br.,” filed July 26, 2010) and Reply Brief (“Reply Br.,” filed
September 1, 2011), and the Examiner’s Answer (“Ans.,” mailed July 1,
2011).
3
Record of Oral Hearing (hereinafter Oral Hr’g Tr.)
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Claim 81 is the sole claim subject to reexamination, with original
claims 1-80 and 82-254 not being subject to reexamination.
Claim 81 is reproduced below:
81. A telephone call processing system for receiving
calls through a telephonic communication facility from a
multitude of terminals in a toll free call mode for processing
data in accordance with any of a plurality of interactive
operating process formats and involving digital signals
including DNIS, said system comprising:
first response unit means for receiving calls in said toll
free call mode wherein digital signals indicative of at least one
of a plurality of distinct called numbers (DNIS) identify one of
said plurality of interactive operating process formats;
voice generator means for prompting callers with voice
prompts whereby said callers enter data in response to said
voice prompts;
qualification means for qualifying on-line at least said
calls utilizing said one of said plurality of distinct called
numbers (DNIS) in said toll free can mode received by said
first response unit to provide qualified calls;
second response unit means for receiving calls in said
toll free call mode wherein digital signals indicative of one
other of said plurality of distinct called numbers (DNIS)
identify another of said plurality of interactive operating
process formats;
means for processing qualified calls received by said
first response unit means and said calls received by said second
response unit means for concurrent processing of data in
accordance with at least certain common processing operations
of said one and said another of said interactive operating
process formats; and
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audio control unit coupled to said voice generator means
for providing a preliminary automated voice prompt to cue
callers to interactively enter data under control of said digital
signals (DNIS) to callers calling said one other of said plurality
of distinct called numbers prior to execution of said common
processing operations of said one and said another of said
interactive operating process formats.
(App. Br. 53-54, Claims App’x.).

PRIOR ART REJECTION
The prior art references relied upon by the Examiner in rejecting the
claim are:
John P. Moosemiller, AT&T’s Conversant™ I Voice System, Speech
Tech., Mar./Apr. 1986 at 88-93 (hereinafter “Moosemiller”).
Robert J. Perdue, et al., Conversant I Voice System: Architecture and
Applications, AT&T Tech. J., Sept./Oct. 1986 (hereinafter “Perdue”).
ALASKA-AIRLINES; (ALK) Alaska Airlines offers a Christmas gift to
lift any occasion, Business Wire, Nov. 10, 1986 (hereinafter “Alaska-
Airlines”).

The Examiner maintained a rejection of the claim on the following
basis:
 claim 81 under 35 U.S.C. § 103(a) as being unpatentable over Perdue
and Alaska-Airlines, as evidenced by Moosemiller (Ans. 4-13).

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ISSUE
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 Briefs. Arguments which
Appellant could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The issue arising from the respective positions of Appellant and the
Examiner, which we consider herein, is:
Did the Examiner err in determining that Perdue and Alaska-Airlines,
as evidenced by Moosemiller, render the subject matter of claim 81obvious?

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).
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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
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 further disclosed in Moosemiller (p34-35).
6. Moosemiller relates to the AT&T CONVERSANT™ I Voice
System, “a voice response and speech recognition product for the
growing market of automated information services” that “accesses
data bases via the public telephone network” (P. 88, col. 1, ¶ 1).
The system can be used with both rotary and touch-tone phones (P.
88, col. 1, ¶ 1). Applications for Moosemiller’s IVR (interactive
voice response) system include financial services, credit
authorization, wholesale and retail distribution, sales order entry,
direct marketing, transportation scheduling and dispatching,
college registration, and communication services (p. 88, col. 1),
and “stock quotations, catalog ordering, airline reservations, dial-it
information menus, caller destination control, and telephone
banking” (p. 92, col. 1).
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7. The CONVERSANT™ I Voice System includes a system
controller, a voice switch (p. 88, col. 2, ¶ 2; Fig. 1), speech
subsystems (p. 88, col. 2, ¶ 2), voice response units (p. 88, col. 3, ¶
1; Fig. 1) and many common trunk interfaces (p. 88, col. 3, ¶ 2;
Fig. 1). The speech subsystems are connected to the system
controller by a General Purpose Interface Bus (GPIB). (P. 88, col.
2, ¶ 2).
8. The “voice switch supports the bridging of speech units [also
referred to as a Voice Response Unit (see e.g., Fig. 1)] to each
incoming voice channel” (P. 88, col. 2, ¶ 3). “One-to-many
connections are possible” between the speech units incoming voice
channel (P. 88, col. 2, ¶ 3). If no tone signal is detected, the voice
switch activates and “the voice response unit . . . generates prompts
and the speech recognizer . . . accepts the user’s voice commands”
(P. 89, col. 1, ¶ 1; Fig. 1, “Voice Response Unit”).
9. For advanced classification of incoming calls to their appropriate
greeting, a Dialed Number Identification Service (DNIS) can be
used with a Direct Inward Dialing (DID) trunk interface to receive
dialed digits as part of the call setup protocol (P. 88, col. 3, ¶ 2).
“This allows advance classification of incoming calls for different
applications which are greeted by appropriate transaction prompts.
The DNIS feature is useful for service bureaus for multiple-user
applications” (P. 88, col. 3, ¶ 2).
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10. Alaska-Airlines discloses that is was well known to use 800
numbers to call airlines to make reservations.

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,
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
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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
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)

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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(“[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)
(“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
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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
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
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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.

Obviousness Rejections
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.
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
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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
(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
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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
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
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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 finding, patent citations
omitted).

ANALYSIS
Further to Appellant’s arguments with respect to claim interpretation
(App. Br. 8-21), our standard for claim interpretation of expired patent
claims is provided above. That is the standard we apply to claim 81 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 determining that Perdue and Alaska-Airlines,
as evidenced by Moosemiller, render the subject matter of claim 81 obvious.
We find that Perdue, as evidenced by Moosemiller, discloses multiple
formats. Appellant’s Representative has acknowledged the same by stating:
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“[t]he only thing we know from Purdue is that it describes two independent
call flows, two different transaction scripts” (Oral Hr’g Tr. 26-27). This
appears to fall squarely within the definition of format adopted supra. In the
present reexamination, both the Examiner and Appellant have disagreed
with the extent that the prior art references demonstrate “common
processing operations” (App. Br. 25-27; Ans. 34-41; Reply Br. 30-36).
Appellant argues that the Specification of the '734 Patent, namely Fig.
2, illustrates “common” operations of multiple formats (Reply Br. 28), and
also cites to prior litigation as defining “common processing operations”
meaning “processing in which the logic underlying certain of the content
and/or sequence of steps of the formats are the same or shared” (Reply Br.
28-29). The Examiner does not appear to reject this definition (Ans. 19).
Thus, we adopt such a definition and the remaining question is whether the
cited references teach or suggest such “common processing operations” as
recited in claim 81.
Appellant also argues that Perdue does not disclose that both formats
are operated concurrently by the same system (App. Br. 26; Reply Br. 31).
Appellant asserts that the two “formats” are actually “disparate applications”
not contemplated as being operated on the same system (Reply Br. 31).
However, Moosemiller (FF 9) makes clear that the DNIS feature is useful
for service bureaus for multiple-user applications, suggesting that the AT&T
CONVERSANT™ I Voice System, shared by Perdue and Moosemiller (FF
5), contemplated multiple applications on a single system. We conclude that
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this suggestion is more than sufficient to show that the prior art system was
capable of processing multiple formats, which is the aspect of claim 81, a
system claim, that Appellant is arguing is not taught or suggested by the
prior art references. As such, we are not persuaded by Appellant’s
argument.
Appellant claims that Perdue and the other cited references do not
describe “common processing operations” because the Specification of the
'734 Patent makes clear that electronic data processing of a speech
synthesizer or voice response unit alone is not sufficient (App. Br. 26; Reply
Br. 34-35). However, we do not agree. We do not take the language of
claim 81, even in the context of the Specification, to specifically exclude
processing operations of specific portions of the telephone call processing
system. As the Examiner has noted, units, such as the speech synthesizer
and the voice response unit, are programmed using the same script
commands, such that at least common logic is necessarily used in setting up
the sequences of steps within the various formats (Ans. 12). We find that
Perdue provides for concurrent processing (FF 3), such that common
processing operations would be beneficial to such an operation.
Appellant also argues that aspects of Perdue relied upon by the
Examiner, namely the “GET_INPUT” command and time interval operation,
have not been shown to involve common content and/or sequence of
multiple steps of multiple formats, such as that illustrated in Fig. 2 of the
'734 Patent (App. Br. 26; Reply Br. 31-33). However, we find the language
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of claim 81, and not the illustration in the subject patent, must be reviewed
to determine the efficacy of the aspects of Perdue relied upon by the
Examiner. The fact that the aspects of Perdue relied upon by the Examiner
are “fundamentally unlike the three call processing flows” shown in Fig. 2
(Reply Br. 32) does not address whether those aspects of Perdue meet the
claim limitations of claim 81.
Claim 81 only specifies “common processing operations” between the
process formats, which we interpret to be that the processing of certain steps
of those formats is conducted using the same or shared logic, per our
adopted definition of “common processing operations” supra. The “Sample
Script,” disclosed by Perdue (FF 2), allows for input to be derived through a
user pressing or speaking the number “1” through “4.” It is clear that
specific logic must be employed to determine what response a user, if any,
has provided. Although the script is provided for the airline reservation
application of Perdue, such underlying processes of identification would
need to be common to all of the interactive applications disclosed therein.
While Appellant argues that the selection of “2,” for example, in different
formats would not be from a list of the same or shared choices (Reply Br.
34), we do not see how the underlying common processes, of discerning the
“2” from other inputs would not satisfy the language of claim 81. We agree
with the Examiner (Ans. 39) that such recitations in Perdue suggest the
presence of underlying common processing operations that would be used
by all of the formats disclosed. While Appellant argues that such general
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solicitations of information are not what is claimed by “common processing
operations” (Reply Br. 33), we do not find them to be outside the bounds of
the interpretation we have adopted. As such, we are not persuaded by
Appellant’s argument.
Additionally, Appellant argues that the “common processing,” in
claim 81, must occur after a “preliminary automated voice prompt to cue
callers to interactively enter data,” so that the Examiner relies upon the
“GET_INPUT” command and time interval operation, of Perdue, to satisfy
the common processing (App. Br. 26-27; Reply Br. 35-36). Appellant
continues that these “are not common operations in accordance with formats
that involve processing of ‘data’ taken from callers” (App. Br. 27). The
Examiner finds that the cited examples do provide common operations that
involve processing of data (Ans. 40), and we agree. Per our discussions
supra, receiving and determining input from users requires specific logic.
Appellant also argues that claim 81 requires that the claimed
“common processing operations” must take place for “qualified” calls
received by the first response unit, and that Perdue does not disclose that
calls are processed after the callers are qualified (App. Br. 24; Reply Br. 35).
However, we agree with the Examiner (Ans. 35-36) that the financial
transaction application of Perdue (FF 4) is sufficient to show qualification.
Appellant disagrees that calls are processed through “common processing
operations” after there are qualified, but our discussion of the common
processing operations supra makes clear that these operations would occur
Appeal 2012-000959
Reexamination Control No. 90/008,155
United States Patent 5,828,734

20
after the initial verification is made of the caller. As such, we are not
persuaded by Appellant’s argument.

Secondary Considerations
To rebut the Examiner’s obviousness rejections, Appellant points to
evidence of commercial success (App. Br. 33-37). In particular, Appellant
has provided a list of “at least 23 companies” that have taken a “full
portfolio license including claim 80” (App. Br. 34). Appellant has also
provided statements from leaders in the financial industry (App. Br. 36-37).
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. 33-36). Although Appellant argues that “[c]laim 81
clearly has been a contributing factor in the decision to license the
technology covered by the full portfolio license” (App. Br. 34), Appellant
has not established with convincing documentary evidence a sufficient
connection between the decision of the “at least 23 companies” to obtain a
license and claim 81 of the '734 Patent. Furthermore, the licensing activity
may be due to factors unrelated to the unobviousness of the claims of the
'734 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).
In addition, Appellant has not made an adequate showing that the
statements from leaders in the financial industry (App. Br. 36-37) are
commensurate in scope with or have a sufficient nexus with claim 81. Each
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Reexamination Control No. 90/008,155
United States Patent 5,828,734

21
of the statements refers generally to the “Katz portfolio,” “Katz patents,”
“patent portfolio,” or similar language in reference to multiple patents (App.
Br. 36-37).
Therefore, the Examiner has properly considered Appellant’s
evidence of commercial success.
Accordingly, we sustain the rejection of claim 81 under 35 U.S.C.
§ 103(a).

CONCLUSION
We conclude that the Examiner did not err in finding that Perdue and
Alaska-Airlines, as evidenced by Moosemiller, render claim 81 unpatentable
under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claim 81.
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

Appeal 2012-000959
Reexamination Control No. 90/008,155
United States Patent 5,828,734

22
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