Ex Parte 5974120 et al

Patent Trial and Appeal Board

Sep 28, 2012

90008229 (P.T.A.B. Sep. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/008,229 09/20/2006 5974120 6646-250,-250A,-250B 6348
58249 7590 09/28/2012
COOLEY LLP
ATTN: Patent Group
Suite 1100
777 - 6th Street, NW
WASHINGTON, DC 20001
EXAMINER
KIELIN, ERIK J
ART UNIT PAPER NUMBER
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 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120
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 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

2
Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal entered May 3, 2011 (“Decision”), which affirmed the
Examiner’s final rejection of claims 28 and 34.
The Request for Rehearing is denied.

DISCUSSION
In view of a Federal Circuit opinion, In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1320-22 (Fed. Cir. 2011),
Appellant argues that “the term ‘format’ makes clear that ‘different’
telephone call processing flows where the content and sequence of steps are
different must be considered as different ‘formats’ within the context of the
‘120 Patent.” (Req. for Reh’g 4.) In particular, Appellant advocated the
following claim construction of “format”:
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.
(Req. for Reh’g 6 (quoting Katz, 639 F.3d at 1320).) Therefore, Appellant
argues,
the Board erred in determining that Calabrese discloses these
features [of two response unit means wherein DNIS signals
indicative of a first called number identify a certain format, and
DNIS signals indicating of a second called number identify the
same format], particularly in view of the Federal Circuit
Decision and its guidance on the correct interpretation of the
term “format.”
(Req. for Reh’g 8.)
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

3
First, Appellant argues that:
Calabrese while referencing its larger, more general, VRU
application, does not suggest that the individual functions (for
example, for “claim status” and “dependent change”) are
implemented with a single, overlapping, call processing flow.
The two different telephone numbers that trigger the application
processing of the two different functions (clearly having
different content and each implemented by a different sequence
of steps) are simply different telephone numbers to completely
different formats or implementations of different functions.
(Req. for Reh’g 9.)
However, page 21, lines 4-18, of the Decision states:
Calabrese . . . teaches the use of DNIS services in a larger, more
general VRU application (such as one of: “Annuities Inquiry”,
“Health Claim Status”, “Flexible Benefits Enrollment” or
“Pension Account Status” shown in Figure 2 (see FF 6)) with a
wide range of function, for example, dialing a specified 800
number for “claim status” and a different 800 number for
“dependant change.” (FF 8.) Calabrese teaches that there are
twenty four (24) 800 lines in the “Flexible Benefits Enrollment”
VRU application. (FF 6.) Calabrese also teaches that the
“Flexible Benefits Enrollment” VRU application has at least
two functions, “Inquiry of options available & current
selections” and “Selection of options for the next year.” (FF 6.)
Thus, in the “Flexible Benefits Enrollment” VRU application
Calabrese teaches or suggests that a caller can dial a specified
800 number for “Inquiry of options available & current
selections” using DNIS services and can dial a different 800
number for “Selection of options for the next year” using DNIS
services. (See FF 6, 8.)
Thus, the VRU Applications associated with a specific benefit in
Figure 2 of Calabrese (e.g., “Annuities Inquiry,” “Health Claim Status,”
“Flexible Benefits Enrollment,” or “Pension Account Status”) are
distinguished by separate categories, and therefore, each VRU Application
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

4
would have a separate 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. Accordingly, even if
we adopted the claim construction advocated by Appellant, as discussed in
the Decision, each of the “VRU Applications At The Travelers” listed in
Figure 2 of Calabrese (e.g., “Annuities Inquiry,” “Health Claim Status,”
“Flexible Benefits Enrollment,” or “Pension Account Status”) correspond to
the claimed “format.” (See FF 6.)
Furthermore, Calabrese teaches that “[a] good way to control this [a
wider range of function] is to trigger application processing based on the
number dialed into by the client (for example: 1-800-222-1234 is a claim
status, while 1-800-222-5678 is a dependant change)” through the use of
DNIS services. (FF 8; see also p. 21, para. 3.) Inquiries from customers
regarding “claim status” and “dependant change” would be analogous to the
“Function” of Figure 2 (e.g., “Inquiry of options available & current
selections” and “Selection of options for the next year”). Thus, Calabrese
suggests that different 800 numbers are dialed to access either the “Inquiry
of options available & current selections” or “Selection of options for the
next year” function (i.e., the claimed first and second “response unit means”)
associated with the same “Flexible Benefits Enrollment” VRU Application
(i.e., the claimed “format”). Accordingly, Calabrese teaches or suggests the
claim limitations of first and second “response unit means for receiving calls
in said toll free call mode wherein said called number identification signals
(DNIS) indicative of at least one of a plurality of distinct called numbers
identifies said operating process format.” The twenty four (24) 800 lines in
the “Flexible Benefits Enrollment” VRU Application of Calabrese (FF 6)
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

5
further illustrates that this VRU Application has the capability of receiving
calls from different 800 numbers.
Next, Appellant argues “there is no disclosure or suggestion that the
‘currently implemented’ applications depicted in Calabrese Figure 2 use
DNIS at all.” (Req. for Reh’g 10.) However, Calabrese states that “[t]his
paper describes some add-on technologies that The Travelers wishes to
incorporate into its VRU applications including . . . [u]se of network
services like DNIS ” (p. 16, para. 2 (emphases added)) and Figure 2 of
Calabrese illustrates “Existing VRU Applications” (FF 6; see also p. 18).
Accordingly, Calabrese provides an express teaching that DNIS is an “add-
on” technology to be incorporated with existing VRU Applications.
Appellant also argues that “the twenty four (24) 800 lines cited in
Figure 2 are simply the telephone trunks over which calls from callers may
be connected” and “not 24 different 800 numbers by which callers may
access the ‘Flexible Benefits Enrollment VRU application.[’]” (Req. for
Reh’g 10.) However, as discussed previously, the twenty four (24) 800 lines
in the “Flexible Benefits Enrollment” VRU Application of Calabrese further
illustrates that this VRU Application has the capability of receiving calls
from different 800 numbers.
Appellant further argues “it is irrelevant whether or not an application
may ‘include more than one function’ for purposes of determining whether it
is a ‘format’ identified based on DNIS” because “[w]hat defines a ‘format’
in this context as distinct from a different ‘format’ is not the number of
functions or applications within each format, but the call processing flow
identified by the DNIS.” (Req. for Reh’g 11.) However, as discussed
previously, because each of the VRU Applications associated with a specific
Appeal 2010-006100
Reexamination Control Nos. 90/008,229, 90/010,044 and 90/010,130
U.S. Patent No. 5,974,120

6
benefit in Figure 2 of Calabrese are distinguished by separate categories,
each VRU Application would have a separate 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.
Last, Appellant argues that “Calabrese teaches away from using DNIS
for two different called numbers to identify the same format.” (Req. for
Reh’g 11.) Contrary to Appellant’s arguments, Calabrese suggests that
different 800 numbers are dialed to access each different “Function” (e.g.,
Inquiry of options available & current selections” and “Selection of options
for the next year”) associated with the same VRU Application (e.g.,
“Flexible Benefits Enrollment”), which corresponds to the claimed “format.”

CONCLUSIONS
The Request for Rehearing has been considered and is denied.
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).

REHEARING DENIED

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