Ex Parte 6130937 et al

Patent Trial and Appeal Board

Oct 16, 2012

90010978 (P.T.A.B. Oct. 16, 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.
90/010,978 05/04/2010 6130937 3682.2000-000 5935
21005 7590 10/16/2012
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/16/2012 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 GRYPHON NETWORKS CORP.
________________

Appeal 2012-012248
Reexamination Control No. 90/010,978
U.S. Patent 6,130,937
Technology Center 3900
________________

Before HOWARD B. BLANKENSHIP, MICHAEL R. ZECHER and
GLENN J. PERRY, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012248
Reexamination Control No. 90/010,978
U.S. Patent 6,130,937

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STATEMENT OF THE CASE
Introduction
Patent Owner, Gryphon Networks Corp., appeals under 35 U.S.C.
§§ 134(b) and 306 from a final rejection
1
of claims 4-7 of U.S.
Patent 6,130,937 (hereinafter “the ‘937 patent”). (Ans. 3.) Claims 1-3, 8
and 9 have been confirmed. (Ans. 3.) The reexamination proceeding arose
from a request for ex parte reexamination of the ’937 patent filed on
May 4, 2010. We have jurisdiction under 35 U.S.C. §§ 6(b), 134, and 306.
We AFFIRM.

Invention
The ’937 patent relates to the enforcement of telecom “do-not-call”
requests. See generally spec. 1: 55-spec. 3: 9.

1
Final Office Action mailed August 5, 2011.
Appeal 2012-012248
Reexamination Control No. 90/010,978
U.S. Patent 6,130,937

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The Rejections
1. The Examiner rejected claims 4, 6, and 7 under 35 U.S.C. § 102(e)
as being anticipated by Smith (US 5,960,071). (Ans. 4.)
2

2. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Smith and Daudelin (US 4,797,910). (Ans. 4.)
3. The Examiner rejected claims 4, 6, and 7 under 35 U.S.C. § 102(b)
as being anticipated by Greenspan (US 5,109,408). (Ans. 4.)
3

4. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Greenspan and Daudelin. (Ans. 4.)

REJECTION #1
Appellant argues that the Borngofft Declaration and the First Fotta
Declaration together provide sufficient evidence to establish an earlier date
of conception and diligent reduction to practice in the United States prior to
the effective date, March 27, 1997, of Smith. (App. Br. 16-25.) We do not
agree.
We adopt the Examiner’s findings with regard to these declarations as
set forth in the Examiner’s Answer at pages 16-18. In addition, we
emphasize that none of the exhibits attached to the declarations contain draft

2
In the Final Office Action, the rejection was directed to claims 1-4, 6, 7,
and 9. Based on amendments entered after final, the Examiner withdrew the
rejection as to claims 1-3 and 9. Thus, the rejection now applies only to
claims 4-7.
3
Because Appellant does not provide arguments for the separate
patentability of dependent claims 6 and 7, we will decide the appeal as to the
§ 102 rejections on the basis of claim 4 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
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U.S. Patent 6,130,937

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specification text and/or drawings that enable us to determine what was
actually conceived and when it was conceived. The Examiner’s conclusion
that there was substantial work to be done in describing the claimed
invention after the critical date of March 27, 1997 is supported by the
exhibits themselves, particularly the attorney time records submitted. It is
insufficient for Appellant to argue that various exhibits are “consistent with”
claim language ultimately filed with the application. It is necessary for
Appellant to affirmatively prove that the invention now claimed was actually
conceived prior to the critical date and that due diligence was taken to
constructively reduce that invention to practice by the filing of a patent
application directed to that which was conceived. This has not been done.
The only apparent attempt to relate the claims (i.e., the invention) to the
Exhibits is in the Appeal Brief, which does not carry the evidentiary value of
an affidavit or declaration by the inventor or owner of the patent.
Appellant argues with respect to claims 1, 4 and 9 that disparate
portions of Smith cannot be combined in the manner suggested by the
Examiner. (App. Br. 15-16). We find this argument to be unpersuasive. The
heading of the argument at App. Br. 15 states that it applies to claims 1, 4
and 9. However, the argument itself is explained only with respect to claim
1 and by extension to dependent claims 2-3 and to independent claim 9,
alleged to have “similar elements as claim 1. Claim 4 is not mentioned in
the argument at all. The argument is moot as to claims 1 and 9 and is not
commensurate in scope with claim 4.
Appellant argues that the Examiner is citing Smith’s “customer”
disclosed in Fig. 3 and Smith’s “operator” disclosed in a separate
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embodiment more closely related to Fig. 2. (App. Br. 15-16.) That is the
extent of the argument. We have reviewed Fig. 3. It refers to a “customer”
dialing (step 300), a comparison taking place to determine if a number dialed
is one that is “trapped” by a switch (step 302), an alert being sent to the
“caller” (customer) who dials (step 314), and the dialing of a “code” by the
“customer” causing the call to be established or cancelled accordingly
(step 316). Fig. 2 does not itself mention a “customer” or “operator” and is
described at Smith 3:11-18 as having a “charge code” associated with each
destination. It does not relate to a separate and distinct embodiment in the
sense of appellants “mix and match” argument.

REJECTION #3
Appellant argues that claims 4, 6 and 7 are not anticipated by
Greenspan. (App. Br. 26-31.) Claim 4 is reproduced below with disputed
limitations emphasized.

4. (Rejected - Twice Amended) A control device for selectively
permitting communication between a communication device and a
destination over a network,
wherein the communication device is connected to the network by a
communication medium,
wherein the control device is connected to the communication
medium and a database for storing identifiers of destinations and indicative
of destinations for which communication is to be inhibited,
wherein the communication device has an input mechanism, wherein
the input mechanism is operative in response to a user to generate identifiers
of destinations,
wherein an identifier is sent over the communication medium to the
network to initiate communication with a corresponding destination, and
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wherein the input mechanism is operative in response to [a]the user to
generate an override signal sent over the communication medium, wherein
the control device comprises:
means for detecting presence of an identifier sent over the
communication medium to initiate communication with a corresponding
destination;
means for performing a comparison of the detected identifier to
identifiers stored in the database;
means for temporarily inhibiting communication between [a ]the user
of the communication device and a user at the destination after
communication has been initiated according to a result of the comparison
made with the network database;
means for detecting presence of an override signal on the
communication medium after inhibiting communication between the
communication device and the destination, the override signal indicating that
communication with a destination corresponding to the detected identifier
should be permitted; and
means for permitting the communication between the communication
device and the destination after the [update]override signal is detected.

Appellant describes Greenspan and argues primarily with respect to
Fig. 6 which is reproduced below.
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The Greenspan specification describes Fig. 6 at 5:16-39 as follows:
A call flow diagram for the over-ride feature is shown in
FIG. 6. The caller dials (block 610) the access code plus a
directory number or extension number, for example
*66976XXXX. From this information the switch determines
(620) that a query to a database is required and sends
(block 630) a query to the database. The switch then receives
(block 640) a database response and provides treatment to the
caller based on the response from the database. FIG. 6 shows
several of the possible switch responses. The switch can play
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(block 650) an announcement and collect more digits, or collect
a personal identification code, or a group code from the caller.
The switch then would send another message to the database
and get another response back. This continues until the
response requires terminating treatment. Another response is
that the switch plays (block 670) a terminating announcement
or sends a signaling tone or an error tone to the caller. Another
treatment is to provide the caller with call completion (660) so
that the caller is connected to the port associated with either the
number that was dialed after the access code *66 or a
translation of that number. It is also important to note that on a
dial pluse [sic] line the subscriber could use 11 as the access
code rather than a code using * or #.

Appellant states that “[a] fundamental principle of Greenspan is that a
customer must enter an access code in order to use Greenspan’s ‘over-ride
feature’ because a switch processing the call has been configured to block all
calls to directory numbers of this type for this customer.” (App. Br. 28.)
Appellant argues that because Greenspan's access code temporarily changes
the system from a blocking system to a screening system upon a customer's
initiating a communication, and because Greenspan's personal identification
number (“PIN”) merely establishes whether the call should be connected or
permanently terminated, Greenspan fails to disclose “means for temporarily
inhibiting” because the call is blocked but for the entry of an access code.
(App. Br. 28.) We disagree. In our view, the broadest reasonable
interpretation adopted by the Examiner of “temporarily inhibiting”
encompasses preventing a call that is being initiated from reaching a state
permitting full communication. The Examiner correctly notes that the Patent
Owner’s argument requires that the claimed “inhibiting communication” be
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more narrowly construed to require that a call be “established” before it can
be “inhibited.” (Ans. 20.) The claim language does not so limit.
Appellant further argues that the inhibiting does not occur “after
communication has been initiated.” (App. Br. 29.) We disagree. We adopt
the Examiner’s finding that a call is initiated in Greenspan when the call is
dialed. (Ans. 20.) Nothing in the claim language suggests that “initiated”
requires more than that. We rely on the plain meaning of “initiate.” The act
of dialing begins the call. The requirement of a PIN effectively “inhibits”
the call until such time as the PIN is entered (Greenspan Fig. 6, step 650), at
which time the call is completed.
Appellant further argues that Greenspan does not teach temporarily
inhibiting according to a result of the comparison made with the network
database and that the PIN does not function as the claimed “override.”
Appellant notes that the PIN itself is transmitted to the database (Greenspan
Fig. 6, left input to 630). (App. Br. 29.) The Examiner finds that the PIN
functions as an “entitlement” to complete the call. Thus, it overrides the
“inhibited” call. (Ans. 21.) The claim language does not require any
particular manner by which the call is initiated, inhibited and ultimately
permitted.
Appellant further argues that Greenspan does not teach “inhibiting” a
call because until the PIN is entered, the call is not “established.” A call that
is not “established” cannot be “inhibited.” (App. Br. 30-31.) The Examiner
and we disagree. A broadest reasonable interpretation of the word
“established” does not require that a call be completed through to its
ultimate destination. The term “established” is reasonably interpreted to
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refer to something less than fully completed. In our view, the word
“established” refers to all or part of the process of establishing
communication between the source and destination. Greenspan describes
dialing a call that is inhibited before being completed. It is not completed
until an overriding PIN is entered.

REJECTIONS ## 2 AND 4
We note that the Examiner’s findings with respect to both secondary
references in the § 103(a) rejections were not challenged. Furthermore,
Appellant relies solely on arguments made with respect to the supposed
deficiencies of Smith or Greenspan. We are not persuaded of error with
respect to the rejections under 35 U.S.C. § 103(a).

SUMMARY
We affirm each of the following rejections:
1. the rejection of claims 4, 6, and 7 under 35 U.S.C. § 102(e) as
being anticipated by Smith.
2. the rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Smith and Daudelin.
3. the rejection of claims 4, 6, and 7 under 35 U.S.C. § 102(b) as
being anticipated by Greenspan.
4. the rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Greenspan and Daudelin.

Appeal 2012-012248
Reexamination Control No. 90/010,978
U.S. Patent 6,130,937

11
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

ak

PATENT OWNER:

Hamilton, Brook, Smith & Reynolds, PC
530 Virginia Road
P.O. Box 9133
Concord, MA 01742-9133

THIRD PARTY REQUESTER:

Hanify & King Professional Corporation
1055 Thomas Jefferson Street, NW
Suite 400
Washington, DC 20007