Ex Parte . et alDownload PDFPatent Trial and Appeal BoardJul 31, 201590012407 (P.T.A.B. Jul. 31, 2015) Copy Citation 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. 90/012,407 07/26/2012 5,684,863 . A2DL-006/00US 305918-2030 7965 58249 7590 08/03/2015 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 EXAMINER MCNEIL, JENNIFER C ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 08/03/2015 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 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 Technology Center 3900 ____________ Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 2 This is an appeal under 35 U.S.C. §§ 134(b) and 306 from the final rejection of claims 31, 32, 39, 42, 43, and 116. The Examiner has confirmed the patentability of dependent claim 49. (Final Act. 93.) Claims 1–30, 33– 38, 40, 41, 44–48, 50–115, and 117–202 are not subject to reexamination. We have jurisdiction under §§ 134(b) and 306. An oral hearing scheduled for July 8, 2015 was waived. We affirm. STATEMENT OF THE CASE A previous request for ex parte reexamination of U.S. Patent No. 5,684,863 (the “’863 patent”) was filed on July 14, 2006, and assigned Reexamination Control No. 90/008,095. An Ex Parte Reexamination Certificate (10,163rd) was issued on May 15, 2014, US 5,684,863 Cl, in which claims 27, 93, 181, 183 and 185 were cancelled, and the patentability of claim 109 was confirmed. Other previous requests for ex parte reexamination of the ’863 patent were filed on January 25, 2011 and February 28, 2011, and assigned Reexamination Control Nos. 90/011,457 and 90/011,515, respectively. These reexamination proceedings were merged. An Ex Parte Reexamination Certificate (10,276th) was issued on August 27, 2014, US 5,684,863 C3, in which claims 31 and 49 were cancelled, and the patentability of claims 42 and 43 was confirmed. Accordingly, we will not be addressing claim 31 further in this Decision. A subsequent request for ex parte reexamination of the ’863 patent was filed on January 30, 2013 and assigned Reexamination Control No. Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 3 90/012,407. The ’863 patent, entitled “Telephonic-Interface Statistical Analysis System,” issued November 4, 1997 to Ronald A. Katz, is said to be a continuation of 07/335,923, filed April 10, 1989, now U.S. Patent No. 6,016,344, issued January 18, 2000, which is said to be a continuation of Application No. 07/194,258, filed May 16, 1988, now U.S. Patent No. 4,845,739, issued July 4, 1989, which is said to be a continuation-in-part of Application No. 07/018,244, filed February 24, 1987, now U.S. Patent No. 4,792,968, issued December 20, 1988, which is said to be a continuation-in-part of Application No. 06/753,299, filed July 10, 1985, now abandoned. The ’863 patent is said to be assigned to Ronald A. Katz Technology Licensing L.P., which is said to be the real party in interest. (App. Br. 4.) The ’863 patent is said to have expired on December 20, 2005 by virtue of a terminal disclaimer. (App. Br. 6.) Appellant’s Invention Appellant’s invention relates to a telephonic-interface statistical analysis system including a multiplicity of individual terminals of a communications facility (Abstract), processing systems and an associated series of automatic call distributors (col. 4, ll. 15-17; fig. 1). The communications facility is connected to the processing systems through the automatic call distributors. (Col. 4, ll. 15-17.) The processing systems include an interface with dialed number identification service (DNIS) capability, automatic number identification (ANI) capability, switching mechanisms and voice interface capabilities. (Col. 4, ll. 49-52.) The Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 4 processing system can include a qualification unit (col. 10, ll. 4-5; fig. 4) for screening callers (col. 3, l. 17) and a designation unit (col. 10, ll. 5-7; fig. 4) for designating callers by significance and identification (col. 5, ll. 23-43). Callers using the individual terminals are prompted by voice-generated instructions to provide digital data that are stored for processing. (Abstract.) The processing system also includes a memory for storing individual data provided by callers. (Col. 5, ll. 13-14.) Related Litigation The ’863 patent is or has been involved in numerous litigations, as summarized in the Related Proceedings Appendix. (App. Br. 81–104.) The Claims Claims 27 (not on appeal), 42, 43, and 116 are exemplary and are reproduced below with disputed limitations in italics: 27. An analysis control system for use with a communication facility including remote terminals for individual callers, wherein said remote terminals may comprise a conventional telephone instrument including voice communication means, and digital input means in the form of an array of alphabetic numeric buttons for providing data, said analysis control system comprising: interface structure coupled to said communication facility to interface said remote terminals for voice and digital communication, and including means to provide caller data signals representative of data relating to said individual callers developed by said remote terminals and including means to receive called number identification signals (DNIS) automatically provided by said communication facility to identify a select one of a plurality of different called numbers associated with a select format of a plurality of different formats; Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 5 record structure, including memory and control means, said record structure connected to receive said caller data signals from said interface structure for accessing a file and storing certain of said data developed by said remote terminals relating to certain select ones of said individual callers; qualification structure coupled to said record structure for qualifying access by said individual callers to said select format based on at least two forms of distinct identification including caller customer number data and at least one other distinct identification data element consisting of personal identification data provided by a respective one of said individual callers; and switching structure coupled to said interface structure for switching certain select ones of said individual callers at said remote terminals to any one of a plurality of live operators wherein said live operators can enter at least a portion of said caller data relating to said select ones of said individual callers through interface terminals, which is stored in said record structure. 42. An analysis control system according to claim 27, wherein said called number identification signals (DNIS) are received by one of a plurality of call distributors. 43. An analysis control system according to claim 42, wherein said plurality of call distributors are at different geographic locations. 116. An analysis control system for use with a communication facility including remote terminals for individual callers, wherein each of said remote terminals may comprise a conventional telephone instrument including voice communication means and digital input means in the form of an array of alphabetic numeric buttons for providing data and wherein said communication facility has a capability to provide called number identification data (DNIS) and calling number identification data, said analysis control system comprising: multiple automatic call distributors at geographically distinct locations for receiving calls from said individual callers at said remote terminals; Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 6 interface structure coupled to said communication facility to interface said remote terminals for voice and digital communication and including means to receive caller data signals representative of data relating to said individual callers, including caller personal identification data and said called number identification data signals (DNIS) and said calling number identification data provided automatically by said communication facility, said called number identification data signals (DNIS) identifying a select format from a plurality of formats; voice generator structure coupled through said interface structure for actuating said remote terminals as to provide vocal operating instructions in accordance with said select format to said individual callers and to prompt said individual callers to enter data; record testing structure connected to receive and test said caller data signals including said calling number identification data and said caller personal identification data against previously stored calling number identification data and caller personal identification data; and analysis structure for receiving and processing said caller data signals under control of said record testing structure. The Rejections 1. Claims 32, 39, 42, and 43 stand rejected under 35 U.S.C. § 103(a) as obvious over Barger (US 4,071,698; Jan. 31, 1978), NDC (Linda Driscoll & Joseph Levinson, NDC—Where Telemarketing and Technology Meet, TELEMARKETING 68–74 (1985), and Student Registration (Periphonics Corporation, Automated Student Registration Using Touch-Tone Telephone/Voice Response, Publication No. 3230202A (1986)). 2. Claims 32, 39, 42, and 43 stand rejected under 35 U.S.C. § 103(a) as obvious over Barger, NDC, VCT ’86 (American Express Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 7 Implements Voice Response Credit Authorization, 1 VCT QUARTERLY NEWSLETTER 1, 5 (1986)), and Student Registration. 3. Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as obvious over Barger, NDC, Oliphant (Jean R. Oliphant, An ACD and VRU Can Provide Mutual Benefits, Proceedings Voice I/O Systems Applications Conference (1987)), and Student Registration. 4. Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as obvious over Barger, NDC, VCT ’86, Oliphant, and Student Registration. 5. Claim 116 stands rejected under 35 U.S.C. § 103(a) as obvious over Barger, NDC, Student Registration, VCT ’87 (1-800-CUSTOMER SERVICE, 2 VCT QUARTERLY NEWSLETTER 1, 6 (1987), and Moosemiller (John P. Moosemiller, AT&T’s ConversantTM I Voice System, SPEECH TECH. 88–93 (1986). Appellant relied upon the following in rebuttal to the Examiner’s rejection: Declaration under 37 C.F.R. § 1.132 of Arthur Brody, Ph.D., dated April 1, 2013 (“Brody Declaration” or “Brody Decl.”).1 1 This opinion only addresses arguments made by Appellant. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). We have considered the declaration evidence to the extent raised by Appellant’s arguments. Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 8 ANALYSIS Claim Interpretation “format” and “plurality of formats” Each claim on appeal recites a “format” or “plurality of formats.” In view of a Federal Circuit opinion, In re Katz Interactive Call Processing Patent Litig., 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) and the Specification of the ’863 patent (see, e.g., Abstract, col 1, l. 65 to col. 2, l. 8, col. 10, ll. 45–52, col. 6, l. 61 to col. 7, l. 17), Appellant urges the following: As reflected by the proper claim construction, a “format” involves an automated exchange between a caller and a system, guided by underlying computer programming. A “format” is not a spontaneous or contemporaneous live exchange between a caller and a live operator, which occurs at the will of either party. Mere conversation between two people is distinct from a “format” which is guided by underlying computer programming, that controls not only the content but the sequence of steps to gather and convey information. (App. Br. 14.) Appellant further argues that “[w]hen the caller transfers out of a format, the format interface is always terminated or aborted.” (Id.) The Examiner views Appellant’s claim construction as improper because “Patentee has taken the Courts’ construction and is trying to narrow it even further, reading language into the construction not provided by any of the Courts and, importantly, contradicting the explicit language of the claims” (Ans. 49) and “the ’863 patent includes formats having portions that are not automated, i.e. that involve ‘spontaneous and contemporaneous live exchanges between a caller and a live operator that is not guided by Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 9 underlying computer programming’” (Ans. 51) (emphasis in original). We agree with the Examiner’s interpretation of “format.” (Ans. 49.) To elaborate, 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 addition, the “Background and Summary of the Invention” section of 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 (emphases added)). This is one generalized example of a format. The Specification of the ’863 patent provides two specific examples of formats, described as a mail order format (col. 10, ll. 26–28) and a statistical health format (col. 5, l. 64 to col. 6, l. 21), respectively: Either before or after qualification, the caller might be advised that if he prefers to communicate directly with a person, or needs such contact at any point in the communication, he may accomplish it simply by pushing the asterisk button (*) at the terminal T1. Such action forms an abort signal that is detected by the processing unit 92 to transfer the communication to the interface terminal IT. (Col. 10, ll. 45–51 (emphases added).) The resulting data signals are communicated from the interface unit 20 . . . to the processor PR1 for testing the telephone number as valid or entitled. Essentially, the format of a proper Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 10 number prompts production of a valid or “good” signal. . . . . In an alternative mode, the processor PR1 may abort the interface and couple the interface terminal IT for direct personal communication with the caller. (Col. 6, ll. 61–65, col. 7, ll. 13–16 (emphasis added).) Because the Specification of the ’863 patent discloses multiple examples in which a caller has the option of being transferred to an operator, the claim construction advocated by Appellant is unpersuasive because such an interpretation of “format” that excludes “spontaneous or contemporaneous live exchange between a caller and a live operator” is inconsistent with the Specification. Furthermore, the ’863 patent provides no express disclosure that the “abort signal” followed by transferring a caller to an operator also aborts the “format.” “caller data signals” Each claim on appeal recites a ‘caller data signals.” Appellant argues that “[a]s a matter of claim construction, the caller data signals received by this element [as recited in independent claim 116] are signals (or data, information, etc.) that are not mere spoken conversation between the caller and a live operator.” (App. Br. 43–44.) In particular, Appellant argues that “[t]he ‘caller data signals’ constituting personal identification data are received as a result of callers providing signals from their remote terminals, such as touch-tone inputs from touch-tone telephones.” (App. Br. 44.) The Examiner views Appellant’s claim construction as improper because an interpretation that “caller data signals to touch-tone or digital signals . . . [as] excluding vocal (analog) signals . . . would be contrary to the Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 11 evidence in the ’863 patent.” (Ans. 99.) We agree with the Examiner’s interpretation of “data signals.” The Specification of the ’863 patent states that: In general, the present invention comprises a telephonic- interface system an related process for selectively utilizing both analog (voice) and digital telephonic communication in a variety of different interface formats or programs, as to select or qualify a set of callers, enable positive identification of at least certain of the callers in the set, acquire data from callers in the set, statistically analyze acquired data, as in combination and in association with external data (time independent), and accordingly to isolate a subset of the callers with verifiable identification. (Col. 1, ll. 52–61 (emphases added).) The Specification of the ’863 patent further states that “[c]onsidering the processing system P1, fifty lines from the automatic call distributor AC1 are connected to the interface 20, an exemplary form of which may be a commercially available Centrum 9000 unit” and that “[t]he interface 20 incorporates modems, tone decoders, switching mechanisms, DNIS and ANI capability (call data analyzer 20a) along with voice interface capability.” (Col. 4, ll. 46–52 (emphases added).) Because the Specification of the ’863 patent provides a general disclosure that data acquired from callers includes voice communication and that interface 20 includes voice interface capability, the claim construction advocated by Appellant is unpersuasive because such an interpretation of “caller data signals” that excludes “spoken conversation between the caller and a live operator” is inconsistent with the Specification. Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 12 § 103 Rejection—Barger, NDC, and Student Registration Claims 32 and 39 Initially, we note that Appellant’s arguments in the Appeal Brief are primarily directed towards the limitations of independent claim 27, from which claims 32, 39, 42, and 43 depend. Claim 27, which was cancelled in a previous ex parte reexamination proceeding, is neither subject to reexamination nor on appeal. However, for purposes of discussion, we will address the limitations in claim 27, for which claims 32, 39, 42, and 43 incorporate due to their dependency. With respect to the first disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 17–22) that the combination of Barger, NDC, and Student Registration would not have rendered obvious independent claim 27, which includes limitation “a select format of a plurality of different formats.” The Examiner found that the first mode of Barger (i.e., a telephone system featuring operator assistance), the second mode of Barger (i.e., a telephone system featuring an automatic telephone service), and the third mode of Barger (i.e., a modified automatic telephone service for customers of a licensed retailer) collectively correspond to the limitation “a select format of a plurality of different formats.” (Ans. 16–18, 57–62, 68–69.) We agree with the Examiner. Barger relates to “a system for marketing merchandise or services capable of being demonstrated to prospective customers over telephone lines . . . and for immediately accepting orders of selected merchandise or services.” (Col. 1, ll. 8-13.) According to Barger, Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 13 [a] further object of the invention is to provide a system for permitting a customer to place orders for merchandise or services . . . 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.) “In the first mode [of Barger], the operator elicits required information from the customer, such as name and account number, demonstrations desired, and orders for the merchandise or services demonstrated.” (Col. 2, ll. 33–37.) Barger explains that in a first mode “customer service operators [are] under control of the data processor.” (Col. 2, ll. 21–22.) Barger further explains that in the first mode, [t]he data processor 10 is programmed with an interrupt routine to respond to each signal received from the automatic answering device 11 and automatically connect the customer’s telephone line via a [data] coupler 13 to a predetermined one of a plurality of audio-program repeater [17] channels which plays a “hello” message explaining that a customer service operator will be with the customer in a moment. (Col. 4, ll. 10–17; “GO OFF-HOOK & CONNECT TO ‘HELLO’ MSG.,” fig. 3a.) In a second mode of Barger, an “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 through his telephone keyboard.” (Col. 2, l. 65 to col. 3, l. 3.) To access the second mode, the operator can transfer a customer’s call (col. 2, ll. 65–67) or the customer can dial “a distinct telephone number for a line which the data processor recognizes as being from a customer who has a push-button telephone and wishes automatic telephone service” (col. 3, ll. 5–8). In a third mode, a modified Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 14 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.) Thus, because Barger describes a system for marketing merchandise or services using the three modes, Barger teaches the limitation “a select format of a plurality of different formats.” Appellant argues that “[n]othing in Barger discloses that the operator attended first mode satisfies all the requirements of being a ‘format’” but “[i]nstead, the first mode involves spoken interactions between a caller and a live operator” and “the first mode does not involve any ‘content and sequence of steps to gather information from and convey information to callers through pre-recorded prompts and messages,’ and thus it cannot constitute a ‘format.’” (App. Br. 18 (emphasis in original).) To support this position, Appellant points to paragraph 11 of the Brody Declaration. (Id.) A relevant portion of the Brody Declaration reiterates that “the live operator mode does not involve any process to gather information from and convey information to callers through pre-recorded prompts and messages.” (Brody Decl. ¶ 11.) However, contrary to Appellant’s arguments, Barger explains that for the first mode, a ‘hello’ message explains that a customer service operator will be with the customer, followed by an exchange of information between the operator and the customer. Accordingly, even if we adopt Appellant’s construction that “format” requires “content and sequence of steps to gather information from and convey information to callers through pre-recorded prompts and messages” (App. Br. 18), the claimed “format” is broad enough Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 15 to encompass the first mode of Barger, in which customer service operators are controlled by the data processor. Appellant further argues that “[t]he ‘second mode’ and ‘third mode’ are merely different ways of accessing the same push-button interface system that is depicted in Figure 4 and described at Barger” and “Barger does not disclose that the automated interactions between the caller and the system in the second mode are any different than the automated interactions in the third mode.” (App. Br. 21 (emphases added).) To support this position, Appellant points to paragraph 14 of the Brody Declaration. (Id.) A relevant portion of the Brody Declaration reiterates that “Barger does not describe, anywhere in its lengthy and detailed description, that there are any different prompts or messages between the second mode and the third mode” and “Barger teaches the [person of ordinary skill in the art or] POSITA that the second mode and third mode are merely two different ways of accessing the same automated call flow, using different telephonic equipment.” (Brody Decl. ¶ 14.) However, as discussed previously, Barger explains that 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 (i.e., the third mode), rather than making arrangements for payment such as providing credit card and delivery information (i.e., the second mode). Thus, the underlying computer programming (e.g., its format) to operate the second mode of Barger would differ from the third mode of Barger. Accordingly, Barger teaches a plurality of automated formats (i.e., the second mode and the third mode). Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 16 Thus, we agree with the Examiner that the combination of Barger, NDC, and Student Registration would have rendered obvious independent claim 27, which includes the limitation “a select format of a plurality of different formats.” With respect to the second disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 22–27) that the combination of Barger, NDC, and Student Registration would not have rendered obvious independent claim 27, which includes limitation “means to receive called number identification signals (DNIS) automatically provided by said communication facility to identify a select one of a plurality of different called numbers associated with a select format of a plurality of different formats.” The Examiner found that the Rockwell Galaxy Automatic Call Distributor (ACD) discussed in NDC, which includes a “990 Interface” and a Dialed Number Identification (DNI) feature, such that the called number is associated with a product name, corresponds to the limitation “means to receive called number identification signals (DNIS) automatically provided by said communication facility to identify a select one of a plurality of different called numbers associated with a select format of a plurality of different formats.” (Ans. 20–22, 69–72.) In particular, the Examiner interpreted the language “means to receive called number identification signals (DNIS) automatically” as a means-plus-function limitation and identified the corresponding structure from the Specification of the ’863 patent as “interface 20, an exemplary form of which may be a commercially available Centrum 9000 unit.” (Ans. 77.) The Examiner further found that Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 17 “990 Interface” of NDC performs the function specified in the claim and is the same structure as or an equivalent structure to the means-plus-function limitation. (Ans. 76.) The Examiner also found that “the acronym ‘DNI, or Dialed Number Identification’, . . . is an art-recognized equivalent term to DNIS, or dialed number identification signal (or service)” and that based on common knowledge in the art, “a person of ordinary skill in the art would have understood at the time of the instant invention that the DNIS was provided automatically by a communication facility.”2 (Ans. 70.) The Examiner concluded that: [i]t would have been obvious for one of ordinary skill in the art . . . to use NDC’s DNIS to identify respective formats or modes in Barger’s system because (1) Barger already provides distinct telephone numbers for the modes, and (2) . . . because the DNIS provides an economic benefit. (Ans. 22.) We agree with the Examiner. 2 Although not cited by the Examiner, both VCT ’86 and VCT ’87 support the Examiner’s reliance on common knowledge in the art that DNIS signals are “automatically provided by said communication facility,” as recited in claim 27. VCT ’87 explains that “[i]n one VCT [voice computer technologies] application, several 800 numbers enter the service department over many T1 spans” (p. 1) and that “DNIS codes received with each call allow the voice response system to identify the application before even speaking with the customer” (pp. 1, 6). VCT ’86 explains that “Merchants or Service Establishments call the Credit Authorization System (CAS) via toll free numbers through Megacom” such that “[t]he voice response unit receives the call and directs it according to the 800 number” (p. 1) based on DNIS identifiers (p. 5). The lone diagram in VCT ’86 illustrates that incoming calls from merchants are initially directed towards the “Megacom DNIS Service.” Accordingly, VCT ’86 and VCT ’87 collectively explain that DNIS codes are received with each call from the “Megacom DNIS Service.” Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 18 NDC relates to the National Data Corporation’s Tucker, Georgia telemarketing center. (P. 69, col. 1.) The telemarketing center of NDC features a Rockwell Galaxy Automatic Call Distributor (ACD) (p. 70, col. 1) with Dialed Number Identification (DNI), in which “the agent sees the name of the product or service on a printed line on the bottom of the CRT screen,” also referred to as a “gate announcement” (p. 71, col. 3). NDC explains that “as the agent greets the caller, the entire format for handling that client’s business comes up on the CRT screen.” (Id.) NDC further explains that “the 990 Interface . . . sends that information to the host computer” and “[t]he host computer selects the appropriate data and sends it back to the agent’s CRT screen.” (P. 72, col. 1.) Moreover, NDC explains that prior to DNI, an agent would receive a “whisper” in an earpiece to indicate the name of the product or service the caller was phoning in to purchase (p. 71, col. 3) which “took an average of four seconds to key in the name of the client, which then brought the formatted message up on the CRT screen” (p. 72, col. 1). A person of ordinary skill in the art would have recognized that incorporating the DNI of NDC into the telephone marketing system of Barger would improve Barger by providing the advantage of identifying the mode (e.g., first mode, second mode or third mode) based on the telephone number dialed by the customer. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Thus, we agree with the Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 19 Examiner (Ans. 22) that modifying Barger to include the DNI of NDC would have been obvious. First, Appellant argues that “Examiner relies on a vague mention in NDC of ‘DNI, or Dialed Number Identification’” but “does not demonstrate a disclosure in NDC of called number identification signals ‘automatically provided by said communication facility’ (for example, a telephonic network) as the claims require.” (App. Br. 22.) Contrary to Appellant’s arguments, the Examiner found that based on common knowledge, one of ordinary skill in the art would have known that “DNIS was provided automatically by a communication facility,” as recited in claim 27. (Ans. 70.) Instead of providing arguments or evidence directly rebutting the Examiner’s finding with respect to common knowledge of one of ordinary skill in the art, Appellant merely provides a general allegation that NDC does not teach the limitation “automatically provided by said communication facility,” as recited in claim 27. We thus determine this argument is not persuasive. Second, Appellant argues that “NDC does not disclose any use of DNIS to identify a called number associated with a format from a plurality of different formats, within the proper meaning of ‘format’ the claims require” (App. Br. 23) and that “‘format’ in NDC does not disclose the specific ‘format’ recited and required by the ’863 patent and the claims at issue, which involves an automated exchange using pre-recorded prompts and messages from a system to the caller.” (App. Br. 24.) To support this position, Appellant points to paragraphs 15–16 of the Brody Declaration. (Id.) A relevant portion of the Brody Declaration reiterates that “[t]he CRT Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 20 screen will then display ‘the entire format for handling that caller’s business’” but “[t]hough the same ordinary word ‘format’ is used, the format in NDC is quite different from the ‘format(s)’ required by the ‘863 patent claims, which involve an automated exchange using pre-recorded prompts and messages from a system to the caller.” (Brody Decl. ¶ 16.) However, as discussed previously, Appellant’s proposed claim construction, which excludes “a spontaneous or contemporaneous live exchange between a caller and a live operator” (App. Br. 14) is inconsistent with the Specification of the ’863 patent. Moreover, the rejection relies upon what Barger and NDC collectively teach to arrive at this claimed feature. Third, Appellant argues that [m]odifying Barger to use the DNI functionality from NDC for Barger, such as to choose between an interaction with the operator or an interaction with an automated system, would therefore not result in any shortening of calls, reduction in number of operators, or the like – in sum, no “economic benefit” as the Examiner asserts. (App. Br. 25.) To support this position, Appellant points to paragraphs 18– 19 of the Brody Declaration. (Id.) A relevant portion of the Brody Declaration reiterates that “[m]odifying Barger to use the DNI functionality from NDC for Barger, such as to choose between an interaction with the operator or an interaction with an automated system, would therefore not result in any shortening of calls, reduction in number of operators, or other benefit that a POSITA would understand.” (Brody Decl. ¶ 18.) Appellant merely provides a conclusory statement, rather than providing persuasive arguments or evidence that the Examiner’s articulated rationale for combining Barger and NDC was improper or incorrect. As discussed Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 21 previously, the combination of Barger, NDC, and Student Registration is based on the improvement of a similar device in the same way as in the prior art. Fourth, Appellant argues that [t]here would be no “automation of at least some of the operator’s functions” in Barger by using the NDC DNI functionality because in Barger the live operator will already know what service has been called and the operator does not receive any “whisper” and does not need to enter any identification of the service because the live operator deals with only one possible service. (App. Br. 26.) To support this position, Appellant points to paragraph 19 of the Brody Declaration. (Id.) A relevant portion of the Brody Declaration reiterates that “[t]here is no ‘whisper’ or similar functionality to be replaced, since the operator always handles the same type of call, for music demonstrations and purchases and the like” and thus, “[m]odifying Barger to use the DNI functionality from NDC for Barger, such as to choose between an interaction with the operator or an interaction with an automated system, would therefore not result in any shortening of calls, reduction in number of operators, or other benefit that a POSITA would understand.” (Brody Decl. ¶ 18.) However, as discussed previously, the combination of Barger and NDC was based upon incorporating the DNI of NDC into the telephone system of Barger, to improve Barger’s system by automatically detect the distinct telephone number dialed by the customer to access the three different modes of Barger. Last, Appellant argues that “[t]he Examiner did not show any disclosure in NDC (or any other reference) of the identical function of the Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 22 means-plus-function element, and the same or equivalent corresponding structure, as set forth in the claim construction section above.” (App. Br. 27.) Contrary to Appellant’s arguments, the Examiner found that the “990 Interface” of NDC performs the function “to receive called number identification signals (DNIS) automatically provided by said communication facility to identify a select one of a plurality of different called numbers associated with a select format of a plurality of different formats” and is the same structure as or an equivalent structure to the means-plus-function limitation. (Ans. 76.) Thus, we agree with the Examiner that the combination of Barger, NDC, and Student Registration would have rendered obvious independent claim 27, which includes the limitation “means to receive called number identification signals (DNIS) automatically provided by said communication facility to identify a select one of a plurality of different called numbers associated with a select format of a plurality of different formats.” With respect to the third disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 27–30) that the combination of Barger, NDC, and Student Registration would not have rendered obvious independent claim 27, which includes limitation “qualification structure . . . based on at least two forms of distinct identification . . . provided by a respective one of said individual callers.” The Examiner found that the credit verification function of Barger corresponds to the claimed “qualification structure . . . based on at least two forms of distinct identification . . . provided by a respective one of said individual callers.” (Ans. 25–27.) We agree with the Examiner. Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 23 Barger explains that “[t]he operator . . . greets the customer and elicits from the customer identification data such as name, address, and account or credit card number” and “keys the identification data into the data processor through the terminal 19 for credit verification and asks the customer what may be done for the customer.” (Col. 4, ll. 61-67.) Furthermore, “[a]lthough the telephone record marketing system . . . has relied upon a human customer service operator for customer communications, the functions of the customer service operator may be replaced by programmed subroutines in the data processor and messages prerecorded on channels of the audio program repeater” such that “[t]he customer responds by keying codes into the data processor through a pushbutton telephone.” (Col. 6, ll. 35-43.) Barger further explains that “another object is to provide a telephone system for customer selected audio demonstrations without human intervention in operation.” (Col. 2, ll. 13-15.) Accordingly, Barger explains that the credit verification function performed by the operator can be replaced by prerecorded messages, such that the customer responds using a pushbutton telephone (i.e., an automated credit verification function). Thus, Barger teaches a “qualification structure . . . based on at least two forms of distinct identification . . . provided by a respective one of said individual callers.” Appellant argues that “[t]he claim language makes clear that the data ‘provided by’ a caller is provided by a caller to the automated system (such as using touch-tones), not verbally to a live operator.” (App. Br. 27–28 (emphasis in original).) Similarly, Appellant argues “it is clear that Barger is not attempting to suggest that each and every action that a live operator Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 24 can be replaced by an equivalent push-button automated-interface function” and that “Barger is merely noting that a different embodiment uses a push- button automated interface instead of the live operator connection.” (App. Br. 29 (emphasis in original).) However, as discussed previously, Barger explains that the functions of the customer service operator can be replaced by prerecorded messages, such that the customer responds using a pushbutton telephone (i.e., an automated credit verification function). Barger expressly states that “another object [of the invention] is to provide a telephone system for customer selected audio demonstrations without human intervention in operation.” (Col. 2, ll. 13–15.) Thus, we agree with the Examiner that the combination of Barger, NDC, and Student Registration would have rendered obvious independent claim 27, which includes the limitation “qualification structure . . . based on at least two forms of distinct identification . . . provided by a respective one of said individual callers.” With respect to the fourth disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 29–30) that the combination of Barger, NDC, and Student Registration would not have rendered obvious independent claim 27, which includes limitation “based on at least two forms of distinct identification including caller customer number data and at least one other distinct identification data element consisting of personal identification data provided by a respective one of said individual callers.” The Examiner found that the customer identification data of Barger (e.g., name, address, and account or credit card number) or, alternatively, the Social Security number of Student Registration corresponds to the limitation Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 25 “at least two forms of distinct identification including caller customer number data and at least one other distinct identification data element consisting of personal identification data.” (Ans. 28, 85–87.) The Examiner concluded that “[i]t would have been obvious . . . for Barger’s system to use at least one other distinct identification data element consisting of personal identification data, i.e. the birth date or social security number --along with the account or credit card number-- as taught by Student Registration, to ensure that the caller is indeed the owner of the account.” (Ans. 28 (emphasis in original).) We agree with the Examiner. Barger explains that “[b]efore the first order is accepted, the operator may request credit verification through the data processor or other means using the customer’s credit card or account number.” (Col. 2, lines 53–57.) Similarly, Barger explains that “[t]he operator then greets the customer and elicits from the customer identification data such as name, address, and account or credit card number.” (Col. 4, ll. 61–64.) Student Registration relates to “[a]utomated student registration through Touch-Tone telephone/voice response.” (§ 1, para. 1.) Student Registration explains that “[a]ll pre-authorized students are given the ability to choose, add or drop courses from any Touch-Tone telephone.” (Id.) Student Registration further explains that “[s]ystems implemented to date, assign students a unique four digit access code or ‘Personal Identification Number’ (‘PIN’), which is used in addition to their school ID# or Social Security #” and that “[t]his security technique (a unique four digit PIN) is widely used in the banking industry for automated Touch-Tone telephone customer inquiry, funds transfer and/or bill payment.” (§ 3.1, para. 1.) Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 26 A person of ordinary skill in the art would have recognized that incorporating the Social Security number and PIN security technique of Student Registration with the telephone marketing system of Barger, would improve Barger by providing the advantage of additional security for payment. See KSR, 550 U.S. at 417. Thus, we agree with the Examiner (Ans. 28) that modifying Barger to include the Social Security number and PIN security technique would have been obvious. Appellant argues that “[i]t also would not have been obvious to modify Barger to use the alleged personal identification data from the Student Registration reference as the Examiner asserts.” (App. Br. 29.) In particular, Appellant argues that “Student Registration discloses a specific student registration system for a school” (App. Br. 29) and that “[i]n that context—unlike the very different Barger commercial context—it would make sense for the school to use personal identification information in the telephonic interface.” (App. Br. 29–30.) To support this position, Appellant points to paragraphs 21–22 of the Brody Declaration. (Id.) A relevant portion of the Brody Declaration reiterates that “[t]he POSITA would understand that Student Registration contemplates that students’ birth dates and other personal information would already be known to the school” and “Barger is a commercial system where it would not make sense to use personal identification information in the telephonic interface system.” (Brody Decl. ¶ 21.) Contrary to Appellant’s arguments, Student Registration expressly states that the security technique of coupling a Social Security number with a PIN is widely used in the banking industry for bill payment (§ 3.1, para. 1) and the telephone marketing system of Barger Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 27 discusses ordering merchandise or services and arranging for payment (col. 1, l. 65 to col. 2, l. 4). Thus, we agree with the Examiner that the combination of Barger, NDC, and Student Registration would have rendered obvious independent claim 27, which includes the limitation “at least two forms of distinct identification including caller customer number data and at least one other distinct identification data element consisting of personal identification data.” Claims 32 and 39 depends from claim 27, and Appellant has not presented any substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 32 and 39 under 35 U.S.C. § 103(a), for the same reasons discussed with respect to independent claim 27. Claims 42 and 43 We are unpersuaded by Appellant’s arguments (App. Br. 31–35) that the combination of Barger, NDC, and Student Registration would not have rendered obvious dependent claim 42, which includes the limitation “wherein said called number identification signals (DNIS) are received by one of a plurality of call distributors” and dependent claim 43, which includes the limitation “wherein said plurality of call distributors are at different geographic locations.” The Examiner found that the five call centers of NDC, each equipped with the Rockwell Galaxy ACD, which includes a “990 Interface” and a DNI feature, correspond to the limitations “wherein said called number Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 28 identification signals (DNIS) are received by one of a plurality of call distributors,” as recited in dependent claim 42 and corresponds to the limitation “wherein said plurality of call distributors are at different geographic locations,” as recited in dependent claim 43. (Ans. 33–34, 88– 89.) NDC explains that “[t]he Tucker telemarketing center was founded as a result of NDC’s years of experience having five credit card verification centers scattered across the nation” that also “maintained 24 positions each to handle inbound calls (NDC refers to them as direct response calls) generated by direct response advertisements.” (P. 69, col. 1.) NDC also explains that “[n]ow, with one center dedicated solely to inbound and outbound telemarketing, NDC has found that it is getting more direct response calls” (p. 69, col. 2) and “the center doesn’t need to overflow calls to another NDC center” (p. 69, col. 3). NDC further explains that “[w]e already have this ACD in all five of our other U.S. call centers.” (P. 70, col. 1.) As discussed previously, the Galaxy ACD also includes Dialed Number Identification (DNI). (P. 71, col. 3.) Because NDC have five nationwide call centers for both credit card verification and direct response advertisements, each call center equipped with a Galaxy ACD with the capability to handle overflow calls from other centers, NDC teaches the limitations “wherein said called number identification signals (DNIS) are received by one of a plurality of call distributors,” as recited in dependent claim 42, and the limitation “wherein said plurality of call distributors are at different geographic locations,” as recited in dependent claim 43. Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 29 First, Appellant argues “the Examiner does not demonstrate that NDC discloses any system that includes multiple call distributors at different geographic locations.” (App. Br. 31.) To support this position, Appellant points to paragraph 26 of the Brody Declaration. (Id.) A relevant portion the Brody Declaration reiterates that “the Office Action does not demonstrate that NDC discloses any system that includes multiple call distributors at different geographic locations.” (Brody Decl. ¶ 26.) Similarly, Appellant argues that “the Examiner does not demonstrate that NDC discloses that called number identification signals (DNIS) are received by one of multiple call distributors.” (App. Br. 32.) To support this position, Appellant points to paragraph 28 of the Brody Declaration. (Id.) A relevant portion the Brody Declaration reiterates that “[t]here is no description in NDC that DNIS is received by one of multiple call distributors” and “[e]ven if it were assumed that DNIS-type signals were received, there is no description that they are received by a call distributor.” (Brody Decl. ¶ 28.) Contrary to Appellant’s arguments, the Examiner found that the five call centers of NDC, each equipped with the Rockwell Galaxy ACD having DNI capability, correspond to the limitations “wherein said called number identification signals (DNIS) are received by one of a plurality of call distributors,” as recited in dependent claim 42 and corresponds to the limitation “wherein said plurality of call distributors are at different geographic locations,” as recited in dependent claim 43. (Ans. 33–34, 88–89.) We further refer to the previous discussion of NDC. Second, Appellant argues that “NDC . . . expressly motivates away from a system including multiple geographically-dispersed call distributors” Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 30 because “in context, NDC explains that having these various ‘scattered’ centers had been problematic, which is why instead currently ‘one center’ is used” (App. Br. 31 (emphases in original)) and “NDC thus teaches an objective and arrangement that is directly contrary to the inventions of claims 42 and 43—it teaches that using multiple geographically dispersed locations results in ‘a number of things wrong,’ and if the company’s service is ‘fragmented in five centers, we never have a chance’” (App. Br. 32–33; see also Reply Br. 2–5). To support this position, Appellant points to paragraph 27 of the Brody Declaration. (App. Br. 32.) A relevant portion the Brody Declaration reiterates that “the portion of NDC that the rejection relies upon would be understood by a POSITA to motivate away from a system including multiple geographically-dispersed call distributors” because “NDC explains that having the five various ‘scattered’ call centers had been problematic, which is why instead currently “one center” is used.” (Brody Decl. ¶ 27 (emphasis in original).) Similarly, Appellant argues “NDC . . . teaches that using different geographically located centers resulted in overloaded call volumes at each center, such as from a ‘TV station that broadcast a commercial at the “wrong” time to the right audience,’ and that is why NDC teaches the use of one single center instead of the ‘fragmented’ approach.” (App. Br. 33; see also Reply Br. 2–5.) To support this position, Appellant points to paragraph 31 of the Brody Declaration. (App. Br. 33.) A relevant portion the Brody Declaration reiterates that “NDC teaches that using different geographically located centers resulted in overloaded call volumes at each center, such as from a ‘TV station that broadcast a commercial at the Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 31 “wrong” time to the right audience,’ and that is why NDC teaches the use of one single center instead of the ‘fragmented’ approach.” (Brody Decl. ¶ 31.) However, NDC explains that “five credit card centers scattered across the nation” is “somewhat inferior,” rather than actually “teaching away” from the use of multiple nationwide call centers. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Third, Appellant argues “even if NDC disclosed the claim requirements (which it does not), it would not have been obvious to modify Barger in view of NDC” because “Barger’s operator mode only had one service to offer, so there was no reason, basis, or need to use called-number signals to identify and provide a screen specific to that single service.” (App. Br. 33.) To support this position, Appellant points to paragraphs 29–32 of the Brody Declaration. (Id.) A relevant portion the Brody Declaration states that “Barger’s operator mode only had one service to offer, so there was no reason, basis, or need to use called-number signals to identify and provide a screen specific to that single service” (Brody Decl. ¶ 30.) We are not persuaded. Again, the combination of Barger and NDC was based upon incorporating the DNI of NDC into the telephone system of Barger, to automatically detect the distinct telephone number dialed by the customer to access the three different modes of Barger. Last, Appellant argues “NDC is describing the benefits of one ACD at one geographic location” and “NDC does not describe or suggest any redundancy between or among the call centers and their separate ACDs, or that each of the multiple call centers serve as the ‘duplicate systems’ for the other call centers.” (App. Br. 34 (emphases in original).) To support this Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 32 position, Appellant points to paragraph 32 of the Brody Declaration. (Id.) A relevant portion the Brody Declaration reiterates that “[t]he POSITA would understand that NDC is describing the benefits of one ACD at one geographic location” and “NDC does not describe or suggest to the POSITA any redundancy between or among the call centers and their separate ACDs, or that each of the multiple call centers serve as the ‘duplicate systems’ for the other call centers.” (Brody Decl. ¶ 32.) Even if Appellant is correct, such arguments do not persuasively rebut the Examiner’s finding that NDC teaches the limitations “wherein said called number identification signals (DNIS) are received by one of a plurality of call distributors” and “wherein said plurality of call distributors are at different geographic locations.” NDC expressly states that the Tucker telemarketing center features a Rockwell Galaxy ACD with DNI capability (p. 71, col. 3) and that “[w]e already have this ACD in all five of our other U.S. call centers” (p. 70, col. 1). Accordingly, NDC teaches that each U.S. call center features a Rockwell Galaxy ACD with DNI capability. Thus, we agree with the Examiner that the combination of Barger, NDC, and Student Registration would have rendered obvious dependent claim 42, which includes the limitation “wherein said called number identification signals (DNIS) are received by one of a plurality of call distributors” and dependent claim 43, which includes the limitation “wherein said plurality of call distributors are at different geographic locations.” Accordingly, we sustain the rejection of dependent claims 42 and 43 under 35 U.S.C. § 103(a). Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 33 § 103 Rejection—Barger, NDC, Student Registration, VCT ’87, and Moosemiller With respect to the first disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 43–44) that the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller would not have rendered obvious independent claim 116, which includes the limitation “caller data signals.” The Examiner found that customer identification data (e.g., name, address, and account or credit card number) of Barger provided by the customer corresponds to the limitation “caller data signals.” (App. Br. 39, 98–101.) We agree with the Examiner. As discussed previously, Barger explains that “[t]he operator . . . greets the customer and elicits from the customer identification data such as name, address, and account or credit card number” and “keys the identification data into the data processor through the terminal 19 for credit verification and asks the customer what may be done for the customer.” (Col. 4, ll. 61–67.) Furthermore, “[a]lthough the telephone record marketing system . . . has relied upon a human customer service operator for customer communications, the functions of the customer service operator may be replaced by programmed subroutines in the data processor and messages prerecorded on channels of the audio program repeater” such that “[t]he customer responds by keying codes into the data processor through a pushbutton telephone.” (Col. 6, ll. 35-43.) Because the customer of Barger provides customer identification data (e.g., name, address, and account or credit card number) to the operator or enters such customer identification Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 34 data using a pushbutton telephone, Barger teaches the limitation “caller data signals.” Appellant argues that “[a]s a matter of claim construction, the caller data signals received by this element are signals (or data, information, etc.) that are not mere spoken conversation between the caller and a live operator” (App. Br. 43–44) and that “[t]he [Final Office Action] relies on an unsupported, unreasonable and incorrect claim interpretation without any support in the intrinsic evidence of the patent” which “require that the ‘caller data signals’ are input into an automated interface.” (App. Br. 44.) However, as discussed previously, Appellant’s proposed claim construction, which excludes “a spontaneous or contemporaneous live exchange between a caller and a live operator” (App. Br. 14) is inconsistent with the Specification of the ’863 patent. Thus, we agree with the Examiner that the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller would have rendered obvious independent claim 116, which includes the limitation “caller data signals.” With respect to the second disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 44–45) that the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller would not have rendered obvious independent claim 116, which includes the limitation “called number identification data signals (DNIS) identifying a select format from a plurality of formats.” The Examiner found that the DNIS signals of VCT ’87, which are associated with an 800 number and allow a voice response system to identify Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 35 an application and direct a call to an appropriate department corresponds to the limitation “called number identification data signals (DNIS) identifying a select format from a plurality of formats.” (Ans. 42, 102.) VCT ’87 relates to the use of voice response technology in a customer service environment. (Pp. 1, 6.) VCT ’87 explains that “[t]hrough complete automation of selected routing inquiry calls, and partial automation of all calls, the voice response system can increase productivity by freeing up trained representatives to handle the involved and complicated inquiries made by customers.” (P. 1.) VCT ’87 further explains that “DNIS Codes associated with each 800 number are identified by the voice system and directed to the appropriate department before the call is even answered.” (P. 6.) Because VCT ’87 explains that calls are directed to the appropriate department based on DNIS Cods, VCT ’87 teaches the limitation “called number identification data signals (DNIS) identifying a select format from a plurality of formats.” Appellant argues “VCT87 does not disclose multiple formats nor the use of DNIS to identify a format from among multiple formats” and “[t]here is simply no disclosure in VCT87 of multiple concurrently implemented automated call processing flows.” (App. Br. 45.) Contrary to Appellant’s arguments, VCT ’87 provides an express explanation that “DNIS Codes associated with each 800 number are identified by the voice system and directed to the appropriate department before the call is even answered.” (P. 6.) Barger, on the other hand, teaches multiple formats and, when combining the references, predictably yield the disputed limitation. Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 36 Thus, we agree with the Examiner that the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller would have rendered obvious independent claim 116, which includes the limitation “called number identification data signals (DNIS) identifying a select format from a plurality of formats.” With respect to the third disputed limitation, we are unpersuaded by Appellant’s arguments (App. Br. 45–46) that the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller would not have rendered obvious independent claim 116, which includes the limitation “record testing structure connected to receive and test said caller data signals including said calling number identification data.” The Examiner found that credit verification function of Barger corresponds to the limitation “record testing structure connected to receive and test said caller data signals.” (Ans. 44–45, 102–3.) The Examiner further found that the Automatic Number Identification (ANI) of VCT ’87 corresponds to the limitation “calling number identification data and said caller personal identification data against previously stored calling number identification data.” (Ans. 42–43.) The Examiner concluded that “[i]t would have been obvious . . . to use ANI as identification data to automatically bring up the caller’s account information in Barger’s system, as taught in VCT ’87, in order to speed up the transaction and to prevent caller data entry errors.” (Ans. 43.) We agree with the Examiner. As discussed previously, Barger explains that “[t]he operator . . . greets the customer and elicits from the customer identification data such as name, address, and account or credit card number” and “keys the Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 37 identification data into the data processor through the terminal 19 for credit verification and asks the customer what may be done for the customer.” (Col. 4, ll. 61-67.) VCT ’87 further explains that “ANI [Automatic Number Identification] allows the voice system to identify the number from which the call is being placed” such that “the voice response system can match the number with a customer’s account.” (P. 6.) Accordingly, “[t]he call can then be handled automatically by the voice system or transferred to a service representative along with a data screen for that customer.” (Id.) A person of ordinary skill in the art would have recognized that incorporating the ANI of VCT ’87 with the telephone marketing system of Barger would provide the advantage of automatically matching the identified number with a customer’s account. See KSR, 550 U.S. at 417. Thus, we agree with the Examiner (Ans. 43) that modifying Barger to include the ANI of VCT ’87 would have been obvious. Appellant argues that “[u]sing ANI instead of the account number in Barger—the sole means by which the caller identifies herself in the automated mode of Barger—would have made no sense and would have been unpredictable and counter-productive,” because “[i]ndividuals share telephone numbers, and one individual may have multiple accounts.” (App. Br. 45.) To support this position, Appellant points to paragraphs 49–50 of the Brody Declaration. (Id.) A relevant portion the Brody Declaration reiterates that “a POSITA would have understood that using ANI instead of the account number in Barger, which is the sole means by which the caller identifies herself in the automated mode of Barger, would have made no Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 38 sense and would have been unpredictable and counter-productive.” (Brody Decl. ¶ 50.) Appellant merely provides a conclusory statement, rather than providing persuasive arguments or evidence that the Examiner’s articulated rationale for combining Barger and VCT ’87 was improper. As discussed previously, the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller is based on the improvement of a similar device in the same way as in the prior art. Thus, we agree with the Examiner that the combination of Barger, NDC, Student Registration, VCT ’87, and Moosemiller would have rendered obvious independent claim 116, which includes the limitation “record testing structure connected to receive and test said caller data signals including said calling number identification data.” Accordingly, we sustain the rejection of independent claim 116 under 35 U.S.C. § 103(a). Other § 103 Rejections We do not reach the rejections of claims 32, 39, 42, and 43 under 35 U.S.C. § 103(a) as obvious over various combinations of Barger, NDC, VCT ’86, Oliphant, and Student Registration. Affirmance of the obviousness- based rejections discussed previously renders it unnecessary to reach the remaining obviousness rejections, as all of pending claims have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). Appeal 2015-003634 Reexamination Control 90/012,407 Patent 5,684,863 39 DECISION The Examiner’s decision rejecting claims 32, 39, 42, 43, and 116 is affirmed. 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 lb cc: Patent Owner: COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 Third Party Requester: NDQ SPECIAL REEXAM GROUP 1000 Louisiana Street Fifty-third Floor Houston, TX 77002 Copy with citationCopy as parenthetical citation