Ex Parte . et al

Patent Trial and Appeal Board

Jul 31, 2015

90012407 (P.T.A.B. Jul. 31, 2015)

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
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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.
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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
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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;
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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;
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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
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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.
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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
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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
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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
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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.

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§ 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,
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[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
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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
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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).
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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
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“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.”
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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
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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
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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
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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
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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.
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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
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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
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“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.)
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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
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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
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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.
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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”
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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
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“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
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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).

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§ 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
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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
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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.
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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
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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
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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).

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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

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