Ex parte Holder

• Decision Date: 17 May 2019
• Docket Number: 229,Appeal 2019-002340,Application 14/322
• Parties: Ex parte LOUIS HOLDER Patent 8, 213, 594 B2 Technology Center 3900
• Court: Patent Trial and Appeal Board

Ex parte LOUIS HOLDER Patent 8, 213, 594 B2 Technology Center 3900

Appeal 2019-002340

Application 14/322, 229^[1]

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 17, 2019

FILING DATE: 07/02/2014

Before ALLEN R. MacDONALD, RAE LYNN P. GUEST, and CYNTHIA L. MURPHY, Administrative Patent Judges.

DECISION ON APPEAL ^[2]

MACDONALD, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of claims 1-21, 24, 26, 28-38, 40-44, 46-52, 54, 56-64, 66-70, 72-78, 80, 81, 83-87, 90-95, 97, 99-105, 107, 109, 144-146, 148-152, and 159-164. Appellant has cancelled claims 22, 23, 25, 27, 39, 45, 53, 55, 65, 71, 79, 82, 88, 89, 96, 98, 106, 108, 110-143, 147, and 153-158. App. Br. 77-89. We have jurisdiction under 35 U.S.C. § 6(b).^[3]

Summary of the Decision

Based on affirmed rejections and newly entered grounds of rejection, claims 1-21, 24, 26, 28-38, 40-44, 46-52, 54, 56-64, 66-70, 72-78, 80, 81, 83-87, 90-95, 97, 99-105, 107, 109, 144-146, 148-152, and 159-164 (all pending claims) are not patentable.

Summary-Affirmed & Newly Rejected

The Examiner's rejection of claims 21, 24, 26, 28-38, 40, 41, 43, 46-52, 54, 56-64, 66, 67, 69, 72-77, 80, 83-87, 90-92, 94, 97, 99-102, 104, 107, 109, 144-146, 148, 149, 151, and 159-164 under 35 U.S.C. § 251 as being an improper recapture is affirmed.

The Examiner's rejection (based on the term "equivalent") of claims 1-20, 38, 44, 64, 70, 81, 95, 105, 152, and 159-164 under 35 U.S.C. § 112(a) as lacking a proper written description is affirmed.

The Examiner's rejection (based on the term "equivalent") of claims 1-8, 11-20, 44, 64, 70, 81, 95, 105, 152, and 159-164 under 35 U.S.C. § 112(b) as being indefinite is affirmed.

The Examiner's Eighth, Ninth, and Tenth (8^th-10^th)^[4] rejections under 35 U.S.C. § 103(a) of claims 21, 24, 26, 28-37, 40-43, 46-50, 74-78, 80, and 83-86 as being unpatentable are affirmed.

The Examiner's rejection of claim 9 under 35 U.S.C. § 112(b) as being indefinite is pro forma affirmed.

We newly reject claims 7, 8, 10-21, 24, 26, 28-38, 40-44, 46-52, 54, 56-64, 66-70, 72-78, 80, 81, 83-87, 90-95, 97, 99-105, 107, 109, 144-146, 148-152, and 159-164 under 35 U.S.C. § 251 as being based on a defective reissue declaration.

We newly reject reissue claims 51, 52, 54, 56-63, 66-69, 72, and 73 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement.

We newly reject claims 9, 38, 51, 52, 54, 56-63, 66-69, 72, and 73 under 35 U.S.C. § 112(b) as being indefinite.

Summary - Reversed

The Examiner's rejection of claims 1-20, 51, 52, 54, 56-64, 66-70, 72-78, 80, 81, 83-86 and 159-164 under 35 U.S.C. § 251 as being based on new matter is reversed.

The Examiner's rejection (based on the phrase "at least one") of claims 10-20, 51, 52, 54, 56-64, 66-70, 72-78, 80, 81 and 83-86 under 35 U.S.C. § 112(a) as lacking a written description is reversed.

The Examiner's rejection (based on the "Intermediate Point Phrases") of claims 1-21, 24, 26, 28-38, 40-44, 46-52, 54, 56-64, 66-70, 72-78, 80, 81, 83-87, 90-95, 97, 99-105, 107, 109, 144-146, 148-152, and 159-164 (allpending claims) under 35 U.S.C. § 112(b) as being indefinite is reversed.

The Examiner's rejection of claims 62 and 64 under 35 U.S.C. § 112(d) as being of improper dependent form is reversed.

The Examiner's rejection of claims 1-21, 24, 26, 28-38, 40-44, 46-52, 54, 56-64, 66-70, 72-78, 80, 81, 83-87, 90-95, 97, 99-105, 107, 109, 144-146, 148-152, and 159-164 (allpending claims) under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter is reversed.

The Examiner's rejection of claims 87, 91, 92, 94, 97, 100-102, 104, 107, 144-146, 148, 149, and 151 under 35 U.S.C. § 102(b) as being anticipated is reversed.

The Examiner's Eighth rejection under 35 U.S.C. § 103(a) of claims 90, 99, and 109 as being unpatentable is reversed.

The Examiner's First through Seventh (Is-7th) and Eleventh through Fourteenth (11 --14th) rejections under 35 U.S.C. § 103(a) of claims 1-20, 21, 24, 26, 28-37, 40-43, 46-52, 54, 56-63, 66-69, 72-78, 80, 83-86, 90, 93, 97, 99-104, 107, 109, 150, and 159-164 as being unpatentable are reversed.

Appellant's Invention

This invention relates to "to a method and apparatus for minimizing the cost of making a long distance phone call." Spec. col. 1, ll. 19-21.

[In one Embodiment a] method comprises receiving a virtual number from at least one point on an originating network at a first intermediate point on a computer network. Then, based on the virtual number, a second intermediate point on the computer network is determined. The first and second intermediate points are preferably capable of communicating over the computer network

Spec. col. 2, ll. 28-34.

Illustrative Claims

Illustrative claims 1, 9, 21, 41, 42, and 44 under appeal read as follows (emphasis and bracketed material added; reissue underlining omitted):

1. [Patent claim - not amended] A method of establishing a communications link, comprising

[A.] receiving a virtual telephone number at a first intermediate point from an originating point, the first intermediate point being operatively connected to a data network; and

[B.] transmitting a call setup request over the data network that includes a second intermediate point, wherein the call setup request includes the virtual telephone number or its equivalent, and wherein information in the call setup request allows the second intermediate point to establish a communications link to a destination point that corresponds to the virtual telephone number

9. [Patent claim - not amended] A system for establishing a communications link, comprising

[A.] means for receiving a virtual telephone number at a first intermediate point from an originating point, the first intermediate point being operatively connected to a data network; and

[B.] means for transmitting a call setup request over the data network from the first intermediate point to a second intermediate point, wherein the call setup request includes the virtual telephone number or its equivalent, and wherein information in the call setup request allows the second intermediate point to establish a communications link to a destination point that corresponds to the virtual telephone number.

21. [Reissue claim] A system for facilitating at least a portion of a communication link between an originating point and a destination point, comprising:

[A.] a first intermediate point configured to receive a virtual number from the originating point, wherein the virtual number corresponds to a physical number of the destination point; and

[B.] a first routing table that comprises a part of the first intermediate point and that correlates virtual numbers to second intermediate points capable of communicating with the destination points that correspond to those virtual numbers,

[C] wherein the first intermediate point is configured to use the virtual number and information in the first routing table to identify a second intermediate point corresponding to the destination point.

41.^[5] [Reissue claim] The system as claimed in claim 40, wherein the first intermediate point facilitates the telephony communication, at least in part, by sending a communication setup request over a data network to the second intermediate point.

42. [Reissue claim] The system as claimed in claim 41, wherein the communication setup request comprises the virtual telephone number.

44. [Reissue claim] The system as claimed in claim 41, wherein the communication setup request comprises an equivalent to the virtual telephone number.

References^[6]

Dulman	US 5, 915, 008	June 22, 1999
Thornton et al.	US 6, 363, 065 B1	Mar. 26, 2002
Dolan et al.	US 6, 477, 246 B1	Nov. 5, 2002
Schuster et al.	US 6, 681, 252 B1	Jan. 20, 2004
Sugla	US 2001/0036258 A1	Nov. 1, 2001
DiCamillo et al.	US 2002/0061100 A1	May 23, 2002
Dolan et al.[7]	US 2003/0142807 A1	July 31, 2003
Bedingfield et al.	US 2004/0110465 A1	June 10, 2004

Rejections

A. §251 -New Matter

The Examiner entered a rejection under 35 U.S.C. § 251 based on new matter. The Examiner reasoned:

Claims 1-20, 51, 52, 54, 56-64, 66-70, 72-78, 80, 81, 83-86 and 159-164 are rejected under 35 U.S.C. [§] 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows:

See rejections of claims 1-20, 51, 52, 54, 56-64, 66-70, 72-78, 80, 81, 83-86 and 159-164 in §[IX].A below. [(Final Act. 53-56.)]

Final Act. 32 (emphasis added).

We select claims 1 and 74 as representative. Separate patentability is not argued for remaining claims 2-20, 51, 52, 54, 56-64, 66-70, 72, 73, 75-78, 80, 81, 83-86, and 159-164. App. Br. 26. Except for our ultimate decision, we do not discuss this § 251 rejection of these remaining claims further herein.

B. § 251-Recapture

The Examiner also rejected claims 21, 24, 26, 28-38, 40, 41, 43, 46-52, 54, 56-64, 66, 67, 69, 72-77, 80, 83-87, 90-92, 94, 97, 99-102, 104, 107, 109, 144-146, 148, 149, 151, and 159-164 under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based (Final Act. 32-45) because in these claims "the surrendered subject matter has been entirely eliminated" (Final Act. 44).

We select claim 21 as representative. Separate patentability is not argued for remaining claims 24, 26, 28-38, 40, 41, 43, 46-52, 54, 56-64, 66, 67, 69,...