Ex Parte Nabkel et al - Page 3




          Appeal No. 2004-0961                                                        
          Application No. 09/785,863                                                  


          one claim, i.e., claim 1.  See In re Ochiai, 71 F.3d 1565, 1566             
          n.2, 37 USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR                      
          § 1.192(c)(7)(1997).                                                        
               Kung discloses a method for providing multi-network access             
          and routing among a packet-switched network and a circuit-                  
          switched network to chase called parties (col. 1, lines 12-15;              
          col. 2, lines 22-23).  Such a system necessarily comprises a                
          communication network including a plurality of subscriber                   
          telephone lines, each coupled to an associated telephoning                  
          switching facility, each subscriber telephone line having at                
          least one directory number as required by the appellants’                   
          claim 1.                                                                    
               Kung discloses that an announcement server may detect when a           
          phone or other device has been taken off-hook and then play an              
          advertisement or other announcement to the user (col. 10,                   
          lines 13-15), and that the user may sign up for an advertising              
          plan whereby phone rates are reduced in return for advertising              
          revenue generated by the advertisements (col. 10, lines 15-20).             
          Such an advertising plan is among the appellants’ information               
          services selected by the subscriber (specification, page 7,                 
          line 26 - page 8, line 2).  That disclosure, together with Kung’s           
          disclosure of keeping a user profile (col. 10, lines 18-20),                
          would have fairly suggested, to one of ordinary skill in the art,           

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