Ex Parte Guedalia et al

Patent Trial and Appeal Board

Apr 29, 2016

11638272 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/638,272 12/12/2006 Isaac David Guedalia
12371 7590 05/03/2016
Muncy, Geissler, Olds & Lowe, P,C, _QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
QC110353 3306
EXAMINER
LIAO, HSINCHUN
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAAC DAVID GUEDALIA and JACOB GUEDALIA
Appeal2014-005627
Application 11/638,272
Technology Center 2600
Before JAMES R. HUGHES, KAMRAN JIV ANI, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-25, which are all the claims
pending in the present patent application. (Final Act. 1-2; App. Br. 8.) 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 We refer to Appellants' Specification ("Spec."), filed Dec. 12, 2006
(claiming benefit of US 60/818,539 (filed July 6, 2006); US 60/762,901
(filed Jan. 30, 2006); US 60/765,198 (filed Feb. 6, 2006); US 60/777,244
(filed Feb. 28, 2006); and US 60/866,114 (filed Nov. 16, 2006)); Appeal
Brief ("App. Br.") filed Nov. 18, 2013; and Reply Brief ("Reply Br.") filed
Apr. 7, 2014. We also refer to the Examiner's Answer ("Ans.") mailed Feb.
7, 2014, and Final Office Action (Final Rejection) ("Final Act.") mailed
May 14, 2013.
Appeal2014-005627
Application 11/638,272
Appellants' Invention
The invention at issue on appeal concerns apparatuses, computer-
readable media, systems, and methods for maintaining a dynamic phone
book database containing dynamic contact information (presence
information for a contact) and network content information (links to network
content). (Spec. 1: 17-21, 3:5-7:4; Abstract.)
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A communication system providing
communication between a client and a server, the system
compnsmg:
a client mobile communication device having hardware
and software to exchange information with other devices over a
network and provide a user of said mobile communication device
with updated presence information about a plurality of contacts
of said mobile device, wherein each of the plurality of contacts
is associated with a corresponding of the other devices;
the client mobile communication device including a
storage medium that stores data and program instructions and
further stores a representation of dynamic phone book data
including contact information for each and a representation of
links to network content;
the client mobile communication
comprising a processor that, executes the
instructions with said stored data;
device further
stored program
the client mobile communication device further
comprising an interface that simultaneously displays a
representation of said dynamic phone book data including said
contact information and said presence information, and displays
said links to network content in a same application window;
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Application 11/638,272
wherein said application window is responsive to an
application that maintains said dynamic phone book data
substantially updated with said presence information that
includes an indication of a state of availability of each of said
plurality of contacts identified in said dynamic phone book data,
said presence information obtained by the client mobile
communication device from said other devices over said
network.
Rejections on Appeal
1. The Examiner rejects claims 1, 2, 5, 11-14, 17-20, 22, and 24
under 35 U.S.C. § 103(a) as being unpatentable over Rodriguez (US
2002/0068599 Al, pub. June 6, 2002), Hassett (US 6,807,558 Bl, iss. Oct.
19, 2004), and Boni (US 7,317,716 Bl, iss. Jan. 8, 2008 (filed July 25,
2003)).2
2. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Rodriguez, Hassett, Boni, and Matta way (US 6, 185, 184
Bl, iss. Feb. 6, 2001).
3. The Examiner rejects claims 3, 4, 7-10, 15, 16, 21, 23, and 25
under 35 U.S.C. § 103(a) as being unpatentable over Rodriguez, Hassett,
Boni, and Beghtol (US 6,253,075 Bl, iss. June 26, 2001). 3
2 The Examiner rejected claims 1, 2, and 5 under 35 U.S.C. § 103(a) over
Rodriguez, Hassett, and Boni (Final Act. 3) and claims 11-14, 17-20, 22,
and 24 under 35 U.S.C. § 103(a) over Hassett, Rodriguez, and Boni (Final
Act. 12). Appellants argue these rejections together (App. Br. 8-13).
Accordingly, for the purposes of this appeal, we treat the rejections as a
single rejection of the listed claims over the cited references.
3 The Examiner rejected claims 3, 4, 7, and 8 under 35 U.S.C. § 103(a) over
Rodriguez, Hassett, Boni, and Beghtol (Final Act. 6); claims 9, 10, 21, 23,
and 25 under 35 U.S.C. § 103(a) over Rodriguez, Hassett, Beghtol, and Boni
(Final Act. 8); and claims 15 and 16 under 35 U.S.C. § 103(a) over Hassett,
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Application 11/638,272
ISSUES
Based upon our review of the administrative record, Appellants'
contentions, and the Examiner's findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding that Rodriguez, Hassett, and
Boni are properly combinable and collectively would have taught or
suggested a "client mobile communication device including a storage
medium that stores data ... and further stores a representation of dynamic
phone book data including contact information for each and a representation
of links to network content" within the meaning of Appellants' claim 1 and
the commensurate limitations of claims 11, 22, and 24?
2. Does the Examiner err in finding that Rodriguez, Hassett, Boni,
and Beghtol collectively would have taught or suggested a "receiving a
plurality of response messages from a user, each of said response messages
including content that is specifically adapted for a corresponding one of said
plurality of contacts and generated by said user" as recited in Appellants'
claim 9?
3. Does the Examiner err in finding that Rodriguez, Hassett, Boni,
and Beghtol collectively would have taught or suggested "instructions for
setting a user-selectable response message delivered to caller on the basis of
the caller's identity" as recited in Appellants' claim 7?
Rodriguez, Boni, and Beghtol (Final Act. 16). Appellants argue these
rejections together (App. Br. 13-15). Accordingly, for the purposes of this
appeal, we treat the rejections as a single rejection of the listed claims over
the cited references.
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Application 11/638,272
FINDINGS OF FACT
We adopt the Examiner's findings in the Answer and the Final Office
Action mailed May 14, 2013, as our own, except as to those findings that we
expressly overturn or set aside in the Analysis that follows.
ANALYSIS
The 35 U.S.C. § 103(a) Rejection of Claims
1, 2, 5, 11-14, 17-20, 22, and 24
Appellants do not separately argue independent claims 11, 22, and 24
or dependent claims 2, 5, 12-14, and 17-20. (App. Br. 9-13.) Accordingly,
we select independent claim 1 as representative of Appellants' arguments
and grouping with respect to claims 1, 2, 5, 11-14, 17-20, 22, and 24. 37
C.F.R. § 41.37(c)(l)(iv).
We concur with the findings and conclusions reached by the Examiner
(Final Act. 3-6; Ans. 2--4), and we provide the following for emphasis.
Appellants contend that Rodriguez, Hassett, and Boni do not teach the
disputed features of representative claim 1, namely, storing "a representation
of dynamic phone book data including contact information for each and a
representation of links to network content" (claim 1 ). (See App. Br. 9-11;
Reply Br. 2-5.) Specifically, Appellants contend that the Examiner's
reasoning is faulty and that Hassett does not describe contact information
including "a representation of links to network content" (App. Br. 9-11 ).
Appellants further argue that the Examiner's combination of Rodriguez and
Hassett is improper (App. Br. 11-13) because "it would not have been
obvious to add Hassett's 'information, files and/or advertising' to
Rodriguez's phone book data" (App. Br. 11).
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We find Appellants' contentions unpersuasive of Examiner error.
Initially we note that Appellants attempt to distinguish the system recited in
claim 1 from the cited prior art based on data stored in a mobile device. The
content of data stored in a storage medium (memory)- "a representation of
dynamic phone book data including contact information for each and a
representation of links to network content" (claim 1) - however, does not
change the structure or functionality of the claimed system. The structure
(memory) and recited functionality (storing and displaying data) of the
mobile device remain the same regardless of what the data stored therein
constitutes, how the data may be named, or the relationship among the data.
The informational content of the data thus represents non-functional
descriptive material, which "does not lend patentability to an otherwise
unpatentable computer-implemented product or process." Ex parte Nehls,
88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). The label applied to
data - what the data is named - is irrelevant. Such labeling does not
distinguish one "type" of data from another and does not further limit the
claimed invention either functionally or structurally. See Ex parte Nehls, 88
USPQ2d at 1889. See also Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative) (Fed. Cir. Appeal No. 2006-1003), aff d, (Rule 36)
(June 12, 2006) ("wellness-related" data in databases and communicated on
distributed network did not functionally change either the data storage
system or the communication system used in the claimed method); In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90
(discussing non-functional descriptive material).
Even if we ascribe arguendo patentable weight to the disputed (data)
limitations, Appellants do not address the Examiner's specific rejection.
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(Final Act. 3-5; Ans. 2--4.) The Examiner submits that Rodriguez describes
a mobile device that stores dynamic phone book data (a dynamic directory)
(Final Act. 3--4, 13; Ans. 2-5 (citing Rodriguez i-fi-127, 40-43; Fig. 1
(elements 100, 180))). The Examiner also explains that Rodriguez describes
downloading various types of information to the dynamic directory (Ans. 3
(citing Rodriguez i153; see Fig. 3)). The Examiner further explains that
Hassett describes dynamically updating data including a representation of a
link to network content (a URL). (Final Act. 4--5, 12-13; Ans. 2-5 (citing
Hassett col. 1, 11. 40-45; Fig. 30).) The Examiner, therefore, determines that
Hassett would have at least suggested including dynamically updated data
including a link to network content as well as dynamic phone book data (as
described in Rodriguez) in the memory of a mobile device. (Ans. 2-5.)
Appellants, on the other hand, assert that Hassett does not disclose
dynamic phone book data. (App. Br. 9-11; Reply Br. 2-5.) Appellants
misconstrue the Examiner's rejection and argue the Examiner cited
references individually. Thus, Appellants fail to appreciate the collective
teachings of Rodriguez and Hassett. Appellants' argument does not take
into account what the prior art would have suggested to one of ordinary skill
in the art. "The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art." In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted, emphasis
added). Here, Appellants argue the references individually and do not
address the specific arguments set out by the Examiner. The references cited
by the Examiner must be read, not in isolation, but for what each fairly
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teaches in combination with the prior art as a whole. See Jn re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references).
Appellants also assert that one of ordinary skill in the art would not
have combined Rodriguez and Hassett (supra) (see App. Br. 11-13) and that
the "Examiner did not cite any portion of Rodriguez or Hassett to support
this statement of obviousness" (App. Br. 12). We disagree. We instead
agree with the Examiner (Final Act. 4--5; Ans. 3--4) that it would have been
within the skill of an ordinarly-skilled artisan to combine the known
technique of dynamically updating network content links, such as a
bookmark or URL (as suggested by Hassett) with the dynamic directory
(dynamic phone book data) taught by Rodriguez. See KSR Int'! 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" (citations
omitted)). We are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been "uniquely challenging or difficult for one of ordinary skill
in the art" at the time of Appellants' invention. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Thus, Appellants do not persuade us of error in the Examiner's
obviousness rejection of representative independent claim 1. Accordingly,
we affirm the Examiner's obviousness rejection of representative claim 1;
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independent claims 11, 22, and 24; and dependent claims 2, 5, 12-14, and
17-20, not separately argued with particularity (supra).
The 35 U.S.C. § 103(a) Rejections of Claims
3, 4, 6--10, 15, 16, 21, 23, and 25
Appellants do not separately argue the obviousness rejection of
dependent claims 6--rejected under 35 U.S.C. § 103(a) over Rodriguez,
Hassett, Boni, and Mattaway. (See Final Act. 8; App. Br. 13-15.)
Appellants also do not separately argue independent claims 21, 23, and 25 or
dependent claims 3, 4, 7, 8, 10, 15, and 16. (App. Br. 13-15.) Accordingly,
we only address Appellants' arguments with respect to independent claim 9
and dependent claim 7-rejected under 35 U.S.C. § 103(a) over Rodriguez,
Hassett, Boni, and Beghtol (id.). 37 C.F.R. § 41.37(c)(l)(iv).
With respect to independent claim 9, Appellants contend that
Rodriguez, Hassett, Boni, and Beghtol do not teach the disputed features of
claim 9, namely, "receiving a plurality of response messages from a user,
each of said response messages including content that is specifically adapted
for a corresponding one of said plurality of contacts and generated by said
user" (claim 9). (See App. Br. 13-15; Reply Br. 5-6.) Specifically,
Appellants contend that "Beghtol merely rejects selected callers. Beghtol
does not disclose or suggest that a user generates the content of a response
message, nor does Beghtol suggest that the content is specifically adapted
for a caller" (App. Br. 14--15).
We agree with Appellants that Beghtol does not teach response
messages that include user generated content. (Id.) Although Beghtol
describes rejection messages (Ans. 5; Beghtol col. 6, 1. 48---col. 7, 1. 11) and
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user input for specifying calls to be rejected (Ans. 5; Beghtol col. 5, 11. 32-
34 ), we cannot agree with the Examiner's interpretation of Beghtol - that
Beghtol describes user generated content to be included in the rejection
message. (Ans. 5.)
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Beghtol (in combination with Rodriguez,
Hassett, and Boni) teaches the disputed limitations of Appellants'
independent claim 9. Thus, we reverse the Examiner's rejection of claim 9.
Claim 10 depends on claim 9. Even though Appellants do not separately
discuss claim 10, we also reverse the Examiner's rejection of claim 10 due
to its dependence on independent claim 9.
With respect to dependent claim 7, Appellants contend that
Rodriguez, Hassett, Boni, and Beghtol do not teach the disputed features of
claim 7, namely, "setting a user-selectable response message delivered to
caller on the basis of the caller's identity" (claim 7). (See App. Br. 15;
Reply Br. 7.) We disagree. Claim 7 merely requires that the user (user's
mobile device) be capable of setting a user-selectable response that is
delivered to a caller based on the caller's identity (supra). Beghtol describes
a user providing input as to which calls are rejected-i.e., selecting calls to
be rejected. (Ans. 6; Beghtol col. 5, 11. 32--44; see Beghtol col. 5, 1. 53---col.
6, 1. 21 (discussing Fig. 2).)
Thus, Appellants do not persuade us of error in the Examiner's
obviousness rejection of claim 7. Accordingly, we affirm the Examiner's
obviousness rejection of claim 7.
With respect to independent claim 6, independent claims 21, 23, and
25, and dependent claims 3, 4, 7, 8, 15, and 16, Appellants do not separately
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argue these claims with particularity (supra). Accordingly, we affirm the
Examiner's obviousness rejections of claims 3, 4, 6-8, 15, 16, 21, 23, and 25
for the same reasons as claim 1 (supra). Appellants have not persuaded us
that Rodriguez and Hassett fail to teach the dynamic phone book data
including network content information.
CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 9
and 10 under 35 U.S.C. § 103(a).
Appellants have not shown that the Examiner erred in rejecting claims
1-8 and 11-25 under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejection of claims 9 and 10.
We affirm the Examiner's rejections of claims 1-8 and 11-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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