Ex Parte Kraft et alDownload PDFPatent Trial and Appeal BoardDec 11, 201211170730 (P.T.A.B. Dec. 11, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTIAN KRAFT and PETER DAM NIELSEN Appeal 2010-001732 Application 11/170,730 Technology Center 2600 ____________ Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention is directed to a mobile communication apparatus which includes a memory arranged to hold contact information wherein items of contact information are arranged in a tree structure in a plurality of logical levels. See Spec. 17, Abstract of the Disclosure. Appeal 2010-001732 Application 11/170,730 2 Claim 1 is illustrative, with key disputed limitations emphasized: 1. A mobile communication apparatus comprising a memory configured to hold contact information, wherein items of said contact information are stored in groups, each group having a respective tree structure comprising a plurality of logical levels, wherein contact information at a top logical level of a respective group includes contact information that is common to all lower level contact information belonging to the respective group. The Examiner relies on the following as evidence of unpatentability: Nakano US 2005/0003870 A1 Jan. 6, 2005 THE REJECTION 1. The Examiner rejected claims 1-25 under 35 U.S.C. §102(e) as anticipated by Nakano. Ans. 3-5.1 ISSUE Based upon our review of the record, the arguments proffered by Appellants and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under §102, has the Examiner erred in rejecting claims 1-25 by finding that Nakano anticipates storing contact information in groups within a tree structure, “wherein contact information at a top logical level of a respective group includes contact information that is common to all lower level contact information belonging to the respective group” as set forth in independent claims 1, 9, 15, and 23? 1 Throughout this opinion, we refer to the Appeal Brief filed May 21, 2009; the Examiner’s Answer mailed August 18, 2009; and, the Reply Brief filed December 1, 2009. Appeal 2010-001732 Application 11/170,730 3 ANALYSIS Appellants argue that the Examiner has improperly rejected claims 21 and 22 under 35 U.S.C. §112, first paragraph for an alleged failure to comply with the written description requirement. The Examiner has subsequently withdrawn that rejection and consequently we do not address that rejection herein. Ans. 5. With regard to claims 1-25, Appellants argue that the Examiner has erred in rejecting those claims as anticipated under 35 U.S.C. §102(e) by Nakano, based upon a failure of Nakano to teach or suggest storing contact information in groups within a tree structure “wherein contact information at a top logical level of a respective group includes contact information that is common to all lower level contact information belonging to the respective group” as set forth in independent claims 1, 9, 15, and 23. App. Br. 5, Reply Br. 1-3. Based upon our review of the record, we find Appellants’ arguments urging patentability are predicated on non-functional descriptive material. In particular, the features in Appellants’ claims that are directed to wherein contact information at a top logical level of a respective group includes contact information that is common to all lower level contact information belonging to the respective group[,] [claims 1, 9, 15, and 23] wherein such features are “useful and intelligible only to the human mind.” See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Appeal 2010-001732 Application 11/170,730 4 Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)) (distinguishing such claim limitations from claim limitations defining functional characteristics).2 In support of our finding we note Appellants have repeatedly recited within their Specification that the claimed storage structure provides “an intuitive structure for the user to store her contact information according to her own experienced relations between contacts.” See, for example, Specification, p. 3, ll. 3-6. The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See Lowry, 32 F.3d at 1583 (“Lowry does not claim merely the information content of a memory . . . Nor does he seek to patent the content of information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). In the present application, the informational content of the claimed formatted storage of a list of contact information represents nonfunctional descriptive material that is entitled to no weight in the patentability analysis. Even if we arguendo accorded patentable weight to the disputed formatted storage of contact information, we find the evidence supports the 2 Cf. Functional descriptive material consists of data structures and computer programs which impart functionality when employed as a computer component. See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat. Office 142 (November 22, 2005), especially pages 151-152. (The Manual of Patent Examining Procedure includes substantively the same guidance. See MPEP, 8th edition (revised Aug. 2006), § 2106.01.) Appeal 2010-001732 Application 11/170,730 5 Examiner’s underlying factual findings and ultimate legal conclusion of anticipation. In particular, we agree with the Examiner that Nakano’s Fig. 19 anticipates a tree structure “wherein contact information at a top logical level of a respective group includes contact information that is common to all lower level contact information belonging to the respective group” as set forth in independent claims 1, 9, 15, and 23. Specifically, we find that contact information listed under “All groups” must necessarily include contact information that is common to the lower level groups, i.e. “Work” or “Family.” Consequently, we find the Examiner did not err in rejecting claims 1- 25 under 35 U.S.C. §102(e) as anticipated by Nakano. CONCLUSION The Examiner did not err in rejecting claims 1-25 under §102. ORDER The Examiner’s decision rejecting claims 1-25 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tkl Copy with citationCopy as parenthetical citation