Ex Parte Moore et al

Patent Trial and Appeal BoardMay 23, 2016

11295082 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111295,082 12/06/2005 Martin T. Moore 45544 7590 05/25/2016 HOFFMAN WARNICK LLC 540 Broadway 4THFLOOR 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. LOT920050117US 1 7931 EXAMINER CHOU,ALANS ALBANY, NY 12207 ART UNIT PAPER NUMBER 2451 NOTIFICATION DATE DELIVERY MODE 05/25/2016 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN T. MOORE, BRIAND. GOODMAN, FRANKL. JANIA, and JAMES K. KEBINGER Appeal2013-008613 Application 11/295,082 Technology Center 2400 Before LINZY T. McCARTNEY, KIMBERLY McGRAW, and JESSICA C. KAISER, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 2, 5-10, 12-16, and 18-22, all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. Appeal2013-008613 Application 11/295,082 STATEMENT OF THE CASE Appellants' invention relates to methods for managing collaborative contacts who may be contacted through the use of one or more collaboration tools (e.g., voice over IP, instant messaging, email). Spec. i-fi-f l, 5. Claims 1, 9, 16, and 20 are independent. Claim 1 is the focus of Appellants' brief and is reproduced below: 1. A method of managing a set of collaborative contacts, the method comprising: obtaining identifying text; obtaining a set of candidate contacts from the set of collaborative contacts using the identifying text, each candidate contact including a set of collaboration capabilities, each collaboration capability corresponding to an ability of each candidate contact to be contacted using a unique collaboration tool, wherein using the identifYing text seeks a match for a name of each candidate contact and a contact information for each collaboration capability of each candidate contact; requesting an availability status for each collaboration capability of each candidate contact, wherein the requesting sends a request to each candidate contact's collaboration tool corresponding to the unique collaboration tool, and wherein the requesting receives the availability status from each candidate contact's collaboration tool; ranking the set of candidate contacts based upon the set of collaboration capabilities of each candidate contact; and generating a display that includes the ranked set of candidate contacts and each candidate contact's set of collaboration capabilities, an icon corresponding to a most preferred collaboration capability, and the availability status for each collaboration capability. App. Br. 13 (Claims App'x) (disputed limitations in italics). 2 Appeal2013-008613 Application 11/295,082 REJECTION ON APPEAL Claims 1, 2, 5-10, 12-16, and 18-22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable Fulton et al., US 2005/0041793 Al, published Feb. 24, 2005 ("Fulton"); Hayes, Jr. et al., US 2010/0183125 Al, published July 22, 2010 ("Hayes"); Shahine et al., US 2004/0070627 Al, published Apr. 15, 2004 ("Shahine"); and Kucharewski et al., US 2011/0167116 Al, published July 7, 2011 ("Kucharewski"). Final Act. 3--4. ANALYSIS Appellants argue that the Examiner erred in finding Hayes or Shahine teaches "ranking the set of candidate contacts based upon the set of collaboration capabilities of each candidate contact" as required by the independent claims. App. Br. 8. In particular, Appellants contend nothing in the cited portions of Hayes and Shahine, considered alone or in combination, teaches or suggests this limitation. Id. at 8-9. We agree with Appellants. The independent claims require ranking the set of candidate contacts based upon the set of collaboration capabilities of each contact. The Examiner's citations to Hayes and Shahine each discuss ranking the collaboration capabilities within each contact, not ranking the set of contacts themselves. For example, Hayes teaches a user can set a "contact preferences hierarchy" for his profile, such as by indicating the user prefers to be contacted via IM first, then via text, and finally via mobile phone. Hayes i-f 32. Similarly, Shahine teaches prioritizing "data objects" such as home address, email address, phone numbers, in a contact card for a single contact. Shahine i-f 63. As the Examiner has not shown where either Hayes or Shahine teaches ranking a set of candidate contacts based upon collaboration capabilities of each 3 Appeal2013-008613 Application 11/295,082 contact, we reverse the Examiner's rejection of independent claims 1, 9, 16, and 20 and the claims that depend therefrom. DECISION The Examiner's rejection of claims 1, 2, 5-10, 12-16, and 18-22 is reversed. REVERSED 4