Ex Parte Ruckart

Patent Trial and Appeal Board

Apr 13, 2016

11321336 (P.T.A.B. Apr. 13, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/321,336 12/29/2005 John Ruckart 050380 (9400-228) 2468
39072 7590 04/13/2016
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
SYED, FARHAN M
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
04/13/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN RUCKART
____________

Appeal 2014-006577
Application 11/321,336
Technology Center 2100
____________

Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-006577
Application 11/321,336

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3–14, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
The application is directed to “[a] service provider for a
communications system [which] may detect new contact information for a
contact in the contact database of a first one of the subscribers.” (Abstract.)
Claim 1, reproduced below, is illustrative:
1. A method of operating a communications system having a
plurality of personal communication devices that communicate
with the communications system, respective ones of the personal
communication devices managing respective contact databases
that are provided within the respective personal communication
devices, the method comprising:
providing a server that communicates with the personal
communication devices over the communications system;
detecting by the server new contact information for a contact
entered in a first contact database within a first one of the
personal communication devices;
in response to detecting entry of the new contact information
into the first contact database, obtaining by the server a
confirmation of the new contact information independent of the
first personal communication device to confirm accuracy of the
new contact information; and

1 Appellant identifies “AT&T Intellectual Property I, L.P.” as the real party
in interest. (See App. Br. 3.)
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responsive to obtaining the confirmation, storing the new
contact information in an aggregate contact database comprising
contact data from multiple ones of the plurality of personal
communication devices;
wherein obtaining the confirmation comprises: transmitting a
confirmation query from the server to the contact to confirm the
new contact information that was entered in the first contact
database; and
detecting the confirmation in response to the query.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Caughey US 2004/0059786 A1 Mar. 25, 2004
Cadiz et al. US 2006/0195472 A1 Aug. 31, 2006
Alvarado et al. US 2007/0027930 A1 Feb. 1, 2007

THE REJECTION
Claims 1 and 3–14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Alvarado, Cadiz, and Caughey. (See Final Act. 3–12.)

APPELLANT’S CONTENTIONS
Appellant argues that the rejections were improper for the following
reasons:
1. “[T]he contact database of Caughey that is managed by a mail
server is not ‘within one of the personal communication devices’” and “the
system of Caughey does not send a confirmation request in response to
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detecting the entry of new contact information into the database,” as recited
in claim 1. (See App. Br. 8–11.)
2. Alvarado does not disclose or suggest “grouping the new
contact information with new contact information previously received from
at least one other personal communication device that matches the new
contact information to generate grouped contact information” or “detecting
the confirmation responsive to a number of occurrences of matching new
contact information in the grouped contact information exceeding a
predetermined threshold,” as recited in claim 3. (See App. Br. 11–12.)
3. Alvarado does not disclose or suggest that “obtaining a
confirmation comprises detecting a successful communication by one of the
plurality of personal communication devices using the new contact
information,” as recited in claim 4. (See App. Br. 11–12.)

ANALYSIS
Claims 1 and 5–15
“within one of the personal communication devices”
Appellant first asserts that this claim language is not taught by the
applied combination of references, arguing that “the contact database of
Caughey that is managed by a mail server is not “within one of the personal
communication devices,’” because “it is a contact database in the mail server
that is separate from the client devices.” (App. Br. 8.) We find this
argument directed to asserted deficiencies of the Caughey reference
unpersuasive because the Examiner found that Alvarado and Cadiz teach
mobile devices (see Final Act. 3; Ans. 4) and “[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
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upon the teachings of a combination of references.” In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
“in response to detecting entry of the new contact information
into the first contact database obtaining by the server a confirmation of the
new contact information independent of the first personal communication
device to confirm accuracy of the new contact information”
Appellant argues that “the system of Caughey does not send a
confirmation request in response to detecting the entry of new contact
information into the database” because “Caughey automatically includes
addressee information in an email sent to the addressee.” (App. Br. 8.)
Appellant further argues that “although Alvarado may, for purposes of
argument, disclose detecting an entry of new contact information in a
contact database and Cadiz may, for purposes of argument, disclose
obtaining a confirmation of new contact information, neither reference
discloses or suggests ‘obtaining . . . a confirmation of the new contact
information . . . in response to detecting entry of the new contact
information into the first contact database.” (App. Br. 10.)
We are not persuaded of Examiner error by these arguments. Cadiz
discloses a server detecting the entry of new contact information in a contact
database. (See Cadiz ¶ 21.) Caughey discloses confirming contact
information by sending a contact their own information. (See Caughey
¶¶ 23–24.) We agree with the Examiner that it would have been obvious to
one of skill in the art to use Caughey’s method of confirming contact
information to ensure accuracy in response to detecting new contact
information as in Cadiz. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
420–421 (2007) (explaining that the skilled artisan is “a person of ordinary
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creativity, not an automaton” who would “be able to fit the teachings of
multiple patents together like pieces of a puzzle”).
For these reasons, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a), as well as the Section 103 rejections of claims 5–14, which are not
separately argued.
Claim 3
Claim 3 requires “grouping the new contact information with new
contact information previously received from at least one other personal
communication device that matches the new contact information to generate
grouped contact information” and “detecting the confirmation responsive to
a number of occurrences of matching new contact information in the
grouped contact information exceeding a predetermined threshold.”
The Examiner cites paragraphs 83 and 95–110 of Alvarado as
teaching the claimed groupings and paragraphs 26 and 30 for confirming
contact information. (Ans. 5–6.) The Examiner also concludes that “[t]he
feature of exceeding a predetermine[d] threshold is an intended use of the
desired feature of the Groups modules.” (Id. at 6.) We disagree. The step
of detecting responsive to a number of occurrences exceeding the recited
threshold is a positive claim limitation, and the references fail to teach or
suggest that the confirmation be based on a predetermined threshold as
claimed. We thus do not sustain the rejection of claim 3.
Claim 4
Claim 4 recites that “obtaining a confirmation comprises detecting a
successful communication by one of the plurality of personal
communication devices using the new contact information.”
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According to the Examiner, Alvarado’s “aggregation . . . detects a
change in contact information (e.g. calendar, address book, etc.) and then
initiates a synchronization step, thereby illustrating a successful
communication between the plurality of subscribers.” (Ans. 6.) We fail to
see how Alvarado’s synchronization constitutes or teaches “detecting a
successful communication by one of the plurality of personal
communication devices using the new contact information” and, therefore,
also decline to sustain the rejection of claim 4.

DECISION
The rejections of claims 1 and 5–14 are affirmed. The rejections of
claims 3 and 4 are reversed.
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-IN-PART