Ex Parte Sinclair et al

Patent Trial and Appeal Board

Nov 21, 2012

10616515 (P.T.A.B. Nov. 21, 2012)

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.
10/616,515 07/09/2003 Hunter Sinclair 1033-IS00300 1785
84326 7590 11/21/2012
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
MADAMBA, GLENFORD J
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
11/21/2012 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 HUNTER SINCLAIR, ADAM LEE KLEIN,
JAMES BERT GRANTGES, JOHN CRANE,
ABEL YOKLIM LAW, NICHOLAS S. MACRON,
NISHANT JAIN, and DAVID S. RICHARD
_____________

Appeal 2010-006723
Application 10/616,515
Technology Center 2400
______________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and JASON V.
MORGAN Administrative Patent Judges.

NAPPI, Administrative Patent Judge

DECISION ON APPEAL
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Application 10/616,515

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 6 through 14, and 19 through 37.

We affirm.
INVENTION
The invention is directed a connection manager for connecting to a
service provider. See page 2 of Appellants’ Specification. Claim 1 is
representative of the invention and reproduced below:
1. A connection manager comprising:
a dialer configured to interact with a modem to provide a
connection to a service provider;
a graphical user interface configured to manipulate
parameters associated with the connection, the graphical user
interface including a form component, wherein the form
component includes a text entry component; and
an advice window configured to be displayed with the
graphical user interface in response to a user entry of text into
the text entry component, wherein the advice window is
selectively displayed after the user entry of text fails to match
one of a plurality of known domain name extensions.

REFERENCES
Mastrianni US 6,615,276 B1 Sep. 2, 2003
Sunder US 2003/0182556 A1 Sep. 25, 2003
Emerson US 2004/0036679 A1 Feb. 26, 2004
Friedman US 2004/0148362 A1 Jul. 29, 2004
Jost US 6,778,651 B1 Aug. 17, 2004
Evans US 6,799,286 B1 Sep. 28, 2004

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 9 through 14, and 22 through 37
under 35 U.S.C. § 103(a) as obvious over Mastrianni, in view of Evans, Jost,
and Sunder. 1 Answer 4-322.
The Examiner has rejected claims 6 and 19 under 35 U.S.C. § 103(a)
as obvious over Mastrianni, in view of Evans, Jost, Sunder, and Emerson.
Answer 33-35.
The Examiner has rejected claims 7, 8, 20, and 21 under 35 U.S.C.
§ 103(a) as obvious over Mastrianni, in view of Evans, Jost, Sunder, and
Friedman. Answer 35-38.

ISSUE
Claims 1, 7, 8, 14, 20, 21, and 33 through 37
Appellants argue on pages 6 through 9 of the Appeal Brief3 that the
Examiner’s rejection of claim 1 in error. With respect to claims 7, 8, 14, 20,
and 21 Appellants present similar arguments on pages 10, 11, 18 and 19 of
the Appeal Brief. These arguments present us with the issue: did the
Examiner err in finding that the combination of Mastrianni, Evans, Jost, and
Sunder teaches an advice window displayed after entry of text fails to match
one of a plurality of known domain name extensions as recited in claims 1,
7, 8, 14, 20, and 21?

1 Claims 22 through 24 are included in this rejection (see pages 12-15 of the
Answer).
2 Throughout this opinion we refer to the Examiner’s Answer mailed on
August 17, 2009.
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Claims 9 through 13 and 22 through 24
Appellants argue on page 9 of the Appeal Brief that the Examiner’s
rejection of claim 9 in error. With respect to claim 22, Appellants present
similar arguments on pages 11 and 12 of the Appeal Brief. These arguments
present us with the issue: did the Examiner err in finding that the
combination of Mastrianni, Evans, Jost, and Sunder teaches that each phone
number in a list of phone numbers has an associated priority as recited in
claims 9 and 22?

Claims 25, 26, 27, 29, 30 and 32
Appellants argue on pages 12 through 14 of the Appeal Brief that the
Examiner’s rejection of claim 25 in error. With respect to claim 30,
Appellants present similar arguments on pages 14 and 16 of the Appeal
Brief. These arguments present us with the issue: did the Examiner err in
finding that the combination of Mastrianni, Evans, Jost, and Sunder teaches
an error handling component that displays a query configured to ask
permission from a user to allow the error handling component to perform an
action as recited in claims 25 and 30?

Claims 28 and 31
Appellants argue on page 14 of the Appeal Brief that the Examiner’s
rejection of claim 28 in error. With respect to claim 31, Appellants present

3 Throughout this opinion we refer to the Appeal Brief dated January 26,
2009.
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similar arguments on page 16 of the Appeal Brief. These arguments present
us with the issue: did the Examiner err in finding that the combination of
Mastrianni, Evans, Jost, and Sunder teaches changing a parameter value in
response to a user action as recited in claim 28 and 31?

Claims 6 and 19
Appellants argue on pages 16 and 17 the Appeal Brief that the
Examiner’s rejection of claims 6 and 19 in error. These arguments present
us with the issue: did the Examiner err in finding that the combination of
Mastrianni, Evans, Jost, and Sunder teaches an advice window is configured
for display before a button is selected by the user as recited in claim 6 and
19?

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection and the Examiner’s response to the Appellants’
arguments. We disagree with Appellants’ conclusion that the Examiner
erred in rejecting claims 1, 6 through 14, and 19 through 37.

Claims 1, 7, 8, 14, 20, 21, and 33 through 37
We disagree with Appellants’ argument that the Examiner erred in
finding the combination of Mastrianni, Evans, Jost, and Sunder teaches an
advice window displayed after entry of text fails to match one of a plurality
of known domain name extensions as recited in claims 1 and 14. The
Examiner responds to this argument on pages 40 through 49 of the Answer
interpreting the claimed matching of text as encompassing case sensitive
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matching which is taught by Evans. Further, the Examiner finds that
Mastrianni teaches use of a domain name suffix. Answer 44. We concur
with the Examiner’s findings, noting that Evans teaches that the error
balloon is not limited to messages about caps lock but can be used to provide
other information. Col. 3, ll. 57-59. Further, the limitation directed to field
of the graphical user interface that triggers the advice window (i.e., that the
entered text fails to match a domain name extension) is directed to
information and there is no claimed functionally relationship between the
information and the claimed connection manager. As non-functional
descriptive material, the limitation will not differentiate the invention from
the prior art.4 Accordingly, we sustain the Examiner’s rejection of claim 1,
7, 8, 14, 20, and 21 under 35 U.S.C. § 103(a).
Appellants have not provided separate arguments for claims 33
through 37 which depend upon claim 14, accordingly we similarity sustain
the rejection of these claims.

Claims 9 through 13 and 22 through 24
We disagree with Appellants’ argument that the Examiner erred in
finding that the combination of Mastrianni, Evans, Jost, and Sunder teaches
that each phone number in a list of phone numbers has an associated priority
as recited in claims 9 and 22. The Examiner responds to this argument by

4 The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our
Footnote continued on next page.
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interpreting the claimed priority as encompassing a ranking that is associated
with the number. Answer 50-51. The Examiner finds that Sunder’s teaching
of a phone book in which the user can apply a custom filter and rules to the
phone numbers in the book to create a custom phone book, meets the
claimed phone list with priority. Answer 51-52. We concur with this
finding by the Examiner. Further, we note that claim 9 does not recite a
functional relationship between the data of priority and the dialer. As supra,
non-functional descriptive material will not differentiate the invention from
the prior art. Accordingly we sustain the Examiner’s rejection of claims 9
and 22. Further, Appellants have not provided separate arguments for
dependent claims 10 through 13, 23 and 24, accordingly we similarity
sustain the rejection of these claims.

Claims 25, 26, 27, 29, 30 and 32
We disagree with Appellants’ argument that the Examiner erred in
finding that the combination of Mastrianni, Evans, Jost, and Sunder teaches
an error handling component that displays a query configured to ask
permission from a user to allow the error handling component to perform an
action. The Examiner finds that this limitation is taught by the combination
of Evans and Jost. Answer 53-54. Appellants’ arguments do not address
these finding by the Examiner but rather focus on the teachings of Sunder.
Brief 12-15. Accordingly, Appellants have not persuaded us of error in the

decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative
opinion).
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Examiner’s findings directed to the rejection of these claims. Thus, we
sustain the Examiner’s rejection of claims 25 and 30.
Appellants have not provided separate arguments for claims 26, 27,
29, and 32 which depend upon claims 25 and 30, accordingly we similarity
sustain the rejection of these claims.

Claims 28 and 31
We disagree with Appellants’ argument that the Examiner erred in
finding that the combination of Mastrianni, Evans, Jost, and Sunder teaches
changing a parameter value in response to a user action. The Examiner finds
this limitation is obvious over the combination of Evans and Jost. Answer
56-57. Appellants’ arguments do not address these finding by the Examiner
but rather focus on the teachings of Sunder. Brief 14 and 16. Thus,
Appellants have not persuaded us of error in the Examiner’s findings
directed to the rejection of these claims. Accordingly, we sustain the
Examiner’s rejection of claims 28 and 31.

Claims 6 and 19
We disagree with Appellants’ argument that the Examiner erred in
finding the combination of Mastrianni, Evans, Jost, and Sunder teaches an
advice window is configured for display before a button is selected by the
user. Appellants argue that Emerson teaches that the advice window,
indication of caps lock, is presented after the user begins to type and not
before a button is selected. Brief 17. The Examiner responds to this
argument by finding that the embodiment of figure 10 does not teach that the
unique shape cursor is presented when the user begins to type. Answer 58.
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We concur, and additionally note that Emerson teaches that pointer (which is
shown in figure 10) typically is not displayed when the user is using the
keyboard. See para. 0098. Further, Appellants’ arguments are not
commensurate with the scope of claim 6. Claim 6 identifies the button is on
the form component (part of the graphical user interface (GUI)) and a
keyboard is not part of the GUI. Accordingly, we sustain the Examiner’s
rejection of claims 6 and 19.

DECISION
The decision of the Examiner to reject claims 1, 6 through 14, and 19
through 37 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

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