Ex Parte BertolinoDownload PDFPatent Trial and Appeal BoardJun 28, 201311609969 (P.T.A.B. Jun. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte ROBERT BERTOLINO ____________________ Appeal 2011-000579 Application 11/609,969 Technology Center 2400 ____________________ Before MARC S. HOFF, ELENI MANTIS MERCADER, and TREVOR M. JEFFERSON, Administrative Patent Judges. JEFFERSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000579 Application 11/609,969 2 STATEMENT OF CASE 1 Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 1-3, 5-6, 9-10, 12-15, 17-18 and 21-27. 2 Claims 4, 7-8, 11, 16, 19 and 20 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Introduction The claims are directed to determining contact information in a mobile device by reverse address lookup over a wireless connection (Spec., ¶[0002]). Independent claim 1, reproduced below with disputed limitation in italics, is illustrative of the claimed subject matter: 1. Within a mobile device, a method of determining contact information, the method comprising: identifying and selecting an address of an incoming communication that is not specified within an address book of the mobile device; presenting a menu specifying a reverse directory lookup option for the selected address, the menu being presented automatically upon completion of identifying and selecting an address of an incoming communication that is not specified within an address book of the mobile device; requesting, over a wireless connection, a reverse directory lookup that includes contact information for the selected address; and receiving, over the wireless connection, the contact information for the selected address. 1 Throughout the decision, we refer to the Appellants’ Appeal Brief (“App. Br.,” filed May 3, 2010), and Reply Brief (“Reply Br.,” filed Aug. 23, 2010), and the Examiner’s Answer (“Ans.,” mailed Jun. 21, 2010). 2 The Real Party in Interest is International Business Machines Corporation. Appeal 2011-000579 Application 11/609,969 3 Rejections The Examiner made the following rejections: Claims 1-3, 5-6, 9-10, 12-15, 17-18, 21, 23-25 and 27 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Yach (US 2002/0128036 A1, Sep. 12, 2002) and Hawkins (US 7,231,229 B1, Jun. 12, 2007). Ans. 4-11. Claims 22 and 26 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Yach, Hawkins and Moore (US 2004/0120481 A1, Jun. 24, 2004). Ans. 11-12. The Examiner withdrew 35 U.S.C. § 101 rejections to claims 13-15, 17-18 and 25-27. Ans. 12. OPINION Independent Claim 1 Appellant argues that Yach and Hawkins taken together fail to teach “presenting a menu specifying a reverse directory lookup option for the selected address, the menu being presented automatically upon completion of identifying and selecting an address of an incoming communication that is not specified within an address book of the mobile device” as recited in independent claim 1. App. Br. 16. Appellant argues that Hawkins fails to teach or suggest the limitations of independent claim 1 because the pop-up menu in Hawkins is not automatically presented to the user. App. Br. 14. Furthermore, “Appellant's claimed invention allows a user to receive contact information, via a reverse directory lookup, for a contact from which an incoming communication is received, [while] Hawkins teaches that contact information is associated with a contact to whom [sic] a telephone call is Appeal 2011-000579 Application 11/609,969 4 being placed.” App. Br. 15. Yach also does not teach automatic association of the caller with contact information, instead it merely creates a contact record based on the incoming call ID. App. Br. 15. The Examiner finds that Yach and Hawkins together teach presenting a menu specifying a reverse lookup for the identified address that is presented automatically upon action taken on an incoming communication that is not present in the mobile devices address book. Ans. 13. The Examiner interprets the term “automatically” to require another action that initiates the automatic function. Ans. 15. The Examiner found that Yach teaches or suggests presenting a menu specifying a reverse directory lookup option for a selected address that takes place after selecting and identifying an incoming communication that is not in the mobile devices address book. Ans. 13 (citing Yach, Fig. 10, ¶[0100] and Fig. 14, ¶[0113]-[0115]). The Examiner relies on Hawkins to teach or suggest that a pop-up menu is presented automatically based on a triggering action. Ans. 13-14 (citing Hawkins, col, 10, ll. 1-18). The Examiner argues that Appellant’s claim also requires a triggering action, “the system indentify[ing] and select[ing] an address of an incoming communication that is not specified within an address book of the mobile device,” to take the automatic action. Ans. 13- 14 (citing Spec., ¶¶ [0034], [0035]). Having reviewed Appellant’s arguments, we agree with the Examiner. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with the Examiner that Yach teaches presenting a menu specifying a reverse lookup when an unidentified communication is received and selected. See Ans. 13; Appeal 2011-000579 Application 11/609,969 5 Yach, Fig. 10, ¶[0100] and Fig. 14, ¶[0113]-[0115]. Although Hawkins addresses reverse lookup in the context of a manually placed call, it teaches or suggests presenting a menu after an action takes place. See Hawkins, col. 10, ll. 1-18; see also Ans. 13-14. The combination of Hawkins and Yach is not restricted to the manual selection method discussed in Hawkins after manually placing an outgoing call. App. Br. 14. The Examiner relies on the Yach suggestion of an action taking place after accepting or receiving an incoming call that is not identified (Yach, Fig. 10, ¶[0100] and Fig. 14, ¶[0113]-[0115]) and the Hawkins’ presentation of the menu after an event takes place (Hawkins, col. 10, ll. 1-18) to teach or suggest the “presenting a menu” limitation of claim 1. Ans. Appellant’s arguments that the Examiner improperly relies on different embodiments in the Specification, ¶¶ [0034] and [0035], are not persuasive of error. Reply Br. 5. The Examiner’s citation to Appellant’s Specification highlights that Appellant’s claim expressly states that the automatic presentation of the menu takes place after an event, namely “upon completion of identifying and selecting an address of an incoming communication that is not specified within an address book of the mobile device.” See Ans. 14-15 (citing Spec., ¶¶ [0034], [0035]). We also agree with the Examiner’s interpretation of “automatically” as provided. We agree with the Examiner that the combination of Yach and Hawkins teaches or suggests presentation of a menu after identifying and selecting an incoming communication that is not identified via the address book. See Ans. 13-15. Thus, Yach teaches that the event or action that precedes the presentation of the menu is the arrival of an incoming call that is presented to the user and selected. See Yach, ¶[0113]-[0115]. We also note that Yach expressly Appeal 2011-000579 Application 11/609,969 6 teaches that various actions can take place automatically for incoming calls with missing caller id information. Yach, ¶[0100] (stating that “[t]hough typically the caller id information is used to determine the actions taken by the data component of mobile device 100, there are still automatic actions that can take place if the Caller Id information is absent.”). Based on the foregoing, we find that the Examiner properly found that Yach and Hawkins teach or suggest “presenting a menu specifying a reverse directory lookup option for the selected address, the menu being presented automatically upon completion of identifying and selecting an address of an incoming communication that is not specified within an address book of the mobile device” as recited in independent claim 1. See Ans. 16. Accordingly, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C §103(a). Independent Claims 9 and 13 and Dependent Claims 21, 23-25 and 27 Appellant’s arguments for independent claims 9 and 13 (App. Br. 17- 20) and dependent claims 21, 23-25 and 27 (App. Br. 20-25) repeat the same arguments that the combination of Yach and Hawkins do not teach or suggest automatic initiation of reverse directory look-up for received communications that are not found in the mobile’s address book. For similar reasons discussed above, we are persuaded that the Examiner did not err in finding that Yach and Hawkins teach or suggest automatic initiation of a reverse look up as recited in independent claims 9 and 13 and dependent claims 21, 23-25 and 27. Accordingly, we sustain the Examiner’s rejection of claims 9, 13, 21, 23-25 and 27 under 35 U.S.C §103(a). Because Appellants make no separate arguments for the remaining claims (App. Br. Appeal 2011-000579 Application 11/609,969 7 25), we also sustain the Examiner’s rejection of claims 2-3, 5-6, 10, 12, 14, 15, 17-18, 22, and 26. DECISION For the above reasons, the Examiner’s rejection of claims 1-3, 5-6, 9- 10, 12-15, 17-18 and 21-27 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 ELD Copy with citationCopy as parenthetical citation