Ex Parte Cudak et al

Patent Trial and Appeal Board

Aug 30, 2016

13339903 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/339,903 12/29/2011
50594 7590 09/01/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33487
FIRST NAMED INVENTOR
Gary D. Cudak
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.
RPS920110103US1 (143) 5187
EXAMINER
BEHNAMIAN, SHAHRIAR
ART UNIT PAPER NUMBER
2641
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY D. CUDAK, CHRISTOPHER J. HARDEE,
RANDALL C. HUMES, and HEATHER C. MILLER
Appeal2015-001725
Application 13/339,903
Technology Center 2600
Before JEFFREYS. SMITH, NABEEL U. KHAN, and JOHN R. KENNY,
Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-001725
Application 13/339,903
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-21, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
The claimed invention relates to managing contact lists according to
reachability of the contacts. (Spec. i-f 2.) Claims 1 and 16, reproduced below
with disputed limitations italicized, are illustrative of the claimed subject
matter:
1. A method for contact list prioritization according to
predicted reachability, the method comprising:
loading a contact list of contacts in memory of a host
computer, wherein the contact list comprises contacts of a
common role;
retrieving a reachability value for each corresponding
contact in the contact list that has been computed for each
corresponding contact according to usage data of each
corresponding contact for an associated mobile telephone; and,
displaying ones of the contacts first in the contact list that
are determined to be most reachable according to a
corresponding reachability value.
16. A computer program product for contact list
prioritization according to predicted reachability, the computer
program product comprising:
a computer readable storage medium comprising a
storage device having computer readable program code
embodied therewith, the computer readable program code
compnsmg:
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Appeal2015-001725
Application 13/339,903
computer readable program code for loading a contact list of
contacts,
wherein the contact list comprises contacts of a common
role; computer readable program code for retrieving a
reachability value for each corresponding contact in the contact
list that has been computed for each corresponding contact
according to usage data of each corresponding contact for an
associated mobile telephone; and,
computer readable program code for displaying ones of
the contacts first in the contact list that are determined to be
most reachable according to a corresponding reachability value.
Anderson et al.
Knight et al.
REFERENCES
US 2009/0276412 Al
US 2010/0039216 Al
REJECTIONS
Nov. 5, 2009
Feb. 18,2010
Claims 16-21 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Ans. 2.)
Claims 1, 4, 5, 7, 9, 10, 12, 15, 16, 18, and 19 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Anderson. (Ans. 3.)
Claims 2, 6, 11, 14, 20, and 21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Anderson. (Ans. 6.)
Claims 3, 8, 13, and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Anderson in view of Knight. (Ans. 8.)
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Appeal2015-001725
Application 13/339,903
ANALYSIS
Non-Statutory-Subject-Matter Re} ection
The Examiner rejects claims 16-21 on the grounds that the claims
encompass signals and therefore encompass non-statutory subject matter.
(Final Act. 3; Ans. 2-3.) The Examiner suggests that this rejection could be
overcome by adding the word "non-transitory" prior to "computer program
product," in claim 16, or reciting in that claim that the "computer program
product is not a transitory propagating signal." (Ans. 3.) Appellants argue
that the Examiner erred in making this rejection because claim 16 recites "a
computer readable storage medium comprising a storage device" and "there
could be no question that a 'device' exclude[s] signals." (App. Br. 4; Reply
Br. 2.)
We are not persuaded by this argument because Appellants (i) offer
no support for the proposition that the term "storage device" inherently
excludes signals and (ii) do not address the complete recitation-at-issue. To
determine whether a term, such as "storage device," excludes signals, the
Board analyzes the following factors: (i) whether extrinsic evidence as of the
effective filing date of the patent application indicates the term is so limited;
(ii) whether there is an express intent in the Specification to limit the term;
(iii) whether the claim expressly limits the term to non-transitory
embodiments; and (iv) whether the claim implicitly limits the term to non-
transitory embodiments. Ex parte Mewherter, 107 USPQ2d 1857, 1860 n. 5
(PTAB 2013) (precedential). Appellants do not address or present evidence
on any of these factors. (App. Br. 4--5; Reply Br. 2-3.) Appellants, in fact,
do not present any persuasive reason why the term "storage device" would
exclude signals. (App. Br. 4--5; Reply Br. 2-3.)
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Application 13/339,903
Appellants also do not address the complete recitation. Even if we
were to assume that the term "storage device" excludes signals, the claim
recites a computer readable storage medium comprising a storage device. In
this Appeal, Appellants do not argue that the term "computer readable
storage medium" excludes signals. (App. Br. 4--5; Reply Br. 2-3.)
Therefore, presumably, the recited computer readable storage medium could
encompass both a signal and a non-transitory storage device. Appellants
have not explained why, with such coverage, claim 16 would constitute
eligible subject matter. (App. Br. 4--5; Reply Br. 2-3.)
Accordingly, based on Appellants' arguments, we are not persuaded
that the Examiner erred in issuing the section 101 rejection of claims 16-21,
and we sustain this rejection.
Prior-Art Rejections
Section 102 Re} ection of Claims 1, 4, 5, 7, 9, 10, 12, 15, 16, 18, and 19
The Examiner finds that users, who are described in paragraph 49 of
Anderson as executing a common instance of an application (e.g., users
playing the game), have "a common role," as that term is used in claim 1.
(Ans. 10.) Appellants argue the Examiner erred in making this finding
because "role" means a function or part performed in a particular operation
or process and, therefore here, "common role" means contacts which are
interchangeable in their function. (App. Br. 7-8; Reply Br. 6.) Appellants
argue that users executing the same application (e.g., game) share a
characteristic, but do not have a common role. (App. Br. 8.) We are not
persuaded by this argument because, even if we were to accept Appellants'
proposed construction for "role," users executing a common instance of an
application would have a common role. Such users have a part (i.e., being
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Application 13/339,903
players) in a particular operation (i.e., the playing of the game), and, with
respect to being players of the game, have an interchangeable function.
Therefore, even with Appellant's proposed construction, those users have a
common role.
Appellants argue that the disclosure of paragraph 38 of Anderson
does not remedy the lack of disclosure in paragraph 49 regarding users with
a common role. (App. Br. 9; Reply Br. 8.) This argument is moot, however,
in light of our finding that paragraph 49 of Anderson discloses such users.
Accordingly, we sustain the rejection of claim 1 and of claims 4, 5, 7,
9, 10, 12, 15, 16, 18, and 19, not separately argued, under 35 U.S.C. § 102.
(App. Br. 5-9.)
Section 103 Rejections of Claims 2, 3, 6, 8, 11, 13, 14, 17, 20, and 21
Appellants present the same arguments for claims 2, 3, 6, 8, 11, 13,
14, 17, 20, and 21 as for claim 1 which we find unpersuasive. (App. Br. 10.)
Accordingly, we sustain the rejections of claims 2, 3, 6, 8, 11, 13, 14, 17, 20,
and 21under35 U.S.C. § 103.
DECISION
We affirm the non-statutory-subject-matter rejection of claims 16-21
and the prior-art rejections of claims 1-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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