Ex Parte Fishman

Board of Patent Appeals and Interferences

May 27, 2010

09871990 (B.P.A.I. May. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL FISHMAN
____________

Appeal 2008-005223
Application 09/871,990
Technology Center 2100
____________

Decided: May 28, 2010
____________

Before JAMES D. THOMAS, LANCE LEONARD BARRY, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-6, 8, 9, 11-16, 23, and 33. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2008-005223
Application 09/871,990

2
Claim 1 is illustrative:
1. A method for transferring Web-based information over a
network to a personal information management system having calendar and
contact data for a set of users, the method comprising:
permitting a user to select the Web-based information on a Web page
viewable in a Web browser;
permitting the user to use a toolbar associated with the Web browser,
the toolbar having a plurality of indicators for identifying an information
type such type being selectable from a group including address and event,
associated with the Web-based information so that the user can make an
identification of the information type;
receiving the user’s identification made via the toolbar of the type of
information;
creating a transfer request that includes at least the Web-based
information and an address for a server associated with the personal
information management system and in communication with the network,
such request being created in response to such type identification;
sending the transfer request to the server, the server having access to
the calendar and contact data for the set of users; and
storing the Web-based information at the server, the Web-based
information associated with at least one user in the set of users, in
accordance with the type identification.

Appellant appeals the following rejection:
Claims 1-6, 8, 9, 11-16, 23, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Narurkar (U.S. Patent No. 6,339,795 B1, Jan. 15, 2002).
Appeal 2008-005223
Application 09/871,990

3

ISSUE
Did the Examiner err in finding that Narurkar discloses a toolbar
having a plurality of indicators for identifying an information type such type
being selectable from a group including address and event?

FACTUAL FINDINGS
1. Narurkar discloses that handheld computers “typically provide some
combination of personal information management functions” (col. 2,
ll. 24-27).
2 Narurkar discloses a “floating tool bar includes: a source data host
window . . . and a plurality of destination data host icons . . .
representing a selectable destination data host” (col. 8, ll. 52-57).
3. Narurkar discloses that “[i]n order to transfer a block of data, the user
highlights plain text or data fields in the source host and selects a
destination icon associated with a desired destination host” (col. 8,
ll. 61-63).
4. Narurkar discloses that “the data block selected by the user to be
transferred from a source host to a destination host includes
geographical address information” (col. 9, ll. 30-32).

ANALYSIS
The Appellant argues that Narurkar does not disclose or suggest “a
user’s ability to select an information type such as between address or event
for information transferred to the PIM” (App. Br. 13). We agree.
Appeal 2008-005223
Application 09/871,990

4
While we agree with the Examiner that Narurkar discloses a user
selecting a block of data to be transferred to a destination host and the user
also selecting a destination to which to transfer the selected block of data
(FF 2-3), the Examiner has not demonstrated that Narurkar also discloses or
suggests a toolbar that has indicators for identifying an information type of
the selected data to be transferred, the type selectable between address and
event. Nor has the Examiner demonstrated that Narurkar discloses or
suggests a user selecting an information type at all.
The Examiner finds that Narurkar discloses that the data block to be
transferred may include geographical address information (FF 4). Even
assuming that Narurkar discloses that data selected by a user may contain
address data, the Examiner has not demonstrated that the user in Narurkar’s
disclosure also identifies the information type as address or event
information or a toolbar containing indicators for identifying the information
type. Rather, Narurkar’s toolbar merely contains icons for selecting a source
and a destination host and the user merely selects a block of data to transfer
to a destination.
Claim 11 recites similar features as claim 1. We therefore find that
the Examiner erred in rejecting claims 1 and 11, and of claims 2-6, 8, 9, 12-
16, 23, and 33, which depend therefrom.

DECISION
We reverse the Examiner’s § 103 rejection.

REVERSED

Appeal 2008-005223
Application 09/871,990

5

msc

SUNSTEIN KANN MURPHY & TIMBERS LLP
125 SUMMER STREET
BOSTON, MA 02110-1618