Ex Parte John et al

Patent Trial and Appeal Board

Mar 15, 2016

12729553 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121729,553 03/23/2010
25537 7590 03/17/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Josy John
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.
20090664 7411
EXAMINER
ADAMS, CHARLES D
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSY JOHN and SUT AP CHATTERJEE
Appeal2014-003473
Application 12/729,553
Technology Center 2100
Before CATHERINE SHIANG, MELISSA A. HAAPALA, and
JOYCE CRAIG, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15, and 17-20. 1 We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
We have reviewed Appellants' contentions in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellants'
contentions. We concur with Appellants' conclusion that the Examiner errs
in finding the combination of Brady (US 2004/0044673 Al; published Mar.
4, 2004) and Bayliss (US 7,912,842 Bl; issued Mar. 22, 2011) teaches or
1 Claim 16 has been canceled. App. Br. 25.
Appeal2014-003473
Application 12/729,553
suggests "establishing whether a physical device assigned to the sub-location
can be reassigned to the corresponding physical address" (hereinafter the
"establishing" limitation), as recited in claim 1.
The Examiner relies on Brady to teach the "establishing" limitation.
Final Act. 2-3 (citing Brady i-fi-159---64). In particular, the Examiner finds the
claimed physical device appears to be a data entry that is evaluated to be
reassigned from one data entry to another. Ans. 4. Thus, the Examiner finds
that "by reassigning a fax number associated with one contact entry to
another contact entry, Brady et al. teaches that it would have been obvious to
reassign a physical device, like a phone or a fax machine, from an entry
associated with one address to another entry associated with the same
address." Ans. 5---6.
Appellants argue "establishing whether two entries in a database are
sufficiently similar for a telephone number in one of the two entries to be
reassigned/merged'' does not suggest the "establishing" limitation. App. Br.
10. Specifically, Appellants argue the "physical device" of claim 1 is not a
telephone number because although a telephone number can be
representative of a physical device, the telephone number is not tied to the
physical device. Id. at 10-11.
We agree with Appellants (Reply Br. 3--4) that a telephone number is
not a physical device and thus Brady's teaching of determining whether two
entries are sufficiently similar for a telephone number of one entry to be
merged into another is insufficient to teach establishing whether a physical
device can be reassigned.
Appellants persuade us that the Examiner has not established the
combination of Brady and Bayliss teaches or suggests the "establishing"
2
Appeal2014-003473
Application 12/729,553
limitation. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejections
of: (i) claim 1; (ii) independent claim 15, which contains a limitation
substantially similar to the "establishing" limitation and for which the
Examiner similarly relies on Brady to teach (Final Act. 8-9); and (iii) their
dependent claims 2-14 and 17-19.
Claim 20 similarly recites "receive a reply from the second database
indicating that the telephone line can be reassigned to the physical address."
The Examiner finds Hamer (US 7,590,663 B2; issued Sept. 15, 2009)
teaches this limitation because it describes a determination is made whether
or not contacts in two different databases should be merged. Final Act. 14
(citing Hamer Fig. 8; 19:36-20:2). For the reasons discussed supra,
Appellants persuade us that establishing whether two database entries are
sufficiently similar to be merged into the other does not teach or suggest a
physical device (telephone line) can be reassigned. See App. Br. 10, 18;
Reply Br. 3--4. Accordingly, we do not sustain the 35 U.S.C. § 103(a)
rejection of claim 20.
DECISION
The Examiner's decision to reject claims 1-15 and 17-20 is reversed.
REVERSED
3