Ex Parte KALE et al

Patent Trial and Appeal Board

Nov 17, 2016

12687758 (P.T.A.B. Nov. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/687,758 01114/2010
48500 7590 11/21/2016
SHERIDAN ROSS P,C
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Mangesh KALE
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.
4366YDT-270 2167
EXAMINER
SALAD,ABDULLAHIELMI
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
11/21/2016 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANGESH KALE and ANAND PAITHANKAR
Appeal2015-008096
Application 12/687,758 1
Technology Center 2400
Before JOHN A. EV ANS, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-8, 10, 11, 17, and 20-23, which are all the claims
pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Avaya Inc. App.
Br. 2.
2 Claims 9, 12-16, 18, and 19 have been canceled. App. Br. 2.
Appeal2015-008096
Application 12/687,758
STATEMENT OF THE CASE
Introduction
Appellants' application relates to a universal contact manager that
synchronizes contacts between devices. Spec. ,-i 2. Claim 1 is illustrative of
the appealed subject matter and reads as follows:
1. A method for managing contact information at a
contact server, the contact server comprising a processor and
memory, the method comprising:
the contact server receiving a synchronization signal
from a first communication device;
the contact server receiving contact information for a
contact from the first communication device;
the contact server parsing the contact information into
two or more fields;
the contact server automatically segregating the contact
into a category;
the contact server storing the contact information into a
database, wherein the contact is associated with the category in
the database;
the contact server receiving a request for the contact
information from a second communication device, wherein the
request comprises at least one item of information about the
contact and wherein the first communication device and the
second communication device are both owned by a user;
the contact server searching the database for at least one
item of information about the contact;
upon locating the contact in the database, the contact
server determining what contact information to send to the
second communication device; and
the contact server sending the determined contact
information to the second communication device.
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Application 12/687,758
The Examiner's Rejections
Claims 1-3, 5-9, 11, 17, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chen et al. (US 2002/0049751 Al;
Apr. 25, 2002), Vendrow et al. (US 2011/0130168 Al; June 2, 2011), and
Guedalia et al. (US 2007/0143397 Al; June 21, 2007). Final Act. 4-8.
The Examiner added Gehrke et al. (US 2002/0178003 Al;
Nov. 28, 2002) to reject claim 20 (Final Act. 8-9), Bentley (US
2009/0209286 Al; Aug. 20, 2009) to reject claim 4 (Final Act. 10), Goyal et
al. (US 2010/0151827 Al; June 17, 2010) to reject claim 10 (Final Act. 11),
and Wilkins et al. (US 2013/0191402 Al; July 25, 2013) to reject claims 21-
23 (Final Act. 12).
ANALYSIS
Claim 1
Appellants argue the Examiner erred in rejecting claim 1 because the
combination of Chen, Vendrow, and Guedalia does not teach or suggest a
"server receiving a request for the contact information from a second
communication device." App. Br. 7-12; Reply Br. 3-6. In particular,
Appellants argue Guedalia teaches four distinct embodiments, and none of
those embodiments teaches or suggests a contact server receiving a request
for contact information from a second communication device. App.
Br. 11-12. Appellants argue Guedalia's first embodiment teaches a First
Peer Computer 100 and First Peer Telephone 150 (two "communication
devices"), but the First Peer Telephone 150 (the "second communication
device") requests a call to a third party instead of requesting contact
information for a third party. Id. at 7-8. Appellants argue Guedalia's
second and fourth embodiments similarly teach uploading contact
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Appeal2015-008096
Application 12/687,758
information to a server for the purpose of establishing calls instead of
sending the contact information to a second communication device. Id.
at 8-9, 10-11. Appellants argue Guedalia' s third embodiment, taught in
Figure 6, teaches a single device (the First Peer Telephone) that requests
contact information, instead of two devices as claimed. Id. at 9-10.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Guedalia teaches a First Peer Computer ("first
communication device") and First Peer Telephone ("second communication
device") owned by a user.3 Ans. 3 (citing Guedalia iJ 139). Guedalia
teaches the First Peer Computer synchronizes its contact list with the Server
either through a "push" or "pull" command. Guedalia iii! 164-167. The
First Peer Telephone may retrieve the contact list from the Server by sending
a request, and such requests may specify a periodic refresh rate. Guedalia
iJ 168. Accordingly, Guedalia teaches a "second communication device"
(the First Peer Telephone) that sends a request to the "contact server" (the
Server) for "contact information" that was previously uploaded by the "first
communication device" (the First Peer Computer). We, therefore, are not
persuaded the Examiner erred in rejecting claim 1.
3 Appellants appear to argue the first and second communication devices
must be owned by the same user. See App. Br. 7. However, claim 1 merely
recites "wherein the first communication device and the second
communication device are both owned by a user." The broadest reasonable
interpretation of this limitation does not require that the two devices are
owned by the same user. Instead, both devices must be "owned by a user."
Even if ownership by the same user were required, we agree with the
Examiner that Guedalia teaches common ownership of two communication
devices. Ans. 3 (citing Guedalia iJ 139).
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Appeal2015-008096
Application 12/687,758
Claim 22
Claim 22 recites: "The method of claim 1, wherein automatically
segregating the contact into the category comprises: determining a time of
day of the contact; and in response to determining the time of day of the
contact, storing the contact in a personal category if the contact is sent on a
weekend." Appellants argue the Examiner erred in rejecting claim 22
because although Wilkins teaches sorting contacts into categories, Wilkins
does not teach storing the contact in a personal category if the contact is sent
on a weekend. App. Br. 13 (citing Wilkins ,-i 67). The Examiner finds
Wilkins teaches sorting contacts based on the time of day, specifically which
contacts are "most recently accessed." Ans. 5 (citing Wilkins ,-i 182).
As a matter of claim construction under the broadest reasonable
interpretation, we conclude the step of "storing the contact in a personal
category if the contact is sent on a weekend" may never occur. See Ex parte
Schulhauser, Appeal No. 2013-007847, at *9 (PTAB, April 28, 2016)
(precedential) (holding "The Examiner did not need to present evidence of
the obviousness of the remaining method steps of claim 1 that are not
required to be performed under a broadest reasonable interpretation of the
claim (e.g., instances in which the electrocardiac signal data is not within the
threshold electrocardiac criteria such that the condition precedent for the
determining step and the remaining steps of claim 1 has not been met."));
see also Ex parte Katz, Appeal No. 2010-006083, 2011 WL 514314, at *4-5
(BPAI Jan. 27, 2011).
Here, in further support of the Examiner's legal conclusion of
obviousness, we apply the precedential guidance of Schulhauser. Therefore,
the Examiner need not present evidence establishing the obviousness of the
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Application 12/687,758
conditional storing step of claim 22 because it is not required to be
performed under the broadest reasonable interpretation of the claim (e.g.,
instances when the contact is not sent on a weekend, such that the condition
precedent for the "storing" step of claim 22 is not met).
Therefore, we find Appellants' argument that Wilkins fails to teach or
suggest the conditional storing step of claim 22 unavailing because it is not
commensurate with the broadest reasonable interpretation of claim 22. See
In re Schulhauser at *9. Accordingly, we sustain the Examiner's rejection
of claim 22.
Claim 23
Claim 23 recites:
The method of claim 1, wherein automatically
segregating the contact into the category comprises:
determining if a location of a person sending the contact
is at home or at work;
in response to detem1ining the location of the person
sending the contact is at home, identifying the contact as a
personal contact; and
in response to determining the location of the person
sending the contact is at work, identifying the contact as a
business contact.
Appellants argue the Examiner erred in rejecting claim 23 because
Wilkins does not teach or suggest determining the location of the person
sending the contact and, in response, categorizing the contact appropriately.
App. Br. 14. Appellants argue Wilkins instead teaches a contact's
"availability can be determined based on the location of the receiver of a
message or users being in the same city." Id. (citing Wilkins ,-i 186).
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Application 12/687,758
We agree with Appellants that the Examiner has failed to establish, by
a preponderance of the evidence, that Wilkins teaches determining the
location of the person sending a contact and categorizing a contact based on
that location. Accordingly, on this record, we do not sustain the rejection of
claim 23.
CONCLUSIONS
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 1 under § 103 as unpatentable over Chen, Vendrow, and Guedalia.
Therefore, we sustain the rejection of claim 1. Appellants argue the
patentability of independent claim 17 for the same reasons as claim 1. See
App. Br. 12. Accordingly, we sustain the rejection of claim 17. We also
sustain the rejection of claims 2-8, 10, 11, 20, and 21 which were not argued
separately from their respective independent claims. See App. Br. 12.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 22.
On the record before us and in view of the analysis above, Appellants
have persuaded us that the Examiner erred in rejecting claim 23. Therefore,
we do not sustain the rejection of claim 23.
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Application 12/687,758
DECISION
We affirm the decision of the Examiner rejecting claims 1-8, 10, 11,
17, and 20-22.
We reverse the decision of the Examiner rejecting claim 23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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