Ex Parte Kogan et al

Patent Trial and Appeal Board

Dec 24, 2014

11865099 (P.T.A.B. Dec. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/865,099 10/01/2007 Sandra L. Kogan CAM920070088US1/1174-014 4631
44185 7590 12/24/2014
BAINWOOD HUANG & ASSOCIATES LLC
c/o LOTUS AND RATIONAL SOFTWARE
2 Connector Road
Westborough, MA 01581
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
12/24/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANDRA L. KOGAN, MARY E. RAVEN
and ANUPHINH P. WANDERSKI
Appeal 2012-006473
Application 11/865,099
Technology Center 2100
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–11, 13–15, 18, and 19. Claims 12, 16, and 17 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention is directed to “[a] method and system for
searching contact lists quickly, that provides searching of a contact list by
user defined group names, attributes, and/or system defined metadata
regarding contacts, groups and/or attributes.” Abstract.
Appeal 2012-006473
Application 11/865,099
2

Claim 1, which is illustrative, is reproduced with key disputed limitations
emphasized:
1. A method of providing quick searching of a contact list for an
electronic communication system, comprising:

displaying a contact list search user interface display object to a user,
said contact list search user interface display object including a
plurality of independently selectable search options including a
search contacts by attributes search option and a search groups by
attributes search option;

displaying, responsive to said user selecting said search contacts by
attributes search option, a user interface object enabling said user to
search attributes associated with contacts in said contacts list to
generate a result set of contacts having attributes matching a search
query; and

displaying, responsive to said user selecting said search groups by
attributes search option, a user interface object enabling said user to
search attributes associated with groups in said contacts list to
generate a result set of groups having attributes matching a search
query.

The Examiner relies on the following as evidence of unpatentability:
Ryabchun US 2008/0162701 A1 July 3, 2008
(Filed Dec. 27, 2006)

THE REJECTION
1. The Examiner rejected claims 1–11, 13–15, 18, and 19 under
35 U.S.C. § 102(e) as anticipated by Ryabchun. Ans. 4–9.
1

1
Throughout this opinion, we refer to the Appeal Brief filed September 1,
2011; the Examiner’s Answer mailed December 9, 2011; and, the Reply
Brief filed February 9, 2012.
Appeal 2012-006473
Application 11/865,099
3
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (App. Br. 8-12) and the Reply Brief (Reply
Br. 4-6) that the Examiner has erred. We have also reviewed (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Rej. 2-9), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief
(Ans. 4-9). We highlight and amplify certain teachings and suggestions of
the references as follows.
Appellants argue that the Examiner erred in rejecting claims 1–11,
13–15, 18, and 19 under 35 U.S.C. § 102(e) as anticipated by Ryabchun.
Specifically, Appellants urge that Ryabchun fails to disclose or suggest
“displaying a contact list search user interface display object to a user, said
contact list search user interface display object including a plurality of
independently selectable search options including a search contacts by
attributes search option and a search groups by attributes search option” as
set forth in independent claim 1, and as similarly recited in independent
claims 14 and 15. App. Br. 10–11.
Appellants argue that Figure 2 of Ryabchun discloses a system that
provides “a single ‘Search Contacts’ user interface object (203 in Fig. 2) that
enables a user to assemble a group based on text matching of contact profile
information to an entered term (see paragraph 0047).” Id. at 11.
Consequently, Appellants urge that Ryabchun fails to disclose “the potential
desirability of providing a user interface that allows independent selection of
attribute searching for contacts and attribute searching for groups in a
contact list.” Id.
Appeal 2012-006473
Application 11/865,099
4
The Examiner relies upon Figure 2 of Ryabchun, depicted below.

Figure 2 of Ryabchun illustrates an example of an IM (Instant
Messaging) screen. The Examiner finds that Figure 2 of Ryabchun, a plain
view of an exemplary IM screen, discloses a method for quick searching of a
contact list which includes a “pluality of independently selectable search
options” including searching contacts or groups by attributes. Ans. 4.
We note that Appellants’ Specification describes possible search
options that may be utilized to define a group, such as, “group name, user
Appeal 2012-006473
Application 11/865,099
5
names, screen names, e-mail addresses, etc. of contacts to be included in the
group, and/or user defined attributes. . .” See Spec. 7:4–5.
Examining Figure 2 of Ryabchun, we find a search interface 203, into
which a user may enter textual terms to search within user profiles; a screen
200 that lists contacts which may be searched and selected from; as well as a
second window 201 from which a user may search and select from a list of
groups. We note that Appellants’ Specification differentiates between
contact or group names and attributes. Supra. Consequently, we agree with
Appellants that Figure 2 of Ryabchun does not include “a plurality of
independently selectable search options including a search contacts by
attributes search option and a search groups by attributes search option” as
we find no mechanism by which an independently selectable mechanism
may be utilized to search groups by attribute, as claimed.
We therefore find that the Examiner erred in rejecting independent
claims 1, 14, and 15 as anticipated under 35 U.S.C. § 102(e) by Ryabchun.
We also find the Examiner erred in rejecting dependent claims 2–11, 13, 18,
and 19 which were not separately argued by Appellants.

ORDER
The Examiner’s decision rejecting claims 1–11, 13–15, 18, and 19 is
reversed.

REVERSED

ELD