Ex Parte Kraft et al

Patent Trial and Appeal Board

Dec 11, 2012

11170730 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN KRAFT and PETER DAM NIELSEN

Appeal 2010-001732
Application 11/170,730
Technology Center 2600
____________

Before CARL W.WHITEHEAD, JR, ERIC S. FRAHM, 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 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention is directed to a mobile communication
apparatus which includes a memory arranged to hold contact information
wherein items of contact information are arranged in a tree structure in a
plurality of logical levels. See Spec. 17, Abstract of the Disclosure.
Appeal 2010-001732
Application 11/170,730
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Claim 1 is illustrative, with key disputed limitations emphasized:
1. A mobile communication apparatus comprising a memory
configured to hold contact information, wherein items of said contact
information are stored in groups, each group having a respective tree
structure comprising a plurality of logical levels, wherein contact
information at a top logical level of a respective group includes contact
information that is common to all lower level contact information belonging
to the respective group.

The Examiner relies on the following as evidence of unpatentability:
Nakano US 2005/0003870 A1 Jan. 6, 2005

THE REJECTION
1. The Examiner rejected claims 1-25 under 35 U.S.C. §102(e) as
anticipated by Nakano. Ans. 3-5.1

ISSUE
Based upon our review of the record, the arguments proffered by
Appellants and the findings of the Examiner, we find the following issue to
be dispositive of the claims on appeal:
Under §102, has the Examiner erred in rejecting claims 1-25 by
finding that Nakano anticipates storing contact information in groups within
a tree structure, “wherein contact information at a top logical level of a
respective group includes contact information that is common to all lower
level contact information belonging to the respective group” as set forth in
independent claims 1, 9, 15, and 23?

1 Throughout this opinion, we refer to the Appeal Brief filed May 21, 2009;
the Examiner’s Answer mailed August 18, 2009; and, the Reply Brief filed
December 1, 2009.
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Application 11/170,730
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ANALYSIS
Appellants argue that the Examiner has improperly rejected claims 21
and 22 under 35 U.S.C. §112, first paragraph for an alleged failure to
comply with the written description requirement. The Examiner has
subsequently withdrawn that rejection and consequently we do not address
that rejection herein. Ans. 5.
With regard to claims 1-25, Appellants argue that the Examiner has
erred in rejecting those claims as anticipated under 35 U.S.C. §102(e) by
Nakano, based upon a failure of Nakano to teach or suggest storing contact
information in groups within a tree structure “wherein contact information at
a top logical level of a respective group includes contact information that is
common to all lower level contact information belonging to the respective
group” as set forth in independent claims 1, 9, 15, and 23. App. Br. 5, Reply
Br. 1-3.
Based upon our review of the record, we find Appellants’ arguments
urging patentability are predicated on non-functional descriptive material.
In particular, the features in Appellants’ claims that are directed to

wherein contact information at a top logical level
of a respective group includes contact information
that is common to all lower level contact
information belonging to the respective group[,]
[claims 1, 9, 15, and 23]

wherein such features are “useful and intelligible only to the human mind.”
See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re
Appeal 2010-001732
Application 11/170,730
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Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)) (distinguishing such claim
limitations from claim limitations defining functional characteristics).2
In support of our finding we note Appellants have repeatedly recited
within their Specification that the claimed storage structure provides “an
intuitive structure for the user to store her contact information according to
her own experienced relations between contacts.” See, for example,
Specification, p. 3, ll. 3-6.
The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See Lowry, 32 F.3d at
1583 (“Lowry does not claim merely the information content of a memory
. . . Nor does he seek to patent the content of information resident in a
database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
In the present application, the informational content of the claimed
formatted storage of a list of contact information represents nonfunctional
descriptive material that is entitled to no weight in the patentability analysis.
Even if we arguendo accorded patentable weight to the disputed
formatted storage of contact information, we find the evidence supports the

2 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP, 8th edition (revised Aug. 2006), § 2106.01.)

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Application 11/170,730
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Examiner’s underlying factual findings and ultimate legal conclusion of
anticipation.
In particular, we agree with the Examiner that Nakano’s Fig. 19
anticipates a tree structure “wherein contact information at a top logical level
of a respective group includes contact information that is common to all
lower level contact information belonging to the respective group” as set
forth in independent claims 1, 9, 15, and 23. Specifically, we find that
contact information listed under “All groups” must necessarily include
contact information that is common to the lower level groups, i.e. “Work” or
“Family.”
Consequently, we find the Examiner did not err in rejecting claims 1-
25 under 35 U.S.C. §102(e) as anticipated by Nakano.

CONCLUSION
The Examiner did not err in rejecting claims 1-25 under §102.

ORDER
The Examiner’s decision rejecting claims 1-25 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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