Ex Parte Moore et al

Patent Trial and Appeal Board

May 23, 2016

11295082 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111295,082 12/06/2005 Martin T. Moore
45544 7590 05/25/2016
HOFFMAN WARNICK LLC
540 Broadway
4THFLOOR
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.
LOT920050117US 1 7931
EXAMINER
CHOU,ALANS
ALBANY, NY 12207 ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN T. MOORE, BRIAND. GOODMAN,
FRANKL. JANIA, and JAMES K. KEBINGER
Appeal2013-008613
Application 11/295,082
Technology Center 2400
Before LINZY T. McCARTNEY, KIMBERLY McGRAW, and
JESSICA C. KAISER, Administrative Patent Judges.
McGRAW, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5-10, 12-16, and 18-22, all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2013-008613
Application 11/295,082
STATEMENT OF THE CASE
Appellants' invention relates to methods for managing collaborative
contacts who may be contacted through the use of one or more collaboration
tools (e.g., voice over IP, instant messaging, email). Spec. i-fi-f l, 5. Claims
1, 9, 16, and 20 are independent. Claim 1 is the focus of Appellants' brief
and is reproduced below:
1. A method of managing a set of collaborative contacts,
the method comprising:
obtaining identifying text;
obtaining a set of candidate contacts from the set of
collaborative contacts using the identifying text, each candidate
contact including a set of collaboration capabilities, each
collaboration capability corresponding to an ability of each
candidate contact to be contacted using a unique collaboration
tool, wherein using the identifYing text seeks a match for a name
of each candidate contact and a contact information for each
collaboration capability of each candidate contact;
requesting an availability status for each collaboration
capability of each candidate contact, wherein the requesting
sends a request to each candidate contact's collaboration tool
corresponding to the unique collaboration tool, and wherein the
requesting receives the availability status from each candidate
contact's collaboration tool;
ranking the set of candidate contacts based upon the set of
collaboration capabilities of each candidate contact; and
generating a display that includes the ranked set of
candidate contacts and each candidate contact's set of
collaboration capabilities, an icon corresponding to a most
preferred collaboration capability, and the availability status for
each collaboration capability.
App. Br. 13 (Claims App'x) (disputed limitations in italics).
2
Appeal2013-008613
Application 11/295,082
REJECTION ON APPEAL
Claims 1, 2, 5-10, 12-16, and 18-22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable Fulton et al., US 2005/0041793 Al, published Feb.
24, 2005 ("Fulton"); Hayes, Jr. et al., US 2010/0183125 Al, published July
22, 2010 ("Hayes"); Shahine et al., US 2004/0070627 Al, published Apr.
15, 2004 ("Shahine"); and Kucharewski et al., US 2011/0167116 Al,
published July 7, 2011 ("Kucharewski"). Final Act. 3--4.
ANALYSIS
Appellants argue that the Examiner erred in finding Hayes or Shahine
teaches "ranking the set of candidate contacts based upon the set of
collaboration capabilities of each candidate contact" as required by the
independent claims. App. Br. 8. In particular, Appellants contend nothing
in the cited portions of Hayes and Shahine, considered alone or in
combination, teaches or suggests this limitation. Id. at 8-9.
We agree with Appellants. The independent claims require ranking
the set of candidate contacts based upon the set of collaboration capabilities
of each contact. The Examiner's citations to Hayes and Shahine each
discuss ranking the collaboration capabilities within each contact, not
ranking the set of contacts themselves. For example, Hayes teaches a user
can set a "contact preferences hierarchy" for his profile, such as by
indicating the user prefers to be contacted via IM first, then via text, and
finally via mobile phone. Hayes i-f 32. Similarly, Shahine teaches
prioritizing "data objects" such as home address, email address, phone
numbers, in a contact card for a single contact. Shahine i-f 63. As the
Examiner has not shown where either Hayes or Shahine teaches ranking a
set of candidate contacts based upon collaboration capabilities of each
3
Appeal2013-008613
Application 11/295,082
contact, we reverse the Examiner's rejection of independent claims 1, 9, 16,
and 20 and the claims that depend therefrom.
DECISION
The Examiner's rejection of claims 1, 2, 5-10, 12-16, and 18-22 is
reversed.
REVERSED
4