Ex Parte Nance

Board of Patent Appeals and Interferences

Jun 29, 2009

10086263 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT C. NANCE
____________

Appeal 2009-001325
Application 10/086,263
Technology Center 2100
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Decided: June 29, 20091
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Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001325
Application 10/086,263
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-23, which are all the pending claims. An oral hearing
was held on May 20, 2009. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Invention
Appellant claims a method and system for locating cellular phone
numbers by creating a directory of cellular phone users with their
corresponding cellular phone numbers. (Spec. 1: 4-8.)

Representative Claims
1. A method for locating cellular phone numbers comprising,
in combination, the steps of:

compiling a list of cellular phone users from at least one
cellular phone provider;

compiling a list of corresponding cellular phone numbers of
said cellular phone users;

creating a database of said list of said cellular phone
users and said list of corresponding cellular phone numbers of
said cellular phone users;

publishing said database in at least one of an electronic
network, a CD-ROM, and a phone book; and

a user locating at least one of said cellular phone numbers
by searching said database.

21. A method for providing access to cellular phone numbers
comprising, in combination, the steps of:
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Application 10/086,263

compiling a list of cellular phone numbers from at least one
cellular provider; and

providing in at least one of an electronic network [,] a CD-
ROM, and a phone book available to phone users at least a portion of
the list of compiled cellular phone numbers.

Prior Art
Smith US 6,173,045 B1 Jan. 9, 2001
Shaffer US 5,901,214 May 4, 1999

Examiner’s Rejections
Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Smith and Shaffer.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 21. See 37 C.F.R. § 41.37(c)(1)(vii).

FINDINGS OF FACT
Smith
Smith describes an electronic phone book 10 (Fig. 1a) having a
display 12 and soft buttons 14, for user interaction. Smith col. 2, ll. 20-44.
The electronic phone book 10 further comprises a floppy disk drive 16
(Fig. 1b) and a CD ROM drive 18. Smith col. 2, ll. 45-47. The drives 16
and 18 may be used to store information locally within the electronic phone
book 10. Id., ll. 56-65.
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Application 10/086,263
The electronic phone book 10 may communicate with a central office
of the telephone company whereby phone numbers may be retrieved and
updated in the local drives 16 and 18. Smith col. 2, l. 66 - col. 3, l. 4.
The user may also find telephone numbers by searching a database of
telephone listings at the telephone company’s central office. Smith col. 3, l.
59 - col. 4, l. 11; Figs. 3c, 3d.

Shaffer
A 10 digit telephone number comprises a 3 digit area code, a 3 digit
exchange, and a 4 digit line number. Shaffer col. 7, ll. 29-33.
A 10 digit telephone number can be assigned to a cellular phone, with
the number independent of location within the assigned area code (id. at ll.
43-46), which indicates there is no functional difference between 10 digit
telephone numbers, whether assigned to cellular phones or to other types of
telephones.
Whether a telephone number is associated with a cellular phone or
another type of phone may be distinguished by a separate database entry of a
telephone type code, rather than the number itself. Shaffer col. 43, ll. 22-44.
(Ans. 4.)
Shaffer’s system can accommodate cellular phone numbers. (See also
App. Br. 10 (“[T]he system of Schaffer [sic] is sufficiently flexible to
incorporate cellular phone numbers . . . .”); App. Br. 13 (“Applicant’s
claimed invention may potentially be practiced using elements taken from
non-cellular directory assistance technology.”)

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Application 10/086,263
PRINCIPLES OF LAW
The content of nonfunctional descriptive material is not entitled to
weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (“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 (BPAI 2008);
Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential) (Fed. Cir.
Appeal No. 2006-1003, aff’d Rule 36 Jun. 12, 2006); Manual of Patent
Examining Procedure (MPEP) § 2106.01 (Eighth ed., Rev. 7, Jul. 2008).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
Appellant contends in the Appeal Brief (at 9) that Smith “makes no
reference whatsoever” to using the device to search or locate wireless or
cellular numbers.
Appellant’s observation is not necessarily true. Smith refers to
accessing central office databases for “telephone” or “phone” numbers. See
Smith col. 2, l. 66 - col. 3, l. 4. As evidenced by Shaffer, however, a
wireless or cellular phone is a species of “phone” that may be assigned the
same type of ten-digit number as that assigned to a landline phone. See
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Application 10/086,263
Shaffer col. 7, ll. 26-50. Smith teaches retrieving names and phone numbers
(e.g., Fig. 3b) from a central office database that does not distinguish the
particular type of telephone to which the number is assigned. It would seem
obvious for a phone company to provide whatever phone number that
belongs to a particular person, whether wireless, cellular, or landline,
especially if the company provides both cellular and landline service and the
customer elects that the number or numbers be published. Moreover, we
observe that the claims under review (1 and 21) do not preclude landline-
based phone numbers being mixed (e.g., in the same database) with the
cellular phone numbers.
In any event, as the Examiner notes (Ans. 9 and 11), and Appellant
does not address in either brief, the numbers in a database (claim 1), or
provided, for example, in an electronic network (claim 21), represent
nonfunctional descriptive material that carries no weight in the analysis of
the claims over the prior art. The numbers, although called “cellular” in the
claims, do not distinguish between whether a particular number may be
assigned to a cellular phone or to a landline phone.
To the extent that the claim 1 and claim 21 steps of compiling a list
“of cellular phone users” and (claim 1) “corresponding cellular phone
numbers” might represent acts that are functionally different from compiling
a list of landline phone users and the corresponding landline phone numbers,
Appellant seems to acknowledge that similar steps have been performed at
least with respect to landline users and corresponding phone numbers. A
(paper) phone book teaches as much, even assuming that not one of the
phone numbers in the book is a number assigned to a cellular phone. The
improvement of gathering phone numbers assigned to cellular phones, as
opposed to the gathering of phone numbers assigned to landline phones,
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Application 10/086,263
represents no more than the predictable use of prior art elements according
to their established functions, and thus would have been obvious. See KSR,
550 U.S. at 417. Appellant has provided no evidence to show that compiling
a list of cellular phone users and corresponding cellular phone numbers was
“uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 419).
Appellant alleges (e.g., App. Br. at 12) that a directory of cellular
numbers does not exist, or at least that the applied references do not
demonstrate the existence of such a directory.
Appellant seems not to appreciate the breadth of the claims brought
on appeal. Claim 21, for example, would not distinguish over a cellular
phone company maintaining a list of the phone numbers assigned to
corresponding phones. Presumably, tracking phone usage for service and
billing purposes would be important for survival as a cellular phone
company. As computers and electronic databases were well known and
widely used at the time of invention (March 4, 2002, on this record), one
would expect that a cellular phone company would have maintained phone
numbers in a database accessible over an electronic network. Perhaps there
were cellular phone companies prior to the date of invention that eschewed
modern technology (such as cellular phones) and kept only paper records.
Claim 21 also covers that contingency, however, in that “at least of portion
of the list” might be provided in a “phone book available to phone users.”
We expect that most, if not all, employees of cellular phone companies at the
time of invention had used a phone at some point in life, and where thus
“phone users.” A few, perhaps, even owned one.
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Application 10/086,263
Claim 1 is more comprehensive than claim 21, in reciting the
compilation of lists of both cellular phone users and corresponding phone
numbers, and creating a database based on that information. Claim 1,
however, also seems not to distinguish over methods presumably used by a
21st century cellular phone company in the normal course of business. A
“user” locating at least one of the cellular phone numbers by searching the
database in the final step of claim 1 does not distinguish over a cellular
phone company database user (i.e., employee) who would occasionally need
to find the cellular phone number assigned to a customer, and the customer
matched to a cellular phone number, assuming arguendo that the company
intended to continue doing business as a cellular phone service.
Being not persuaded of error in the rejection, we sustain the
Examiner’s § 103(a) rejection of claims 1 and 21. Claims 2-20, 22, and 23
fall with claim 1 or claim 21.
Appellant’s representative at the oral hearing advanced several new
arguments that had not been presented to the Examiner in the Appeal Brief
or the Reply Brief. As the arguments were not properly before the
Examiner, such that we might have had benefit of the Examiner’s views on
the arguments in reaching our decision in this appeal, we have considered
only those arguments presented by Appellant in the briefs. See 37 C.F.R. §
41.47(e)(1): “At the oral hearing, appellant may only rely on evidence that
has been previously entered and considered by the primary examiner and
present argument that has been relied upon in the brief or reply brief except
as permitted by paragraph (e)(2) of this section.” Paragraph (e)(2) of the
relevant section provides: “Upon a showing of good cause, appellant and/or
the primary examiner may rely on a new argument based upon a recent
relevant decision of either the Board or a Federal Court.” See also 37 C.F.R.
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Application 10/086,263
§ 41.37(c)(1)(vii) (“Any arguments or authorities not included in the brief or
a reply brief filed pursuant to § 41.41 will be refused consideration by the
Board, unless good cause is shown.”).

DECISION
The rejection of claims 1-23 under 35 U.S.C. § 103(a) as being
unpatentable over Smith and Shaffer 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).

AFFIRMED

PEB

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