Ex Parte Nowak et al

Patent Trial and Appeal Board

Feb 26, 2013

10769199 (P.T.A.B. Feb. 26, 2013)

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.
10/769,199 01/30/2004 Jane Nowak 030465 (BLL-0133) 7543
36192 7590 02/27/2013
AT&T Legal Department - CC
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
02/27/2013 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 JANE NOWAK, THOMAS DEVANBU, LEONID
VOLOZHANIN, KATHY PETERSON, and DOVIE REEDER
____________________

Appeal 2010-008702
Application 10/769,199
Technology Center 2100
____________________

Before: DAVID M. KOHUT, BRYAN F. MOORE, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-7, 9, 10, 12-16, 18-26, and 29-30. Claims 2, 8, 11, 17, 27, and 28
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

According to Appellants the invention relates to database management
and maintaining up-to-date addressing data. A method according to the
invention includes parsing addressing data imported from a legacy file,
generating searchable records of parsed addressing data, and presenting at
least one of the records to a first analyst via a graphical user interface for
analysis. A referral for the record as a result of the analysis is generated via
the graphical user interface, a pending status is assigned to the referral
indicating the referral requires further analysis, and the referral is saved in a
database. The referral includes the parsed addressing data and a correction
type code. The correction type code indicates a recommended action to be
performed on addressing data contained in the referral. Abstract. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for facilitating information storage and retrieval of
addressing data., comprising:
parsing addressing data imported from a legacy file;
generating searchable records of parsed addressing data;
presenting at least one of the records to a first analyst via
a graphical user interface for analysis;
generating a referral for the at least one of the records as a
result of the analysis via the graphical user interface, the
referral including the parsed addressing data and a correction
type code;
assigning a pending status to the referral, the pending
status indicating the referral requires further analysis;
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saving the referral in a database;
wherein the correction type code indicates a
recommended action to be performed on addressing data
contained in the referral; and
wherein the correction type code includes at least one
of a change address, remove unit number, remove building
number, remove facilities address, change location standard,
add descriptive, and a change location data;
presenting the referral to a second analyst for evaluation
via the graphical user interface;
assigning a new status to the referral by the second analyst
in response to the evaluation or performance of a corrective
action, the new status including
pending/referred, indicating that corrective action
cannot be performed on addressing data in the referral until
additional information is obtained; and
updating the database indicating the new status.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Salta
Curtis
US 2001/0037463 A1
US 2003/0074342 A1
Nov. 1, 2001
Apr. 17, 2003

REJECTIONS
The Examiner made the following rejections:
Claims 1, 3-7, 9, 10, 12-16, 18-26, 29, and 30 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Salta and Curtis. Ans. 3.

APPELLANTS’ CONTENTIONS
1. With respect to independent claims 1 and 10:
a) Salta does not teach a second analyst. App. Br. 5
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b) Salta’s generating a folder of contacts who can be notified in case
of a change of address is not equivalent to the claimed referral. App. Br. 5.
c) Salta’s disclosure of selecting names from a contact list to whom an
address change is to be transmitted does not correspond to the claimed
“assigning a pending status to the referral, the pending status indicating the
referral requires further analysis.” Id.
d) Salta does not disclose “assigning a new status to the referral by the
second analyst in response to the evaluation or performance of a corrective
action, the new status including pending/referred, indicating that corrective
action cannot be performed on addressing data in the referral until additional
information is obtained.” App. Br. 6.
2. With respect to claims 4 and 13, “Salta makes no reference to a
priority, nor any indication of urgency.” App. Br. 8.
3. With respect to claims 5 and 14:
a) “There is no suggestion [in Salta or Curtis] that a priority is
assigned to a referral based the presence of a multi-dwelling unit indicator.”
App. Br. 9.
b) “There is no mention [in Salta or Curtis] of a priority or that the
priority may be a ‘dispatch status indicator which, if present on the referral,
indicates to the second analyst that a service order was recently corrected.’”
Id.
4. With respect to claims 19-26 and 30 “[the cited] section of Salta
makes no reference to a priority, nor any indication of urgency.” App. Br.
10.

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5. With respect to claim 29:
a) “There is no suggestion that a priority is assigned to a referral based
the presence of a multi-dwelling unit indicator.” App. Br. 11
b) “There is no mention of a priority or that the priority may be a
‘dispatch status indicator which, if present on the referral, indicates to the
second analyst that a service order was recently corrected.’” Id.

ISSUE ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4-11),
the issue presented on appeal is whether the asserted combination of
references teach or suggest the invention as recited in the disputed claims.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
We disagree with Appellants’ conclusions as to all rejections. We
adopt as our own (1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner. For
emphasis, we consider and highlight the following arguments seriatim as
they are presented in the Appeal Brief pages 4-11.

Claims 1 and 10

In connection with contention 1a, Appellants argue that Salta does not
teach a second analyst. App. Br. 5. Appellants further argue that the
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Examiner’s finding that “the second analyst could be any of the people the
contact information change is referred to” (App. Br. 6 citing the prior non-
final Office Action of Sep. 22, 2008 at 8) is in error because “[i]f someone
receives an address change, they do not assign a new status to the referral as
recited in claim 1” (id.) The Examiner responds that:
Salta discloses the [sic. that] once a user updates there [sic.
their] information a notification list refers (sends or directs)
notifications which the second analyst (party being notified),
for example paragraph 0031 of Salta discloses that its system
does not manually review records but the U.S postal office
would (given that it is a manual review, but this would still be a
second reviewer).
Ans. 10. Furthermore the Examiner finds that Salta discloses that service
providers can classify user profiles wherein “whether or not a user can be
classified is a status itself.” Ans. 11 citing Salta para. [0040]. We agree
with the Examiner that Salta discloses a second analyst that assigns a new
status to the referral. For example, Salta discloses that “the service provider
receives user profile information and change of address information, [so
that] the service provider can maintain an up to date list of users who can be
classified according to the profile information for targeting through direct
marketing.” Salta para. [0040]. Since the profiling information may be used
to determine which users can be classified, Salta discloses assigning a new
status (e.g., to those that can be classified.) Furthermore, since Salta
discloses supplementing the user’s profile it satisfies the requirement of
updating the database indicating the new status (e.g., targeting offers for
publications concerning sports.) Conversely, Appellants have not provided
sufficient evidence or argument to persuade us that the recipient of the
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notification or the service provider do not meet the requirement for a second
analyst. Therefore we find contention 1a unpersuasive of Examiner error.
In connection with contention 1b, Appellants argue that Salta’s
generating a folder of contacts who can be notified in case of a change of
address is not equivalent to the claimed referral. App. Br. 5. Appellants
assert that “[a] referral suggests referring something to someone.” Id. We
disagree. Appellants’ Specification does not provide a definition for a
“referral,” and therefore that term is to be given its plain meaning consistent
with the Specification. The Examiner finds that “referring” is equivalent to
Salta’s classification (Ans. 9) based on either the Examiner’s proffered
definition of “referral” as “to think or to classify as a member of a general
group,” or Appellants’ proffered definition of “send or direct for treatment,
aid, information or decision” (App. Br. 7.) We agree with the Examiner. In
the absence of sufficient evidence or argument to persuade us that the
Examiner’s definition is unreasonable or contradictory to the Specification,
we find no error in either the Examiner’s interpretation of the disputed claim
term or in the finding that Salta teaches or suggests the claimed referral.
Therefore contention 1b is not persuasive of Examiner error.
In connection with contention 1c, Appellants argue that Salta’s
disclosure of selecting names from a contact list to which an address change
is to be transmitted does not correspond to the claimed “assigning a pending
status to the referral, the pending status indicating the referral requires
further analysis.” App. Br. 5. We disagree.
The Examiner finds that Salta discloses assigning a pending status at
para. [0034.] Ans. 3-4. Therein Salta discloses a notification menu allowing
a user to select categories of parties to who change of address notices are to
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be sent. Salta para. [0034.] We agree with the Examiner (Ans. 3-4) that
Salta’s notification menu meets the requirement for assigning a pending
status to the referral. We additionally agree with the Examiner (Ans. 3-4)
that Salta teaches the status indicating the referral requires further analysis
since the user’s selection is transferred and displayed in a notification list
wherein the notification list indicates that additional steps need to be taken,
i.e., requiring further analysis. See Salta, para. [0034]. Thus, Appellants’
arguments are not persuasive of Examiner error.
In connection with contention 1d, Appellants argue that Salta does not
disclose “assigning a new status to the referral by the second analyst in
response to the evaluation or performance of a corrective action, the new
status including pending/referred, indicating that corrective action cannot be
performed on addressing data in the referral until additional information is
obtained.” App. Br. 6. The Examiner responds that:
[i]n this case a pending status is a status that indicates that more
information is needed. Salta discloses service providers that can
classify the user profiles (See paragraph 0040), the list of users
that can be classified is constantly updated (See paragraph
0040), Accordingly whether or not a user can be classified is a
status itself.
Ans. 11. We agree with the Examiner for the reasons presented supra in
connection with contention 1a and find that Salta teaches or suggests the
disputed claim limitation. Therefore contention 1d is not persuasive of
Examiner error.
For the reasons discussed supra, we sustain the rejection of claim 1
and for the same reasons, the rejection of claim 10 under 35 U.S.C. § 103(a)
as being unpatentable over Salta and Curtis together with the rejections of
claims 3, 6-9, 12, 15, 16, and 18 not separately argued.
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Claims 4 and 13

In connection with contention 2, Appellants argue “Salta makes no
reference to a priority, nor any indication of urgency.” App. Br. 8. The
Examiner responds that “anytime a classification is based on a change of
address the classification coincides with the priority level.” Ans. 15. We
agree with the Examiner that classification meets the requirement for
assigning a priority to the referral. Since Appellants have failed to provide
sufficient evidence or argument to persuade us that the Examiner’s finding is
unreasonable, we find contention 2 to be unpersuasive of Examiner error and
sustain the rejection of claims 4 and 13.

Claims 5 and 14

In connection with contention 3a, Appellants argue “[t]here is no
suggestion [in Salta or Curtis] that a priority is assigned to a referral based
the presence of a multi-dwelling unit indicator.” App. Br. 9. In particular,
Appellants argue that “[t]here is no suggestion [in Curtis] that a priority is
assigned to a referral based the presence of a multi-dwelling unit indicator.”
Id. In response, the Examiner finds that the multi-dwelling unit indicator is
met by Curtis’s disclosure of multiple addresses associated with one user.
Ans. 6 citing Curtis para. [0163]. Note that, in rejecting intervening claim 4
from which claim 5 depends, the Examiner relies on Salta, not Curtis, for
disclosing assigning a priority to the referral. Thus, it is the combination of
Salta and Curtis that is applied in rejecting claim 5, Salta for assigning a
priority, and Curtis for providing a multi-dwelling classification coinciding
with the claimed priority level. As such, Appellants appear to be responding
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to the rejection by attacking the Curtis reference individually, even though
the rejection is based on the combined teachings of the references.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986.)
In connection with contention 3b, Appellants argue “[t]here is no
mention [in Salta or Curtis] of a priority or that the priority may be a
‘dispatch status indicator which, if present on the referral, indicates to the
second analyst that a service order was recently corrected.’” App. Br. 9. As
we have already agreed with the Examiner’s finding that Curtis teaches a
multi-dwelling unit indicator (Ans. 6), we need not reach whether either
Salta or Curtis teaches a dispatch status indicator since the claim only
requires one of the indicators.
For the reasons presented supra Appellants have not provided
sufficient evidence or argument to persuade us of Examiner error and,
therefore, we sustain the rejection of claims 5 and 14.

Claims 19-26 and 30

In connection with contention 4, with respect to claim 19 Appellants
argue “[the cited] section of Salta makes no reference to a priority, nor any
indication of urgency.” App. Br. 10. Appellants’ argument is the same as
presented in connection with contention 2 and is not persuasive for the same
reasons. Therefore we sustain the rejection of claim 19 and of claims 20-26
and 30 not separately argued.

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Claim 29

In connection with contention 5a, Appellants argue “[t]here is no
suggestion that a priority is assigned to a referral based the presence of a
multi-dwelling unit indicator.” App. Br. 11. Appellants’ argument is the
same as presented in connection with contention 3a and is not persuasive for
the same reasons.
In connection with contention 5b, Appellants argue “[t]here is no
mention of a priority or that the priority may be a ‘dispatch status indicator
which, if present on the referral, indicates to the second analyst that a service
order was recently corrected.’” App. Br. 11. Appellants’ argument is the
same as presented in connection with contention 3b and is not persuasive for
the same reasons.
Therefore, we sustain the rejection of claim 29.

CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 1, 3-7, 9, 10, 12-16, 18-26, 29, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Salta and Curtis.

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DECISION
The decision of the Examiner to reject claims 1, 3-7, 9, 10, 12-16, 18-
26, 29, and 30 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

ELD