Ex Parte Repka

Board of Patent Appeals and Interferences

Feb 28, 2011

11021011 (B.P.A.I. Feb. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MIKKO REPKA
_____________

Appeal 2009-008055
Application 11/021,011
Technology Center 2600
______________

Before, ROBERT E. NAPPI, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008055
Application 11/021,011

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a method, computer readable medium,
and mobile station that displays a contact list with the types of messages that
each contact can receive. See Spec: 1-7. Claim 1 is representative of the
invention and is reproduced below:
1. A method for use in a mobile station operable in a wireless
telecommunications network, wherein the mobile station
comprises at least a memory for storing contact list information,
where the contact list information comprises for each listed
contact a name; a telephone number; and a listing of the types
of messages the contact can receive, and a display for
displaying the contact list information, the method comprising:
accessing the contact list information from the memory;
and
a contact list comprised of the contact list information on
the display of the mobile station, wherein the contact list for
each contact on the contact list displays the types of messages
the contact can receive.

REFERENCES
Bourgeois US 5,940,767 Aug. 17, 1999

Moores WO 2004/017654 A1 Feb. 26, 2004

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Application 11/021,011

REJECTIONS AT ISSUE
Claims 1-9 and 11-35 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Moores. Ans. 3-15.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Moores in view of Bourgeois. Ans. 15-17.

ISSUE
Appellant argues on pages 5-14 of the Appeal Brief and pages 1-5 of
the Reply Brief that the Examiner’s rejection of claim 1 is in error.
Appellant argues that Moores does not disclose displaying a contact list on
the mobile station that discloses the types of messages the contact can
receive. App. Br. 5; Reply Br. 5.
Thus, with respect to claim 1, Appellant’s contention presents the
issue: Did the Examiner err in finding that Moores discloses displaying a
contact list comprised of the contact list information on the display of the
mobile station, wherein the contact list for each contact on the contact list
displays the types of messages the contact can receive?
Appellant argues on pages 14-37 of the Appeal Brief that the
Examiner’s rejection of claims 2-35 is in error. Appellant makes the same
arguments with respect to claims 2-35 as with claim 1.
Thus, with respect to claims 2-35, Appellant’s contention presents the
same issue as claim 1.
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Appeal 2009-008055
Application 11/021,011

ANALYSIS
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 1. Claim 1 requires displaying a contact list
that indicates the type of messages that each contact can receive. Appellant
argues that Moores does not disclose this limitation because the Examiner
argues in the alternative (App. Br. 6; Reply Br. 2); the Examiner uses
Appellant’s disclosure to fill in the gaps missing in Moores (App. Br. 6);
Moores’ method operates in a different manner from Appellant’s claimed
invention (App. Br. 7); Moores does not “display . . . other types of
messages that a contact can receive” (App. Br. 9); and the Examiner makes
conclusions without factual basis as to how Moores operates (App. Br. 9;
Reply Br. 3). We disagree.
The Examiner finds that Moores discloses displaying the entire
contact list and distinguishing those contacts that possess messaging
capabilities. Ans. 19. This embodiment, therefore, indicates what types of
messages a contact can receive, as claimed. While Moores’ initial
embodiment discloses displaying only contacts that can handle the type of
message being composed (pg. 23, ll. 5-8), the Examiner’s finding indicates
the additional embodiment disclosed above meets the claimed limitation
(Ans. 19). As a result, the Examiner is not arguing in the alternative, but has
made a finding that an additional embodiment described within the reference
discloses that which is claimed.
The limitation of displaying the contact list is taught by Moores, as
shown by the Examiner’s finding. Therefore, the Examiner is not using
Appellant’s disclosure to fill in gaps since there are no gaps to fill.
Furthermore, we are also not persuaded by Appellant’s argument that
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Appeal 2009-008055
Application 11/021,011

Moores’ method does not operate in the same manner as Appellant’s
claimed invention because the Examiner appropriately addressed all the
claimed limitations. Nor are we persuaded by Appellant’s argument that the
Examiner is making conclusions without a factual basis since there is ample
evidence to support the Examiner’s finding that contacts are displayed with
types of messages the contact can receive. Additionally, the claim does not
require that all types of messages the contact can receive must be displayed.
As a result, the claim does not preclude displaying only one type of message
the contact can receive.
Thus, we are not persuaded by Appellant’s arguments and we sustain
the Examiner’s rejection of claim 1.
Lastly, Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 2-35. Since we do not find Appellant’s
arguments with respect to claim 1 to be persuasive, Appellant’s similar
arguments with respect to claims 2-35 are likewise not persuasive. In
addition, Appellant’s additional statements on pages 14 through 37 of the
Brief regarding claims 2-35 merely recite limitations of the claims and are
not considered separate arguments. See 37 C.F.R. § 41.37 (c)(1)(vii).
Furthermore, these statements by Appellant do not address the Examiner’s
findings with respect to these claims. As such, Appellant has not persuaded
us of error and we sustain the Examiner’s rejection of claims 2-35.

CONCLUSION
The Examiner did not err in finding that Moores discloses displaying
a contact list comprised of the contact list information on the display of the
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Appeal 2009-008055
Application 11/021,011

mobile station, wherein the contact list for each contact on the contact list
displays the types of messages the contact can receive.

SUMMARY
The Examiner’s decision to reject claims 1-35 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

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