Ex Parte Shoemaker et al

Board of Patent Appeals and Interferences

Aug 16, 2010

10651733 (B.P.A.I. Aug. 16, 2010)

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.
10/651,733 08/29/2003 Daniel D. Shoemaker 30011.01 9160
66943 7590 08/16/2010
James P. Broder
Roeder & Broder LLP
9915 Mira Mesa Blvd. Suite 300
San Diego, CA 92131
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
08/16/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL D. SHOEMAKER,
LEE THOMAS O'DONNELL,
JAMES P. BRODER,
and SCOTT D. SHOEMAKER
____________

Appeal 2009-002493
Application 10/651,733
Technology Center 2100
____________

Before JAMES D. THOMAS, HOWARD B. BLANKENSHIP, and
JAY P. LUCAS, Administrative Patent Judges.

BLANKENSHIP, 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 2009-002493
Application 10/651,733

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 21-35, 71, and 75-130, which are all of the remaining
claims in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Invention
Appellants’ invention relates to a system for transmission of data
between a first device operated by a first user and a second device operated
by a second user that includes a database that receives a first set of data input
by the first user and a second set of data input by the second user. In one
embodiment, the second user can access at least a first portion of the first set
of data from the database only after the second user authorizes the first user
to access at least a first portion of the second set of data from the database.
In another embodiment, the first set of data includes an immediate mode of
access and one or more future modes of access of the first user which
correlate to one or more specific time periods during which the future mode
of access will become the immediate mode of access. Additionally, the first
set of data can include a time-dependent schedule of the future mode of
access of the first user. The second device can be a mobile phone having a
memory that is automatically updated by the database with data input by the
first user. Abstract.

Appeal 2009-002493
Application 10/651,733

3
Representative Claim
21. A system for transmission of data between a first
device operated by a first user and a second device operated by
a second user, the system comprising:

a database that is in network communication with the
first device and the second device, the database receiving a first
set of data input by the first user from the first device, the first
set of data including a future mode of access of the first user,
the future mode of access correlating to a time period during
which the future mode of access will become an immediate
mode of access of the first user, the immediate mode of access
of the first user being accessible from the database by the
second user using the second device.

Examiner’s Rejections
Claims 21-35, 71, and 75-130 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Douvikas (US 2005/0182644 A1).
The Examiner has withdrawn a rejection of claims 21-35, 71, and 75-
130 under 35 U.S.C. § 101. Ans. 3.

Claim Groupings
In view of Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 21, 22, 23, 25, 27, 29, 30, 32, 75, 87, 89,
103, and 117. See 37 C.F.R. § 41.37(c)(1)(vii).

PRINCIPAL ISSUES
(1) Have Appellants shown that the Examiner erred in finding that
Douvikas discloses a “future mode of access correlating to a time period
Appeal 2009-002493
Application 10/651,733

4
during which the future mode of access will become an immediate mode of
access of the first user” as recited in claim 21?
(2) Have Appellants shown that the Examiner erred in finding that
Douvikas discloses “the second user has access to the immediate mode of
access from the database only after the second user authorizes the database
to allow the first user access to at least a portion of the second set of data
from the database” as recited in claim 32?

FINDINGS OF FACT
1. Douvikas discloses an e-service to manage contact information
with privacy levels. The e-service includes a method of providing access to
a collection of electronic business cards. The method provides an electronic
business card file Web site to a user, and allows the creation of an electronic
business card file by the user using the Web site. The creation includes
allowing the user to enter information into a plurality of fields, storing the
information, and sending an authentication email to the user. The user can
search for one or more records, view the records, and if the creation is
completed, set privacy levels of each field. Title; Abstract.
2. Users (those desiring access to one or more cardholder records)
are permitted to search for cardholder information. Access to individual
records is controlled at both the record level and the field level. Users
having certain permissions (set by the cardholder) are permitted to read a
defined group of records, though not necessarily all fields in each record.
Thus, a cardholder may make her business information available to all users
(or all users in a defined group or groups, such as Aerospace Engineers or
Appeal 2009-002493
Application 10/651,733

5
Family), but keep certain information, such as her cellular phone number,
private to all but a few individuals. For example, a cellular phone number
may be designated as semi-private and thus available to only those defined
users granted semi-private access to the cardholder’s data. ¶ [0012].
3. A user’s interaction with the ecardfile system, according to one
embodiment of the invention, is illustrated in Figure 2. The flowchart shows
a typical use of the EBC system to perform a search on cardholder data. The
user starts a conventional Web browser, 210, and enters the ecardfile
Uniform Resource Locator (URL) 215. After logging in to the secure
ecardfile web site, the user selects the “Go” button (350) associated with the
“View Cards” command in login graphic 320 (figure 3B). This selection
brings up search screen 360 in window 310. The search begins 250 when
the user selects the “Go” button 370 or 375 corresponding to the type of
search desired in step 240. The EBC system returns results 260 in the
Results Screen 410 shown in figure 4. This screen replaces search screen
360 in window 310. ¶¶ [0048] – [0053].
4. In order to protect privacy, Douvikas describes several ways in
which to exchange cards with others. Anyone can look up a user by name
and see the information designated as public in the user’s Card Profile.
Acquaintances can look up a user by name search or by Card ID and see the
information designated as public in the Card Profile. Members may also
look up a user by name search or Card ID and see the public, semi- private
or private information specifically designated for them. ¶¶ [0096] – [0101].

Appeal 2009-002493
Application 10/651,733

6
5. Douvikas provides a specific example of card exchange at
paragraphs [0101] through [0105].
[0101] For example, let’s say a new person, Hans, has
joined your project team; he works out of your company's
Munich office, and you are in Los Angeles. Hans is not yet a
Member of ecardfile.com.

[0102] 1. At the initial team conference call, you give
Hans your Card ID and tell him that's where all your contact
information is.

[0103] 2. Hans accesses ecardfile.com and becomes a
Member. He looks up your Card and adds it to his personal
ecardfile. He wants you to have his semi-private information so
he marks your card with the semi-private access key.

[0104] 3. You look up Hans’s card and add it to your
personal ecardfile. You then mark Hans’s card with the semi-
private access key so that he can see more detailed information
about you than what appears on your public card.

[0105] 4. Over the next 6 months, Hans changes office
locations and gets a new phone number; your fax number
changes, and the Post Office gives your part of town a new zip
code. Thanks to ecardfile.com, your contact information is
always current.

PRINCIPLES OF LAW
Claim Interpretation
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
Appeal 2009-002493
Application 10/651,733

7
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Amer. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “An essential
purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” Zletz,
893 F.2d at 322. “Construing claims broadly during prosecution is not
unfair to the applicant . . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.” Amer. Acad., 367
F.3d at 1364.

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GmbH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).

ANALYSIS
Section 102 rejection of claims 21, 24, 26, 28, 31, 34, 35, and 71
Appellants contend that the data entered by Douvikas is current data,
not future data. App. Br. 18; Reply Br. 3. Appellants contend that Douvikas
Appeal 2009-002493
Application 10/651,733

8
does not disclose that future data automatically changes into current data at
an appropriate time. App. Br. 18-19; Reply Br. 4.
Claim 21 recites “the future mode of access correlating to a time
period during which the future mode of access will become an immediate
mode of access of the first user.” The future mode of access encompasses a
telephone number to reach a user at a future time. Spec. 33:9-25. Douvikas
discloses a database that stores a telephone number that can be used to reach
a user at a future time. The user who enters the telephone number into the
database expects to be reached at this number in the future, which makes the
number a “future mode of access” within the meaning of claim 1. The
person who retrieves the number from the database expects to reach the user
at this number at the time of retrieval, which makes the number an
“immediate mode of access” within the meaning of claim 1.
Appellants have not distinguished the “future mode of access” and the
“immediate mode of access” as recited in claim 21 from the telephone
number disclosed by Douvikas. We sustain the rejection of claim 21 under
35 U.S.C. § 102. Appellants have not presented arguments for separate
patentability of claims 24, 26, 28, 31, 34, 35, and 71. We therefore also
sustain the rejection of these claims under 35 U.S.C. § 102.

Section 102 rejection of claim 22
Appellants contend that Douvikas does not disclose a future mode of
access, but only discloses current information that is input into a database.
Appellants conclude that Douvikas does not disclose a future mode of access
that is inaccessible to a second user. App. Br. 20. However, we find that
Appeal 2009-002493
Application 10/651,733

9
Douvikas discloses a future mode of access as discussed in the analysis of
claim 21. The future mode of access, or telephone number, is inaccessible to
the second user when the second user is not accessing the database.
We sustain the rejection of claim 22 under 35 U.S.C. § 102.

Section 102 rejection of claims 23, 79, 94, 107, 121
Appellants contend that Douvikas does not disclose a future time
period that is inaccessible to a second user. App. Br. 20. The “future” is a
relative term which is not explicitly defined by claim 23. When the second
user retrieves the telephone number from the database of Douvikas, the
second user does this during an immediate time period. When the second
user retrieves the telephone number, the immediate time period is accessible
to the second user and the “future time period” is inaccessible to the second
user within the meaning of claim 23. Appellants have not provided a
definition of the term “future time period” that excludes this interpretation.
We sustain the rejection of claim 23 under 35 U.S.C. § 102. Claims
79, 94, 107, and 121 each recite a limitation similar to that of claim 23. We
sustain the rejection of claims 79, 94, 107, and 121 under 35 U.S.C. § 102.

Section 102 rejection of claims 25, 91, 104, 118
Appellants contend that Douvikas does not disclose a plurality of
future modes of access. Figure 4 of Douvikas shows a plurality of fields for
a plurality of phone numbers, which corresponds to a plurality of future
modes of access within the meaning of claim 25.
Appeal 2009-002493
Application 10/651,733

10
We sustain the rejection of claim 25 under 35 U.S.C. § 102. Claims
91, 104 and 118 each recite a limitation similar to that of claim 25. We
sustain the rejection of claims 91, 104 and 118 under 35 U.S.C. § 102.

Section 102 rejection of claims 27, 78, 93, 106, 120
Appellants contend that Douvikas does not disclose a future mode of
access selected from at least one of a phone number, an electronic mail
address, a facsimile number, and a text message number as recited in claim
27. App. Br. 21. Douvikas discloses a telephone number, which meets the
requirements of claim 27.
We sustain the rejection of claim 27 under 35 U.S.C. § 102. Claims
78, 93, 106, and 120 each recite a limitation similar to that of claim 27. We
sustain the rejection of claims 78, 93, 106, and 120 under 35 U.S.C. § 102.

Section 102 rejection of claims 29, 82, 97, 110, 124
Appellants contend that Douvikas does not automatically update the
memory of a wireless device with an immediate mode of access at least one
time per day. App. Br. 21-22. When a user accesses the web site of
Douvikas, the web site transmits the immediate mode of access to the user’s
device. When a user accesses the web site once a day using a wireless
device (Douvikas ¶¶ [0011], [0170] - [0171]), the web site “automatically
updates the memory” of the wireless device once a day within the meaning
of claim 29.
Appeal 2009-002493
Application 10/651,733

11
We sustain the rejection of claim 29 under 35 U.S.C. § 102. Claims
82, 97, 110, and 124 each recite a limitation similar to that of claim 29. We
sustain the rejection of claims 82, 97, 110, and 124 under 35 U.S.C. § 102.

Section 102 rejection of claims 30, 83, 98, 111, 125
Appellants contend that Douvikas does not disclose that the second
user can dictate how often the second user’s mobile phone is updated with
the immediate mode of access of the first user. App. Br. 22. The second
user can access the web site of Douvikas to update contact information as
often as desired, which causes the web site to automatically update the
storage device of the mobile phone with the immediate mode of access of
the first user at a frequency that is input into the database by the second user
within the meaning of claim 30.
We sustain the rejection of claim 30 under 35 U.S.C. § 102. Claims
83, 98, 111, and 125 each recite a limitation similar to that of claim 30. We
sustain the rejection of claims 83, 98, 111, and 125 under 35 U.S.C. § 102.

Section 102 rejection of claims 32, 33, 85, 86, 100, 101, 113, 114,
127, 128

Appellants contend that Douvikas does not disclose the specific type
of reciprocity of claim 32. App. Br. 22. The Examiner finds that changing
contact information over the next 6 months describes the limitations of
claims 32 and 33. Ans. 14.
Claim 32 recites “the second user has access to the immediate mode
of access from the database only after the second user authorizes the
Appeal 2009-002493
Application 10/651,733

12
database to allow the first user access to at least a portion of the second set
of data from the database.” The rejection fails to establish that Douvikas
describes a second user having access to a first user’s telephone number in
the database only after the second user allows the first user to access a
portion of data in the database.
We thus cannot sustain the rejection of claim under 35 U.S.C. § 102.
Each of claims 85, 100, 113, and 127 contains a limitation similar to that of
claim 32 for which the rejection fails. Claims 33, 86, 101, 114, 127, and 128
depend from the respective previous claim. We therefore do not sustain the
rejection of claims 32, 33, 85, 86, 100, 101, 113, 114, 127, and 128 under 35
U.S.C. § 102.

Section 102 rejection of claims 75-77, 80, 81, and 84
Appellants submit that claim 75 is patentable over Douvikas by
quoting language from claim 75 and alleging that the language is not
disclosed by the reference. App. Br. 23. Under the applicable Board rule,
reproducing claim language is not an argument for separate patentability of
the claim. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”).
Even so, Douvikas discloses a future mode of access that becomes an
immediate mode of access as discussed in the analysis of claim 21.
Douvikas also discloses a semi-private privacy setting to provide access to a
second device to the immediate mode of access and to deny access to a third
device to the immediate mode of access. For example, a cellular phone
Appeal 2009-002493
Application 10/651,733

13
number may be designated as semi-private and thus available to only those
defined users granted semi-private access to a cardholder’s data. FF 2. A
device used by a user that has been granted semi-private access is a “second
device,” and a device used by a user that has not been granted semi-private
access is a “third device” within the meaning of claim 21.
We sustain the rejection of claim 75 under 35 U.S.C. § 102.
Appellants have not provided arguments for separate patentability of claims
76, 77, 80, 81, and 84. We sustain the rejection of claims 76, 77, 80, 81, and
84 under 35 U.S.C. § 102.

Section 102 rejection of claims 87, 88, 92, 95, 96, 99, and 102
Appellants contend that Douvikas does not disclose that the database
selectively changes the portion of the data that is accessible from another
device. App. Br. 26. Figure 15 of Douvikas shows several privacy levels
for a portion of data stored in the database. When a user selects one of the
privacy levels, “the database selectively changes the portion of the data that
is accessible from the second device” within the meaning of claim 87.
We sustain the rejection of claim 87 under 35 U.S.C. § 102.
Appellants have not provided arguments for separate patentability of claims
88, 92, 95, 96, 99, and 102. We sustain the rejection of claims 88, 92, 95,
96, 99, and 102 under 35 U.S.C. § 102.

Section 102 rejection of claims 89 and 90
Appellants contend that Douvikas does not disclose a future mode of
access, but only discloses inputting current information into a database.
Appeal 2009-002493
Application 10/651,733

14
App. Br. 27. However, we find that Douvikas does disclose a future mode
of access as discussed in the analysis of claim 21.
We sustain the rejection of claims 89 and 90 under 35 U.S.C. § 102.

Section 102 rejection of claims 103, 105, 108, 109, 112, 115, 117,
119, 122, 123, 126, 129, and 130

Appellants submit that claims 103 and 117 are patentable over
Douvikas by quoting language from the claims and alleging that the
language is not disclosed by Douvikas. App. Br. 30, 33. Appellants have
thus not provided arguments for separate patentability of claim 103. Cf. 37
C.F.R. § 41.37(c)(1)(vii).
We sustain the rejection of claims 103 and 117 under 35 U.S.C. § 102.
We also sustain the rejection of claims 105, 108, 109, 112, 115, 119, 122,
123, 126, 129, and 130 under 35 U.S.C. § 102, as Appellants have also failed
to provide arguments for separate patentability of these claims.

CONCLUSIONS OF LAW
(1) Appellants have not shown that the Examiner erred in finding
that Douvikas discloses a “future mode of access correlating to a time period
during which the future mode of access will become an immediate mode of
access of the first user” as recited in claim 21.
(2) Appellants have shown that the Examiner erred in finding that
Douvikas discloses “the second user has access to the immediate mode of
access from the database only after the second user authorizes the database
Appeal 2009-002493
Application 10/651,733

15
to allow the first user access to at least a portion of the second set of data
from the database” as recited in claim 32.

DECISION
The rejection of claims 21-31, 34, 35, 71, 75-84, 87-99, 102-112,
115-126, 129, and 130 under 35 U.S.C. § 102(e) as being anticipated by
Douvikas is affirmed.
The rejection of claims 32, 33, 85, 86, 100, 101, 113, 114, 127, 128
under 35 U.S.C. § 102(e) as being anticipated by Douvikas is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART

msc

James P. Broder
Roeder & Broder LLP
9915 Mira Mesa Blvd. Suite 300
San Diego, CA 92131