Ex Parte Swan

Board of Patent Appeals and Interferences

Oct 5, 2010

10289896 (B.P.A.I. Oct. 5, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH G. SWAN
____________

Appeal 2009-002114
Application 10/289,8961
Technology Center 2100
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
CAROLYN D. THOMAS, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed November 7, 2002. The real party in interest is Joseph G.
Swan.
2 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 2009-002114
Application 10/289,896

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1, 4, 5, 7, 9, 11, 29-34, and 42-49,
which are all the claims remaining in the application, as claims 2, 3, 6, 8, 10,
12-28, and 35-41 are cancelled. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We Affirm-In-Part.
The present invention is applicable to contact information, such as
information that might be included on a business card, sharing over the
internet. (Spec., 1:8-11.)

Claim 1 is illustrative:
1. A system for sharing contact information, said system
comprising:
(a) a central hub that maintains a general database of
contact information and distributes the contact information upon
request;
(b) plural terminals that electronically communicates
with the central hub, each of said terminals having a local electronic
address book stored within it; and
(c) plural contacts, each said contact having an
associated contact record that is stored in the general database
maintained by the central hub,
wherein when a requesting terminal, from among the
plural terminals, transmits a contact-record request to the central hub,
the following sequence automatically occurs:
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the central hub retrieves a matching contact record from
the general database and then transmits the matching contact record to
the requesting terminal; and
the requesting terminal receives the matching contact
record and then at least one of: (i) the matching contact record
automatically is stored into the local electronic address book of the
requesting terminal; or (ii) the matching contact record automatically
is displayed on the requesting terminal, together with a “save”
designation interface that permits a user of the requesting terminal to
save the matching contact record into the local electronic address
book of the requesting terminal,
wherein the contact records for the plural contacts in the
general database are accessible by a plural of different end users
without requiring individual permissions from the contacts
corresponding to said contact records, and
wherein the contact-record request is initiated by a
human.

Appellant appeals the following rejections:3
1. Claims 1, 7, 9, 29, 33, 42, and 44-48 under 35 U.S.C.
§ 102(e) as anticipated by Brown (US Patent Pub. 2002/0156895 A1, Oct.
24, 2002).
2. Claims 4, 11, 31, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Brown and Harari (US Patent Pub. US 2002/0016857 A1,
Feb. 7, 2002).
3. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Brown

3 The Examiner withdrew the rejection under 35 U.S.C. § 112, first
paragraph (Ans. 3).
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and Sagi (US 6,865,384 B2, Mar. 8, 2005).
4. Claim 34 under 35 U.S.C. § 103(a) as unpatentable over Brown
and Osborn (US 6,760,728 B1, Jul. 6, 2004).
5. Claim 43 under 35 U.S.C. § 103(a) as unpatentable over Brown
and Official Notice.
6. Claims 30 and 49 under 35 U.S.C. § 103(a) as unpatentable
over Brown and Clark (US Patent Pub. US 2002/0174188 A1, Nov. 21,
2002).

FACTUAL FINDINGS
Brown
1a. Brown discloses “the method for sharing data comprises the steps
of receiving a user’s identification . . . receiving a request to view contact
information, retrieving the requested contact information from a remote
database via a network, and displaying the contact information to the user.”
(¶ [0008].)
1b. Brown discloses that “[a]lthough the contact information for each
listed person can be stored locally within the computing device 102 . . . [i]n
an alternative arrangement, the information can be stored in both the local
database 218 and the remote database 316 and the local database updated
through periodic reference to the remote database (e.g., weekly).” (¶
[0041](emphasis added).)
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1c. Brown further discloses that “[t]his updating can occur
automatically.” (¶[0041].)
Clark
2. Clark discloses that “[w]hen reviewing profiles, they may choose
to save the profile in the local database.” (¶[0034].)

ANALYSIS
Claims 1, 4, 5, 7, 9, 11, 29, 31-34, and 42-48
Issue: Did the Examiner err in finding that Brown discloses that “the
following sequence automatically occurs: the central hub retrieves a
matching contact record . . . and then transmits . . . the requesting terminal
receives the matching contact record and then at least one of: (i) the
matching contact record automatically is stored . . . or (ii) the matching
contact record automatically is displayed . . ., together with a ‘save’
designation,” as set forth in claim 1?
Appellant contends that “it is clear that the words ‘can be stored[,]’
which have been emphasized by the Examiner, are just referring to Brown’s
embodiment in which the recipient’s online virtual address book previously
has been copied into the local database on the recipient’s device. …, in both
cases in which that expression is used in paragraph [0041] of Brown, it is
appropriately read as ‘can exist.’” (Reply Br. 6.)
The Examiner found that “[o]nce a contact record is stored locally, the
local contact record may be updated automatically (or manually).
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Automatically updating a contact record requires automatically storing the
contact record (with its data).” (Ans. 26.) We disagree.
We start by noting that Claim 1 requires in the final stages of the
sequence at least one of (i) . . . automatically is stored . . . or (ii)
automatically is displayed . . . together with a “save” designation interface.
Thus, only one of the above-noted functions needs to be performed by
Brown. We find that neither function is performed by Brown in the
sequence claimed.
Firstly, as for the optional displaying function, the Examiner concedes
that Brown fails to show this displaying sequence (Ans. 19-20.) Therefore,
our discussion shall be limited to the automatically storing sequence.
While Brown discloses that contact records can be stored locally (FF
1b), Brown does not indicate what is the sequence for storing, i.e., when and
how it is stored. The Examiner merely states that displaying “requires
storage in a processor’s registers [sic] storing data and instructions for
displaying the received data on a screen . . . This is at least temporary
automatic storage of the matching contact information.” (Ans. 26.)
However, Claim 1’s first option requires automatic storage in the “local
electronic address book,” not in a processor’s register. At best, it appears
that Brown’s storage of contact information in the electronic address book
occurs at some undisclosed later time.
For instance, Brown discloses that “the contact information for each
listed person can be stored locally within the computing device 102 . . . [i]n
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an alternative arrangement, the information can be stored in both the local
database 218 and the remote database 316” (FF 1b). However, the claimed
sequence requires request – receipt - and “automatically is stored into the
local electronic address book,” not in temporary registers. The Examiner
also states that Brown’s “[a]utomatically updating a contact record requires
automatically storing the contact record.” (Ans. 26.) However, Brown’s
“automatically updating” is performed periodically, e.g., weekly (FFs 1b,
1c), not in the sequence as claimed, i.e., upon receipt of the contact record.
Thus, again, the Examiner has failed to show the claimed sequence of events
leading up to the automatically storing.
Therefore, we find that for claim 1, the Examiner has not shown that
Brown expressly/inherently describes a requesting terminal, from among the
plural terminals, capable of transmitting a contact-record request such that
the sequence of actions as claimed can occur. Similarly, for claim 29, the
Examiner has not shown that Brown expressly/inherently describe an
apparatus as claimed capable of performing the sequence.
“Anticipation is established by documentary evidence, and requires
that every claim element and limitation is set forth in a single prior art
reference, in the same form and order as in the claim.” Abbott Laboratories
v. Sandoz, Inc., 544 F.3d 1341, 1345 (Fed. Cir. 2008). Here, Brown’s
storing of contact information is not shown to be performed in the same
order as claimed. Therefore, we find that the Examiner has not set forth a
sufficient initial showing of anticipation in this case.
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Based on the record before us, we find that the Examiner did err in
rejecting independent claims 1 and 29. Accordingly, we reverse the
rejections of independent claims 1 and 29, as well as associated dependent
claims 4, 5, 7, 9, 11, 30-34, and 42-48.

Claims 30 and 49
As for the obviousness rejection of independent claim 49, we find that
the Examiner has shown that the combination of Brown and Clark discloses
a requesting terminal, from among the plural terminals, being capable of
transmitting a contact-record request such that the sequence of actions as
claimed can occur (e.g., hub retrieves – transmits – terminal receives –
automatically displayed together with “save” designation). (Ans. 19.)
For example, the Examiner states that Clark discloses in paragraph
[0034] a “save” designation being provided while viewing received
information (Ans. 20). Specifically, Clark discloses that the user may
choose to save the profile in the local database when reviewing the profiles
(FF 2). Thus, the Examiner has shown that while Brown’s sequence is
missing the “save” designation with the displaying, Clark teaches such a
feature. Therefore, we find that the combination of Brown and Clark
reasonable teaches a system capable of providing the sequence as set forth in
claim 49. Claim 30 is affirmed for similar reasons.
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Based on the record before us, we find that the Examiner did not err in
rejecting independent claim 49. Accordingly, we affirm the rejection of
claim 49 and claim 30, which falls therewith.

DECISION
We reverse the Examiner’s § 102(e) rejection of claims 1, 7, 9, 29, 33,
42, and 44-48;
We reverse the Examiner’s § 103(a) rejections of claims 4, 11, 31, 32,
5, 34, and 43.
We affirm the Examiner’s § 103(a) rejection of claims 30 and 49.
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.
§ 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

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