Ex Parte Kashi

Patent Trial and Appeal Board

Jul 23, 2013

11224160 (P.T.A.B. Jul. 23, 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.
11/224,160 09/12/2005 Ramanujan Kashi 5123-33CIP2 8987
7590 07/23/2013
Edward M. Weisz, Esq.
Cohen, Pontani, Lieberman & Pavane
Suite 1210
551 Fifth Avenue
New York, NY 10176
EXAMINER
STORK, KYLE R
ART UNIT PAPER NUMBER
2178
MAIL DATE DELIVERY MODE
07/23/2013 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 RAMANUJAN KASHI
__________

Appeal 2011-007461
Application 11/224,160
Technology Center 2100
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal
1
under 35 U.S.C. § 134 involves claims to a method of
automatically detecting instances of telephone numbers in computer
documents, and automatically storing context information regarding the
telephone numbers. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1
The real party in interest is Avaya Technology Corp. (App. Br. 2).
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Application 11/224,160

2
STATEMENT OF THE CASE
Claims 1-24 stand rejected and appealed (App. Br. 2). Claims 1 and
14, the independent claims, illustrate the appealed subject matter and read as
follows (emphasis added):
1. A method for automatically detecting any instances of
telephone numbers in a computer document and for storing context
information for said telephone numbers, comprising the steps of:
when loading a computer document into a graphical user
interface (GUI) window for viewing by a user:
automatically parsing the computer document for any instance
of a telephone number; and
when an instance of a telephone number is detected:
providing a user with an option for storing the telephone
number;
storing said telephone number in a first location if the user
selects the option;
establishing an information structure of the computer
document;
automatically identifying context information in the parsed
computer document for said instance of a telephone number based on
the information structure of the computer document; and
automatically storing said context information in a second
location associated with said first location.

14. A method for transmitting context information related to
a telephone number found in a computer document comprising the
steps of:
when loading a computer document into a graphical user
interface (GUI) window for viewing by a user:
automatically parsing the computer document for any instance
of a telephone number;
when an instance of a telephone number is detected:
providing a user with an option for storing the telephone
number;
storing said telephone number in a first location if the user
selects the option;
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establishing an information structure of the computer
document;
automatically identifying context information in the parsed
computer document for said instance of a telephone number based on
the information structure of the computer document;
automatically storing said context information in a second
location, said second location being associated with said first location;
establishing a telephone connection between a first device
associated with a user and a second device associated with said
telephone number; and
transmitting said context information to said second device.

The following rejections are before us for review:
(1) Claims 1, 5, 7, 8, 12, and 13, under 35 U.S.C. § 103(a) as obvious
over Cornell,
2
Alexander,
3
and Epstein
4
(Ans. 3-7);
(2) Claims 2 and 3, under 35 U.S.C. § 103(a) as obvious over Cornell,
Alexander, Epstein, and Grant
5
(Ans. 7-8);
(3) Claims 4, 6, 14-22, and 24, under 35 U.S.C. § 103(a) as obvious
over Cornell, Alexander, Epstein, and Giordano
6
(Ans. 8-13);
(4) Claims 9-11, under 35 U.S.C. § 103(a) as obvious over Cornell,
Alexander, Epstein, and Bates
7
(Ans. 13-14);
(5) Claim 23, under 35 U.S.C. § 103(a) as obvious over Cornell,
Alexander, Epstein, Giordano, and Marcjan
8
(Ans. 14-15).

2
Paul Cornell, Developing Smart Tag DLLs (http://msdn.microsoft.com/
library/en-us/dnsmarttag/html/odc_smarttags.asp?frame=true) (April 2001).
3
U.S. Patent No. 6,640,230 (issued Oct. 28, 2003).
4
U.S. Patent App. Pub. No. 2002/0123891 A1 (published Sep. 5, 2002).
5
U.S. Patent App. Pub. No. 2003/0164855 A1 (published Sep. 4, 2003).
6
U.S. Patent No. 6,870,828 B1 (filed June 3, 1997).
7
U.S. Patent App. Pub. No. 2004/0205672 (filed Dec. 29, 2000).
8
U.S. Patent App. Pub. No. 2004/0254938 Al (filed Mar. 31, 2003).
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DISCUSSION
In rejecting claim 1, the Examiner cited Cornell as describing a
method that included the claimed steps of automatically parsing a computer
document for instances of telephone numbers, as well as storing the numbers
(see Ans. 4).
The Examiner conceded, however, that Cornell did not describe the
claimed step of establishing an information structure for the document, and
cited Epstein to remedy that deficiency (see id. at 5). Based on the
references’ combined teachings, the Examiner concluded that an ordinary
artisan would have considered it obvious to combine “Epstein with Cornell
DLL, since it would have allowed a user to determine the context based
upon a document hierarchy” (id. at 5-6).
The Examiner also conceded that Cornell did not describe its process
as including the claimed steps of automatically identifying context
information for the detected telephone numbers, or automatically storing that
information, and cited Alexander to address those deficiencies (id. at 5).
Based on the references’ combined teachings the Examiner concluded that
an ordinary artisan would have considered it obvious to combine “Alexander
with Cornell DLL, since it would have allowed a user to receive telephone
calls based upon his/her current context” (id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

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As the Supreme Court has noted, obviousness rejections must be
based on “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
As the Federal Circuit has explained, “[i]n determining whether
obviousness is established by combining the teachings of the prior art, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581
(Fed. Cir. 1995) (internal quotations omitted).
We agree with Appellant that a preponderance of the evidence does
not support the Examiner’s finding that Alexander would have suggested
including, in Cornell’s process, claim 1’s step of automatically identifying
context information for a telephone number detected in a parsed computer
document, based on the information structure of the computer document.
We note that the term “context information” encompasses information
relating not only to a name or identification associated with the detected
telephone number (see Spec. 4), but also the sender, recipient, and/or subject
line of an e-mail in which the number appears (see id. at 10-11).
We acknowledge, as the Examiner found, that Cornell suggests
automatically detecting any instances of telephone numbers in computer
documents:
For instance, when someone enters “555-555-1212” in a
document, a smart tag recognizer could recognize this as a
phone number smart tag, and provide the option to add a new
contact record in Microsoft® Outlook® and fill in the business
field of the new contact record with that phone number.

(Cornell 1.)
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As the Examiner concedes, however, Cornell does not appear to
expressly describe automatically identifying the context information
associated with the telephone numbers based on the documents’ information
structures. We are not persuaded that the Examiner has adequately
explained how Alexander remedies this deficiency.
Specifically, Alexander discloses a “a technique which enables
electronic calendar-driven personal assistant applications to better serve their
users by analyzing the calendar events and calendar information in advance
of receiving an incoming event” (Alexander, col. 3, ll. 6-10). In particular,
Alexander’s process “enables automated, dynamic generation of responses,
using information which has been prepared in advance of receiving an
incoming event, to attempts to contact a calendar owner” (id. at col. 3, ll. 12-
15).
Thus, in one section cited by the Examiner, Alexander explains that
when a calendar user receives a communication, depending on the attributes
of the event scheduled for the user at that time, the system can respond by
providing “(1) information on how to immediately contact the user; (2)
whether, and how often, the user checks electronic mail messages; (3)
whether the user is available for instant messaging; 4) whether, and how
often, the user checks voice mail messages; and (5) an alternative contact
person for the user” (id. at col. 4, ll. 5-10). In another section cited by the
Examiner, Alexander also explains that, for certain events, the system can
provide telephone numbers for individuals that meet with the calendar user
(see id. at col. 18, ll. 35-44; also id. at Fig. 14).
We agree with Appellant, however, that the Examiner has not
adequately explained, with any degree of specificity, how or why
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Alexander’s automated response system for electronic calendar users would
have provided an ordinary artisan with a suitable methodology for
automatically identifying context information for detected telephone
numbers in computer documents, based on the documents’ information
structures, as required by claim 1. We are therefore not persuaded that the
Examiner has adequately explained how or why an ordinary artisan would
have combined Alexander’s system with the smart tag application described
by Cornell, to arrive at the process recited in claim 1, even when viewed in
light of Epstein’s disclosure of creating a hierarchy of contextual models to
allow conversion of speech to text (see Epstein [0026]-[0028]).
Thus, as we are not persuaded that the Examiner has made out a prima
facie case of obviousness as to claim 1 based on Cornell, Alexander, and
Epstein, we reverse the Examiner’s rejection of that claim, and its dependent
claims 5, 7, 8, 12, and 13, over those references.
Claims 2 and 3 both depend ultimately from claim 1. In rejecting
those claims as obvious over Cornell, Alexander, Epstein, and Grant, the
Examiner relied on Grant as evidence that features recited in dependent
claims 2 and 3, but not taught in Cornell, Alexander, and Epstein, would
nonetheless have been obvious to an ordinary artisan (see Ans. 7-8). Thus,
as the Examiner did not point to, nor do we see, any teachings in Grant that
remedy the shortcomings discussed above with respect to the combination of
Cornell, Alexander, and Epstein, we also reverse the rejection of claims 2
and 3 over those references.
Claims 9-11 also depend ultimately from claim 1. In rejecting those
claims as obvious over Cornell, Alexander, Epstein, and Bates, the Examiner
relied on Bates as evidence that features recited in dependent claims 9-11,
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but not taught in Cornell, Alexander, and Epstein, would nonetheless have
been obvious to an ordinary artisan (see Ans. 13-14). Thus, as the Examiner
did not point to, nor do we see, any teachings in Bates that remedy the
shortcomings discussed above with respect to the combination of Cornell,
Alexander, and Epstein, we also reverse the rejection of claims 9-11 over
those references.
In rejecting claims 4, 6, 14-22, and 24 as obvious over Cornell,
Alexander, Epstein, and Giordano, the Examiner cited Giordano as teaching
that telephone number “context information is determined and an icon
identifying the context of the data is added adjacent to the first data” (Ans.
8). Based on these teachings, the Examiner reasoned that an ordinary artisan
would have considered it obvious to combine “Giordano with Cornell DLL,
since it would have allowed a user to receive a visual indication of the
context data” (id. at 9).
We acknowledge, as the Examiner pointed out, that Giordano, similar
to Cornell, provides a method for identifying telephone numbers in web
pages, and that Giordano’s system also iconifies and saves the telephone
numbers (see Giordano, col. 2, ll. 6-35). Again, however, we are not
persuaded that the Examiner has adequately explained how or why Giordano
remedies the shortcomings, discussed above, as to the combination of
Cornell, Alexander, and Epstein, upon which this rejection is ultimately
based. We therefore also reverse the Examiner’s obviousness rejection of
claims 4, 6, 14-22, and 24 over Cornell, Alexander, Epstein, and Giordano.
Claim 23 depends ultimately from claim 14. In rejecting claim 23 as
obvious over Cornell, Alexander, Epstein, Giordano, and Marcjan, the
Examiner relied on Marcjan as evidence that features recited in dependent
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claim 23, but not taught in Cornell, Alexander, Epstein, and Giordano,
would nonetheless have been obvious to an ordinary artisan (see Ans. 14-
15). Thus, as the Examiner did not point to, nor do we see, any teachings in
Marcjan that remedy the shortcomings discussed above with respect to the
combination of Cornell, Alexander, Epstein, and Giordano, we also reverse
the rejection of claim 23 over those references.
SUMMARY
We reverse each of the Examiner’s rejections.

REVERSED

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