Ex Parte Balasaygun et al

Patent Trial and Appeal Board

Mar 11, 2016

12397452 (P.T.A.B. Mar. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/397,452 0310412009
48500 7590 03/15/2016
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Mehmet C. Balasaygun
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4366JKH-23 8181
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHMET C. BALASAYGUN, MATT JEROME STEVENS, and
AL BAKER
Appeal2013-005136
Application 12/397,452
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-14 and 16-20.3 We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Aug. 9,
2012), the Final Office Action ("Final Act.," mailed March 5, 2012), and the
Examiner's Answer ("Ans.," mailed Oct. 23, 2012).
2 Appellants identify the real party in interest as Avaya Inc. Br. 2.
3 Claim 15 is canceled. Id. at 21, Claims App.
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Application 12/397,452
CLAIMED INVENTION
Appellants' claimed invention is directed to "a predictive mechanism
for organizing contact information ... based on call history information
and/or data stored in an enterprise database." Spec. 2:9--12.
Illustrative Claim
1. A method of organizing information about two or more users,
compnsmg:
receiving, at a communication device of an operating
user, information about a first user and a second user;
determining, by a processor, based on call history and
stored data, that the operating user is about to initiate a
communication session with the first user and second user;
determining that the operating user is dialing the first
user and not the second user;
rendering a first user element for displaying at least a
portion of the information about the first user in a user contact
list;
rendering a second user element for displaying at least a
portion of the information about the second user in the user
contact list;
retrieving contact history information from a contact log;
and
organizing, by the processor, the first and second user
elements in the user contact list based on the retrieved contact
history information, wherein the second user element is
positioned higher than the first user element in the organized
user contact list because the second user is not being dialed by
the operating user.
Br. 18, Claims App.
Farnham
Katragadda
Prior Art Relied Upon
US 2008/0222170 Al
US 7,685,144 Bl
2
Sept. 11, 2008
Mar. 23, 2010
Appeal2013-005136
Application 12/397,452
REJECTIONS ON APPEAL
Claims 1-11 and 16-20 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 1-11 and 16-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Farnham and Katragadda.
Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Farnham.
ANALYSIS
Indefiniteness Rejection
The Examiner rejects claims 1-11 and 16-20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Final Act. 2. With regard to the limitation "determining, by a processor,
based on call history and stored data, that the operating user is about to
initiate a communication session with the first user and second user;"
[t]he Examiner asserts that there is no possible way to know for
a fact that someone is about to initiate a communication session
solely based upon call history and stored data. Even if a call
history has recorded a history of a user placing a call at the same
exact time every day for an extended period of time a
determination that a person is about to make a call at that same
time tomorrow can still only be a prediction, at best, unless the
user had specifically indicated or pointed out that they will
initiate that phone call. Otherwise, any determination of when
and/ or who a particular user is about to call or initiate a
communication is only a prediction.
Ans. 3.
Appellants argue the claims are not indefinite because the
Specification provides "mechanism[ s] by which a user has specifically
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Application 12/397,452
pointed out who is about to be called at specific times." Br. 8 (citing Spec.
2:19--25, 4:3-5:15).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citation omitted);
see also Morton Int'!, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed.
Cir. 1993). Claims are generally held to be indefinite only when a person of
ordinary skill in the art cannot determine the bounds of the claims, i.e., the
claims are insolubly ambiguous. Halliburton Energy Services, Inc. v. M-I
LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
Though the term "about to" initiate a communication session is a
relative term, when it is analyzed in light of Appellants' Specification, we
find that the meaning is not insolubly ambiguous or subject to competing
meanings. "For instance, user A may usually conference call with users B,
C, and D around 4:00 p.m. on a daily basis." Spec. 5:4--6. Thus, based on
user A's call history and stored data, when the time is "around 4:00 p.m.
(e.g., within a predetermined amount of time, say 15 minutes)", 4 the
processor determines that user A is "about to" or "intending to"5 initiate a
communication session with users B, C, and D. Similarly, the Examiner
successfully construes the claim for purposes of Examination, asserting that
the example cited by Appellants in the Specification "only describes a
prediction that someone is likely to initiate a communication session with the
4 Specification 5: 10.
5 http://www.collinsdictionary.com/dictionary/english/about-to (last visited
March 4, 2016).
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Application 12/397,452
first and second user." Ans. 4--5 (emphasis added). It is well settled that
claim breadth is not a basis for indefiniteness. 6 However, if a claim is so
broad that it is not supported by the Specification or an enabling disclosure,
a rejection under 35 U.S.C. § 112, first paragraph, would be proper. But the
Examiner does not challenge whether this claim limitation is supported by
the Specification.
Therefore, for the reasons set forth above, we do not sustain the
Examiner's rejection of claim 1-11 and 16-20 under 35 U.S.C. § 112,
second paragraph.
Obviousness Rejections
Independent claim 1
In contesting the rejection of independent claim 1 as obvious over
Farnham and Katragadda, "Appellant[s] do[] not agree with the Examiner's
assertion that Farnham discloses positioning a user in a position of a user
contact list." Br. 9. Appellants argue that "[i]n contrast, Farnham describes
measuring the association of people and visually representing that
association in a social map." Id. (citing Farnham, Fig. 10 and i-f 86).
Although Appellants correctly point to an embodiment in Farnham that
discloses a social map visualization, the Examiner however relies on
"another implementation, [wherein] the visualization may include a list view
in which contacts, groups, and clusters are listed, such as in a text table."
Farnham i-f 115; see Ans. 5.
Farnham is directed to a system for automatically deriving
associations between objects, events, and the context of the computer user or
6 In re Miller, 441F.2d689 (CCPA 1971).
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users. Farnham, Abstract. Farnham's system can be used in people
management (e.g., use analysis of user communications to rank importance
of people to the user, groupings, and associations between people/groups),
and general computer management (e.g., use analysis of user behavior to
identify important objects and objects that are related to a current focus and
context of the computer user). Id. Farnham discloses that objects with
which a user interacts (e.g., people in user's contact list files, buddy list) can
be of different importance or significance to the user. Id. at i-f 43; see also i-f
39 (listing various objects users interact with). According to Farnham, the
importance of an object is determined based on the history of user
interactions with it, such as "the duration of user interactions, the frequency
of interactions, [and] the recency of interactions." Farnham i-f 43; Ans. 5.
The Examiner finds that this importance is represented in Farnham by
ranking between objects. Id. (citing Farnham i-f 53). The also Examiner
finds that "Farnham discloses positioning a second user lower than a first,
[but determines that] Farnham does not explicitly disclose positioning a
second user higher than a first." Ans. 5. "The Examiner asserts that the
manner in which the Appellant chooses to indicate importance in terms of
positioning of user elements is a matter of design choice." Id. at 6.
"Appellant[s] assert[] that it is not an 'obvious matter of design
choice' to position an unengaged user higher than an engaged user in a
contact list." Br. 10. For instance, "the call history and stored data may
determine that an operating user when dialing a first user may wish to
establish communications with a second user in a conference call scenario,"
and "[b ]ecause the second user is not dialed, the method organizes the
second user higher than the first user who is dialed." Id. at 9-10. "Among
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Application 12/397,452
the benefits of organizing users in this manner is convenience of subsequent
dialing in accordance with call history and stored data." Id. at 10.
We are not persuaded of reversible error because Appellants have not
shown persuasively that the claimed positioning of user elements provides
any novel or unexpected results over the prior art. "[D]esign choice may be
an acceptable rationale for an obviousness rejection when a claimed product
merely arranges known elements in a configuration recognized as
functionally equivalent to a known configuration." See In re Kuhle, 526
F.2d 553, 555 (CCPA 1975). That is the case here. As discussed above,
Farnham analyzes user communications to rank importance of people to the
user, and associations between people/groups based on the history of user
interactions. Appellants' claimed modification to the prior art performs the
same function. Appellants have not shown why a second user element
placed above a first user element in a contact list presents a novel and
unexpected result over the second user element being placed below the first
user element, as taught by Farnham. Although we recognize the value of
ranking relevant contacts in proximity to each other for ease of access, we
fail to see how the claimed arrangement presents anything other than a
predictable solution that would be an obvious design choice within the skill
of the art.
Furthermore, Appellants contend that "Farnham fails to disclose the
limitation, 'determining that the operating user is dialing the first user and
not the second user."' Br. 10. In particular, Appellants argue that "Farnham
fails to disclose determining that a second user is not being dialed." Id.
Appellants acknowledge that "[ t ]his determination may be inferred utilizing
the evidence of the tracking information, but [contend that] it is not
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determined. Id. "Determined implies the active consideration of the second
user, and Farnham fails to consider any number other than those called or
received." Id.
We disagree with Appellants' argument. The Examiner finds "that
Farnham discloses the tracking of telephonic communications such as calls
made and calls received." Ans. 6 (citing Farnham i-f 118). Farnham further
discloses that "these tracked telephone numbers are correlated with
telephone numbers stored in the integral address book in the telephone."
Farnham i-f 118. By comparing a dialed number to telephone numbers stored
in the address book database, Farnham teaches or suggests an active
consideration of the users in the database prior to correlating the dialed
telephone number with the matching user. Moreover, Appellants' argument
is not commensurate with the disputed claim language. The claim only
requires a determination that the operating user is dialing the first user. To
the extent that the Specification does not disclose that a user can dial more
than one user at the same time, we agree with the Examiner "that a
determination that a certain telephone number is called is also a
determination that a different telephone number is not being called." Ans. 6.
Appellants further argue
Katragadda detects when input is required and responds by
employing an auto-complete method to provide the data. The
auto-complete function of Katragadda is not determining, by a
processor, based on call history and stored data, that the
operating user is about to initiate a communication session with
the first user and second user. While Katragadda is directed to
matching appropriate input data to data entry fields of an
application, the method is not concerned with the purpose of the
input data. In other words Katragadda does not determine that a
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communication session is about to be initiated[,] it only matches
data to appropriate fields.
Br. 11.
We are not persuaded of reversible error by the Examiner because
Katragadda's teachings are not limited to the embodiment argued by
Appellants. Katragadda discloses that a ranked set of addresses is shown
even if the user enters nothing or enters [a] space in the search
fields of the page provided by the server system (e.g., via the
user's browser), since the ranking module 220 allows the address
book service to infer or otherwise guess the addresses the user is
likely to use, based on recent usage and other hints based on
metadata and user activity (e.g., the "from" IP address indicates
user locality, frequency of use indicates high emotional and use
ranks, context of use), as previously described.
Katragadda 23:62-24:3; see also Ans. 7. Contrary to Appellants'
argument, without any user input, Katragadda determines based on
recent usage, metadata, and user activity (call history and stored data)
that the user is likely to or intends to initiate a communication session
with the inferred users (first and second user) from the address book.
As such, we sustain the rejection of independent claim 1.
Claims 2-6
AJthough Appellants present separate headings contesting each of
clairns 2----6, _.Appellants nevertheless rely on the same arguments discussed
above with respect to claim 1. See Br. 1 l----12. Thus, we sustain the reiection
of claims 2----6 for the reasons provided above.
Claim 7
We have considered Appellants' arguments with respect to claim 7,
but we are not persuaded of reversible error. Vve adopt the Examiner's
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findings and rationale as set forth on pages 7----9 of the Answer as our own.
Thus, we sustain the rejection of claim 7.
Although Appellants present separate headings contesting each of
claims 8-14 and 16-20, Appellants nevertheless rely on the same arguments
discussed above with respect to claim 1. See Br. 13-16. Thus, we sustain
the rejection of claims 8----14 and 16---20 for the same reasons.
DECISION
The decision to reject claims 1-11 and 16-20 under 35 U.S.C. § 112
is REVERSED.
The decision to reject claims 1-14 and 16-20 under 35 U.S.C. § 103
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)(l )(iv).
AFFIRMED
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