Ex Parte Chen et al

Patent Trial and Appeal Board

Nov 12, 2014

11316280 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LANG S. CHEN, PETER SKILLMAN, DAVID G. CHAMPLIN,
ROBERT HAITANI, TINA TSENG, and SRIKIRAN PRASAD
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Appeal 2012-007281
Application 11/316,280
Technology Center 2100
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Before JEAN R. HOMERE, JOHNNY A. KUMAR and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 6, 7, 9–12, 14–17, and 19–22. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
In reaching the decision, we have considered only the arguments
Appellants actually raised. Arguments Appellants did not make are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

STATEMENT OF THE CASE
The present invention relates to techniques to manage contact
information. See generally Spec. 1. Claim 1 is exemplary:
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1. A mobile computing device, comprising:
a plurality of modules, including a contact database
management module and a contact search module, wherein the
contact database management module is configured to manage
contact information from multiple and different contact
information databases, the contact information databases
including sets of contact information that each include one or
more contact identifiers;
wherein the plurality of modules operate to:
determine a contact value parameter for at least
some of individual sets of contact information based at
least in part on past use of the sets of contact information
by a user of the mobile computing device, including based
at least in part on which sets of contact information have
been accessed more frequently than other sets of contact
information in a past duration; and
determine a search order list at least in part on the
contact value parameter for at least some of the individual
sets of contact information;
wherein the contact search module is configured to search
the contact information databases in accordance with the search
order list to locate a given set of contact information.

THE REJECTIONS

Claims 16, 17, 19, and 20 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter.
Claims 1, 6, 7, 9–12, 14–17, and 19–22 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Sorvari (US 2006/0035632 A1; Feb. 16,
2006; filed Aug. 16, 2004).

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ISSUE

Under 35 U.S.C. § 102, has the Examiner erred by finding Sorvari
describes
“determine a contact value parameter for at least some of individual
sets of contact information”; and
“determine a search order list at least in part on the contact value
parameter for at least some of the individual sets of contact
information”;
as recited in claim 1?

ANALYSIS

THE NONSTATUTORY REJECTION

Because Appellants waived arguments against the Examiner’s
rejection, we summarily sustain the Examiner’s rejection of claims 16, 17,
19, and 20 under 35 U.S.C. § 101.

THE ANTICIPATION REJECTION

On this record, we find the Examiner did not err in rejecting claim 1.
Appellants assert Sorvari does not disclose “determin[ing] a contact
value parameter for at least some of individual sets of contact information.”
See App. Br. 6–8; see also Reply Br. 4–5. Appellants contend Sorvari’s
selection criteria and weighting factors are not determined for at least some
individual sets of contact information, and establishing selection criteria is
not determining a contact value parameter for a set of contact information.
See App. Br. 6–8; see also Reply Br. 4–5. Appellants argue Sorvari does not
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teach a search order list as required by claim 1. See App. Br. 8–9; see also
Reply Br. 5–7.
We disagree with Appellants’ arguments (App. Br. 6–9; Reply Br. 4–
8), and agree with and adopt the Examiner’s findings and conclusions on
pages 15–18 of the Answer as our own. Therefore, we limit our discussion
to the following points for emphasis.
First, the Examiner correctly finds Sorvari teaches determining
(mapped to Sorvari’s specifying) a contact value parameter (mapped to
Sorvari’s frequency of the communication events) for at least some of
individual sets of contact information (mapped to Sorvari’s contacts that are
affiliated with the communications events). See Ans. 15–17; Sorvari [9]
(“This may involve specifying a frequency of the communication events for
each of the contacts that are affiliated with the communication events, where
maintaining the set(s) of selectable contact identifiers includes maintaining
an adaptive recipient history list(s) corresponding to the contacts that are
affiliated with the communication events that correspond to the specified
frequency in which these communication events occur.”) (emphasis added).
The Examiner correctly finds the interpretation is consistent with the
claim, which states:
determine a contact value parameter for at least some of
individual sets of contact information based at least in part on
past use of the sets of contact information by a user of the
mobile computing device, including based at least in part on
which sets of contact information have been accessed more
frequently than other sets of contact information in a past
duration.
See Ans. 15–16, Claim 1. The Examiner’s interpretation is also consistent
with the Specification, which states:
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the contact value parameter may be used to implement a set of
statistical assumptions or probabilities regarding the relative
value of the associated contact information. For example, one
assumption may be that contact information that has been
frequently accessed on a historical basis may have a higher
likelihood or probability of being accessed in the future.
Consequently, CDMM 408 may define and use contact value
parameter implemented as a frequency based value.
Spec. [43].
Second, the Examiner correctly finds Sorvari determines a search
order list at least in part on the contact value parameter for at least some of
the individual sets of contact information. See Ans. 17–18; Sorvari [0076]
(“where weighting factors are provided to present the adaptive list 706A/B
according to the contacts exhibiting the highest communication frequency,
the reduced list of contacts in the adaptive list 706B is presented in a
decreasing order of communication frequency from top to bottom. This
allows the user to scroll to the most frequently used contact with the fewest
keystrokes or other VI manipulations[.]”) (emphasis added). Because the
Specification does not provide a special definition of “a search order list”
(see, e.g., Spec. [50]–[51]) the Examiner reasonably interprets the term to
encompass Sorvari’s disclosure.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 6, 7, 9–12, 14–17, and 19–22 for similar reasons.

DECISION
The Examiner’s decision (1) rejecting claims 16, 17, 19, and 20 under
35 U.S.C. § 101, and (2) rejecting claims 1, 6, 7, 9–12, 14–17, and 19–22
under 35 U.S.C. § 102 is affirmed.
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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

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