Ex Parte Foxenland

Patent Trial and Appeal Board

Nov 5, 2013

11278582 (P.T.A.B. Nov. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ERAL DENIS FOXENLAND
__________

Appeal 2011-011159
Application 11/278,582
Technology Center 2600
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
communications device. The Examiner rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellant identifies the Real Party in Interest as Sony Ericsson
Mobile Communications AB (see App. Br. 3).
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Statement of the Case
Background
The Specification teaches that a “communication device may generate
and maintain a log of the phone numbers identifying the communication
devices with which the communication device communicates” (Spec 1 ¶
0002). According to the Specification, “recency is not necessarily the best
single predictor of the particular phone number that an individual is most
likely to call at any given time from the communication device” (Spec. 1 ¶
0004).
The Claims
Claims 1-22 are on appeal. Claims 1 and 19 are representative and
read as follows (emphasis added):
1. A communication device comprising:
a memory to store a first call log including a plurality of
communication identifiers corresponding to a plurality of party
identifiers related to call activity of the communication device,
wherein at least two of the plurality of communication
identifiers correspond to a single party identifier of the plurality
of party identifiers;
logic configured to generate, based on the first call log, a
first call list including a first set of party identifiers, of the
plurality of party identifiers, arranged in an order based on call
frequency information respectively associated with the first set
of party identifiers, wherein the first set of party identifiers
includes the single party identifier, and the call frequency
information for the single party identifier includes the call
activity related to each of the at least two of the plurality of
communication identifiers; and
a display to display at least a portion of the first call list.

19. A computer readable medium that stores instructions
executable by a processing device operating in a
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communication terminal, the computer readable medium
comprising;
instructions to determine a probability that a particular
party identifier corresponding to at least two communication
identifiers, of a plurality of communication identifiers stored in
a memory of the communication terminal, will be selected for
communication, by a user of the communication terminal, from
a plurality of party identifiers corresponding to the stored
communication identifiers, wherein the probability is based on
past communications initiated to each of the at least two of the
stored communication identifiers; and
instructions to order at least two party identifiers, of the
plurality of party identifiers, based on the probabilities
determined for the at least two party identifiers, wherein the at
least two party identifiers include the particular party identifier.

The issues

A. The Examiner rejected claims 19-22 under 35 U.S.C. § 103(a) as
obvious over Harless2 and Levy3 (Ans. 4-6).
B. The Examiner rejected claims 1-7 and 10-18 under 35 U.S.C. § 103(a)
as obvious over Kreitzer4 and Levy (Ans. 6-11).
C. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Kreitzer, Levy, and Borngräber5 (Ans. 11-12).
D. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as obvious
over Kreitzer, Levy, and Bocking6 (Ans. 12-13).

2 Harless et al., US 6,084,954, issued Jul. 4, 2000.
3 Levy et al., US 2007/0064908 A1, published Mar. 22, 2007.
4 Kreitzer, S., US 2004/0192270 A1, published Sept. 30, 2004.
5 Borngräber et al., US 7,215,881 B2, issued May 8, 2007.
6 Bocking et al., US 7,280,652 B2, issued Oct. 9, 2007.
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Since the same issue is dispositive for each of these rejections, we will
consider them together.
The Examiner finds that Harless teaches the elements of claims 1 and
19, except that Harless does not teach “a particular party identifier
corresponding to at least two communication identifiers” (Ans. 4).
Similarly, the Examiner finds that Kreitzer teaches the elements of claims 1
and 19, but finds that Kreitzer “does not disclose the method, wherein at
least two of the plurality of communication identifiers correspond to a single
party identifier of the plurality of party identifiers” (id. at 7).
For each of the rejections, the Examiner relies upon Levy to teach “a
particular party identifier corresponding to at least two communication
identifiers” (id. at 4).
The Examiner finds it obvious to “to make or receive a call from the
plurality of communication identifiers correspond to a single party as taught
by Levy in Harless, in order to manage the plurality of communication
identifiers correspond to a single party identifier” (id. at 5; cf. Ans. 7).
The issue with respect to each of the rejections is: Does the evidence
of record support the Examiner’s conclusion that Harless or Kreitzer, in
view of Levy, render obvious a call list “arranged in an order based on call
frequency information respectively associated with the first set of party
identifiers, wherein the . . . call frequency information for the single party
identifier includes the call activity related to each of the at least two of the
plurality of communication identifiers” as required by claim 1?

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Findings of Fact
1. The Specification teaches that the
Communication identifier field 320 may include
information that identifies a communication device
associated with a destination or a source of a call
respectively placed or received by communication device
100. For, example, identifier field 320 may include
information, such as a phone number, an e-mail address,
etc., that uniquely identifies a communication device.

(Spec. 10 ¶ 0054.)
2. The Specification teaches that “the most frequently called
communication identifier may be listed as first in the call list even when
calls to any number of other communication identifiers have been made
since the last call to the most frequently called communication identifier.”
(Spec. 13 ¶ 0061.)
3. The Specification teaches that “two or more of the multiple
communication identifiers associated with ‘JULIE’ (i.e., 555-555-1234, 555-
555-8901, 555-555-9012, etc.) may be considered as a single
communication identifier for purposes of ordering the entries” (Spec. 16 ¶
0071).
4. Harless teaches that a “system 240 for predicting a future
communication event pertaining to the PDA 110 is embodied in the data
processing and storage circuitry 115” (Harless, col. 4, ll. 54-56).
5. Harless teaches that the “predicting logic 260 examines a
current communication event and predicts the future communication event
based on both the current communication event and the correlation”
(Harless, col. 5, ll. 2-4).
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6. Harless teaches that “[p]ast communication event information,
for instance, incoming numbers and outgoing numbers, are stored in the
database 220” (Harless, col. 5, ll. 15-17).
7. Harless teaches that “the correlating logic 250 relates a plurality
of earlier communication events to a plurality of later communication
events. The correlating logic 250 may thus more accurately determine the
user’s communication pattern” (Harless, col. 5, ll. 46-50).
8. Harless teaches that:
The predicting logic 260 then takes a current
communication event, the incoming number, and predicts a
future communication event, the outgoing number. The
predicting logic 260 makes this prediction based on the
incoming number and the associated correlation in the
probability matrix 255.
The predicting logic 260 then sends, in this
embodiment, an ordered list of outgoing numbers to the
retrieval circuitry 270, which then displays the outgoing
numbers on the display of the communication station 100.

(Harless, col. 5, ll. 55-64.)
9. Harless teaches that by “predicting the future communication
event, the present invention allows the communication station 100 to provide
its user with greater convenience and ease of use and, also, reduces the cost
of the device” (Harless, col. 6, ll. 2-6).
10. Kreitzer teaches a method “of forming a hotlist in a portable
communication device comprises the steps of tracking calls made from the
portable communication device, maintaining a recent call list, and reordering
the recent call list using entries stored in association with other programs
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within the portable communication device to provide the hotlist” (Kreitzer 1
¶ 0007).
11. Kreitzer teaches that the “method can further include the steps
of tracking frequent calls and promoting the frequent calls in the hotlist
based on at least one among the frequency of the frequent calls” (Kreitzer 1
¶ 0007).
12. Kreitzer teaches that the “processor can be further programmed
to track frequent calls and promote the frequent calls in the hotlist based on
at least one among a frequency of the frequent calls, a timeframe of the
frequent calls” (Kreitzer 1 ¶ 0008).
13. Kreitzer teaches that the “processor 12 and/or prediction engine
26 can be programmed to track frequent calls and promote the frequent calls
in the hotlist based on at least one among the frequency of the frequent calls
(see ‘Overall Counter’ column)” (Kreitzer 2 ¶ 0019).
14. Kreitzer teaches that the “the phone can keep a scratchpad
memory to track numbers called most often between 5-6 PM or between any
given time period . . . and these frequently called numbers can be
incrementally promoted to the top of the hotlist as the 5 o’clock hour
approaches or any given incremental hour approaches” (Kreitzer 2 ¶ 0023).
15. Levy teaches a “telecommunications device includes a
telephony controller; a contacts controller, said contacts controller
configured to maintain a plurality of contact telephone numbers for
individual contacts” (Levy, abstract).

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Principles of Law
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be 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)
citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Analysis
Harless or Kreitzer reasonably teaches a communications device
which creates a call list arranged in order of call frequency based on
communication identifiers, as Kreitzer teaches that a “method can further
include the steps of tracking frequent calls and promoting the frequent calls
in the hotlist based on at least one among the frequency of the frequent
calls” (Kreitzer 1 ¶ 0007; FF 11; cf. Harless, FF 8). The issue is whether
Levy’s teaching of a “contacts controller configured to maintain a plurality
of contact telephone numbers for individual contacts” (Levy, abstract; FF
15) provides a reason to modify either Harless or Kreitzer so that the “call
frequency information for the single party identifier includes the call activity
related to each of the at least two of the plurality of communication
identifiers” as required by claims 1 and 19.
Appellant contends that “the Examiner has not explained how
KREITZER’s hotlist, based on call frequency, would take into account
multiple contact telephone numbers associated with an individual contact”
(App. Br. 42-43). Appellant “submits that the Examiner’s allegation that
KREITZER’s hotlist would necessarily be based on past communications
initiated to each of the multiple contact telephone numbers-as opposed to
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considering them individually-is based on impermissible hindsight, using
Appellant’s disclosure” (App. Br. 43).
The Examiner finds that “it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to incorporate the
teaching of LEVY into [the] teaching of KREITZER for the purpose of
managing a plurality of communication identifiers [that] correspond to a
single party identifier by storing these data in the communication terminal”
(Ans. 22; Also see Ans. 16-17 for Harless and Levy motivation statement).
We find that Appellant has the better position. The Examiner
provides the conclusory result, that the combinations of either Kreitzer or
Harless with Levy would have been obvious, but provides no specific reason
why the ordinary artisan would have had any incentive or rationale to
incorporate multiple different numbers associated with a single individual as
taught by Levy (FF 15) into the hotlist of Kreitzer (FF 10-14) or the
predicting logic of Harless (FF 4-9). It is not sufficient to demonstrate that
each of the components is known. See KSR, 550 U.S. at 418 (“a patent
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art”). Without a reason, incentive, rationale or other basis for
combining the disclosures, we are constrained to agree with Appellant that
the combination “is based on impermissible hindsight” (App. Br. 43).
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Harless or Kreitzer, in view of Levy, render obvious a call list “arranged
in an order based on call frequency information respectively associated with
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the first set of party identifiers, wherein the . . . call frequency information
for the single party identifier includes the call activity related to each of the
at least two of the plurality of communication identifiers” as required by
claim 1, or the corresponding limitation of claim 19.
SUMMARY
In summary, we reverse the rejection of claims 19-22 under 35 U.S.C.
§ 103(a) as obvious over Harless and Levy.
We reverse the rejection of claims 1-7 and 10-18 under 35 U.S.C. §
103(a) as obvious over Kreitzer and Levy.
We reverse the rejection of claim 8 under 35 U.S.C. § 103(a) as
obvious over Kreitzer, Levy, and Borngräber.
We reverse the rejection of claim 9 under 35 U.S.C. § 103(a) as
obvious over Kreitzer, Levy, and Bocking.

REVERSED

cdc