11948456 (P.T.A.B. Mar. 27, 2017)

Ex Parte Guedalia et al

Patent Trial and Appeal BoardMar 27, 2017

11948456 (P.T.A.B. Mar. 27, 2017)

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. 11/948,456 11/30/2007 Jacob Guedalia QCl 10365U2 2773 12371 7590 03/29/2017 Mnnrv rre.issle.r Olrk & T owe P P /OT TAT POMM EXAMINER 4000 Legato Road, Suite 310 Fairfax, VA 22033 NEALON, WILLIAM ART UNIT PAPER NUMBER 2643 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): meo.docket@mg-ip.com meo@mg-ip.com ocpat_uspto@qualcomm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACOB GUEDALIA and ISAAC DAVID GUEDALIA Appeal 2016-006272 Application 11/948,4561 Technology Center 2600 Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1, 3—5, 12—14, 15, 18, and 21.2 Claims 2, 6, and 11 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellants’ arguments in the Appeal Brief and Reply Brief, and the Examiner’s response to Appellants’ arguments. We are persuaded by Appellants’ contention that the Examiner erred in rejecting independent claims 1, 15, 18, and 21 under 35 U.S.C. § 103(a) because 1 Appellants identify QUALCOMM Incorporated as the real party in interest. App. Br. 3. 2 The Examiner has allowed claims 7—10, 16, 17, 19, 20, 22, and 23, which are not before us. Appeal 2016-006272 Application 11/948,456 Chesnais3 does not teach or suggest replacing the cached contact information in a specified order “wherein the specified order is based on a predefined priority associated with the cached contact information,” as recited in claim 1, and as similarly recited in claims 15, 18, and 21. App. Br. 8—12; Reply Br. 2-5.4 The Examiner acknowledges “Hinrikus ’2085 doesn’t recite the specific language of ‘replacing the cached contact information in a specified order, wherein the specified order is based on a predefined priority associated with the cached contact information,”’ as recited in claim 1. Final Act. 6; Ans. 3. The Examiner finds, however, that Chesnais teaches or suggests the disputed limitation—“where the replacing the cached contact information, or synchronization, is generally described (Col: 13, Ln:30-52) and where the contact information can be filtered, organized, sorted and prioritized based on user configuration parameters.” Ans. 3^4 (citing Chesnais 13:44—45, 17:25—27, 19:30-37 and 60-62, 20:15—22; Figs. 1, 12, and 13); see also Final Act. 6. We have reviewed Chesnais, including the portions cited by the Examiner, and agree with Appellants’ arguments that Chesnais does not teach or suggest replacing cached contact information in a specified order “wherein the specified order is based on a predefined priority associated with the cached contact information,” as recited in claim 1, and as similarly recited in claims 15, 18, and 21. App. Br. 9—11; Reply Br. 2—5. Although 3 Chesnais et al. (US 7,620,404 B2; issued Nov. 17, 2009). 4 We note the pages following page 1 of the Reply Brief are not numbered. Thus, we consider the pages to be numbered sequentially after page 1. 5 Hinrikus et al. (US 2008/0056208 Al; published Mar. 6, 2008). 2 Appeal 2016-006272 Application 11/948,456 the Examiner finds, and we agree, Chesnais teaches “contact information can be filtered, organized, sorted and prioritized based on user configuration parameters” (see Ans. 3—4), we agree with Appellants’ arguments that: simply because contact information can allegedly be prioritized does not mean that, when cached, it is replaced “in a specified order . . . based on a predefined priority associated with the cached contact information.” There is simply no disclosure or suggestion in Chesnais that “cached contact information” is replaced “in a specified order . . . based on a predefined priority associated with the cached contact information.” Reply Br. 4; see also App. Br. 9—11. In particular, regarding Chesnais’ teaching of a server transmitting a list of proximate users to the mobile device (see 6:13—27), which the Examiner finds is prioritized by proximity (see Ans. 3), we agree with Appellants’ argument that “[e]ven if a first ‘list of proximate users’ were replaced by a second ‘list of proximate users’ . . . there is simply no disclosure or suggestion in Chesnais that the second ‘list of proximate users’ would replace the first ‘list of proximate users’ ‘in a specified order’ based on the proximity / priority of the users in the second list of proximate users.’” Reply Br. 2. Regarding Chesnais’ teachings of “prioritizing contacts” (i.e., vCards) based on “the method . . . preferred by that contact” (see 17:19—27) and automatically updating the cached vCards “on a periodic or anecdotal basis” (see 25:50-59), we agree with Appellants’ argument: There is simply no disclosure or suggestion in Chesnais that “[t]he vCards . . . being automatically updated such as on a periodic or anecdotal basis” has anything to do with the priority of the contacts, much less that the vCards are updated “in a specified order,” where “the specified order is based on a 3 Appeal 2016-006272 Application 11/948,456 predefined priority associated with the cached contact information.” App. Br. 11; Reply Br. 3. Accordingly, the Examiner’s finding that Chesnais teaches or suggests the disputed limitation of claims 1, 15, 18, and 21 is in error because it is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is by a preponderance of the evidence). Thus, we do not sustain the rejection of independent claims 1, 15, 18, and 21. For the same reasons, we do not sustain the rejection of claims 3—5 and 12—14, which depend from claim 1. DECISION We reverse the Examiner’s rejection of claims 1, 3—5, 12—14, 18, and 21. REVERSED 4