Ex Parte Ho

Patent Trial and Appeal Board

Mar 7, 2016

12040814 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/040,814 02/29/2008
15757 7590 03/09/2016
Qualcomm /Norton Rose Fulbright US LLP
2200 Ross A venue
Suite 3600
Dallas, TX 75201-7932
FIRST NAMED INVENTOR
Junius Ho
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.
82590958 1145
EXAMINER
MITIKU, BERHANU
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
ocpat_uspto@qualcomm.com
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JUNIUS HO
Appeal2014-002739
Application 12/040,814
Technology Center 2100
Before CARLA M. KRIVAK, MICHAEL J. STRAUSS, and
AARON W. MOORE, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--9, 12, 13, 15, 16, and 18-20. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm and enter a new ground of rejection.
Appeal2014-002739
Application 12/040,814
STATEMENT OF THE CASE
Appellant's invention is directed to "techniques for dynamic contact
information" (Spec. Title).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. An apparatus, comprising:
a processor;
a computer-readable storage medium;
a contact entry generation module, executed by the
processor, to create a contact entry and store the contact entry
on the computer-readable storage medium, the contact entry
comprising at least one location-specific information field and
at least one location independent-information field, wherein the
at least one location-independent information field comprises
an indicator of a remote device to provide an update for the at
least one location-specific information field; and
an entry updating module, executed by the processor, to
obtain the update for the at least one location-specific
information field from the remote device indicated by the
indicator in the contact entf'f and upon the occurrence of an
updating condition, the updating condition including a location
change from a first location to a second location greater than a
predetermined distance threshold;
wherein the update to the at least one location-specific
information field corresponds to a current location.
REFERENCES and REJECTION
The Examiner rejected claims 1, 4--9, 12, 13, 15, 16, and 18-20 under
35 U.S.C. § 103(a) based upon the teachings of Wilkins (US 2007/0266156
Al; Nov. 15, 2007) and ofMcGary (US 2007/0072591 Al; Mar. 29, 2007).
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Application 12/040,814
ANALYSIS
Appellant contends the combination of Wilkins and McGary does not
disclose a contact entry module, including at least one location-specific
information field and one location-independent information field, and an
entry updating module that updates at least one location-specific information
field (Br. 31-33). Appellant contends although McGary teaches "updating
the location of subscribers" it does not disclose an indicator providing an
update for at least one location specific field (Br. 32). That is, McGary does
not teach an indicator or a location update from a remote device indicated by
an indicator in the contact entry (Br. 33).
The Examiner finds, however, Wilkens discloses a location-specific
information field and a location-independent information field, which
corresponds to Appellant's Figs 4A-4B (Ans. 5). The Examiner then finds
McGary discloses the rest of the claim features including an entry updating
module that obtains an update from a remote device indicated by an
indicator in the contact entry (Ans. 6-7). Appellant has not rebutted these
findings. We further note the Specification describes an indicator as
follows: "This resource indicator may be in the form of a uniform resource
locator (URL)" or other forms or types of resource identifiers including
addresses associated with SMS messaging (Spec. i-f 20). Contrary to
Appellants assertion that McGary teaches a location update module that
gathers geographic location of a mobile device using a GPS module, thus
there is no need for an indicator of a remote device in order to obtain the
update (Br. 33), paragraphs 27, 28, and 72 of McGary, for example, do not
support Appellants contention. On this record, we find a preponderance of
the evidence supports the Examiner's underlying factual findings and
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Appeal2014-002739
Application 12/040,814
ultimate legal conclusion of obviousness. In light of the arguments
presented, Appellant has failed to clearly distinguish the claimed invention
over the prior art relied on by the Examiner. We therefore sustain the
Examiner's rejection of independent claim 1, and claims 4, 6-9, 12, 13, 15,
and 18-20.
Appellant separately argues claims 5 and 16, asserting McGary does
not teach an "updating condition includes a passage of a predetermined time
interval since receiving a previous update of one of the at least location-
specific information field" (Br. 14). We agree McGary does not teach
updating based on a predetermined time interval. However, paragraph 96 of
Wilkins discloses periodic updates. Thus, one skilled in the art would
understand updates can occur at predetermined times. As this would be an
obvious design choice, we sustain the Examiner's rejection of claims 5 and
16.
Because the fact finding and reasoning relied on by the Board to
sustain the rejection of claims 5 and 16 under 35 U.S.C. § 103(a) differs
from the facts and reasoning relied on by the Examiner, we designate our
affirmance of the rejections of claims 5 and 16 as a new ground of rejection
under 37 C.F.R. § 41.50(b) so as to provide Appellants with a full and fair
opportunity to respond to the thrust of the rejection.
TIME PERIOD
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides Appellant, WITHIN TWO
MONTHS FROM DATE OF THE DESCISION, must exercise one of the
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Appeal2014-002739
Application 12/040,814
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record ....
DECISION
The Examiner's decision rejecting claims 1, 4, 6-9, 12, 13, 15, and
18-20 is affirmed.
The Examiner's decision rejecting claims 5 and 16 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
37 C.F.R. § 41.50(b)
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