Ex Parte Kraft et al

Patent Trial and Appeal Board

Dec 18, 2014

11618078 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTIAN KRAFT and PETER DAM NIELSON
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Appeal 2012-009545
Application 11/618,078
Technology Center 2600
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Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–8, 10–17, and 19–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is Nokia Corp. (App. Br.
1.)
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Application 11/618,078

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STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to user interfaces in mobile devices.
(Spec. ¶¶ 1–2.)2 Specifically, Appellants claim systems and methods for
presenting contact information to a user based on the use pattern of the
contact information for the respective communication type (e.g., voice call,
SMS, email, etc.). (Id. ¶¶ 6–8.) Claims 1, 11, and 21 are the independent
claims on appeal. Claim 1 is illustrative of Appellant’s invention and is
reproduced below:
1. An apparatus comprising:

a communication type detection unit configured to detect
a type of communication of the apparatus;

a memory configured to record a use pattern of contact
information for a respective communication type; and

a processor connected to the communication type
detection unit and the memory, the processor being configured
to identify and store information related to a contact from a
contact list in the apparatus, analyze the said information,
enable a user to select a contact from a list of contacts, and in
response to the selection of the contact from the list of contacts
propose a contact detail most likely to be used based on an
analyzed use pattern for the communication type with the
contact selected by the user.

(App. Br. 8.)

2 Our decision refers to Appellants’ Appeal Brief filed March 14, 2012
(“App. Br.”); the Examiner’s Answer mailed April 11, 2012 (“Ans.”);
Appellants’ Reply Brief filed June 5, 2012 (“Reply Br.”); the Final Office
Action mailed October 20, 2011 (“Final Act.”); and the original
Specification filed December 29, 2006 (“Spec.”).
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Claims 1–8, 10–17, and 19–22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Sorvari (US 2006/0035632
A1, February 16, 2006). (Ans. 4–11.) Based on Appellants’ arguments, the
issue on appeal is whether Sorvari teaches or suggests “in response to the
selection of the contact from the list of contacts propos[ing] a contact detail
most likely to be used based on an analyzed use pattern for the
communication type with the contact selected by the user,” as the claims
require. (App. Br. 3–7.)

ANALYSIS
In rejecting Appellants’ independent claims 1, 11, and 21, the
Examiner relies on Sorvari.3 (Ans. 4.) Specifically, the Examiner finds
Sorvari discloses all the claim limitations except for proposing a contact
detail (e.g., a specific email address) most likely to be used for a given
contact and communication type (e.g., email). (Id. at 6.) However, the
Examiner finds that Sorvari teaches using adaptive lists of contact names
based on frequency of communication and it would have been obvious to
apply this teaching to contact details. (Id. at 7–8.)
Appellants dispute the Examiner’s findings and conclusions regarding
Sorvari. (App. Br. 3–7.) Specifically, Appellants argue that Sorvari solves a
different problem than the claimed invention, namely presenting a weighted
contact list to avoid having users scroll through a long list to find a particular
contact. (Id. at 5.)

3Appellants argue independent claims 1, 11, and 20 as a group. (App. Br. 3–
7.) We generally agree the disputed limitations are similar for purposes of
Appellants’ arguments. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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We are not persuaded by Appellants’ arguments. “If a person of
ordinary skill can implement a predictable variation [of the prior art], § 103
likely bars its patentability.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417 (2007). Moreover,
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.

Id. at 421.
Here, the Examiner finds the only difference between Sorvari and the
disputed limitation is that Sorvari applies frequency of use weighting to the
entire contacts list based on a communication type (e.g., email), while
Appellants apply the weighting to the contact details list for each contact
name. (Ans. 15–16 (citing Sorvari ¶ 76); see also App. Br. 5) We agree
with these findings. For example, Sorvari shows a list of contacts for email
in which the most frequently contacted contact is shown at the top of the list.
(Sorvari ¶ 74 & Fig. 6B.) Once the contact “NAME-V” is selected, an
unweighted list of possible emails for NAME-V is presented. (Id. ¶ 74 &
Fig. 6C.) By contrast, as shown in Appellants’ Figures 6B–C, the
unweighted contact list is presented and, for example, once the contact Anna
Adams is chosen, her contact details are displayed with work phone 630
presented first as the most likely contact to be used for Anna Adams. (Spec.
¶ 34 & Fig. 6B-C.) Thus, as the Examiner finds, the difference between
Sorvari and the disputed limitation is which list in the hierarchy to sort by
frequency of use. (Ans. 16.)
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Moreover, although Sorvari and Appellants’ disputed limitation only
differ as to which list within the menu hierarchy to apply the frequency of
use weighting to—“contacts” or “contact details”—the Examiner points out
various suggestions in Sorvari that weighting based on use can be assigned
to the specific contact details “such as specific email addresses” (Ans. 16–
17):

For example, an adaptive list may be based on the frequency of
a text messaging communication type, a multimedia messaging
communication type, voice call communication type, or others,
including any combination thereof.

(Sorvari ¶ 9; see also id. ¶ 110.)
Based on these findings, which we agree with, the Examiner
concludes it would have been obvious to one of ordinary skill from Sorvari’s
teachings that any sorting criteria applied to a list on one level of the menu
hierarchy may easily be applied to any other list lower or higher in the menu
hierarchy. (Ans. 17.) Appellants argue it would not have been obvious to
apply Sorvari’s teachings to the problem of multiple contact details, which
“has not even been known before since users have not had multiple contact
details for a specific communication type.” (App. Br. 6.) We disagree. As
the Examiner points out (Ans. 12–13), Sorvari includes the example of two
email addresses for one contact name. (Sorvari ¶ 74 (“This allows the user
to select among a plurality of e-mail addresses for the selected contact . . . .”)
& Fig. 6C.) Accordingly, based on the evidence of record, we agree that
Sorvari teaches “in response to the selection of the contact from the list of
contacts propos[ing] a contact detail most likely to be used based on an
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analyzed use pattern for the communication type with the contact selected by
the user,” as required by claim 1. See KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 11, and 21. With respect to the dependent claims 2–8, 10, 12–17,
19–20, and 22, Appellants make no separate patentability arguments.
Therefore, we sustain the rejections of these claims as well. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).

DECISION
We affirm the Examiner’s final rejection of claims 1–8, 10–17, and
19–22.
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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