Ex Parte O et al

Patent Trial and Appeal Board

Nov 25, 2014

12252349 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PATRICK J. O’SULLIVAN, EDITH H. STERN,
ROBERT C. WEIR, and BARRY E. WILLNER
____________________

Appeal 2012-007482
Application 12/252,349
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

Claimed Subject Matter
The claims are directed to relationship management for contact
staleness. Title. For example, a user of a computerized address book can be
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prompted to take certain actions with contacts with whom there has been no
communication for a designated time. See Spec. ¶¶ 5–6. Claim 1,
reproduced below, is illustrative:
1. A stale contact management method comprising:
storing staleness criteria for contacts in a list of contacts,
wherein the staleness criteria are adjustable by an end user;
applying the stored staleness criteria to a selected contact
to identify a stale contact; and,
prompting the end user to select a desired action with
regard to the identified stale contact.

Rejections
Claims 1–5, 8–12, 14–18, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Smith (US 7,467,126 B2, filed May 13, 2003)
and Mathias (US 7,591,417 B1, filed Dec. 30, 2005). Final Act. 3–13; Ans.
5–15.
Claims 6, 7, 13, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Mathias, and Singh (US 6,490,597 B1, issued Dec.
3, 2002). Final Act. 13–19; Ans. 15–21.

ISSUES ON APPEAL
(1) Did the Examiner err in finding the combination of Smith and
Mathias teaches the “end user” as recited in claim 1? Appeal Br. 7.
(2) Did the Examiner err in finding that the combination of Smith
and Mathias teaches “prompting the end user to select a desired action with
regard to the identified stale contact,” as recited in claim 1? Id.
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(3) Did the Examiner err in relying on Mathias because it is not
analogous art to the claimed invention? See Appeal Br. 8.

ANALYSIS
Issue 1
Appellants argue that the “card issuer” in Mathias is not an “end
user,” as recited in claim 1. Appeal Br. 7. Appellants propose that an end
user “is a consumer of [a] certain product or service.” Id. The Examiner
responds that the card issuer in Mathias uses the card inventory software
program, and thus is an end user of the software product. Ans. 22.
Mathias teaches a card inventory software program that tracks
inventory of cards, e.g., prepaid debit cards, that have an expiration date.
Mathias Abstract, col. 1, ll. 13–20, col. 4, ll. 34–36. “The card inventory
program 121 is accessible by the card issuer via a private network
connection 117, in one embodiment.” Id. col. 3, ll. 63–65. As found by the
Examiner, Ans. 21–22, “[a] user of the card inventory software program is
allowed to enter a staleness parameter that defines how long prior to the
official expiration date the card should be sold,” Mathias col. 4, ll. 34–36.
Appellants do not dispute that “user[s] associated with the card issuer,” id.
col. 5, l. 3, are using the card inventory software program. Appellants
suggest, however, that these users are not “end” users because they are not
consumers using the card products issued by the card issuers. See Appeal
Br. 7 (“In fact, a ‘card issuer’ on its face, issues cards and is thus not an ‘end
user’ who is a consumer of [a] certain product or service.”).
To the extent Appellants argue that a business entity cannot be an
“end” user because consumers use a product or service provided by the
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business, we disagree. Appellants’ Specification does not provide a
definition for an end user. In the absence of such definition or other
evidence to the contrary we agree with the Examiner’s interpretation of an
end user that encompasses the card issuer as user of the card inventory
software program in Mathias. Moreover, even under Appellants’ proposed
construction of end user as “a consumer of [a] certain product or service,”
Mathias’ card issuer is such an end user. The card issuer is repeatedly called
the “user” in Mathias, see, e.g., col. 3, ll. 38–44, col. 4, ll. 34–36, col. 5, l. 3,
and with respect to the card inventory software program, the card issuer is
the consumer and “end user.” Whether the card issuer also has other
products or services that consumers purchase is irrelevant. The consumers
of the card issuer’s products or services are not described as using the card
inventory software program and are not end users of that program.
Therefore, in the absence of sufficient evidence or argument to persuade us
the Examiner’s interpretation is unreasonable in light of the Specification,
we find no error.

Issue 2
Appellants next argue that Mathias does not teach the end user is
prompted to select a desired action with regard to the identified stale contact,
and that Mathias merely teaches prompting the user with a message about
taking only one action. Appeal Br. 7–8.
We agree with the Examiner, see Final Act. 4, that Mathias teaches
“prompting the end user to select a desired action” by describing “[t]he user
is prompted with a message 905 that cards should be marked stale if they
will expire within a period of time defined by the staleness parameter,”
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Mathias col. 11, ll. 29–31. No particular form is specified for the prompt or
selection, and a message followed by a user choosing whether or not to take
an action based on the message meets the limitation under its broadest
reasonable interpretation consistent with the specification. The claim does
not specify that the prompt must contain a choice of multiple alternative
actions or that the prompt must provide a platform for selecting and
performing an action. Moreover, selecting cards to mark as stale is choosing
between marking as stale and not marking as stale.
In addition, as found by the Examiner, Mathias also teaches the two
different actions of marking a card as stale and removing a stale card from
inventory. Ans. 23 (citing Mathias col. 11, ll. 21–31, col. 10, l. 61–col. 11,
l. 2). Appellants assert that the two actions referred to by the Examiner
come from different embodiments in Mathias, so the user does not have a
choice of a desired action. Reply Br. 3, 5. The section cited by the
Examiner explaining the “Program Initiated Staleness Designation” function
teaches a notification that “indicate[s] that the card issuer should remove
[stale cards] from the inventory in accordance with the card issuer’s policy
for destroying stale cards.” Mathias col. 10, ll. 64–66. This same section
also teaches a Graphical User Interface (GUI) for marking cards as stale,
similar to that taught in the section of Mathias discussing the “User Initiated
Staleness Designation.” Compare Mathias col. 11, ll. 5–10 with Mathias
col. 11, ll. 29–35. The Examiner is thus correct that the card inventory
program taught in Mathias prompts the user to select either or both of these
choices, even within a single “embodiment.” Accordingly, Mathias teaches
“prompting the end user to select a desired action” even under the narrow
interpretation of this limitation argued by Appellants.
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Issue 3
Appellants also argue that Smith and Mathias are not analogous art
because they are not both from the field of “List Management.” Appeal Br.
8. Specifically, Appellants assert that Mathias “concerns tracking inventory
of cards that have expiration dates . . . , which has nothing to do with contact
‘list management’.” Id. Appellants do not dispute that Smith is from the
field of “List Management” and is analogous art to the claimed invention.
The Examiner emphasizes that both Smith and Mathias teach storing
records in a database and actions to be performed on those records that are
stale. Ans. 24. We agree with this finding and that these teachings show
that Mathias is at least “reasonably pertinent to the particular problem with
which the inventor is involved.” In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992).
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” Id. In Clay, the Federal
Circuit determined that “[a] person having ordinary skill in the art would not
reasonably have expected to solve the problem of dead volume in tanks for
storing refined petroleum by considering a reference dealing with plugging
underground formation anomalies.” Id. at 660. The court considered the
differences in structure and function of storage tanks and subterranean
formation, in the function of the gel disclosed in the application and prior
art, and in the problems sought to be solved by each. Id. at 659–660.
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Unlike Clay, here there is strong similarity between the structure and
function of Appellants’ subject matter and that of Mathias. Both are
described as identifying stale records stored on a computer system so that
action can be taken with regard to the stale records. Compare, e.g., Spec.
¶ 29 (“The stale contact management logic 400 can include program code
enabled to apply the staleness criteria 270 to one or more contacts in the data
store of contacts 260 in order to identify stale contacts.”) with Mathias col.
10, ll. 51–56 (“Steps of process 800 . . . may be executed on one or more
computer processors. In block 810, the management node determines which
cards are stale . . . .”). Mathias would logically commend itself to one of
ordinary skill in the art considering what to do with a large number of stale
contacts because Mathias teaches managing an unwieldy amount of expiring
cards by tracking them in a database, applying a user-designated staleness
criteria to them, and prompting the user to take some desired action with
regard to the stale cards. Accordingly, we agree with the Examiner that
Mathias is analogous art to Appellants’ claimed invention.

CONCLUSION
The Examiner did not err in finding that the combination of Smith and
Mathias teaches the “end user,” as recited in claim 1.
The Examiner did not err in finding that the combination of Smith and
Mathias teaches “prompting the end user to select a desired action with
regard to the identified stale contact,” as recited in claim 1.
The Examiner did not err in relying on Mathias because it is
analogous art to the claimed invention.
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Accordingly, we sustain the rejection of claim 1. Appellants do not
present separate arguments as to independent claims 9 and 14, or as to
dependent claims 2–8, 10–13, and 15–21. Appeal Br. 4–5, 9. We sustain
the rejection of these claims for the same reasons.

DECISION
Upon consideration of the record in light of Appellants’ contentions,
we affirm the Examiner’s decision to reject claims 1–21.
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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