Ex Parte Quiroz-Castro

Patent Trial and Appeal Board

Jul 27, 2016

11930325 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111930,325 10/31/2007
10949 7590 07/29/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Carlos Quiroz-Castro
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.
042933/407231 9728
EXAMINER
HOLLAND, SHERYLL
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS QUIROZ-CASTRO
Appeal2015-000734
Application 11/930,325
Technology Center 2100
Before JOHNNY A. KUMAR, MONICA S. ULLAGADDI, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-20, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Nokia Corporation.
App. Br. 2.
Appeal2015-000734
Application 11/930,325
INVENTION
Appellant's invention relates to the creation of transient phonebook
contacts. Abstract. Claim 1 is illustrative and reads as follows:
1. A method comprising:
causing a contact database to be maintained in a memory
of a user device;
searching the contact database for at least one contact
entry;
detecting an expiration flag associated with the at least one
contact entry, wherein the expiration flag is established by a user
of the user device in the contact database;
comparing the expiration flag to a current date; and
causing the contact entry to be removed from the contact
database if the expiration flag is older than the current date.
REJECTIONS
Claims 1--4, 11, 12, 14, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Deeds (US 2006/0281407
Al; published Dec. 14, 2006) and Ku et al. (US 2008/0311888 Al;
published Dec. 18, 2008) ("Ku").
Claims 5, 6, 10, 13, 15, 16, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Deeds, Ku, and Scian et al.
(US 2008/0222118 Al; published Sept. 11, 2008).
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination Deeds, Ku, and Novick et al. (US
2008/0167014 Al; published July 10, 2008) ("Novick").
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Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Deeds, Ku, and Creamer et al. (US 2006/0136517 Al;
published June 22, 2006).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Deeds and Novick.
ANALYSIS
We have considered Appellant's arguments, but do not find them
persuasive of error. We agree with and adopt as our own the Examiner's
findings of facts and conclusions as set forth in the Answer and in the Action
from which this appeal was taken, to the extent consistent with our analysis
below. We provide the following explanation for emphasis.
In rejecting representative claim 1, the Examiner found that Deeds
teaches or suggests all of the limitations of claim 1, except the limitation
"wherein the expiration flag is established by a user of the user device in the
contact database," for which the Examiner relied on Deeds in combination
with Ku. Final Act. 3-5.
Appellant contends that each of Deeds and Ku teaches away from the
claimed invention. App. Br. 7. Specifically, Appellant argues that Ku is
silent with regard to removal of a contact from a contact database and
teaches the opposite of removing an expired contact entry because Ku
enables a service upon a specified date. Id. Appellant further argues that
"[c]ontrolling contact information on another user's device as described in
Deeds actually limits the control the user of a device has of the device," and
thus Deeds teaches away from the claimed invention. Id. at 7-8.
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We do not find Appellant's arguments persuasive. A teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir.
2004 ). Appellant acknowledges that Ku is silent with regard to removal of a
contact from a contact database. App. Br. 7. Moreover, Appellant has not
pointed to any particular disclosure in either Deeds or Ku. See id. at 7-8.
Thus, Appellant has not persuasively shown that either reference actually
criticizes, discredits, or otherwise discourages the solution claimed in the
present application.
Appellant further contends there is no reason to combine Deeds and
Ku. App. Br. 8-9. We are not persuaded of Examiner error. The Examiner
found that "Deeds teaches a method of maintaining a contact database in a
portable device" and "Ku teaches a method of a user adding an expiration
field to a record." Ans. 26. The Examiner further found that "[t]he
combined art yields a contact database housed in a portable device with the
ability to manipulate expiration conditions related to contact information as
described by Ku." Ans. 26 (citing Ku i-f 33). The Examiner concluded that
an artisan of ordinary skill could have combined the teachings of Deeds and
Ku by known methods and produced expected results. Id.
We find that the Examiner provided persuasive articulated reasoning
with rational underpinning for an artisan of ordinary skill to have made the
modification. In paragraph 33, cited by the Examiner, Ku teaches the
desirability of an expiration date for disabling communication modes in
order to provide preferred and optimized multimedia services to users. Ku
i-f 33. Furthermore, we find that it would have been well within the level of
skill of one skilled in the art to combine the known techniques in Deeds and
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Application 11/930,325
Ku to permit a user of the user device to establish an expiration date for
communication-related information as taught by Ku for use in Deed's
contact management database system, in which contacts are removed from
the database once an expiration date has been reached. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill" (citations
omitted)). We are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been "uniquely challenging or difficult for one of ordinary skill
in the art" at the time of Appellant's invention. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). The Examiner's proposed combination is, therefore, supported
by articulated reasoning with some rational underpinning to justify the
Examiner's obviousness conclusion.
Appellant further argues for the first time in Reply Brief that Deeds
and Ku are not analogous art. Reply Br. 3--4. Appellant, however, has
waived this argument because they presented it for the first time in the Reply
Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012);
accord Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(informative opinion) ("[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not."). We note, however, that
prior art is analogous if it is ( 1) from the same field of endeavor regardless
of the problem addressed, or (2) reasonably pertinent to the particular
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Application 11/930,325
problem with which the inventor is involved. Jn re Bigio, 381F.3d1320,
1325 (Fed. Cir. 2004). The analogous art test, then, does not ask whether the
prior art references are analogous to each other as Appellant seems to
suggest (see Reply Br. 3--4), but rather asks whether the references are
analogous to the claimed subject matter. See id.; see In re Kahn, 441 F.3d
977, 986-87 (Fed. Cir. 2006). Here, we see no error in the Examiner's
finding that the cited references pertain to communication assets (Ans. 26}-
functionality that is not only in Appellant's field of endeavor of contact
applications, but also reasonably pertinent to Appellant's problem of
automatically updating and deleting contacts from a contact application.
For these reasons, we are not persuaded that the Examiner erred in
combining the teachings and suggestions of Deeds and Ku.
Appellant also contends the cited portions of Deeds and Ku fail to
teach or suggest the limitation "detecting an expiration flag associated with
the at least one contact entry, wherein the expiration flag is established by a
user of the user device," as recited in claim 1. App. Br. 9. Appellant argues
that, in Deeds, an expiration flag is set by a remote party, not a user. Id.
Appellant further argues that Ku is silent regarding an expiration flag
associated with a contact entry. Id. at 10.
Appellant's arguments do not persuade us of Examiner error. The
Examiner found that Deeds combined with Ku teaches detecting a contact
record expiration flag established by a user. Final Act. 3-5; Ans. 23-24
(citing Deeds i-fi-137, 86, Figs. 2a, 2b, 2c; Ku i-fi-132-33). Appellant attacks
the references individually (see Reply Br. 1-3), even though the Examiner
relies on the combination of Deeds and Ku as teaching or suggesting the
disputed features. Final Act. 3-5; Ans. 23-24. In re Mouttet, 686 F.3d
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1322, 1332-33 (Fed. Cir. 2012) (citing Jn re Keller, 642 F.2d 413, 425
(CCP A 1981 )) ("[T]he test for obviousness is what the combined teachings
of the references would have suggested to those having ordinary skill in the
art.").
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Deeds and Ku teaches or suggests the
disputed "detecting" limitation.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claims 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 11, 14, and 17, which Appellant argues are patentable
for similar reasons. App. Br. 6-10. We also sustain the 35 U.S.C. § 103(a)
rejections of dependent claims 2-10, 12, 13, 15, 16, and 18-20, for which
Appellant makes no additional arguments. Id. at 10-11.
DECISION
The decision of the Examiner to reject claims 1-20 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
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