11291545 (B.P.A.I. Nov. 24, 2010)

Ex Parte Recio et al

Board of Patent Appeals and InterferencesNov 24, 2010

11291545 (B.P.A.I. Nov. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte RENATO J. RECIO and JOANNE M. SANTIAGO _____________ Appeal 2009-008285 Application 11/291,545 Technology Center 2600 ______________ Before, ROBERT E. NAPPI, MAHSHID D. SAADAT, and MARC S. HOFF, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL1 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008285 Application 11/291,545 This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the Examiner’s rejection of these claims. INVENTION The invention is directed to a device, method, and medium wherein directory information is requested by a wireless device from a service provider, supplied to the wireless device by the service provider, displayed on the wireless device, and selected by the user of the wireless device to place a call to the selected record. See Spec: 1-2. Claim 1 is representative of the invention and reproduced below: 1. A method for obtaining digital phone directory information from a wireless device, said method comprising: sending a request by a user for said digital phone directory information from said wireless device to a phone directory information service provider, said request including location information related to a location for which said user is requesting digital phone directory information, said location information including information related to one or more address elements or descriptions of a physical address or establishment which are input to said wireless device by said user; searching a database at said phone directory information service provider to determine one or more records which include at least a portion of said location information provided by said user; sending said one or more records from said phone directory information service provider to said wireless device for displaying said one or more records on said wireless device in response to said request, said one or more records having at least one telephone number associated with each of said records; and 2 Appeal 2009-008285 Application 11/291,545 enabling said wireless device to respond to a user selection of a selected one of said one or more records displayed on said wireless device to place a telephone call to said selected one of said displayed records. REFERENCES Son US 6,813,502 B2 Nov. 2, 2004 Tanibayashi US 7,010,306 B1 Mar. 7, 2006 (filed Mar. 9, 2001) Alberth, Jr. US 2006/0084414 A1 Apr. 20, 2006 (filed Oct. 15, 2004) REJECTIONS AT ISSUE Claims 1-3, 13-15, and 19 are rejected under 35 U.S.C. § 102(e) as being anticipated by Alberth. Ans. 4-10. Claims 4-5 and 16-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Alberth in view of Son. Ans. 10-12 and 17-22. Claims 6-12 are rejected under 35 U.S.C. §103(a) as being unpatentable over Alberth in view Tanibayashi. Ans. 12-17. ISSUE Claims 1-3, 13-15, and 19 Appellants argue on pages 11-13 of the Appeal Brief that the Examiner’s rejection of claims 1-3, 13-15, and 19 is in error. Appellants select independent claim 1 as representative of the group comprising claims 1-3 and 13-15. App. Br. 13. Independent claim 19 contains similar 3 Appeal 2009-008285 Application 11/291,545 limitations to claim 1. Appellants argue that independent claims 1 and 19 require that multiple records are displayed and that a record is selected from a listing of the displayed records. App. Br. 12-13. Therefore, Appellants argue that Alberth does not disclose the limitations set forth in independent claims 1 and 19. Thus, with respect to claims 1-3, 13-15, and 19, Appellant’s contention presents us with the issue: Did the Examiner err in finding that Alberth discloses the limitations set forth in independent claims 1 and 19? Claims 4-5 Appellants argue on page 13 of the Appeal Brief that the Examiner’s rejection of claims 4-5 is in error. Claims 4-5 are dependent upon claim 1. Appellants argue that these claims are allowable based upon their dependency on independent claim 1 and since Son does not make up for the deficiencies found in Alberth. App. Br. 13. Thus, with respect to claims 4- 5, Appellants’ contentions present us with the same issue as claim 1. Claims 6-12 Appellants argue on pages 13-14 of the Appeal Brief that the Examiner’s rejection of claims 6-12 is in error. Claims 6-12 are dependent upon claim 1. Appellants argue that these claims are allowable based upon their dependency on independent claim 1 and since Tanibayashi does not make up for the deficiencies found in Alberth. App. Br. 13. Thus, with respect to claims 6-12, Appellants’ contentions present us with the same issue as claim 1. 4 Appeal 2009-008285 Application 11/291,545 Claims 16-18 Appellants argue on pages 14-15 of the Appeal Brief that the Examiner’s rejection of claims 16-18 is in error. Appellants select independent claim 16 as representative of the group comprising claims 16- 18. Independent claim 16 contains similar limitations to claim 1 and Appellants make the same arguments with respect to claim 16 as with respect to claim 1. App. Br. 14-15. Additionally, Appellants argue that Son does not make up for the deficiencies found in Alberth. App. Br. 15. Thus, with respect to claims 16-18, Appellants’ contentions present us with the same issue as claim 1. ANALYSIS Claims 1-3, 13-15, and 19 Appellants’ arguments have not persuaded us that the Examiner erred in rejecting independent claims 1 and 19. Claim 1 recites “displaying said one or more records…and enabling said wireless device to respond to a user selection of a selected one of said one or more records displayed on said wireless device.” Appellants argue that the claim requires displaying more than one record and selecting a record from the listing of multiple records. App. Br. 12. Since Alberth discloses displaying and selecting only one record, the claim limitations of claims 1 and 19 are not sufficiently disclosed by Alberth. App. Br. 13. We are not persuaded by these arguments as they are not commensurate in scope with the claims. The Examiner finds that the claims only require one record. Ans. 23-24. We concur with the Examiner’s claim 5 Appeal 2009-008285 Application 11/291,545 interpretation. While Appellants may have intended the invention to include more than one record and the ability to handle more than one record, the claims do not specifically require it. Thus, the scope of the claim includes displaying one record and selecting one record that is displayed on said wireless device. As noted above, Appellants do not dispute that Alberth discloses displaying one record and selecting one record. App. Br. 12. Therefore, we are not persuaded of error in the Examiner’s finding that Alberth discloses these claimed limitations. Accordingly, we sustain the Examiner’s rejection of independent claims 1 and 19 and claims 2-3, and 13-15 that are included in the grouping with claim 1. Claims 4-5 Appellants’ contentions have not persuaded us of error in the Examiner’s rejection of claims 4-5. Claims 4-5 are dependent upon independent claim 1. Appellants present the same arguments discussed above with respect to claim 1. Therefore, we do not find Appellants’ previously presented arguments to be persuasive for the same reasons as we stated above. As such, we will not sustain the Examiner’s rejection of claims 4-5. Claims 6-12 Appellants’ contentions have not persuaded us of error in the Examiner’s rejection of claims 6-12. Claims 6-12 are dependent upon independent claim 1. Appellants present the same arguments discussed above with respect to claim 1. Therefore, we do not find Appellants’ previously presented arguments to be persuasive for the same reasons as we 6 Appeal 2009-008285 Application 11/291,545 stated above. As such, we will not sustain the Examiner’s rejection of claims 6-12. Claims 16-18 Appellants’ contentions have not persuaded us of error in the Examiner’s rejection of claims 16-18. Independent claim 16 contains similar limitations to claim 1 and claims 17-18 are dependent upon claim 16. Appellants present the same arguments discussed above with respect to claim 1. Therefore, we do not find Appellants’ previously presented arguments to be persuasive for the same reasons as we stated above. As such, we will not sustain the Examiner’s rejection of claims 16-18. CONCLUSION The Examiner did not err in finding that Alberth discloses the limitations set forth in independent claims 1 and 19. SUMMARY The Examiner’s decision to reject claims 1-19 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)(1)(iv). 7 Appeal 2009-008285 Application 11/291,545 AFFIRMED ELD IBM CORPORATION (RVW) C/O ROBERT V. WILDER, ATTORNEY AT LAW 4235 KINGSBURG DRIVE ROUND ROCK, TX 78681 8