T-Mobile USA, Inc.

Patent Trials and Appeals Board

Mar 12, 2021

2019005859 (P.T.A.B. Mar. 12, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/393,500 12/29/2016 Hsin-Fu Henry Chiang TM2-0396US 4307
132935 7590 03/12/2021
Lee & Hayes, P.C.
601 W. Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
MANOHARAN, MUTHUSWAMY GANAPATHY
ART UNIT PAPER NUMBER
2647
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HSIN-FU HENRY CHIANG
Appeal 2019-005859
Application 15/393,500
Technology Center 2600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–12, 14–22, which are all of the
pending claims. Claims App. Claims 8 and 13 are cancelled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as T-Mobile USA,
Inc. Appeal Br. 3.
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Application 15/393,500

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CLAIMED SUBJECT MATTER
The claims are directed to service carrier identification and display.
Spec. Title. We reproduce independent claims 1 and 16 below:
1. One or more non-transitory computer-readable media of a
device storing computer-executable instructions that, when
executed by one or more processors, cause the one or more
processors to perform actions comprising:
receiving cellular communication services from a home
cellular communication carrier;
accessing a contacts database to obtain contact
information for multiple contacts, the contact information
indicating a cellular telephone number of each of the multiple
contacts;
submitting a query to a network-accessible service, the
query specifying a cellular telephone number of a particular
contact of the multiple contacts;
receiving a response to the query from the network-
accessible service, the response indicating identifying
information of a first cellular communication carrier;
determining an identifier of the first cellular
communication carrier based at least in part on the identifying
information;
listing the multiple contacts on a display of the device
while a contact list is being accessed;
showing on the display, in association with the particular
contact, the identifier of the first cellular communication carrier
while the contact list is being accessed;
showing on the display, in association with the particular
contact, an offer to send a message to the contact; and
in response to selection of the offer by a user of the device,
initiating the message to the contact on behalf of the user, the
message promoting the home cellular communication carrier.
Appeal Br. 22 (Claims Appendix) (disputed limitations in italics).
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16. A communication device comprising:
one or more processors;
a display;
one or more non-transitory computer-readable media
storing computer-executable instructions that, when executed on
the one or more processors, cause the one or more processors to
perform actions comprising:
accessing a contacts database to obtain contact
information for multiple contacts, the contact information
indicating a cellular telephone number of each of the multiple
contacts;
listing at least some of the contact information on the
display;
for each contact of the multiple contacts, determining a
cellular communication carrier of multiple cellular
communication carriers that provides cellular communication
services for the contact; and
showing on the display, while a contact list is being
accessed and in association with each contact of the multiple
contacts, an identifier of the cellular communication carrier that
provides cellular communication services for the contact, the
contact list being displayed such that a set of the multiple
contacts for which a single cellular communication carrier of the
multiple cellular communication carriers provides cellular
communication services are grouped together under an
associated heading identifying the single cellular
communication carrier.
Appeal Br. 25–26 (Claims Appendix) (disputed limitations in italics).

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REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Okamura US 2003/0190025 A1 Oct. 9, 2003
Soo US 2007/0165613 A1 July 19, 2007
Dinh US 2008/0182552 A1 July 31, 2008
Bouthemy US 2010/0167763 A1 July 1, 2010
Southerland US 2010/0322396 A1 Dec. 23, 2010
Davis US 2014/0006591 A1 Jan. 2, 2014
Agarwalla US 2014/0136441 A1 May 15, 2014
REJECTIONS
Claims 1 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Southerland and Agarwalla. Final Act. 2.
Claims 2, 3, and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Southerland, Agarwalla, and Soo. Final Act. 4.
Claims 4, 6, 7, 11, 12, 15, and 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Southerland, Agarwalla, and Bouthemy. Final
Act. 5.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Southerland, Agarwalla, and Dinh. Final Act. 8.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Southerland, Agarwalla, and Okamura. Final Act. 8.
Claims 16–18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Southerland and Bouthemy. Final Act. 9.

2 All citations herein to the references are to the first named inventor/author
only.
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Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Southerland and Bouthemy. Final Act. 11.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Southerland, Bouthemy, and Agarwalla. Final Act. 11.
Claims 21 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Southerland, Agarwalla, and Davis. Final Act. 12.
ISSUES
First Issue: Has the Examiner erred in finding Agarwalla teaches or
suggests “showing on the display, in association with the particular contact,
an offer to send a message to the contact,” and “in response to selection of
the offer by a user of the device, initiating the message to contact on behalf
of the user, the message promoting the home cellular communication
carrier,” as recited in claim 1?
Second Issue: Has the Examiner erred in finding Bouthemy teaches
or suggests “the contact list being displayed such that a set of multiple
contacts for which a single cellular communication carrier of the multiple
cellular communication carriers provides a cellular communication services
are grouped together under an associated heading identifying the single
cellular communication carrier,” as recited in claim 16?
ANALYSIS
First Issue
In rejecting claim 1, the Examiner relies on Agarwalla as teaching the
limitation “showing on the display, in association with the particular contact,
and offer to send a message to the contact.” Final Act. 3 (citing Agarwalla
¶ 89). The Examiner determines that Agarwalla’s description of a social
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networking application encouraging a user to engage with specific service
provider also used by their friends teaches this limitation. See Final Act. 3
Appellant argues the Examiner has erred because “Agarwalla fails to
teach or suggest showing an offer to send a message of any type, much less a
message ‘promoting the home cellular communication carrier’ of the device
that is sending the message.” Appeal Br. 13. Appellant further argues
Agarwalla is deficient because it is the social networking system that
presents offers, whereas in the claim, the user is provided the offer to send a
message and initiates the message to the contact. Appeal Br. 13.
We agree with Appellant that the Examiner has erred. Agarwalla
teaches that a user is presented with an offer, by a social media service, to
subscribe to a service based on the services the user’s social media friends
have previously used. See Agarwalla Figs. 8A–8B; ¶ 89. Agarwalla does
not teach that the social media users are given the opportunity to invite their
contacts to join a service. Claim 1 requires, however, that the display show
“an offer to send a message to the contact” the selection of which “initiate[s]
the message to the contact on behalf of the user, the message promoting the
home cellular communication carrier.” The cited portion of Agarwalla
depicts a user being presented with an offer to subscribe to a service. See
Agarwalla Figs. 8A–8B; ¶ 89. However, the “offer” recited in claim 1 is an
offer to send a message to a contact which promotes a service.
That Agarwalla does not exactly teach the argued limitation does not
necessarily defeat a rejection under § 103. After all, the standard for
determining whether a claim is obvious is “an expansive and flexible
approach” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007), under
which the “analysis need not seek out precise teachings directed to the
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specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. Here, however, the Examiner provides no
explanation for why a person of ordinary skill in the art would have
modified Agarwalla’s system in which the system determines and initiates
offers, to allow users to invite their contacts to join a particular service, such
as a home cellular communication carrier. For example, the Examiner does
not explain that Southerland teaches the desirability of having a calling party
and a receiving party on the same mobile network to take advantage of “no
charge” rates. See Southerland ¶ 5. Nor does the Examiner explain that
possessing the teachings of Agarwalla, which demonstrate that is was known
in the art to deliver promotional offers to a user’s contacts, a person of
ordinary skill in the art would have understood that Southerland could be
improved by allowing users to send promotional offers inviting their
contacts to join their mobile network, as taught Agarwalla, because doing so
would allow them to better take advantage of “no charge rates,” as taught by
Southerland.
In this case, the Examiner did not provide such an explanation, and
without such an explanation, the Examiner has not sufficiently explained the
basis for the conclusion that claim 1 is obvious over Southerland and
Agarwalla. Accordingly, we do not sustain the rejection of claim 1.
Second Issue
In rejecting claim 16, the Examiner relies on Bouthemy as teaching
“the contact list being displayed such that a set of the multiple contacts for
which a single cellular communication carrier of the multiple cellular
communication carriers provides cellular communication services are
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grouped together under an associated heading identifying the single cellular
communication carrier.” Final Act. 10 (citing Bouthemy Fig. 4A). In the
Answer, the Examiner explains that Figure 4A of Bouthemy depicts a
contact list table having multiple contacts with carrier information in the last
column of the table teaches “the contact list being displayed such that a set
of multiple contacts for which a single cellular communication carrier,” and
that Figure 4B of Bouthemy depicts a grouping of members with Carrier B
teaches the “set of multiple contacts . . . are grouped together under an
associated heading identifying the single cellular communication carrier.”
Ans 7. The Examiner further cites Bouthemy paragraph 24 as teaching that
group members serviced by a specific carrier are grouped together using a
group identification record. Ans. 7.
Appellant contends Bouthemy is deficient because it does not provide
any grouping of contacts “under an associated heading identifying the single
cellular communication carrier” that services those contacts. Appeal Br. 16–
17. Appellant asserts that “all of the ‘carrier’ identifiers of Bouthemy are
listed in column ‘430’ without an associated heading.” Appeal Br. 17.
Responding to the Examiner’s additional findings in the Answer, Appellant
asserts that Figure 4B lacks any heading identifying a single cellular
communication carrier because the only information in the table that could
be considered a heading, the columns on the left side of the table depicted in
the figure, none of those entries referred to any specific carrier. Reply Br. 9.
We agree with Appellant that the Examiner has erred, and we
conclude the Examiner has not sufficiently explained the basis for the
rejection. We agree that Bouthemy does not explicitly disclose the argued
limitation because we discern no row or column headings in Bouthemy’s
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tables that identify cellular communication carriers, let alone any specific
communication carrier as claimed. Nor does that Examiner provide any
evidence or explanation for why it would have been obvious to utilize a
conventional implementation of row grouping to output the contact list as
claimed. Without such evidence and explanation, we are contained by this
record to reverse the rejection of claim 16.
Remaining Claims
Because we reverse the rejections of the independent claims, we also
do not sustain the rejections of the dependent claims which stand together
with their respective base claims.
CONCLUSION
We reverse the Examiner’s decision to reject the claims.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 9 103 Southerland,
Agarwalla
1, 9
2, 3, 10 103 Southerland,
Agarwalla, Soo
2, 3, 10
4, 6, 7, 11,
12, 15, 22
103 Southerland,
Agarwalla,
Bouthemy
4, 6, 7, 11,
12, 15, 22
5 103 Southerland,
Agarwalla, Dinh
5
14 103 Southerland,
Agarwalla,
Okamura
14
16–19 103 Southerland,
Bouthemy
16–19
20 103 Southerland,
Bouthemy,
Agarwalla
20
21 103 Southerland,
Agarwalla, Davis
21
Overall
Outcome
1–7, 9–12,
14–22

REVERSED