`
`UNITED STATES DEPARTMENT OF COMMERCE
`UnIted States Patent and Trademark Omcc
`Address: COMMISSIONER FOR PATENTS“ ”
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`www.mpm.gov
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`..
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`-
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`>2
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`APPLICATION NO.
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`09/727,727
`
`FILING DATE
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`1 1/30/2000
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.’
`
`E. Michael Lunsford
`
`3COM-2910 .WHD.US . P
`
`7522
`
`WAGNER, MURABITO & HAO LLP
`Third Floor
`Two North Market Street
`
`San Jose, CA 95113
`
`MILORD, MARCEAU
`
`\
`
`DATE MAILED: 03/ 12/2004
`
`2682
`
`%
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`Please find below and/or attached an Office communication conceming this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`UNIFIED 1010
`
`UNIFIED 1010
`
`

`

`Office Action Summary
`
`Application No. . Applicant(s)
`
`09/727,727
`Examine,
`
`')
`
`LUNSFORD ET AL.
`Art Unit
`
`Marceau Milord
`
`2682
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1. 136(a).
`after SIX (6) MONTHS from the mailing date ofthis communication.
`lithe period for reply specified aboveIs less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will. by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date at this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however may a reply be timelyIfiled
`
`Status
`
`1)IZI Responsive to communication(s) filed on 22 December 2003.
`2a)l:] This action is FINAL.
`2b)lZ This action is non-final.
`3):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
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`4). Claim(s) M is/are pending in the application.
`
`4a) Of the above Claim(s) _ is/are withdrawn from consideration.
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`5)l:] Claim(s) __ is/are allowed.
`
`6)IZ Claim(s) wis/are rejected.
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`7)EI Claim(s) _ is/are objected to.
`8)l:] Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`
`
`9):] The specification is objected to by the Examiner.
`10):] The drawing(s) filed on __ is/are: a)l:l accepted or b)I:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required ifthe drawing(s) is objected to. See 37 CFR 1.121(d).
`11):] The oath or declaration is objected to by the Examiner. Note the attached Office Action orforrn PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)I:] All b)l] Some * c)E] None of:
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`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No.
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`Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) IX Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) [I information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mai| Date
`.
`US. Patent and Trademark Office
`
`4) [3 Interview Summary (PTO-413)
`Paper N°(5)/M3II Date. .—
`5) I:I Notice °I lnformal Patent Application (PTO152)
`e) [:1 Other:_
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`PTOL-326 (Rev. 1-04)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 7
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`/
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`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
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`1.
`
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or
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`described as set forth in section 102 of this title, if the differences between the subject
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`matter sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious at the time the invention was made to a person having ordinary
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`skill in the art to which said subject matter pertains. Patentability shall not be negatived
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`by the manner in which the invention was made.
`
`Claims 19-34 are rejected under 35 USC. 103(a) as being unpatentable over Bell (US
`
`Patent No 6600902 B1) in view of Sutphin (US Patent No 5109403).
`
`Regarding claim 19, Bell discloses an automated telephone dialing system (figs. 1-2),
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`comprising: a telephone (3 of fig 2) having a wireless port for short range wireless data transfer
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`(col. 3, lines 29- 51; col. 4, lines 24-57); and a personal information device (20, 21, 22 of fig. 2)
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`(col. 3, line 47- col. 4, line 9; col. 4, lines 48-67), the personal information device configured to
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`control the telephone via a wireless communication such that the telephone dials a telephone
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`number stored on the personal information device (col. 5, lines 5-35; col. 6, lines 1-3 8).
`
`However, Bell et a1 does not specifically disclose the feature of a personal information
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`device configured to control the telephone via a wireless communication such that the telephone
`
`dials a telephone number stored on the personal information device.
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 3
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`On the other hand, Sutphin, from the same field of endeavor, discloses a. system for
`
`programming sofiware feature switches in a mobile telephone, wherein a host computer initiates
`
`a first call to the mobile telephone, causing a cell site facility to broadcast an initiate signal via a
`
`digital paging channel. An alert signal is generated in the mobile telephone is response to the
`
`initiate signal, and an answer signal is generated in the mobile telephone if the subscriber
`
`answers the first call. The first processor causes first acknowledge signal to be broadcasted via
`
`the paging channel in response to the answer signal. The processor of the mobile telephone then
`
`establishes a programming mode and sends a second acknowledge signal to the host computer
`
`(col. 2, lines 17-57). Furthermore, Sutphin shows in figure 3, a microcomputer 39 that reads the
`
`present feature status of the software feature switches stored in memory 55 and transmits that
`
`data back to cell site facility 10 (col. 3, lines 18-64; col. 5, lines 22- col. 6, line 58). Therefore, it
`
`would have been obvious to one of ordinary skill in the art at the time the invention was made to
`
`apply the technique of Sutphin to the communication system of Bell in order to provide a cellular
`
`telephone in which a security code is programmed.
`
`Regarding claim 20, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`wherein the dialing of the telephone number by the telephone is automatically effected in
`
`response to a user interacting with information stored on the personal information device (col. 3,
`
`lines 25-60; col. 4, line 45- col. 5, line 26).
`
`Regarding claim 21, Bell discloses an automated telephone dialing system (figs. 1-2)
`
`wherein the information stored in the personal information device includes contact information
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`(col. 3, lines 52—67; col. 5, lines 1-40; col. 6, lines 1—26).
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 4
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`Regarding claim 22, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`wherein the information stored on the personal information device is presented as a list of
`
`contacts and the telephone number dialed by the telephone corresponds to one of the contacts
`
`selected by the user (col. 3, lines 1-60; col. 6, lines 1-40).
`
`Regarding claim 23, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`wherein the information stored on the personal information device is maintained by a
`
`management program executing on the personal information device and the management
`
`program controls the telephone via the wireless communication (col. 3, lines 38-60; col. 5, lines
`
`10-57).
`
`Regarding claim 24, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`wherein the management program is an address book program (col. 3, lines 52-67; col. 5, lines 1-
`
`40; col. 6, lines 1-26).
`
`Regarding claim 25, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`wherein the wireless communication is compatible with a version of the Bluetooth specification
`
`(col. 4, lines 24-52; col. 6, lines 21-40).
`
`Regarding claim 26, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`wherein the wireless communication is compatible with a version of the IrDA specification (col.
`
`4, lines 48-62; col. 6, lines 44-65).
`
`Regarding claim 27, Bell discloses an automatic wireless telephone dialing method (figs.
`1-3), comprising the steps of establishing (3 of figs. 1-2) a wireless communications link for a
`
`short range data transfer (20, 21, 22 of fig. 2; col. 3, line 47- col. 4, line 9; col. 4, lines 48-67);
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`~
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`Page 5
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`accessing (3 of fig. 2) a telephone number stored on the device (col. 3, lines 29- 51; col. 4, lines
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`24-57; col. 5, lines 5-35; col. 6, lines 1—38).
`
`However, Bell et a] does not specifically disclose the steps of accessing a telephone
`
`number stored on the personal information device; controlling the telephone using the personal
`
`information device to cause the telephone to dial the telephone number stored on the personal
`
`information device.
`
`On the other hand, Sutphin, from the same field of endeavor, discloses a. system for
`
`programming software feature switches in a mobile telephone, wherein a host computer initiates
`
`a first call to the mobile telephone, causing a cell site facility to broadcast an initiate signal via a
`
`digital paging channel. An alert signal is generated in the mobile telephone is response to the
`
`initiate signal, and an answer signal is generated in the mobile telephone if the subscriber
`
`answers the first call. The first processor causes first acknowledge signal to be broadcasted via
`
`the paging channel in response to the answer signal. The processor of the mobile telephone then
`
`establishes a programming mode and sends a second acknowledge signal to the host computer
`
`(col. 2, lines 17-57). Furthermore, Sutphin shows in figure 3, a microcomputer 39 that reads the
`
`present feature status of the software feature switches stored in memory 55 and transmits that
`
`data back to cell site facility 10 (col. 3, lines 18-64; col. 5, lines 22- col. 6, line 58). Therefore, it
`
`would have been obvious to one of ordinary skill in the art at the time the invention was made to
`
`apply the technique of Sutphin to the communication system of Bell in order to provide a cellular
`
`telephone in which a security code is programmed.
`
`Regarding claim 28, Bell discloses an automatic wireless telephone dialing method (figs.
`
`1-3), which includes the step of dialing the telephone number automatically in response to a user
`
`

`

`Application/Control Number: 09/727,727
`
`Art Unit: 2682
`
`Page 6
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`interacting with information stored on the personal information device (col. 3, lines 25-60; col. 4,
`
`line 45- col. 5, line 26).
`
`Regarding claim 29, Bell discloses an automatic wireless telephone dialing method (figs.
`
`1-3) wherein the information stored in the personal information device includes contact
`
`information (col. 3, lines 52-67; col. 5, lines 1-40; col. 6, lines 1-26).
`
`Regarding claim 30, Bell discloses an automatic wireless telephone dialing method (figs.
`
`1-3) wherein the information stored on the personal information device is presented as a list of
`
`contacts and the telephone number dialed by the telephone corresponds to one of the contacts
`
`selected by the user (col. 3, lines 1-60; col. 6, lines 1-40).
`
`Regarding claim 31, Bell discloses an automatic wireless telephone dialing method (figs.
`
`1-3) wherein the information stored on the personal information device is maintained by a
`
`management program executing on the personal information device and the management
`
`program controls the telephone via the wireless communication (col. 3, lines 38-60; col. 5, lines
`
`10—57).
`
`Regarding claim 32, Bell disclosesan automatic wireless telephone dialing method (figs.
`
`1-3) wherein the management program is an address book program (col. 3, lines 52-67; col. 5,
`
`lines 1-40; col. 6, lines 1-26).
`
`Regarding claim 33, Bell discloses an automatic wireless telephone dialing method (figs.
`
`1-3) wherein the wireless communication is compatible with a version of the Bluetooth
`
`specification (col. 4, lines 24-52; col. 6, lines 21—40).
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 7
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`Regarding claim 34, Bell discloses an automatic wireless telephone dialing method (figs.
`
`1-3) wherein the wireless communication is compatible with a version of the IrDA specification.
`
`(col. 4, lines 48—62; col. 6, lines 44-65).
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`Response to Arguments
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`2.
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`Applicant's arguments with respect to claims 19-34 have been considered but are moot in
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`View of the new ground(s) of rejection.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Marceau Milord whose telephone number is 703-306-3023. The
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`examiner can normally be reached on Monday-Thursday.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Vivian C. Chin can be reached on 703 -3 08-673 9. The fax phone number for the
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`organization where this application or proceeding is assigned is 703-872-9306.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAJR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair-direct.uspto. gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`MAMORD
`
`Marceau Milord
`
`Examiner
`
`

`

`'
`r
`Application/Control Number: 09/727,727
`Art Unit: 2682
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`Page 8
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`Art Unit 2682
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