`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patcm and Trademark omce
`Address: COMMISSIONER FOR PATENTS
`Po. Box I450
`Alexandria, Virginia 22313-1450
`www.uspw.gov
`
`09/727,727
`
`11/30/2000
`
`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
`
`2682
`
`DATE MAlLED: 11/26/2004
`
`Please find below and/or attached an Office communication concerning‘this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`1 of 2
`
`UNIFIED 1012
`
`
`
`UNIFIED 1012
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`1 of 2
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`

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`Office Action Summary
`
`09/727,727
`
`Examine,
`
`LUNSFORD ET AL.
`
`Application No.
`
`Applicant(s)
`
`
`Marceau Milord
`
`-- 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 oftime may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If the period for reply specified above is 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. muse the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office laterthan three months after the mailing date of this communication. even iftimely 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)[Z| Responsive to communication(s) filed on 09 June 2004.
`
`2b)IZ This action is non-final.
`Za)EI This action is FINAL.
`3)I:| Since this applicationIs in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 0.6. 213.
`
`Disposition of Claims
`
`4)EI Claim(s) E341 is/are pending in the application.
`4a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`5)|:| Claim(s) __ is/are allowed.
`
`6)IZ Claim(s) 123% is/are rejected.
`
`7)I:I Claim(s) __ is/are objected to.
`
`8)EI Claim(s) _ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`
`10)|:] The drawing(s)'fi|ed on __ is/are: a)I:I accepted or b)I: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 if the 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 orform PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`
`a)Ij All
`
`b)D Some * c)l:l None of:
`
`Certified copies of the priority documents have been received.
`
`Certified copies of the priority documents have been received in Application No.
`
`Copies of the certified copies of the priority documents have been received in this National Stage
`
`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) E Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson's Patent Drawing Review (PTO-948)
`3) CI Information Disclosure Statement(s) (PTO—1449 or PTO/SB/OB)
`Paper No(s)/Mail Date
`.
`US. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper No(s)/Mai| Date. —
`5) D Notice of informal Patent Application (PTO-152)
`6) D Other: __
`
`PTOL-326 (Rev. 1—04)
`
`Office Action Summary
`
`‘
`
`Part of Paper No./Mai| Date 20041117
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`20f2
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`2 of 2
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`

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`Application/Control Number: 09/727,727
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`'
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`Page 2
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`Art Unit: 2682
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
`
`1.
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
`obviousness rejections set forth in this Office action:
`3
`
`(a) A patent may not be obtained though the invention is not identically disclosed or
`
`described as set forth in section 102 of this title, if the differences between the subject
`
`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
`
`skill in the art to which said subject matter pertains. Patentability shall not be negatived
`
`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 Mauncy et al (US Patent No 6484027 B 1).
`
`Regarding claim 19, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`comprising: a telephone (3 of fig 2) having a wireless port for short range wireless data transfer
`
`(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 al does not specifically disclose the feature of a personal information
`
`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 .
`
`i
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`Page 3
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`Art Unit: 2682
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`On the other hand, Mauncy et al, from the same field of endeavor, discloses in figure 3,
`
`two wireless handsets 42A, and 42B, that can communicate with one another without the use of a
`
`base station or MSC. Mauncy et a1 shows in figure 4, a wireless handset 42 that comprises a
`
`control system, a transceiver, an input/output port that may be provided for facilitating
`
`communication with various devices and for downloading or loading information into a memory
`
`(col. 13, lines 1-47; col. 14, lines 9-65). This wireless handset may also include a set of “List
`
`Maintenance features” that may be provided to permit a user to add and delete handsets or
`
`objects to one or more lists stored in the handsets, such as a speed dialing list for initiating calls,
`
`a find list for other handsets or objects, and/or privacy list for blocking find queries from specific
`
`handsets so that privacy may be maintained. The list maintenance features may also include a
`
`memorize feature which permits two handsets to update their respective master list, find list with
`
`the ID of the other handset. The short range messaging features may include features to permit
`
`short—range messages to be sent directly from one handset to another (col. 15, line 1 1- col. 16,’
`
`line 56). Calls may be placed in a direct handset —to- handset communication mode by dialing
`
`the assigned directory or telephone number of the handset (col. 17, lines 14- 26); col. 29, line
`
`51- col. 30, line 46). Furthermore, the information may be stored in the speed dial and find lists
`
`ofthe handset so that the user may initiate call requests and find requests with the stored with the
`
`stored information (col. 54, lines 10- 46). 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 Mauncy to
`
`the communication system of Bell in orderto provide a wireless handset that includes a
`
`memorize feature, which permits a wireless handset to exchange information conveniently and
`
`securely with another handset or object by wireless transmission.
`
`

`

`Application/Control Number: 09/727,727
`
`‘
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`Page 4
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`Art Unit: 2682
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`Regarding claim 20, Bell as modified discloses an automated telephone dialing system
`(figs. 1-2), wherein the dialing ofthe 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 as modified discloses an automated telephone dialing system
`(figs. 1—2) 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 22, Bell as modified 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 as modified 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 3 8—60; col. 5, lines
`
`10-57).
`
`Regarding claim 24,. Bell as modified 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 as modified discloses an automated telephone dialing system
`
`(figs. 1—2), whereinvthe 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
`
`‘
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`Page 5
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`Art Unit: 2682
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`Regarding claim 26, Bell as modified 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);
`
`accessing (3 of fig. 2) a telephone number stored on the device (col. 3, lines 29- 51; col. 4, lines
`
`24-57; col. 5, lines 5—35; col. 6, lines l—38).
`‘
`However, Bell et a1 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, Mauncy et al, from the same field of endeavor, discloses in figure 3,
`
`two wireless handsets 42A, and 42B, that can communicate with one another without the use of a
`
`base station or MSC. Mauncy et a1 shows in figure 4, a wireless handset 42 that comprises a
`
`control system, a transceiver, an input/outputport that may be provided for facilitating
`
`communication with various devices and for downloading or loading information into a memory
`
`(col. 13, lines 1-47; col. 14, lines 9-65). This wireless handset may also include a set of “List
`
`Maintenance features” that may be provided to permit a user to add and delete handsets or
`
`objects to one or more lists stored in the handsets, such as a speed dialing list for initiating calls,
`
`a find list for other handsets or objects, and/or privacy list for blocking find queries from specific
`
`handsets so that privacy may be maintained. The list maintenance features may also include a
`
`

`

`Application/Control Number: 09/727,727
`
`Art Unit: 2682
`
`’
`
`Page 6
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`memorize feature which permits two handsets to update their respective master list, find list with
`
`the ID of the other handset. The short range messaging features may include features to permit
`
`short-range messages to be sent directly from one handset to another (col. 15, line 11- col. 16,
`
`line 56). Calls may be placed in a direct handset —to- handset communication mode by dialing
`
`the assigned directory or telephone number ofthe handset (col. 17, lines 14- 26); col. 29, line
`
`51- col. 30, line 46). Furthermore, the information may be stored in the speed dial and find lists
`ofthe handset so that the user may initiate call requests and find requests with the stored with the
`
`stored information (col. 54, lines 10- 46). 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 Mauncy to
`
`the communication system of Bell in order to provide a wireless handset that includes a
`
`memorize feature, which permits a wireless handset to exchange information conveniently and
`
`securely with another handset or object by wireless transmission.
`
`Regarding claim 28, Bell as modified 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 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 as modified 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 as modified discloses an automatic wireless telephone dialing
`
`method (figs. 1—3) wherein the information stored on the personal information device is
`
`

`

`Application/Control Number: 09/727,727
`
`Art Unit: 2682
`
`Page 7
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`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 3 1, Bell as modified 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 as modified discloses an 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 as modified 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).
`
`‘
`
`Regarding claim 34, Bell as modified 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).
`
`Response to Arguments
`
`2.
`
`Applicant's arguments with respect to claims 19-34 have been considered but are moot in
`
`view of the new ground(s) of rejection.
`
`

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`Application/Control Number: 09/727,727
`
`Art Unit: 2682
`
`Page 3
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Marceau Milord whose telephone number is 703-306-3 023. The
`
`examiner can normally be reached on Monday-Thursday.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Vivian C. Chin can be reached on 703 -308-6739. The fax phone number for the
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`organization where this application or proceeding is assigned is 703-872-9306.
`
`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 PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (BBC) at 866-217-9197 (toll-free).
`
`MARCEAU IVHLORD
`
`Marceau Milord
`
`\EE! ;%\%g
`PRIMARY EXAMINER
`
`M It. no
`
`Examiner
`
`ArtUnit2682
`\K— \I—QLK
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`