`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trndemark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box 1450
`Alexandria. Virginia 22313-1450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`09/727,727
`
`11/30/2000
`
`E. Michael Lunsford
`
`3COM-2910 .WHD.US . P
`
`7522
`
`WAGNER, MURABITO & HAO LLP
`Third Floor
`Two North Market Sm:
`San Jose, CA 95113
`
`MILORD. MARCEAU
`
`2682
`DATE MAILED: 08/12/2005
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`.10f2
`
`.
`
`UNIFIED 1014
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`UNIFIED 1014
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`1 of 2
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`

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`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`09/727,727
`
`Examine,
`
`LUNSFORD ET AL.
`
`A” Unit
`
`-- 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 Q 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 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, 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 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 timely filed
`
`-
`-
`
`
`
`Status
`
`HIE Responsive to communication(s) filed on 24 May 2005.
`
`23)IZ This action is FINAL.
`2b)I:I This action is non-final.
`3)[] Since this application is 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)IZ Claim(s) Mi is/are pending in the application.
`4a) Of the above Claim(s) _ is/are withdrawn from consideration.
`5)D Claim(s) _ is/are allowed.
`
`6)IZ Claim(s) fl is/are rejected.
`
`7):] Claim(s) _ is/are objected to.
`8)D Claim(s)
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9N] The specification is objected to by the Examiner.
`10):] The drawing(s) filed on _ is/are: 3):] accepted or b)EI 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)E] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)C| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)E] All
`b)E] Some * c)El 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) CI Notice of References Cited (PTO-892)
`2) E] Notice of Draftsperson’5 Patent Drawing Review (PTO-948)
`3) CI Information Disclosure Statement(s) (PTO-1449 or PTO/SB/OB)
`Paper No(s)lMaiI Date _.
`US. Patent and Trademark Office
`
`4) CI Interview Summary (PTO413)
`Paper No(s)/Mail Date. _
`5) [I Notice of Informal Patent Application (PTO-152)
`6) C] Other:
`
`PTOL-326 (Rev. 104)
`
`20f2
`
`Office Action Summary
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`Part of Paper No./Mail Date 20050807
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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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`Art Unit: 2682
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`Page 2
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`‘
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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 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(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.
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`Claims 19-34 are rejected under 35 U.S.C. 103(a) as being unpatentable over Bell (US ~
`
`Patent No 6600902 B1) in View of Mauncy et al (US Patent No 6484027 B1).
`
`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
`control the telephone via a wireless communication such that the telephone dials a telephone
`
`number stored on the personal information device (col. 5, lines 5-3 5; col. 6, lines 1-38).
`
`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
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`dials a telephone number stored on the personal information device.
`
`

`

`Application/Control Number: 09/727,727
`
`Art Unit: 2682
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`Page 3
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`On the other hand, Mauncy et al, from the same field of endeavor, discloses in figure 3,
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`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 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
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`51- col. 30, line 46). Furthermore, the information may be stored in the speed dial and find lists
`
`of the 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.
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 4
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`Regarding claim 20, Bell as modified 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- co]. 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 38-60, 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), wherein the wireless communication is compatible with a version of the Bluetooth
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`specification (col. 4, lines 24-52; col. 6, lines 21-40).
`
`

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`Application/Control Number: 09/727,727
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`_
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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
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`(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 1-38).
`
`However, Bell et a1 does not specifically disclose the steps of accessing a telephone
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`number stored on the personal information device; controlling the telephone using the personal
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`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/output port that may be provided for facilitating
`
`communication with various devices and for downloading or loading information into a memory
`
`(col. 13, lines l-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
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`Art Unit: 2682
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`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 of the handset (col. 17, lines 14- I26); col. 29, line
`
`51- col. 30, line 46). Furthermore, the information may be stored in the speed dial and find lists
`
`of the 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 artat 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
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`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 31, 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 ofthe IrDA
`
`specification (col. 4, lines 48-62; col. 6, lines 44-65).
`
`Response to Arguments
`
`2.
`
`‘Applicant‘s arguments filed 5-24-2005 have been fully considered but they are not
`
`persuasive.
`
`Applicant’s representative argues that Bell does not teach that a first wireless station is
`
`configured to control a second wireless station causing the second wireless station to dial a
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`telephone number stored on the first wireless station.
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`

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`Application/Control Number: 09/727,727
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`Art Unit: 2682
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`Page 8
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`Applicant’s representative also argues that Mauney fails to teach that a first wireless
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`handset can control a second wireless handset to dial a telephone number stored on the first
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`wireless handset.
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`However, Bell discloses a wireless system that comprises a number of wireless stations
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`for communication with each other through short-range wireless links where a first short-range
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`wireless link is set up between a first and a second wireless station of the wireless system In
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`addition, the wireless station can be configured to communicate with a cellular radio network, or
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`any other suitable network (col. 3, lines 34-60; col. 29-56).
`
`Mauney shows a “List Maintenance” features that may also include a memorize feature
`
`which permits two handsets to update their respective master list, find list or privacy list with the
`
`ID of the other handset. The memorize feature may be activated when handsets are brought in
`
`close proximity to each other or their respective antennas are brought into contact, and users
`
`press a predetermined key or button within a short time window. In addition, the memorize
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`feature may also permit a user to memorize other objects, such as an accessory or device that is
`
`, capable of being queried by activating the memorize function on the object in order to
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`automatically add the object to the find list. The status and progress of the initiated call may also
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`be indicated to the user through the use of predetermined audible tones (e.g., dialing, ringing,
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`busy, etc). Messages may also be displayed on the handset to provide feedback to the user as to
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`whether the offered call was not responded to or received by the called party. With such features,
`
`a user will be better equipped to handle and control direct handset calls with other users. These
`
`features may be provided to permit a user to add and delete handsets or objects to one or more
`
`lists stored in the handset, such as a speed dialing list for initiating calls, a find list for locating
`
`

`

`Application/Control Number: 09/727,727
`
`Art Unit: 2682
`
`Page 9
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`. other handsets or objects, and/or a privacy list for blocking find queries from specific handsets so
`
`that privacy may be maintained. With the List Maintenance features, a user may be permitted to
`
`add, delete and view each list stored in their handset. The List Maintenance features may also
`
`include a memorize feature which permits two handsets to update their respective master list,
`
`find list or privacy list with the ID of the other handset. Calls may he placed in a direct handset-
`
`to-handset communication mode by dialing the assigned directory or telephone number of the
`
`handset. The wireless handset may be configured such that it will terminate analysis of channels
`
`for signal strength afier a predetermined period of time and provide a warning tone to the user to
`
`indicate that no channels are available. For instance, a user may wish to configure their handset
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`to automatically perform a Find request at preset or predetermined intervals. For this purpose, the
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`Find features may include Auto Find and Auto Find Object features, which permit a Find request
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`to be performed at preset intervals. These options may be selectively turned ON or OFF by the
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`user. With Auto Find, the wireless handset will automatically perform 3 Find request at preset
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`intervals and update the Found list. Additional options may be .provided to inform the user when
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`there is a change to the Found List through a beeping tone, vibration, a ringing tone, or a change
`
`on the display. It means that the first handset can control the second handset. The Auto Find
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`feature may be interruptible to permit a user to make or receive a call or short message (ml. 30,
`
`lines 1-22; col. 31, line 50- col. 32, line 11', col. 75, line 21; col. 76, line 30). It is considered that
`
`these features can enhance direct communication between handsets. In addition, this memorize
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`feature will permit handsets and other objects to exchange information.
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`

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`Application/Control Number: 09/727,727 ‘
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`Art Unit: 2682
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`Page 10
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`-
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`Conclusion
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`3.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
`
`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
`
`date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to Marceau Milord whose telephone number is 571-272-7853. The
`
`examiner can normally be reached on Monday-Thursday.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Nick Corsaro can be reached on 571-272-7 876. 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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`

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`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 11
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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 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 (EBC) at 866-217-9197 (toll-free).
`
`MARCEAU MILORD
`
`Marceau Milord
`
`Primary Examiner
`
`Art Unit 2682
`
`MW
`
`m“
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`WM
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`