`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DE PARTMENT 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.
`
`CONFIRMATIONNO.
`
`09/727,727
`
`11/30/2000
`
`E. Michael Lunsford
`
`3COM-2910 .WHD.US . P
`
`7522
`
`WAGNER, MURABITO & HAO LLP
`Third Floor
`Two North MarketStreet
`San Jose, CA 95113
`
`MILORD, MARCEAU
`
`2682
`
`DATE MAILED:11/26/2004
`
`Please find below and/or attached an Office communication concerningthis application or proceeding.
`
`PTO-90C (Rev.10/03)
`1 of 2
`
`UNIFIED 1012
`
`
`
`UNIFIED 1012
`
`1 of 2
`
`

`

`Application No.
`
`Applicant(s)
`
`Office Action Summary
`
`09/727,727
`
`Examiner
`
`LUNSFORD ETAL.
`
`Marceau Milord
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTH(S) FROM
`HE MAILING DATE OF THIS COMMUNICATION.
`Extensionsof time may beavailable underthe provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHSfrom the mailing date of this communication.
`Ifthe period for reply specified aboveis less than thirty (30) days, a reply within the statutory minimum ofthirty (30) days will be consideredtimely.
`If NO periodfor reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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).
`Anyreply received by the Office later than three monthsafter the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, maya reply be timely filed
`
`-
`
`Status
`
`1)] Responsive to communication(s) filed on 09 June 2004.
`2a)L] This action is FINAL.
`2b)—X] This action is non-final.
`3)0] Sincethis applicationis in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 0.G. 213.
`
`Disposition of Claims
`
`4) Claim(s) 19-34 is/are pending in the application.
`4a) Of the above claim(s)
`is/are withdrawn from consideration.
`5)L] Claim(s)___is/are allowed.
`6)X] Claim(s) 19-34 is/are rejected.
`7)L) Claim(s) ____ is/are objected to.
`8)L] Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)C] The specification is objected to by the Examiner.
`10)L_] The drawing(s)filed on
`is/are: a)[_] accepted or b)[_] 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 or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`
`
`12)L] Acknowledgmentis madeof a claim forforeign priority under 35 U.S.C. § 119(a)-(d) or(f).
`a)_LJ AN by] Some * c)L] Noneof:
`1..] Certified copies of the priority documents have been received.
`2..) Certified copies of the priority documents have been received in Application No.
`3.1] Copiesof the certified copies of the priority documents have been receivedin 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) i Notice of References Cited (PTO-892)
`2) L] Noticeof Draftsperson’s Patent Drawing Review (PTO-948)
`3) [1] information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 1-04)
`
`2 of 2
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20041117
`
`4) C] Interview Summary (PTO-413)
`PaperNo(s)/Mail Date.
`5) L] Notice of informal PatentApplApplication (PTO-152)
`6) | Other:
`
`2 of 2
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 2
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`DETAILED ACTION
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`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which formsthe basisfor all
`1,
`obviousnessrejections set forth in this Office action:
`|
`
`(a) A patent may not be obtained thoughthe invention is not identically disclosed or
`
`described as set forth in section 102 ofthistitle, if the differences between the subject
`
`matter sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obviousat the time the invention was madeto a person having ordinary
`
`skill in the art to which said subject matter pertains. Patentability shall not be negatived
`
`by the mannerin which the invention was made.
`
`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 Mauncyet al (US Patent No 6484027 B1).
`Regarding claim 19, Bell discloses an automated telephone dialing system (figs. 1-2),
`
`comprising: a telephone (3 offig 2) having a wireless port for short range wireless data transfer
`(col. 3, lines 20- 51; col. 4, lines 24-57); and a personal information device (20, 21, 22 offig. 2)
`
`(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 onthe personal information device(col. 5, lines 5-35; col. 6, lines 1-38).
`
`However, Bell et al does not specifically disclose the feature of a personal information
`
`device configured to control the telephone via a wireless communication suchthat the telephone
`
`dials a telephone numberstored on the personal information device.
`
`

`

`Application/Control Number: 09/727,727
`Art Unit; 2682
`
`Page 3
`
`On the other hand, Mauncyet al, from the same field of endeavor, discloses in figure 3,
`
`two wireless handsets 42A, and 42B, that can communicate with one another withoutthe use of a
`
`base station or MSC. Mauncyet al showsin figure 4, a wireless handset 42 that comprises a
`
`control system, a transceiver, an input/output port that may be providedfor 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. Thelist maintenance features may also include a
`
`memorize feature which permits two handsets to update their respective masterlist, find list with
`
`the ID of the other handset. The short range messaging features may include features to permit
`
`short-range messagesto be sent directly from one handset to another(col. 15, line 11- col. 16,
`
`line 56). Calls maybe placed in a direct handset -to- handset communication modebydialing
`
`the assigned directory or telephone numberof the handset (col. 17, lines 14- 26); col. 29, line
`
`51- col. 30, line 46). Furthermore, the information may be stored in the speeddial and findlists
`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 madeto apply the ‘ecianigire ofMauncy to
`
`the communication system of Bellin 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
`Art Unit: 2682
`
`Page 4
`
`Resarding claim 20, Bell as modified discloses an automated telephonedialing system
`(figs. 1-2), wherein the dialing ofthe telephone numberby the telephoneis 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 telephonedialing system
`(figs. 1-2) wherein the information storedin 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 numberdialed by the telephone correspondsto one ofthe
`
`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
`
`specification (col. 4, lines 24-52; col. 6, lines 21-40).
`
`

`

`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`.
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`Page 5
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`Regarding claim 26, Bell as modified discloses an automated telephonedialing 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, Bel! discloses an automatic wireless telephone dialing method(figs.
`
`1-3), comprising the steps of establishing (3 of figs. 1-2) a wireless communicationslink for a
`
`short range data transfer (20, 21, 22 offig. 2; col. 3, line 47- col. 4, line 9; col. 4, lines 48-67);
`
`accessing (3 of fig. 2) a telephone numberstored 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 al does not specifically disclose the steps ofaccessing a telephone
`
`numberstored on the personal information device; controlling the telephone using the personal
`
`information device to cause the telephoneto dial the telephone numberstored on the personal
`
`information device.
`
`Onthe other hand, Mauncyetal, from the samefield of endeavor, discloses in figure 3,
`
`two wireless handsets 42A, and 42B, that can communicate with one another withoutthe use of a
`
`base station or MSC. Mauncyet al showsin 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 includeaset of “List
`
`Maintenancefeatures” that may be providedto permit a user to add and delete handsets or
`
`objects to one or morelists stored in the handsets, such as a speed dialing list for initiating calls,
`
`a find list for other handsets or objects, and/or privacylist 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 masterlist, find list with
`
`the ID of the other handset. The short range messaging features may include features to permit
`
`short-range messagesto 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 modeby dialing
`the assigned directory or telephone numberofthe 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 mayinitiate call requests and find requests with the stored with the
`
`stored information (col. 54, lines 10- 46). Therefore, it would have been obviousto one of
`ordinary skill in the art at the time the invention was madeto apply the technique ofMauncyto
`
`the communication system of Bell in order to provide a wireless handsetthat 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 telephonedialing
`
`method(figs. 1-3), which includesthe step of dialing the telephone number automatically in
`
`responseto 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 telephonedialing
`
`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 telephonedialing
`
`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 asa list of contacts and the telephone numberdialed by the telephone correspondsto
`
`oneofthe contacts selected bythe 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
`sagitieined 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 ofthe
`
`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 mootin
`
`view of the new ground(s)ofrejection.
`
`

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`Application/Control Number: 09/727,727
`Art Unit: 2682
`
`Page 8
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Marceau Milord whose telephone numberis 703-306-3023. 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 numberforthe
`
`organization wherethis application or proceeding is assigned 1s 703-872-9306.
`
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`
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`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
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`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`MARCEAU MILORD
`
`Marceau Milord
`
`=
`PRIMARY EXAMINER
`
`(LORD
`
`Examiner
`
`Art Unit 2682
`
`WETS
`
`