Ex Parte Aaron

Patent Trial and Appeal Board

Apr 29, 2014

10955160 (P.T.A.B. Apr. 29, 2014)

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.
10/955,160 09/30/2004 Jeffrey A. Aaron 9400-110 3781
39072 7590 04/30/2014
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
SINGH, GURKANWALJIT
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
04/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte JEFFREY A. AARON 7
___________ 8
9
Appeal 2011-008185 10
Application 10/955,160 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL 22
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed October 20, 2010) and the Examiner’s Answer (“Ans.,” mailed Jan. 20,
2011).
Jeffrey A. Aaron (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 1-16 and 21. We have jurisdiction over the appeal 3
pursuant to 35 U.S.C. § 6(b). 4
The Appellant invented a way to provide an electronic calendar to a 5
user to include receiving a request to schedule an event from the user (Spec., 6
para. [0007]). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A computer-implemented method for 11
providing an electronic calendar 12
to a user, 13
comprising: 14
[1] receiving, 15
at a programmed computer processor circuit, 16
a request 17
to schedule an event 18
from the user; 19
[2] obtaining, 20
using the programmed computer processor circuit, 21
additional information 22
related to the user 23
or 24
the event 25
[a] by prompting 26
the user for the additional information 27
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or 1
[b] by obtaining 2
the additional information from a database 3
in a memory device communicatively 4
coupled to the programmed computer 5
processor circuit; and 6
[3] scheduling, 7
using the programmed computer processor circuit, 8
a plurality of events 9
based on the request to schedule an event and the 10
obtained additional information. 11
12
The Examiner relies upon the following prior art: 13
Alexander US 6,988,128 B1 Jan. 17, 2006
Conmy US 2001/0014866 A1 Aug. 16, 2001
Breitenbach US 2002/0016729 A1 Feb. 7, 2002
Wilce US 2003/0171973 A1 Sep. 11, 2003
14
Claim 21 stands rejected under 35 U.S.C. § 101 as being directed to 15
non-statutory subject matter. 16
Claim 7 stands rejected under 35 U.S.C. § 112, second paragraph, as 17
being indefinite for failing to particularly point out and distinctly claim the 18
subject matter which applicant regards as the invention. 19
Claims 1, 6, 7, and 21 stand rejected under 35 U.S.C. § 103(a) as 20
unpatentable over Conmy. 21
Claims 4-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable 22
over Conmy and Wilce. 23
Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as 24
unpatentable over Conmy, Wilce, and Breitenbach. 25
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as 26
unpatentable over Conmy and Alexander. 27
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Claims 1 and 21 stand alternatively rejected under 35 U.S.C. § 103(a) 1
as unpatentable over Alexander. 2
ISSUES 3
The issue of statutory subject matter turns primarily on whether claim 4
21 is directed to software per se. The issue of indefiniteness turns primarily 5
on whether the scope of claim 7 is ascertainable. The issues of obviousness 6
turn primarily on whether the prior art discloses or suggests scheduling a 7
plurality of events based on the request to schedule an event and the 8
obtained additional information, as generally recited by claims 1 and 21. 9
10
FACTS PERTINENT TO THE ISSUES 11
The following enumerated Findings of Fact (FF) are believed to be 12
supported by a preponderance of the evidence. 13
Facts Related to the Prior Art 14
Conmy 15
01. Conmy is directed to network-based electronic calendars, 16
schedulers, and tasking systems for groups of users Conmy para. 17
[0002]. 18
02. Conmy describes that the first step in scheduling an event is the 19
generation of a request for an event. In the request, the 20
coordinator may select desired invitees for the event, including 21
any rooms or other resources that are needed for the event as well 22
as a preferred date, time, duration, and location for the event. 23
After all invitees have been selected, the system accesses 24
availability information from database 200 and if necessary, 25
through calendar connect unit 310 for invitees that may not be 26
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stored in database 200. As discussed above, invitee profiles and 1
the calendar files that may be stored in and/or with each invitee's 2
mail file, for example, (in step 102) for each invitee and stored in 3
database 200. That availability information may then be used, in 4
step 104, to determine the busy time events for the user for a 5
certain time period requested. Conmy para. [0040]. 6
03. The system then compares the list of busy times generated from 7
the user's availability information to determine whether the user is 8
available or not, in step 106. The process may also consider other 9
potential event times and dates with the busy time file to 10
determine if an alternative time may be proposed. If all invitees 11
can attend, in step 110, the system sends an invitation to the 12
invitees to attend the event, for example, by electronic mail using 13
the address stored for each invitee. The invitees may then either 14
accept the invitation, at which point the system would update their 15
respective calendar files with the new event, or if the invitation is 16
declined, the system notifies the requester. Conmy para. [0041]. 17
Alexander 18
04. Alexander is directed to a system for defining calendar events 19
for users of computer systems and using those calendar events to 20
customize information pertaining to the user. Alexander 1:18-22. 21
ANALYSIS 22
Claim 21 rejected under 35 U.S.C. § 101 as being directed to non-23
statutory subject matter. 24
The Examiner finds claim 21 to be drawn to a computer program per 25
se. Ans. 3. Appellant argues that claim 21 “is a ‘means for’-type claim 26
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which necessarily includes corresponding structure found, for instance, at 1
paragraphs [0027]-[0030] and FIG. 3 of the Specification, and the 2
equivalents thereof.” Br. 10. In response, the Examiner states that “these 3
paragraph [sic] and fig. 3 only state the structures as ‘can be implemented’ 4
and/or ‘may be provided.’” Ans. 30. We agree with the Appellant. 5
Subsequent to the Examiner’s Answer, guidelines for interpreting 6
claims written under 35 U.S.C. § 112, sixth paragraph, were issued which 7
address this very issue. The guidelines state: 8
Often the supporting disclosure for a computer implemented 9
invention discusses the implementation of the functionality of 10
the invention through hardware, software, or a combination of 11
both. In this situation, a question can arise as to which mode of 12
implementation supports the means plus-function-limitation. 13
The language of § 112, ¶ 6 requires that the recited “means” for 14
performing the specified function shall be construed to cover 15
the corresponding “structure or material” described in the 16
specification and equivalents thereof. Therefore, by choosing 17
to use a means-plus-function limitation and invoke § 112, ¶ 6, 18
applicant limits that claim limitation to the disclosed structure, 19
i.e., implementation by hardware or the combination of 20
hardware and software, and equivalents thereof. Therefore, the 21
examiner should not construe the limitation as covering pure 22
software implementation. 23
Supplementary Examination Guidelines for Determining Compliance With 24
35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications, 25
Fed. Reg. Vol. 76, No. 27, 7162, 7168 (Feb. 9, 2011). 26
27
Thus, Appellant’s proffered claim interpretation at pages 10-11 of the 28
Brief is in accordance with the guidelines, and as such, we do not sustain the 29
Examiner’s rejection of claim 21 under 35 U.S.C. § 101. 30
31
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Claim 7 rejected under 35 U.S.C. § 112, second paragraph, as failing to 1
particularly point out and distinctly claim the invention. 2
We are persuaded by the Appellant’s argument that the term 3
“preciseness” is not a relative term because “the exact degree of preciseness 4
that may defined by any particular personality is not relevant to the scope of 5
Claim 7.” Br. 11. The Examiner maintains that, “not providing the exact 6
meaning and degree of preciseness in the claims allows the claims to not 7
have a specific scope from which it can be determined what exactly is being 8
claimed.” Ans. 31. However, we find the use of the term “preciseness” 9
reasonably apprises one of ordinary skill in the art of its scope based on the 10
language of claim 7, which recites “wherein the associated one of the 11
available personalities defines at least one of an accent, a communication 12
syntax, a vocabulary, a sense of urgency, a speed of communication, a 13
timing pattern of communication, a level of detail of communication or a 14
preciseness of communication by the electronic calendar to the user.” Thus, 15
we find the Examiner’s questions go to the scope of the claims, rather than 16
to the definiteness of their claim scope. Breadth of a claim is not to be 17
equated with indefiniteness. In re Miller, 441 F.2d 689 (CCPA 1971); See 18
also Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 19
1366, (Fed. Cir. 2004) (internal citations omitted) (“[t]he requirement to 20
‘distinctly’ claim means that the claim must have a meaning discernible to 21
one of ordinary skill in the art when construed according to correct 22
principles. Only when a claim remains insolubly ambiguous without a 23
discernible meaning after all reasonable attempts at construction must a 24
court declare it indefinite”). 25
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Therefore, we will not sustain the Examiner's rejection of claim 7 1
under 35 U.S.C. § 112, second paragraph. 2
3
Claims 1, 6, 7, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable 4
over Conmy. 5
Claims 4-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable 6
over Conmy and Wilce. 7
Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as 8
unpatentable over Conmy, Wilce, and Breitenbach. 9
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as 10
unpatentable over Conmy and Alexander. 11
We are persuaded of error by Appellant’s argument that Conmy does 12
not disclose or suggest “scheduling . . . a plurality of events based on the 13
request to schedule an event and the obtained additional information” 14
because Conmy does not “schedul[e] a plurality of events in response to a 15
single event request and obtained additional information, as recited by 16
Claims 1 and 21.” Br. 6-7. 17
The Examiner directs us to Conmy at paragraphs [0005] – [0014] and 18
[0025] – [0030], as well as a figures 5-9, as disclosing this language. Ans. 6, 19
25-26. The Examiner also calls specific attention to two portions of Conmy 20
at paragraphs [0010] and [0030] (Ans. 6), however, we find these portions, 21
as well as the other cited portions of Conmy fail to address the limitation at 22
issue. While Conmy may refer to “events” and be capable of scheduling a 23
plurality of events, the Examiner has failed to point out where Conmy 24
discloses “scheduling . . . a plurality of events” based on a single request to 25
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schedule an event, or why doing so would be predictable based solely on 1
Conmy’s disclosure. 2
Accordingly, the Examiner has not set forth a prima facie case of 3
obviousness because the cited claim language is not disclosed by Conmy as 4
asserted. As a result, we reverse the rejection of claim 1 and the various 5
rejections of its dependent claims 2-16. Independent claim 21 recites a 6
similar limitation as set forth above in claim 1, and so, we reverse the 7
rejection of claim 21 for the same reasons set forth above at claim 1. 8
Claims 1 and 21 alternatively rejected under 35 U.S.C. § 103(a) as 9
unpatentable over Alexander. 10
We are persuaded of error by Appellant’s argument that Alexander 11
does not disclose or suggest “‘scheduling . . . a plurality of events’ based on 12
a single event request and obtained additional information, as recited by 13
Claims 1 and 21.” Br. 10. 14
The Examiner directs us to Alexander at column 4, lines 15-26, 15
column 3, line 7 through column 4, line 48, column 7, line 13 through 16
column 10, line 10, column 13, lines 15-46, and column 15, lines 23-40, as 17
disclosing this language. Ans. 24, 30. However, these portions of 18
Alexander fail to disclose or suggest scheduling a plurality of events based 19
on the single request to schedule an event, as the independent claims require. 20
While Alexander may disclose “scheduling . . . a plurality of events,” as the 21
Examiner concludes (Ans. 30), the Examiner has failed to point out where 22
Alexander discloses “scheduling . . . a plurality of events” based on a single 23
request to schedule an event, or why doing so would be predictable based 24
solely on Alexander’s disclosure. 25
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Accordingly, the Examiner has not set forth a prima facie case of 1
obviousness because the cited claim language is not disclosed by Alexander 2
as asserted. As a result, we reverse the rejection of independent claims 1 3
and 21. 4
NEW GROUND OF REJECTION 5
The following new ground of rejection is entered pursuant to 37 6
C.F.R. § 41.50(b). 7
We additionally rely on the following prior art of record in the case: 8
Winner US 6,272,074 B1 Aug. 7, 2001
9
FACTS PERTINENT TO THE NEW GROUND OF REJECTION 10
The following enumerated Findings of Fact (FF) are believed to be 11
supported by a preponderance of the evidence. 12
13
Facts Related to the Prior Art 14
Winner 15
05. Winner is directed to a system for generating electronic 16
calendars or schedules of events. Winner 1:13-14. 17
06. Winner discloses that, “events are scheduled automatically. 18
The user specifies the attendees, dates and times of the event, 19
duration of the event, as well as other preferences. An event 20
request is submitted to the database so that the scheduler process 21
can complete the request. The scheduler process retrieves the 22
request and sends the message via the network transportation to 23
remote scheduling servers. It requests particular calendar data 24
from the servers. The scheduler process obtains the data, 25
compares the calendar data, and sets an event in the calendars of 26
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the attendees when an appropriate event period is determined.” 1
Winner 4:32-42. 2
07. Winner further discloses that “[t]he event 410 illustrated in 3
FIG. 2 provides a description of the information stored in a 4
calendar. The event 410 describes the type of event that it is, 5
when it was created, and when it occurs. The event can be 6
specified to begin at a specific date and time, last for a given 7
amount of time, and when to end. Further, the present invention 8
allows a repeating event to be stored as a single event using the 9
recurring event expression 410P. This advantageously reduces the 10
amount of storage space required for storing a recurring event.” 11
Winner 5:17-26 12
The following new ground of rejection is entered pursuant to 37 13
C.F.R. § 41.50(b): Independent claims 1 and 21 are rejected under 35 14
U.S.C. § 103(a) as unpatentable over Conmy and Winner. 15
Conmy is directed to a computer-implemented method for providing 16
an electronic calendar to a user. FF 01. Conmy describes receiving, at a 17
programmed computer processor circuit, a request to schedule an event from 18
the user. FF 02. Conmy’s system obtains additional information related to 19
the user or the event by prompting the user for the additional information or 20
by obtaining the additional information from a database in a memory device 21
communicatively coupled to the programmed computer processor circuit. 22
FF 02, 03. While Conmy’s system schedules an event based on the request 23
to schedule an event and the obtained additional information (FF 02, 03), 24
Conmy does not explicitly describe scheduling a plurality of events based on 25
the request to schedule an event and the obtained additional information. 26
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However, Winner describes a system for generating electronic 1
calendars or schedules of events (FF 05), which explicitly discloses 2
scheduling a plurality of events based on a single request to schedule an 3
event. FF 06, 07. Based on this disclosure, one of ordinary skill in the art 4
would readily appreciate that it would be predictable to obtain recurring 5
event information from a user in order to schedule a plurality of events based 6
on: 1) the request to schedule an event and 2) the obtained additional 7
information. 8
9
CONCLUSIONS OF LAW 10
The rejection of claim 21 under 35 U.S.C. § 101 as being directed to 11
non-statutory subject matter is improper. 12
The rejection of claim 7 under 35 U.S.C. § 112, second paragraph, as 13
being indefinite is improper. 14
The rejection of claims 1, 6, 7, and 21 under 35 U.S.C. § 103(a) as 15
unpatentable over Conmy is improper. 16
The rejection of claims 4-5 under 35 U.S.C. § 103(a) as unpatentable 17
over Conmy and Wilce is improper. 18
The rejection of claims 12 and 14 under 35 U.S.C. § 103(a) as 19
unpatentable over Conmy, Wilce, and Breitenbach is improper. 20
The rejection of claims 15 and 16 under 35 U.S.C. § 103(a) as 21
unpatentable over Conmy and Alexander is improper. 22
The alternative rejection of claims 1 and 21 under 35 U.S.C. § 103(a) 23
as unpatentable over Alexander is improper.24
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The following new ground of rejection is entered pursuant to 1
37 C.F.R. § 41.50(b): Claims 1 and 21 are rejected under 35 U.S.C. § 103(a) 2
as unpatentable over Conmy and Winner. 3
DECISION 4
The rejection of claim 21 under 35 U.S.C. § 101 is reversed. 5
The rejection of claim 7 under 35 U.S.C. § 112, second paragraph, is 6
reversed. 7
The rejections of claims 1-16 and 21 under 35 U.S.C. § 103(a) are 8
reversed. 9
The following new ground of rejection is entered pursuant to 37 10
C.F.R. § 41.50(b): Claims 1 and 21 are rejected under 35 U.S.C. § 103(a) as 11
unpatentable over Conmy and Winner. 12
This Decision contains a new rejection within the meaning of 37 13
C.F.R. § 41.50(b) (2011). 14
Our decision is not a final agency action. 15
37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO 16
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 17
the following two options with respect to the new ground of rejection to 18
avoid termination of the appeal as to the rejected claims: 19
(1) Reopen prosecution. Submit an appropriate 20
amendment of the claims so rejected or new evidence relating 21
to the claims so rejected, or both, and have the matter 22
reconsidered by the Examiner, in which event the proceeding 23
will be remanded to the Examiner . . . . 24
(2) Request rehearing. Request that the proceeding be 25
reheard under § 41.52 by the Board upon the same record . . . . 26
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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2011). 3
4
REVERSED; 41.50(b) 5
6
7
8
Klh 9