Ex Parte Bank et al

Patent Trial and Appeal Board

Apr 11, 2016

12366322 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/366,322 0210512009 Judith Helen Bank
52023 7590 04/13/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO.
RSW920080287US 1
8152-0124
CONFIRMATION NO.
7617
EXAMINER
MARCUS, LELAND R
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/13/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WDITH HELEN BANK, REGINA ANN MOLIFF, and
CHRISTINE POSLUSZNY
Appeal2013-009995 1
Application 12/366,3222
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Throughout this Opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Jan. 15, 2013), the Reply Brief ("Reply Br.," filed Aug. 5, 2013), the
Examiner's Answer ("Ans.," mailed June 6, 2013), the Final Action ("Final
Act.," mailed Aug. 16, 2012), and the Specification ("Spec.," filed Feb. 5,
2009).
2 According to the Appellants, the real party in interest is IBM Corporation.
Appeal Br. 1.
Appeal2013-009995
Application 12/366,322
STATEMENT OF THE CASE
The Appellants' invention is directed "generally to scheduling
meetings in a data processing system and more specifically to automatically
creating subgroups for a scheduled meeting based on responses to an
invitation." Spec. i-f 1.
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below:
1. A computer implemented process to automatically
create sub-groups from a group of responders to a meeting
invitation sent by email, comprising:
using a computer and a graphical user interface displayed
by the computer, and responsive to a plurality of subgroup
inputs to a first screen of the graphical user interface,
determining a number of subgroups and a subgroup size
parameter;
responsive to a plurality of survey inputs to a second
screen of the graphical user interface, determining a question
and a criteria associated with the question to create a survey;
responsive to a plurality of list inputs, determining a list
of invitees and a response date by which an invitee is to return a
plurality of responses in a completed survey;
sending a plurality of invitations with the survey attached
to each invitee on the list;
accumulating the plurality of responses in a response file;
and
accessing the response file and automatically processing
the plurality of responses by organizing the list of invitees into
a plurality of subgroups according to each invitee's response to
the question, the subgroup size, and the subgroup size
parameter.
Appeal Br. 21 (Claims App.).
2
Appeal2013-009995
Application 12/366,322
REJECTIONS
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaufman (US 2007/0027889 Al, pub. Feb. 1, 2007) and
Voorhees (US 2004/0039626 Al, pub. Feb. 26, 2004). Final Act. 2.
Claims 8-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kaufman, Voorhees, and Official Notice. Final Act. 5.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 3
ANALYSIS
Each of independent claims 1, 8, and 15 recites the limitation
substantially similar to "responsive to a plurality of subgroup inputs to a first
screen of the graphical user interface, determining a number of subgroups
and a subgroup size parameter." Claims App.
The Examiner relies on Kaufman for disclosing the limitation. Final
Act. 2. In particular, the Examiner finds that Kaufman discloses members
providing data input concerning groups and subgroups (see Ans. 10, citing
Kaufman i-fi-124, 27, 28), and that the game is commenced upon a condition
that a predetermined number of people join the game and a predetermined
number of groups be formed (id.). The Examiner finds that the
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2013-009995
Application 12/366,322
"predetermined number of people" in a group is functionally the determined
subgroup size parameter as claimed. Id.
We are persuaded by the Appellants' argument that Kaufman does not
disclose the limitation of "responsive to a plurality of subgroup inputs ...
determining a number of subgroups and a subgroup size parameter" as
claimed. See Appeal Br. 11-12; Reply Br. 3. Kaufman discloses that a
member may provide input via a device to a web page. See Kaufman i-f 13.
Kaufman at paragraph 24 further discloses a "dating game" to which, in
response to a member request/input or to another event, a plurality of
members are invited to join and "for a game to be commenced upon a
condition that a predetermined number of people join the game and that a
predetermined number of groups may be formed." We agree with
Appellants that Kaufman does not disclose determining the predetermined
number of groups and number of people based on the data input. See Reply
Br. 3. Although paragraph 28 of Kaufman discloses that after a
predetermined amount of time, each group may be divided into two or more
subgroups, determined "by a likelihood of benefit, e.g., enjoyment of the
players," i.e., determining groups and subgroups responsive to input,
Kaufman does not disclose determining a number of subgroups and a
subgroups size parameter responsive to data input.
Thus, for the above reason, we do not sustain the Examiner's
rejections of independent claims 1, 8, and 15. For the same reason, we also
do not sustain the Examiner's rejections of dependent claims 2-7, 9-14, and
16-20.
4
Appeal2013-009995
Application 12/366,322
DECISION
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are REVERSED.
REVERSED
5