Ex Parte Bradley et al

Patent Trial and Appeal Board

Jan 30, 2017

12492941 (P.T.A.B. Jan. 30, 2017)

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.
12/492,941 06/26/2009 Lisa Marie Wood Bradley RSW920090032US1/40403-051 8299
75949 7590 02/01/2017
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
GILLS, KURTIS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA MARIE WOOD BRADLEY,
TIMOTHY BRANTNER,
JASON MICHAEL BROWN, and
HELEN LORETTA GAWOR
Appeal 2015-002683
Application 12/492,9411
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lisa Marie Wood Bradley et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1—3, 5—7, 9, 10, 15, 18, and
22—35. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal 2015-002683
Application 12/492,941
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for implementing an action-based to-do list comprises:
accessing a task definition file listing an external application in
which a to-do task on the action-based to-do list is to be performed, in
which the task definition file comprises a number of criteria which are
tracked and used to automatically manipulate the action-based to-do
list;
automatically configuring the external application within the
user’s computing environment to facilitate the user accomplishing the
to-do task;
monitoring, with a personal management device, user actions
within the external application;
comparing, with the personal management device, the user
actions within the external application to the number of criteria in the
task definition file;
determining when the user actions within the external
application fulfill a criteria within the task definition file; and
automatically modifying the to-do list with the personal
management device based on the fulfilled criteria.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Bauer US 5,877,759 Mar. 2, 1999
Weber US 2008/0155547 A1 June 26,2008
The following rejections are before us for review:
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1. Claims 1—3, 5—7, 9, 10, 15, 18, and 22—35 are rejected under
35 U.S.C. §101 as being directed to non-statutory subject matter.
2. Claims 1—3, 5—7, 9, 10, 15, 18, and 22—35 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Weber and Bauer.
ISSUES
Did the Examiner err in rejecting claims 1—3, 5—7, 9, 10, 15, 18, and
22—35 under 35 U.S.C. §101 as being directed to non-statutory subject
matter?
Did the Examiner err in rejecting claims 1—3, 5—7, 9, 10, 15, 18, and
22—35 are rejected under 35 U.S.C. §103(a) as being unpatentable over
Weber and Bauer?
ANALYSIS
The rejection of claims 1—3, 5—7, 9, 10, 15, 18, and 22—35 under 35 U.S.C.
§101 as being directed to non-statutory subject matter.
We have reviewed the Examiner’s position (Ans. 39-40) and the
Appellants’ response (Reply Br. 21—23) and find that the record supports the
Appellants’ argument for patent-eligibility.
The Appellants argue that “claim 1 configures an external application
within the user’s computing environment. Next, the specific user’s actions
are monitored and compared to selected criteria in the task definition file.”
Reply Br. 22. In other words, the Appellants advocate viewing claim 1 as
rooted in technology. The other independent claims — claims 15 and 35 have
similar limitations.
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Application 12/492,941
The Specification explains that “managing a to-do list can be time
consuming and disruptive. The user has to take the time to both add tasks to
the list as they come up and to remove or update tasks on the list as they are
fully or partially completed.” Spec. para. 1. This is the problem the
invention seeks to solve. Later, the Specification discusses the solution:
This specification describes systems and methods of managing
a to-do list that monitor the actions of a user and interpret these
actions with respect to the items on a to-do list so as to help create and
manage the to-do list. In this way, the user does not always have to
manually add items to their to-do list, and the user does not always
need to mark items complete when they are done because the system
will keep track of actions that constitute completion of at least some
of the to-do tasks. The system recognizes the actions of the user and
how they relate to the to-do list.
Para. 21.
The Specification discusses how the system solves the problem, as
exemplified in Fig. 1.
The action-based to-do list assists a user in remembering and
accomplishing a variety of tasks. According to one illustrative
embodiment, the personal management device contains a computer
storage unit which stores a task definition file. The task definition file
contains a number of criteria which can be tracked and used to
automatically manipulate the to-do list. The processor of the personal
management device monitors the user’s actions and compares the
user’s actions to the criteria within the task definition file to determine
if one or more of the criteria have been fulfilled. If a criterion has
been met, the processor of the personal management device then
modifies the to-do list based on the fulfilled criteria.
Para. 32. The claims are directed to such a system.
Reading the claims in light of the Specification, it becomes clear that
the solution to the problem the inventors have sought to overcome is rooted
in technology; that is, via a task definition file comprising a number of
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Application 12/492,941
criteria; automatically configuring the external application within the user’s
computing environment to facilitate a user accomplishing a to-do task;
monitoring, with a personal management device, user actions within the
external application; comparing, with the personal management device, the
user actions within the external application to the number of criteria in the
task definition file; determining when the user actions within the external
application fulfill a criteria within the task definition file; and automatically
modifying the to-do list with the personal management device based on the
fulfilled criteria.
The Examiner’s position appears to be that the individual steps and
their ordered combination are no more than a combination of common
functions performed by a generic computer system. If that were the case,
such a combination would indeed not provide meaningful limitations to
transform the abstract idea of “scheduling” (Ans. 39) into a patent eligible
application. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014)
However, as the Appellants have implicitly argued — and supported by
what the Specification describes — the claims provide for more than a
generic computer system operating in a conventional manner. Rather, the
claims present an unconventional technological solution (involving a task
definition file; configuring an external application, etc.).
Because we find the claims present an unconventional technological
solution, we find in favor of their patent-eligibility. Cf. DDR Holdings, LLC
v. Hotels.com, F.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“[TJhese claims
stand apart because they do not merely recite the performance of some
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business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.”). See also Amdocs
(Israel) Limited v. Openet Telecom, Inc, No. 2015-1180, 2016 WL 6440387,
*10 (Fed. Cir. Nov. 1,2016):
“[T]his claim entails an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
The solution requires arguably generic components, including
network devices and “gatherers” which “gather” information.
However, the claim’s enhancing limitation necessarily requires that
these generic components operate in an unconventional manner to
achieve an improvement in computer functionality.
The enhancing limitation depends not only on the invention’s
distributed architecture, but also depends upon the network devices
and gatherers—even though these may be generic—working together
in a distributed manner.
For the foregoing reasons, the rejection is not sustained.
The rejection of claims 1-3, 5-7, 9, 10, 15, 18, and 22-35 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Weber and Bauer.
All the claims include a limitation to a “task definition file.”
Independent claim 1 describes the task definition file as “listing an external
application in which a to-do task on the action-based to-do list is to be
performed, in which the task definition file comprises a number of criteria
which are tracked and used to automatically manipulate the action-based to-
do list.” Independent claim 15 describes the task definition file as having a
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“listing comprising a list of external applications in which a to-do task on the
action-based to-do list is to be performed.” Independent claim 35 is similar
to claim 15.
In each case, the Examiner relies on Weber’s disclosure of a
transactional calendar. See Final Act. 4, 15, and 30 for claims 1,15 and 35,
respectively. More particularly, the Examiner cites to a “transactional
calendar file.” See Ans. 43.
However, we have been unable to find in Weber any disclosure of a
“transactional calendar file.”
Also, no claim construction analysis has been provided to determine
whether the claim phrase “task definition file,” when given the broadest
reasonable constmction, encompasses Weber’s transactional calendar. In
that regard, the Specification (para. 32) discloses an embodiment whereby
the personal management device contains a computer storage unit
which stores a task definition file. The task definition file contains a
number of criteria which can be tracked and used to automatically
manipulate the to-do list. The processor of the personal management
device monitors the user’s actions and compares the user’s actions to
the criteria within the task definition file to determine if one or more
of the criteria have been fulfilled. If a criterion has been met, the
processor of the personal management device then modifies the to-do
list based on the fulfilled criteria.
Emphasis added.
As reasonably broadly construed in light of the Specification, the
claimed “task definition file” comprises certain criteria; in the case of
claim 1, the certain criteria are broad in scope but “are tracked and used to
automatically manipulate the action-based to-do list” and in the case of
claims 15 and 35, the certain criteria are “completion criteria.” In all the
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claims, the personal management device compares user actions to the criteria
in the task definition file. Based on the comparison, as claimed, the to-do
list is automatically modified with the personal management device based on
the fulfilled criteria.
Turning to Weber, the transactional calendar it discloses does not
appear to include any criteria against which user actions are compared and
once compared a to-do list is automatically modified with the personal
management device based on the fulfilled criteria. Weber describes a
scenario where a calendar interface submits a defined task to an online
service which executes the task and returns the task result back to the
transactional calendar. Para. 34. Weber also discusses the type of “task
record” the online service sends to the calendar. See paras. 49-53. But
nowhere does Weber disclose the transactional calendar as comprising
certain criteria, let alone criteria against which user actions are compared by
a personal management device so that, based on the comparison, a to-do list
is automatically modified with the personal management device based on the
fulfilled criteria, as claimed. Accordingly, we do not find the claimed “task
definition file” reads on Weber’s transactional calendar as the Examiner has
found. Nor do we find that Weber’s transactional calendar would lead one
of ordinary skill in the art to the claimed “task definition file.”
Because a prima facie case of obviousness has not been made out in
the first instance by a preponderance of the evidence, the rejection is not
sustained.
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CONCLUSIONS
The rejection of claims 1—3, 5—7, 9, 10, 15, 18, and 22—35 under
35 U.S.C. §101 as being directed to non-statutory subject matter is reversed.
The rejection of claims 1—3, 5—7, 9, 10, 15, 18, and 22—35 under 35
U.S.C. §103(a) as being unpatentable over Weber and Bauer is reversed.
DECISION
The decision of the Examiner to reject claims 1—3, 5—7, 9, 10, 15, 18,
and 22—35 is reversed.
REVERSED
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