Ex Parte Burckart et al

Patent Trial and Appeal Board

Dec 19, 2016

10733658 (P.T.A.B. Dec. 19, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/733,658 12/11/2003 Erik J. Burckart LOT920030032US1 (017) 8852
46321 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
12/21/2016 EXAMINER
LONG, ANDREA NATAE
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIK J. BURCKART, JAMES PATRICK GALVIN JR, and
BRIAN L. PULITO
Appeal 2015-007667
Application 10/733,658
Technology Center 2100
Before CARL W. WHITEHEAD JR., ERIC S. FRAHM, and
KAMRAN JIVANI, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-007667
Application 10/733,658
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 7, 9, 13, and 18. Claims 2, 4—6, 8, 10-12, and 14—17 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Exemplary Claims
Exemplary claims 1 and 7 under appeal, with emphases added, read as
follows:
1. A method for policy driven, online meeting updates
during a course of an electronic meeting, comprising:
providing a meeting event to different groups of
participants in the electronic meeting in a sequence ordered by
a relative priority assigned for each group upon
a determination that a priority policy is available as a meeting
policy, otherwise yrovidins the meetins event to randomly
selected different groups of participants in a staggered fashion.
7. A machine readable storage device having stored
thereon a computer program for conducting electronic
meetings, said computer program comprising a routine set of
instructions which when executed by a machine cause the
machine to perform a method for policy driven, online meeting
updates during a course of an electronic meeting, comprising:
providing a meeting event to different groups of
participants in the electronic meeting in a sequence ordered by a
relative priority assigned for each group upon a determination
that a priority policy is available as a meeting policy,
otherwise providing the meeting event to randomly selected
different groups of participants in a staggered fashion.
Examiner’s Rejections
(1) The Examiner rejected claims 7 and 9 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 2; Ans. 2—3.
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(2) The Examiner rejected claims 1,3,7, 9, 13, and 18 as being
unpatentable under 35 U.S.C. § 103(a) over the combination of Viertl (US
2002/0080172 Al; published June 27, 2002) and Tarbotton (US 7,013,330
Bl; issued Mar. 14, 2006 and filed Oct. 3, 2000). Final Act. 3^4; Ans. 3^4.
Issues on Appeal
Based on Appellants’ arguments in the Appeal Brief (App. Br. 4—7)
and the Reply Brief (Reply Br. 2—8), the following two issues are presented
on appeal:
(1) Did the Examiner err in rejecting claims 7 and 9 under
35 U.S.C. § 101 as being directed to non-statutory subject matter because a
computer readable storage medium cannot be a transitory signal?
(2) Did the Examiner err in rejecting claims 1, 3, 7, 9, 13, and 18 as
being obvious because the combination of Viertl and Tarbotton fails to teach
or suggest:
providing a meeting event to different groups of participants in
the electronic meeting in a sequence ordered by a relative
priority assigned for each group upon a determination that a
priority policy is available as a meeting policy,
otherwise yrovidins the meetins event to randomly selected
different groups of participants in a staggered fashion
(emphasis added), as recited in representative independent claim 1, and as
similarly recited in independent claims 7 and 13?
ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 2-4) in light
of Appellants’ contentions in the Appeal Brief (App. Br. 4—7) and Reply
Brief (Reply Br. 2—8) that the Examiner has erred, and have considered the
Examiner’s response to Appellants’ arguments in the Appeal Brief (Ans. 4—
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7). We disagree with Appellants’ conclusions as to claims 1, 7, and 13 and
provide the following for emphasis.
Rejection under 35 U.S.C. §101
We disagree with Appellants’ conclusions that claims 7 and 9 are
directed to statutory subject matter. We adopt as our own (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2; Ans. 2—3), and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans.
4—6).
Appellants contend (App. Br. 4; Reply Br. 2 4) claims 7 and 9 are
statutory, because (i) “the claim term ‘device’ necessarily excludes signals”
(App. Br. 4); and (ii) the dictionary definition of “device” includes “an
object, machine, or piece of equipment that has been made for some special
purpose” {Id. (see Device Definition, Meriam-Webster.com,
http://www.merriam-webster.com/dictionary/device (last visited Jan. 26,
2015))), and cannot be a signal or other propagation medium. Appellants’
contentions are not persuasive, because we agree with the Examiner that
“[gjiven its broadest reasonable interpretation, machine readable storage
encompasses both non-transitory and transitory (signals) embodiments”
(Ans. 2). In addition, we emphasize the following.
First, Appellants’ Appeal Brief points to Figures 1 and 2 for support
of the machine readable storage recited in claim 7 (see App. Br. 2—3
(Summary of Claimed Subject Matter)). Notably, Appellants disclose
Figure 2 is a process flowchart for a software program (note at Appeal Brief,
page 3, Appellants state “the computer program performs,” indicating that
claim 7 is directed solely to a computer program) for performing the method
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recited in claim 7 (see Spec. 114). And, Figure 1 is a “conceptual
illustration” of a system (see Spec. 113), and fails to show any “machine
readable storage device.” By way of differentiation, Appellants do NOT
refer to e-meeting server 101, shown in Figure 1, for support of the claimed
“machine readable storage device” in claim 7, but DO refer to e-meeting
server 101 for support of the server recited in claim 13 (see App. Br. 3).
Second, although the Specification describes statutory embodiments
of software (see Spec. 125), a computer program product, computer
program, or application (see Id. Tflf 26 and 27), we find that the Specification
fails to define a machine readable storage device. Thus, the Specification
does not limit machine readable storage device to only statutory
embodiments, and claims 7 and 9 must be interpreted to cover both statutory
and non-statutory types of media.
[Tjhose of ordinary skill in the art would understand the claim
term “machine-readable storage medium” would include signals
per se. Further, where, as here, the broadest reasonable
interpretations of all the claims each covers a signal per se, the
claims must be rejected under 35U.S.C. § 101 as covering non-
statutory subject matter.
See Ex Parte Mewherter, 107 USPQ2d 1857, 1862 (BPAI2013)
(precedential in relevant part).
Third, we note that Appellants are not precluded from amending these
claims to overcome this rejection. Nor are Appellants precluded from
amending the Specification to specifically define “machine readable storage
device” to include only statutory storage media. Guidance on this point is
provided in U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)
(“A claim drawn to such a computer readable medium that covers both
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transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”). See
also U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility
Under 35 USC § 101 (August 2012 Update) (pages 11—14), available at
http ://www.uspto.go v/patents/law/ exam/10 l_training_aug2012 .pdf
(noting that while the recitation “non-transitory” is a viable option for
overcoming the presumption that those media encompass signals or carrier
waves, merely indicating that such media are “physical” or tangible” will not
overcome such presumption).
Fourth, and finally, we do not find the term “device” to be effectively
narrower than the term “medium,” as far as limiting the claimed subject
matter to a non-transitory element. For example, Google defines “device” as
“a plan, scheme, or trick with a particular aim.”1 Dictionary.com defines
“device” as “a plan or scheme for effecting a purpose” or “an invention or
contrivance.”2 Further, a plan or invention serving a particular aim/purpose
can be a computer program or software — just as Appellants define the
invention of claims 7 and 9 in their own Specification as outline above.
Consequently, we find the Examiner did not err in rejecting
independent claim 7, as well as claim 9 which depends therefrom, under 35
U.S.C. § 101, as being directed to non-statutory subject matter.3
1 https://www.google.com/7gws rd=ss1#q=device+definition, last accessed
Dec. 10, 2016.
2 httpi/7www.dictionary,com/browse/device, last accessed Dec. 10, 2016.
3 We do not look beyond the issue raised in the Appeal Brief that the
Examiner improperly rejected claims 7 and 9 as failing to fall within a
statutory category as non-transitory storage media/devices. However, upon
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Rejection under 35 U.S.C. § 103(a)
The Examiner relies upon Tarbotton (col. 6,1. 52—col. 7,1. 2; see Ans.
4) as disclosing the limitation at issue in claims 1, 7, and 13, of (i)
determining a priority policy is available as a policy; (ii) providing an update
to different groups of participants in a sequence ordered by a relative priority
assigned for each group; and (iii) if not priority policy is available, then
providing the update to randomly selected different groups of participants in
a staggered fashion.
However, Tarbotton merely discloses that if a priority is detected as
being at a low level, then no download (i.e., update) is performed (col. 6,11.
52—56); and if a priority is found to be equal to or higher to a set amount,
then random selection is used to issue the download (i.e., update) (col. 6,11.
56—58). In other words, a priority policy is always available, and therefore
Tarbotton never discloses doing something (such as providing an event in
random order as claimed) in response to a determination that NO priority
policy exists.
In view of the foregoing, Appellants’ arguments (App. Br. 7) that
Tarbotton, and thus the combination of Viertl and Tarbotton, fails to teach or
suggest, (i) selectively providing an event either in priority order or in a
staggered order dependent upon a determination that a priority policy exists
or does not exist; and/or (ii) providing a meeting event to different targets
further prosecution, and in light of our discussion above, the Examiner may
want to consider whether, despite nominally falling within a statutory
category, all of the claims on appeal are nevertheless drawn to a patent-
ineligible abstract idea, in view of the Supreme Court’s decision in Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014).
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based upon the priority policy; but if the priority policy does not exist,
providing the event in a random order, are persuasive.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of claims 1, 3, 7, 9, 13, and 18.
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 7 and 9 under
35 U.S.C. § 101 as being directed to non-statutory subject matter because a
computer readable storage medium as broadly construed could include non-
statutory matter.
(2) The Examiner erred in rejecting claims 1, 3, 7, 9, 13, and 18 as
being obvious because Tarbotton, and thus the combination of Viertl and
Tarbotton, fails to teach or suggest “providing a meeting event to different
groups of participants in the electronic meeting in a sequence ordered by a
relative priority assigned for each group upon a determination that a
priority policy is available as a meeting policy, otherwise providing the
meetins event to randomly selected different srouvs of participants in a
staggered fashion(emphasis added) as recited in each of independent
claims 1, 7, and 13.
DECISION
(1) The Examiner’s rejection of claims 7 and 9 under 35 U.S.C. § 101
as being directed to non-statutory subject matter is affirmed.
(2) The Examiner’s obviousness rejection of claims 1, 3, 7, 9, 13, and
18 under 35 U.S.C. § 103(a) is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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