Ex Parte Dale

Board of Patent Appeals and Interferences

May 26, 2010

10608876 (B.P.A.I. May. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JONATHAN DALE
____________________

Appeal 2009-013626
Application 10/608,876
Technology Center 3600
____________________
Decided: May 26, 2010
____________________

Before HUBERT C. LORIN, ANTON W. FETTING, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/608,876

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejections of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.1

THE INVENTION
Appellant’s claimed invention relates to a system and method for
dynamic service scheduling which can create itineraries that link to any
number of services for fulfilling events for a user's tasks. (Spec. 3).
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A method for dynamic service scheduling
comprising:
identifying a template specifying a plurality of
events;
determining a plurality of consumer descriptors;
accessing a remote service directory having service
descriptors for each of a plurality of services;
filtering the services from the service directory
based on the service descriptors, the events, and the
consumer descriptors to determine potential ones of the
services for filtering the events;
querying each of the potential services for
additional service descriptors;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Mar. 16, 2009) and Reply Brief (“Reply Br.,” filed Jun. 30, 2009),
and the Examiner’s Answer (“Ans.,” mailed Apr. 30, 2009).
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filtering the potential services based on the
additional service descriptors, the events, and the
consumer descriptors to determine selected ones of the
services for fulfilling the events;
identifying service links for accessing the selected
services;
modifying the template to associate the service
links with the events;
determining whether each of the events in the
template has an associated service link; and
when each of the events in the template has an
associated service link, presenting the template for
acceptance.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rose et al. US 2008/0010105 A1 Jan. 10, 2008
Sobalvarro et al. US 2006/0287897 A1 Dec. 21, 2006
The Examiner rejected claims 11-20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Additionally, the Examiner rejected
claims 1-31 under 35 U.S.C. § 103(a) as unpatentable over Rose and
Sobalvarro.
ISSUES
Appellant argues that independent claim 11 drawn to a “consumer
system” that recites a database, an interface, and an agent is tied to a
machine, and thus statutory under 35 U.S.C. § 101. (App. Br. 14, see also
Reply Br. 2). Additionally, Appellant argues that the combination of Rose
and Sobalvarro fails to teach or suggest the steps of identifying a template
specifying a plurality of events and modifying the template to associate the
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service links with the events, as recited by representative independent claim
1. (App. Br. 15) (See also Reply Br. 2). Independent claims 11, 21, and 31
recite substantially similar limitations and Appellant does not set forth
additional arguments as to their patentability. (App. Br. 17). Further,
Appellant argues that the Examiner has failed to point to any reason for
modifying Rose’s web page to include Sobalvarro’s package offerings.
(App. Br. 16).
In response, the Examiner finds that under the broadest reasonable
interpretation consistent with Appellant’s Specification, the claimed
elements of the “consumer system” of claim 11 may be interpreted to be
software, and thus non-statutory under 35 U.S.C. § 101. (Ans. 3-4).
Additionally, the Examiner finds that the combination of Rose and
Sobalvarro teaches the steps of identifying a template specifying a plurality
of events and modifying the template to associate the service links with the
events, as recited by representative independent claim 1. (Ans. 4-6).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
Has Appellant shown that Claim 11 is not directed to a process or
computer software, but rather is directed to a “consumer system” that
includes, at a minimum, a database, an interface, and an agent, and thus
statutory under 35 U.S.C. § 101?
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Has Appellant shown that that the combination of Rose and
Sobalvarro fails to teach or suggest the steps of identifying a template
specifying a plurality of events and modifying the template to associate the
service links with the events, as recited by representative claim 1?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).

Claim Interpretation
1. Appellant’s Specification describes that “interface 42 may include
any suitable combination of hardware and/or logic for interacting with other
components.” (p. 12, ll. 27-30).
2. Appellant’s Specification describes the functional elements for
“agent 40” include “an interface 42, a description 44, a knowledge base 46, a
plan 48, and a plan processing engine 50.” (p. 10, ll. 9-11).
3. The ordinary and customary meaning of a “database” is “2) [a]
collection of data fundamental to a system.” (See The Authoritative
Dictionary of IEEE Standards Terms (7th Ed. 2000)).
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4. The ordinary and customary meaning of an “event” is “3)
something that occurs in a certain place during a particular interval of
time.”2 (p. 3, ¶ [0011]).

Rose
5. Rose is directed to a web-based reservation booking system for
merchants. (Abs.).
6. Figure 5A of Rose depicts a web home page which allows a user to
search and make online reservations from a list of affiliated proprietors in
the restaurant, golf, and bed & breakfast industries. (Fig. 5A, ¶ [0052]).
7. Rose describes that the web home page has links to the different
“super-communities.” These “super-communities” are organized based on
their respective industry. (¶ [0052]).
8. Rose describes that its reservation system may be used for any
industry where advanced bookings by customers is commonplace such as a
salon, spa, cinema, sports, performing arts, medical industries, etc.
(¶ [0054]).
9. Rose describes that once a user navigates to a specific “super-
community,” a second data entry window allows the user to search multiple
available reservations at different restaurants affiliated with the “super-
community” based upon the user’s search criteria. (¶ [0056]).

2 Event Definition, Dictionary.com Unabridged. Random House, Inc.,
http://dictionary.reference.com/browse/event (last visited May 17, 2010).

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Sobalvarro
10. Sobalvarro is directed to a system and method for grouping and
selling products or services such as travel packages. (Abs.).
11. Sobalvarro describes that its system dynamically generates a
webpage for a consumer which includes at least one travel package based on
an elicited consumer constraint at least one travel package template, and at
least one stored available travel component description. (¶ [0024]).
12. Sobalvarro describes that consumer constraints are based on
desired trip criteria. (¶ [0083], see also Fig. 2C).
13. Sobalvarro describes that if a consumer selects an event’s
hypertext link a more detailed descriptive about that event will be displayed.
(¶ [0100], see also Fig. 2E).
14. Sobalvarro describes that the detailed description includes
information such as transportation, hotel, car rental, restaurant,
entertainment and/or other components of the package and may give the
consumer the option of requesting upgrades and/or adding on optional
components. (¶ [0100]).

PRINCIPLES OF LAW
Statutory Subject Matter
“The four categories [of § 101] together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101 even if the subject matter is otherwise new and useful.” In re
Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). A claim to a data structure
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per se is non-statutory. See In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed.
Cir. 1994). “Data structures not claimed as embodied in computer-readable
media are descriptive material per se and are not statutory because they are
not capable of causing functional change in the computer.” MPEP §
2106.01(I) (8th ed., Rev. 6, Sept. 2007) (citing Warmerdam, 33 F.3d at
1361). Similarly, a claim to a computer listing per se is non-statutory. Id.
“[C]omputer programs claimed as computer listings per se, i.e., the
descriptions or expressions of the programs, are not physical ‘things.’ They
are neither computer components nor statutory processes, as they are not
‘acts’ being performed. Such claimed computer programs do not define any
structural and functional interrelationships between the computer program
and other claimed elements of a computer which permit the computer
program’s functionality to be realized.” Id.

Obviousness
“Section 103 forbids issuance of a patent when ‘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 obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

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ANALYSIS
Claims 11-20 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
Appellant generally argues that Claim 11 is not directed to a process
or computer software, but rather is directed to a “consumer system” that
includes, at a minimum, a database, an interface, and an agent. (App. Br. 14,
see also Reply Br. 2). Specifically, Appellant argues that “. . . the interface
and agent elements rejected by the Examiner are ‘incorporated in and/or
provided by any suitable network accessible equipment.’ Specification, p.
12.” (App. Br. 14, see also Reply Br. 2). We are not persuaded by
Appellant’s arguments and agree with the Examiner that independent claim
11 is indeed drawn to “software per-se,” and thus directed towards non-
statutory subject- matter. (Ans. 3-4).
In making this determination, we find that contrary to Appellant’s
contention that an “interface” as claimed is tied to a machine, Appellant’s
Specification describes that an “interface” may include hardware and/or
software. (FF 1). Accordingly, under the broadest reasonable interpretation
consistent with Appellant’s Specification, an interface may be software.
Similarly, Appellant’s Specification describes that an “agent” consists of “an
interface 42, a description 44, a knowledge base 46, a plan 48, and a plan
processing engine 50” (FF 2), which commensurate with Appellant’s
Specification, we also interpret to be software. Lastly, with respect to the
claimed “database,” we interpret a database to be a collection of data stored
within a file (FF 3), and not directed towards any type of apparatus or
hardware which would define the structural and functional interrelationships
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between the software and other claimed elements of a computer to permit
the computer program’s functionality to be realized.
Thus, we find that the claimed “consumer system” of independent
claim 11 may be construed solely as software and/or data constructs since it
recites no apparatus or hardware that would instantiate any of the
instructions contained within the claimed elements. Therefore, since claim
11 recites no more than software, logic or a data structure, it does not fall
within any statutory category. In re Warmerdam, 33 F.3d at1361.
Accordingly, we find the Examiner did not err in rejecting claims 11-20
under 35 U.S.C. § 101 as directed to non-statutory subject matter.

Claims 1-31 rejected under 35 U.S.C. § 103(a) as being obvious over Rose
and Sobalvarro.
Independent claims 1, 11, 21, and 31
Appellant argues that the combination of Rose and Sobalvarro fails to
teach or suggest the step of identifying a template specifying a plurality of
events, as recited by representative independent claim 1. Specifically,
Appellant argues that a restaurant reservation as disclosed by Rose is not the
same as an “event” as required by Appellant’s claim 1. (App. Br. 15, see
also Reply Br. 2-3). Independent claims 11, 21, and 31 recite substantially
similar limitations and Appellant does not set forth additional arguments as
to their patentability. (App. Br. 16). We are not persuaded by Appellant’s
argument and agree with the Examiner that Rose teaches a template
specifying a plurality of events. (FF 6). (See also Ans. 7-8).
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In making this determination, we find that that the online reservation
system of Rose which discloses a web page home with links to different
“super-communities” is equivalent to the template as claimed by Appellant.
(FF 6, 7). These “super-community” pages allow users to make reservations
at establishments such as restaurants, salons, spas, cinemas, sports, and
performing arts centers affiliated within the specific “super-community”
based upon a users’ search criteria. (FF 6, 7, 9). While we agree with the
Appellant that Rose does not explicitly refer to these reservations as
“events,” we find the reservations disclosed by Rose to be an obvious
equivalent to an “event” as claimed by Appellant. Moreover, we find that an
“event” is something that occurs in a certain place at a certain time which
would include a dinner reservation. (FF 4). Thus, the combination of Rose
and Sobalvarro makes obvious the step of identifying a template specifying a
plurality of events, as recited by representative independent claim 1.
Therefore, Appellant’s argument is not persuasive as to error in the rejection
with respect to claims 1, 11, 21, and 31.
Additionally, Appellant argues that the combination of Rose and
Sobalvarro fails to teach or suggest the step of modifying the template to
associate the service links with the events, as recited by representative
independent claim 1. (App. Br. 16). Specifically, Appellant argues that
“. . .Sobalvarro's package offerings are fixed and cannot be modified.”
(App. Br. 16, see also Reply Br. 2-3). Independent claims 11, 21, and 31
recite substantially similar limitations and Appellant does not set forth
additional arguments as to their patentability. (App. Br. 17). We are not
persuaded by Appellant’s arguments and agree with the Examiner that
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Sobalvarro teaches a website that dynamically generates a travel package for
a consumer based on consumer constraints (i.e., criteria). (FF 11, 12).
Further, Sobalvarro teaches a hypertext link which displays a more detailed
description about that event. (FF 13). Thus, contrary to Appellant’s
contention that Sobalvarro’s offerings cannot be modified, Sobalvarro does
indeed modify its web page (i.e., template) to associate service links such as
transportation, hotel, car rental, restaurant, and entertainment to the travel
packages (i.e., event) generated. Therefore, the combination of Rose and
Sobalvarro makes obvious the step of modifying a template to associate
service links with the events, as recited by representative independent claim
1. Accordingly, Appellant’s argument is not persuasive as to error in the
rejection with respect to claims 1, 11, 21, and 31.
Lastly, Appellant argues that, “. . . the Examiner fails to point to any
reason for modifying Rose’s web page to include Sobalvarro’s package
offerings.” (App. Br. 16). To the extent Appellants seek an explicit
suggestion or motivation in the reference itself, this is no longer the law in
view of the Supreme Court’s holding in KSR Int’l Co., 550 U.S. 418. The
Examiner has provided an articulated reasoning with rational underpinning
for why a person with ordinary skill in the art would modify the web-based
reservation booking system of Rose which identifies a template specifying a
plurality of events (FF 5, 6) to incorporate the step of modifying a template
to associate service links with the events, as taught by the system for selling
dynamically generated travel packages of Sobalvarro. (FF 10, 11).
Specifically, the Examiner articulates a rationale based on providing
additional information such as related service links taught by Sobalvarro to
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the itinerary information provided by Rose, thereby modifying the web page
to incorporate this information. (Ans. 5).
We agree with the Examiner, and find that the modifications proposed
by the Examiner are nothing more than the simple substitution of one known
element for another or the mere application of a known technique to a piece
of prior art ready for the improvement. See KSR, 550 U.S. at 417. Further,
Appellants have not proffered any arguments as to why these substitutions of
known elements would not be obvious, but only make assertions as to their
inoperability. (App. Br. 16). Therefore, the combination of Rose and
Sobalvarro makes obvious the subject matter of independent claims 1, 11,
21, and 31. Accordingly, we find these arguments unpersuasive.

Dependent claims 2-10, 12-20, and 22-30
Appellant does not separately argue claims 2-10, 12-20, and 22-
30 which depend from claims 1, 11, and 21, respectively, and so has
not shown that the Examiner erred in rejecting claims 2-10, 12-20,
and 22-30 under 35 U.S.C. § 103(a) as unpatentable over Rose and
Sobalvarro for the same reasons we found as to claims 1, 11, 21, and
31, supra.

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CONCLUSION OF LAW
We conclude that the Appellant has not shown that Claim 11 is
directed to a “consumer system” that includes, at a minimum, a database, an
interface, and an agent, and thus statutory under 35 U.S.C. § 101.
We conclude that the Appellant has not shown that the combination of
Rose and Sobalvarro fails to teach or suggest the steps of identifying a
template specifying a plurality of events and modifying the template to
associate the service links with the events, as recited by representative claim
1.

DECISION
The decision of the Examiner to reject claims 11-20 under 35 U.S.C. §
101 is AFFIRMED. Additionally the decision of the Examiner to reject
claims 1-31 under 35 U.S.C. § 103(a) is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2007).

AFFIRMED

ack

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