Ex Parte Lee et al

Patent Trial and Appeal Board

Dec 14, 2014

12050477 (P.T.A.B. Dec. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YONG LEE and DAVID KOOPMAN
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Appeal 2012-007415
Application 12/050,477
Technology Center 2400
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Before: MICHAEL W. KIM, BART A. GERSTENBLITH, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
The claims are directed to a method for granting and receiving
electronic calendar access via an exposed Application Programming
Interface (API). Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising the steps of:
a) entering, by a second party, a service partnership with
a provider of an electronic calendar of a first party, said service
partnership providing that, upon a request of said first party
requesting that said second party be provided access to said
electronic calendar, said second party will be provided access to
said electronic calendar to insert an event;
b) responsive to said request being made by said first
party, receiving, by said second party, access to an exposed
Application Programming interface (API) of said electronic
calendar of said first party to insert said event;
c) storing a record indicating access to said electronic
calendar of said first party;
d) generating a configured data regarding said event, said
configured data being compatible with said electronic calendar
of said first party; and
e) inserting said event in said electronic calendar of said
first party by transmitting said configured data to said electronic
calendar of said first party.

REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Bennett US 2006/0143265 A1 June 29, 2006
Tendjoukian US 2007/0016646 A1 Jan. 18, 2007
Baio US 2007/0260636 A1 Nov. 8, 2007
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REJECTIONS
Claims 1–7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baio and Bennett.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Baio, Bennett, and Tendjoukian.1

ANALYSIS
Claims 17
Appellants argue the claims together. App. Br. 5–24; Reply Br. 5–23.
We select claim 1 as representative, treating claims 2–7 as standing or
falling with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Baio discloses the invention substantially as
claimed, except for the step of
entering, by the second party, a service partnership with a
provider of a resource of the first party, said service partnership
providing that, upon a request of said first party requesting that
said second party be provided access to said resource, said
second party will be provided access to said resource.
Ans. 6. To cure this deficiency, the Examiner turns to the teachings in
Bennett regarding establishing a service agreement between an application
and a telecommunications network, and providing a second party access to a
resource of the first party. Id. (citing Bennett Abst.; ¶ 30). Based on these
teachings, the Examiner concludes that it would have been obvious for a

1 Although the Examiner includes claim 9 in the heading for this ground of
rejection, claim 9 was previously canceled. App. Br. 27; Final Office Action
dated October 24, 2011. The Examiner does not present findings for claim
9, nor is claim 9 under appeal. Ans. 9; App. Br. 4.
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skilled artisan to use Bennett’s XML schema in Baio’s calendaring system in
defining a partnership between the first and second parties, because “any
terms could be defined in the agreement including upon request of said first
party, said second party will be provided access to the first party’s
electronic calendar.” Id. According to the Examiner, the benefit of such
proposed combination would be “a more flexible and streamlined method
for defining service agreements as opposed to ‘free-form text documents.’”
Id. at 6–7 (citing Bennett ¶ 36).
Appellants contend the Examiner erred in rejecting the claims for
numerous reasons including: 1) the cited references are not analogous prior
art; 2) the invention was not considered “as a whole”; 3) the interpretation of
one or more terms provided by Appellants was disregarded; 4) misplaced
reliance on inherency; 5) failure to establish prima facie obviousness
because all claim limitations are not taught or suggested by the prior art;
6) failure to take note of Appellants’ arguments and answer the substance of
such arguments or provide a clear explanation of actions taken during
prosecution of the application. App. Br. 6–24; Reply Br. 5–23. Appellants’
arguments in support of these contentions are not persuasive for the reasons
provided.
As Appellants note, the present appeal is related to two other related
applications presently on appeal. App. Br. 5. Appellants, in both the Appeal
Brief and Reply Brief, proffer generic arguments encompassing the present
appeal and these related applications. These arguments, however, do not
address specifically the Examiner’s stated case for obviousness with respect
to claim 1. As a result, we are left to comb through Appellants’ arguments
to decipher which, if any, apply to claim 1. For example, Appellants proffer
arguments directed to Gingras, Doane, and Burch, yet the ground of
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rejection does not include these references. App. Br. 917, 23, and 24. As a
result, any argument discussing to Gingras, Doane, or Burch is misplaced.
Appellants also proffer arguments directed to limitations not found in
claim 1, which we do not consider. For example, Appellants’ arguments
pertaining to
a ‘trust list’ of approved entities, selected by a user of the
electronic calendar to provide access to the electronic
calendar, a calendar event created by a member of the trust list
and an API of the electronic calendar exposed to the member of
the trust list to allow the member of the trust list to insert the
created calendar event into the electronic calendar of the user
of the electronic calendar
are not persuasive because claim 1 does not recite a “trust list.” App. Br. 8.
In failing to address the Examiner’s specific findings with regards to
claim 1, Appellants’ arguments fall short in informing us of how the
Examiner’s stated findings with regards to the calendaring system of Baio,
combined with the service partnership between a second party and first party
of Bennett, are in error. We note that the Examiner addresses reasonably
Appellants’ arguments in the Examiner’s Answer. After carefully reviewing
the Examiner’s findings and conclusions of obviousness, in light of
Appellants’ arguments directed to Baio and Bennett and the limitations of
claim 1, we adopt the Examiner’s response to Appellants’ arguments on
pages 10 to 17 of the Answer, as the Examiner’s response articulates
sufficiently reasons as to why Appellants’ arguments do not persuasively
apprise us of error in the Examiner’s findings.
With respect to Baio as an example, Appellants take the position that
the event repository of Baio is an event application interface for users to
share and collaborate in a social events network environment, and not an
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electronic calendar. App. Br. 9; Reply Br. 6. In support thereof, Appellants
point out that “the word ‘calendar’ appears only 3 times in the Baio
reference, none of which refer[s] to an electronic calendar.” Id. As
correctly noted by the Examiner, despite using different phraseology, the
events repository of Baio has the same functionality as the events calendar
recited in claim 1. See Ans. 10–17. Appellants do not explain sufficiently,
nor direct us to evidence in Baio, demonstrating adequately that Baio’s
description of “events repository” is inconsistent with Appellants’
description of electronic calendar. See Ans. 12 (citing Baio, Figs. 1C and
2A). A reference does not have to satisfy an ipsissimis verbis test to disclose
a claimed feature, and Appellants do not identify any feature of the claimed
electronic calendar that distinguishes over Baio’s events repository.2
Appellants’ further argument that Baio discloses a third party
application having the ability to view and modify social events via an API,
but does not “show a second party inserting a calendar event into a first
party’s electronic calendar” is likewise not convincing. App. Br. 11, 16;
Reply Br. 21–22. The Examiner points properly to the explicit disclosure in
Baio of a feature “called ‘event.add’ which allows a new event to be created
(Table 1, Paragraph 58)” by a third party to access, view, and modify event
information contained in the events repository used by the first-party
application. Ans. 13–14; see also Baio ¶ 30. Appellants counter that the
event.add method requires user authentication before adding an event to the
database, which teaches away from the claimed method of granting a second
party access to the first party’s electronic calendar response to the first
party’s request. App. Br. 21–23. The Examiner reasonably explains “just

2 See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
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because the event.add function may require authentication does not preclude
it from reading on the claim language.” Ans. 16. As such, Appellants do
not apprise us persuasively of error in the Examiner’s findings directed to
Baio.
With respect to the Examiner’s finding that Bennett teaches a service
partnership, Appellants argue that Bennett does not teach “a service
partnership with a provider of an electronic calendar.” App. Br. 17.
Instead, Appellants argue that Bennett discloses “methods for establishing a
service agreement between an application and a telecommunication network
. . . .” App. Br. 21. According to Appellants,
[t]his is clearly different than the claimed ‘service partnership’
(‘providing that, upon a request of said first party requesting
that said second party be provided access to said electronic
calendar’) between a ‘second party’ (defined as ‘any
individual, entity, business, corporation, partnership,
organization, governmental entity, and/or educational
institution’ in Appellant[s’] specification, para. [0027]) and ‘a
provider of an electronic calendar of a first party.’
Id. at 22. Appellants’ arguments are not convincing because the Examiner
relies on Baio to disclose the electronic calendar, e.g. “resource,” and
Bennett to disclose the service agreement. Ans. 6, 7, and 14. As such,
Appellants do not apprise us of error in the Examiner’s findings or
interpretation of Bennett.
In the present appeal, Appellants do not challenge the Examiner’s
reasons to combine the teachings of Baio and Bennett, which are expressly
articulated and supported by rational underpinnings.3

3 See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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For these reasons, and based on the record before us, we sustain the
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Baio and Bennett, and claims 2–7 fall therewith.

Claim 8
Appellants do not provide a separate argument for claim 8, and rely
on the same unpersuasive arguments made in connection to claim 1 that we
considered previously. App. Br. 24; Reply Br. 21. We, therefore, sustain
the rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Baio, Bennett, and Tendjoukian.

DECISION
The decision of the Examiner to reject claims 1–8 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) (2011).

AFFIRMED
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