Ex Parte McCauley

Board of Patent Appeals and Interferences

Aug 11, 2009

10249085 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEPHEN F. McCAULEY
____________

Appeal 2009-009097
Application 10/249,085
Technology Center 3600
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Decided: August 11, 2009
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stephen F. McCauley (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-5. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to software-based methods and systems for
consumer scheduling of service provider appointments.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for finding and selecting a service Provider and
scheduling time appointments and providing for a plurality of users
seeking specific services from a list of service Providers in a
geographical area accessible by said user and service Provider
comprising:
at least one data base computer used with one or more Servers
for storing service Provider profiles and calendar information of
appointment open slot times of availability for services and service
Providers in a geographical area accessible by a user;
service Provider PC having access to said data base;
user PC for Consumer/Patient accessing said data base for
selecting a service Provider and requesting an appointment at a
specific time slot from a specific service Provider directed to said
service Provider's PC access;
service Provider reply means for notifying said user requesting
an appointment of approval or disapproval of said time slot;
user data collection means for transmitting user data to said service
Provider with time slot appointment request;
application program maintained on a (Host) Server for
scheduling for comparing different variables of information related to
a group of service Providers within a specific service geographical

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Sep. 11, 2006), amended Mar. 13, 2008, and the Examiner’s Answer
(“Answer,” mailed Nov. 26, 2008).

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area including the "first available" time slot and distance from user
presented to said user at the time the user is selecting an appointment
time slot; and
user confirmation includes means for notifying said user that
the service Provider has accepted the appointment at the designated
time requested by the user, or not.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Lewin
Moczygemba
US 2001/0005831 A1
US 2002/0059082 A1
Jun. 28, 2001
May 16, 2002
The following rejection is before us for review:
1. Claims 1-5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lewin and Moczygemba.

ISSUE
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-5 under 35 U.S.C. §103(a) as being
unpatentable over Lewin and Moczygemba.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
The scope and content of the prior art

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1. Lewin relates to providing services over the Internet.
2. Moczygemba relates to an appointment and payment system.
3. Moczygemba [0044] discloses that “[t]he patient selects a healthcare
provider from the ones who have made their appointment schedules
available on the database and the patient can the view the chosen
healthcare provider’s appointment schedule (140) [see Fig. 2].”
Any differences between the claimed subject matter and the prior art
4. The claimed subject matter is a combination of features and elements
separately disclosed in the cited prior art.
The level of skill in the art
5. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of computer-enabled scheduling. We
will therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the prior
art itself reflects an appropriate level and a need for testimony is not
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
6. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences

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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). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966). See also KSR, 550 U.S. at 407 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 17-18.

ANALYSIS
The Appellant argued claims 1-5 as a group (Br. 6-7). We select
claim 1 as the representative claim for this group, and the remaining claims
2-5 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Brief discusses two rejections. (Br. 7-8). The second one is not
before us and therefore we will not address the discussion of it. The Brief’s
discussion of the first rejection begins with what appears to be a request for
clarification of the grounds under which the rejection is being made. No
clarification is needed. The Final rejection (mailed Apr. 13, 2006, p. 4)
clearly states that the rejection is under § 103.
The Appellant’s argument is in two parts. The first part seeks to

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distinguish the claimed subject matter from Lewin because “Lewin is quite
complicated and requires a method and system that forces the user to input
data for searching that includes a general filter criteria and a specific filter
criteria.” (Br. 6. See also Br. 7): “In applicant’s claimed system, the server
database includes for each service provider a daily calendar that has open
time service provider availability that can be displayed easily on the user’s
computer display without the user going through the various steps that are
taught in the Lewin reference.” The second part involves Moczygemba
which the Appellant argues as failing to suggest “selecting different service
providers that include different variables of information” (Br. 7) and
therefore “does not cure these deficiencies” (Br. 7) of Lewin with respect to
the claimed subject matter.
The first part of the argument is unpersuasive as to error in the
rejection because the claims are not limited in scope to the extent argued.
The claims use the term “comprising” which is open-ended. The transitional
term “comprising” opens a claim to additional elements. See Genentech Inc.
v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). See also Moleculon
Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271 (Fed. Cir. 1986). The
scope of the claims are not limited so as to exclude the steps argued to be
additional to the claimed subject matter.
The second part of the argument is unpersuasive as to error in the
rejection because Moczygemba discloses selecting a service provider based
on appointment schedule. (FF 3). Accordingly, in contradistinction to what
the Appellant argues, Moczygemba does disclose selecting different service
providers that include different variables of information.

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The Appellant’s argument is therefore unpersuasive as to error in the
rejection.

CONCLUSIONS
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 1-5 under 35 U.S.C. § 103(a) as being unpatentable
over Lewin and Moczygemba.

DECISION
The decision of the Examiner to reject claims 1-5 is affirmed.

AFFIRMED

JRG

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