Ex Parte Nastacio

Board of Patent Appeals and Interferences

Aug 9, 2012

10845964 (B.P.A.I. Aug. 9, 2012)

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.
10/845,964 05/14/2004 Denilson Nastacio RSW920040066US1 9742
75949 7590 08/10/2012
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
08/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DENILSON NASTACIO
____________________

Appeal 2011-001854
Application 10/845,964
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001854
Application 10/845,964

2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
18
1
. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to an accommodating preparatory work for
electronically scheduled meetings (Title). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for accommodating work associated
with an electronic meeting invitation, said method comprising,
with a computing device:
receiving an electronic invitation to a meeting;
associating a floating block of time with the meeting to
account for preparatory work for the meeting;
adding the floating block and the meeting to a user's
calendar; and
determining whether a first meeting conflicts with an
existing floating block associated with a different meeting, and,
if the first meeting conflicts with an existing floating block
associated with a different meeting, changing the existing
floating block on the user's calendar.

Claims 1, 3, 6, 11, and 13 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Fitzpatrick (US 5,774,867, iss. Jun. 30, 1998); claims 9 and
16-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Fitzpatrick; and claims 2, 5, 7, 10, 12, and 15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fitzpatrick in view of Conmy (US 7,082,402,
iss. Jul. 25, 2006)
2
.

1
The Examiner has indicated that pending claim 19 contains allowable
subject matter (Exam’r’s. Ans. 7).
2
Although Appellant has extensively argued a rejection under 35 U.S.C.
§ 101 in the Appeal Brief (pp. 10-11) and Reply Brief (pp. 4-7) , aside from
Appeal 2011-001854
Application 10/845,964

3
OPINION
We are persuaded the Examiner erred in asserting that Fitzpatrick
renders obvious “associating a floating block of time with the meeting to
account for preparatory work for the meeting; adding the floating block and
the meeting to a user’s calendar,” as recited in independent claims 1, 6, and
11 (App. Br. 12-14; Reply Br. 8). The Examiner asserts that “time and
duration for a conference” corresponds to both a meeting and floating block
of time associated with the meeting (Exam’r’s. Ans. 4-5). However, one
“time and duration for a conference” cannot correspond to both a meeting
and floating block of time associated with the meeting, each of which are
explicitly recited in independent claims 1, 6, and 11. See Texas Instr. Inc. v.
United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993)
(claim language cannot be mere surplusage. An express limitation cannot be
read out of the claim); Unique Concepts, Inc. v. Brown, 939 F.2d 1558, 1563
(Fed. Cir. 1991) (two distinct claim elements should each be given full
effect).
The Examiner further asserts that “col. 5, lines 42-67, Fitzpatrick,
teaches changing a conflict time for the user in order to prepare for the
meeting to be taken place” (Exam’r’s Ans. 7). However, the Examiner has
not shown how changing a conflict time has anything thing to do with the
meeting and floating block of time associated with the meeting, as recited in
independent claims 1, 6, and 11.

a brief reference on page 7 of the Examiner’s Answer, which appears to be
an oversight on the part of the Examiner, we find no such rejection pending.
Appeal 2011-001854
Application 10/845,964

4

DECISION
The Examiner’s rejection of claims 1-18 is REVERSED.

REVERSED

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