Ex Parte Nellutla

Patent Trials and Appeals Board

Oct 16, 2014

11558011 - (D) (P.T.A.B. Oct. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte THIRUMAL R. NELLUTLA
___________

Appeal 2012-000409
Application 11/558,011
Technology Center 3600
___________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE1
Thirumal R. Nellutla (Appellant) seeks review under 35 U.S.C. § 134 of
a final rejection of claims 1–18, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed January 31, 2011) and Reply Brief (“Reply Br.,” filed June 30,
2011), and the Examiner’s Answer (“Ans.,” mailed May 16, 2011).
Appeal 2012-000409
Application 11/558,011

2

The Appellant invented a way of “posting comments in a calendar
entry created by a meeting invitation so that the comments can be viewed by
other invitees” (Specification para. 1).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A computer implemented process
for adding a comment to a calendar entry on an
automated calendaring system,
the computer implemented process comprising:
[1] sending,
by a processing unit,
an invitation for a meeting
to a plurality of recipients
on an automated calendaring system;
[2] responsive to receiving an acceptance to the invitation,
creating,
by a processing unit,
a calendar entry
for the meeting
for recipients
of the plurality of recipients
that accepted the invitation
based on the invitation;
and
[3] responsive to receiving comments
regarding a topic
for the meeting
Appeal 2012-000409
Application 11/558,011

3

from the plurality of recipients,
adding,
by a processing unit,
the comments
to the calendar entry
for at least one recipient of the recipients
that accepted the invitation
before the meeting.
The Examiner relies upon the following prior art:
Bookspan US 6,636,888 B1 Oct. 21, 2003
Adams US 2006/0190485 A1 Aug. 24, 2006
Madhogarhia US 2007/0239507 A1 Oct. 11, 2007
Claims 1, 2, 7, 8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adams and Madhogarhia.
Claims 3–6, 9–12, and 15–18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Adams, Madhogarhia, and Bookspan.
ISSUES
The issues of obviousness turn primarily on whether the art describes
adding the comments that have been received responsive to such receiving.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Appeal 2012-000409
Application 11/558,011

4

Facts Related to the Prior Art
Adams
01. Adams is directed to “the field of electronic calendars and
specifically to a method of notifying a user of updated calendar
items.” Adams para. 1.
02. Adams describes notifying at least one invitee of an initial event
of changes to the initial event comprising receiving the initial
event comprising a plurality of initial event elements, receiving an
updated event comprising a plurality of updated event elements,
each updated event element corresponding to a respective initial
event element, comparing the updated event elements to the initial
event elements to determine which of the updated event elements
are changed event elements that differ from their respective initial
event elements and notifying the at least one invitee of any
specific changed event elements. Adams para. 6.
03. Adams may be used in traditional electronic calendar systems in
which invitees are notified of the initial event and the updated
event. The invitee is notified of the initial event such as by
sending an initial event notification. The initial event may then be
displayed, showing the initial event elements to the invitee. If the
location of the event has changed, a comparison of a location field
between the initial event and the updated event would reveal the
changed element. A comparison of comments fields includes a
comparison using a line-by-line comparison tool, of the type that
is known in the art, to show the specific changes in the comments
Appeal 2012-000409
Application 11/558,011

5

section if any. The invitee is notified of the updated event and the
updated event elements. The change notification could be
included in the updated event, for example, in the comments
section as shown in Fig. 3B. Fig. 3B shows an updated event
notification with a change notification in the comments field.
After the invitee is notified of the updated event and the changes,
the updated event may be accepted and in response, stored in the
invitee’s calendar. Adams paras. 29–33.
Madhogarhia
04. Madhogarhia is directed to the field of play date scheduling, more
specifically, to scheduling and coordinating play dates.
Madhogarhia para. 1.
05. Madhogarhia provides a network interface in which parents and
children are able to log on and find, as well as schedule, play dates
with other children who have similar interests and similar
backgrounds. Madhogarhia para 3.
06. FIG. 23 illustrates a discussion group page that lists topics that
either children or parents can click on in order to link to various
discussion groups. FIG. 24 illustrates a discussion thread page
that displays the comments posted by users about a topic. Users
are allowed to add their own comments to the threads of
comments that have already been posted on the particular
discussion group thread page. Madhogarhia paras. 81–82.

Bookspan
Appeal 2012-000409
Application 11/558,011

6

07. Bookspan is directed to scheduling of presentation broadcasts in
an integrated network environment. Bookspan 1:7–10.
08. The audience feedback section allows the user to specify how the
audience can communicate with the user. The most common
means of communication is through e-mail. Optionally, the user
can set up an IRC-compatible chat server, such as a Microsoft
EXCHANGE™ chat server, which will allow the user and
audience members to interactively communicate during the
presentation broadcast. Viewers of the presentation broadcast are
enabled to e-mail feedback during (or after) the presentation
broadcast, or send and receive chat messages during the
presentation broadcast. The chat feature requires a chat URL
registry entry to be specified by the network administrator.
Bookspan 9:57 – 10:27.
Appeal 2012-000409
Application 11/558,011

7

ANALYSIS
Claims 1, 2, 7, 8, 13, and 14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Adams and Madhogarhia
We are not persuaded by the Appellant’s argument that
Madhogarhia merely discloses comments posted on discussion
group pages. Claim 1 recites “responsive to receiving
comments regarding a topic for the meeting from the plurality
of recipients, adding, by a processing unit, the comments to the
calendar entry for at least one recipient of the recipients that
accepted the invitation before the meeting.” The discussion
group pages of Madhogarhia are not calendar entries. . . .
Additionally, Madhogarhia fails to disclose or suggest
that the comments are added to the calendar entry “responsive
to receiving comments regarding a topic for the meeting from
the plurality of recipients,” as recited in claim 1.
App. Br. 15.
The Appellant’s contention does not persuade us of error on the part of
the Examiner because the Appellant responds to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established “by attacking the references individually” when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).
The Examiner found that Adams describes adding comments regarding
calendar changes to the comments field in a calendar. FF 02–03. The
Examiner also found that Madhogarhia describes posting comments about a
topic in a play date calendaring system.
Appeal 2012-000409
Application 11/558,011

8

The limitation at issue is “responsive to receiving comments regarding a
topic for the meeting from the plurality of recipients, adding . . . the
comments to the calendar entry.” The operative functional limitation is
adding to the calendar entry the comments that have been received
responsive to receiving them. Adams does this by adding comments
regarding scheduling changes to the calendar entry.
The Examiner found it was known to add discussions regarding topics in
response to a calendar entry from Madhogarhia. We also find that Adams’
entries relate to the topic of calendar changes.
Even were this not the case, the nature of the comments, whether being
related to some topic or otherwise, cannot distinguish over the art. Even if
the comments data were not a topic for the meeting, this would not change
the conclusion. Our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
Appellant argues that the claimed topic for the meeting data patentably
distinguishes over the prior art discussion group comment data. We disagree
because Appellant has failed to establish that the claimed topic for the
Appeal 2012-000409
Application 11/558,011

9

meeting data label is in any way functionally related to the claimed
processing unit (substrate). As a result, Appellant’s claimed data label as
being a topic for the meeting data does not distinguish his invention from the
prior art.
To more readily see the issue, the limitation at issue may be broadly
construed as follows:
responsive to receiving DATA1 from the plurality of recipients, adding,
by a processing unit, the DATA1 to the calendar entry for at least one
recipient of the recipients that accepted the invitation before the meeting
wherein DATA1 is labelled as comments regarding a topic for the
meeting.
To agree with Appellant’s reasoning would mean that each novel
comment, over which the known calendar comments are added, is sufficient
to warrant a separate patent even if the remainder of the invention is
unchanged. This would result not only in Appellant’s topic for the meeting
distinguishing over the prior art, but equally would every single unique
topic. To give effect to Appellant’s argument, we would need to ignore our
reviewing court’s concerns with repeated patenting. We decline to do so.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel
non–functional descriptive material. King Pharm., 616 F.3d at 1279 (“The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.”) Cf. In re Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s
Appeal 2012-000409
Application 11/558,011

10

position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.”).
Here the step of adding the comment to the calendar does not depend on
the content of the comment and the content of the comment does not depend
on the step of adding the comment to the calendar. Accordingly, the content
of the comment deserves no patentable weight.
We agree with the Examiner that the prior art renders claim 1 obvious
because it teaches each and every functional limitation of the claim and it is
predictable to combine the art. The difference between the prior art and the
claimed invention is simply a rearrangement of nonfunctional descriptive
material (the particular comment). Therefore, we sustain the Examiner’s
rejection of claims 1, 2, 7, 8, 13, and 14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Adams and Madhogarhia
Claims 3–6, 9–12, and 15–18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Adams, Madhogarhia, and Bookspan
We are persuaded by the Appellant’s argument that Bookspan is silent
as to whether the e-mail feedback is added to any calendar entries. App. Br.
19. The Examiner presents no findings that would show it was predictable
to add Bookspan’s discussion thread to the comments in Adams’ calendar.
Although we see that Madhogarhia also posts its comments in a discussion
thread, such a discussion thread is a specific data structure lending
organizational structure to the comments that is deserving of patentable
weight. Again, the Examiner provides no reason to import that data
structure into Adams’ calendar. Therefore, we do not sustain the Examiner’s
Appeal 2012-000409
Application 11/558,011

11

rejection of claims 3–6, 9–12, and 15–18 rejected under 35 U.S.C. § 103(a)
as unpatentable over Adams, Madhogarhia, and Bookspan

CONCLUSIONS OF LAW
The rejection of claims 1, 2, 7, 8, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Adams and Madhogarhia is proper.
The rejection of claims 3–6, 9–12, and 15–18 under 35 U.S.C. § 103(a)
as unpatentable over Adams, Madhogarhia, and Bookspan is improper.
DECISION
The rejection of claims 1, 2, 7, 8, 13, and 14 is affirmed.
The rejection of claims 3–6, 9–12, and 15–18 is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART

llw