Ex Parte O et al

Patent Trial and Appeal Board

Nov 27, 2018

14024709 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/024,709 09/12/2013 Owen O'Sullivan
52021 7590 11/29/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920130034US1_8150-0410 6843
EXAMINER
CHOI, DAVIDE
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
11/29/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OWEN O'SULLIVAN and FERNANDO J. SALAZAR
Appeal 2018-002660
Application 14/024,709
Technology Center 2100
Before JOHN A. JEFFERY, CARLL. SILVERMAN, and SCOTT E.
BAIN, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention organizes synchronous communication sessions
by determining a context responsive to detecting a trigger event, such as the
user moving or picking up a peripheral device. The context specifies a
foreground application. Candidate participants, determined from the
1 Appellants identify the real party in interest as IBM Corporation. App. Br.
1.
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Application 14/024,709
context, are invited to access the synchronous communication responsive to
user input in a user interface displayed separate from the foreground
application. See generally Abstract; Spec. ,r,r 28-29, 67-79; Figs. 1, 5.
Claim 1 is illustrative:
1. A system, comprising:
a display device;
a processor coupled to the display device and programmed to initiate
executable operations comprising:
determining a context responsive to detecting a trigger event, wherein
the context specifies a foreground application executing within a data
processing system comprising the processor;
determining candidate participants from the context;
displaying upon the display device a user interface separate from the
foreground application, wherein the user interface lists the candidate
participants; and
responsive to a user input received within the user interface, sending
an invite to the candidate participants, wherein the invite specifies access
information for a synchronous communication session.
RELATED APPEAL
This appeal is related to an appeal filed in connection with U.S.
Application No. 14/036,139 (Appeal No. 2018-002677), which is a
continuation of the present application.
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THE REJECTI0NS 2
The Examiner provisionally rejected claims 1-16 on the ground of
non-statutory double patenting over claims 1-8 of copending Application
14/036,139. Final Act. 2.
The Examiner rejected claims 9-16 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 2--4. 3
The Examiner rejected claims 1-3, 5, 7, 9-11, 13, and 15 4 under 35
U.S.C. § 103 as unpatentable over Wyatt (US 2013/0031185 Al; published
Jan. 31, 2013) and Braun (US 2009/0289779 Al; published Nov. 26, 2009).
Final Act. 4--11.
The Examiner rejected claims 4 and 12 under 35 U.S.C. § 103 as
unpatentable over Wyatt, Braun, and Hwang (US 2015/0160817 Al;
published June 11, 2015). Final Act. 11-12.
2 Because the Examiner indicates the claims 1-16 are provisionally rejected
on the ground of non-statutory double patenting despite not including that
rejection in the "Grounds of Rejection to be Reviewed on Appeal" section in
the Answer, we nonetheless presume that this provisional rejection is
maintained, because there is no indication in the Answer that it was
withdrawn. Compare Final Act. 2 with Ans. 3 (maintaining every ground of
rejection in the Final Office Action except those listed under a
"WITHDRAWN REJECTIONS" subheading (which there are none)).
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 7, 2017 ("Final Act."); (2) the Appeal Brief filed July 10, 2017
("App. Br."); (3) the Examiner's Answer mailed November 22, 2017
("Ans."); and (4) the Reply Brief filed January 15, 2018 ("Reply Br.").
4 Although the Examiner's obviousness rejection over Wyatt and Braun
omits claims 9-11, 13, and 15 from the statement of the rejection, these
claims are nevertheless discussed in the corresponding discussion. Compare
Final Act. 4 with Final Act. 9-11. Accord Ans. 3 (including these claims in
the restatement of the rejection). Accordingly, we present the correct claim
listing here, and treat the Examiner's error in this regard as harmless.
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The Examiner rejected claims 6, 8, 14, and 16 under 35 U.S.C. § 103
as unpatentable over Wyatt, Braun, and Chavez (US 2012/0221952 Al;
published Aug. 30, 2012). Final Act. 12-14.
THE PROVISIONAL DOUBLE PATENTING REJECTION
Because Appellants do not contest the Examiner's provisional double
patenting rejection of claims 1-16 (see Final Act. 2), we summarily sustain
this rejection. See MPEP § 1205.02.
THE INELIGIBILITY REJECTION
The Examiner concludes that independent claim 9 is ineligible
because it recites a "computer readable storage medium" that is said to
encompass an ineligible signal or transmission media. Final Act. 2--4.
Although the Examiner acknowledges that the Specification distinguishes
computer readable storage media from computer readable signal media, the
Examiner nonetheless emphasizes that the Specification does not say that
computer readable storage media excludes computer readable signal media,
or otherwise indicate that they are mutually exclusive. Final Act. 3; Ans. 4--
7.
Appellants disagree with the Examiner's finding that the recited
computer readable storage medium includes transitory signals, particularly
given the Specification expressly distinguishing computer readable storage
media from computer readable signal media. App. Br. 8-15; Reply Br. 2-3.
Appellants add that the terms "electromagnetic" and "infrared" in paragraph
13 of the Specification are adjectives that merely modify the phrase "system,
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apparatus, or device" and, therefore, merely describe a machine or
manufacture-not a transitory signal. Reply Br. 3.
ISSUE
Has the Examiner erred in rejecting claim 9 under § 101 by finding
that the recited computer readable storage media includes non-statutory
signals?
ANALYSIS
We do not sustain the Examiner's§ 101 rejection of claim 9 which
recites, in pertinent part, a computer readable storage medium.
Signals are patent-ineligible under§ 101. In re Nuijten, 500 F.3d
1346, 1355 (Fed. Cir. 2007). According to U.S. Patent & Trademark Office
(USPTO) guidelines, a claim whose broadest reasonable interpretation
covers both statutory and non-statutory embodiments is directed to non-
statutory subject matter and is, therefore, ineligible under § 101. MANUAL
OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.03(II) (9th ed. Rev.
08.2017, Jan. 2018). Accord Mentor Graphics v. EVE-USA, Inc., 851 F.3d
1275, 1294--95 (Fed. Cir. 2017) (acknowledging with approval this guidance
from an earlier edition of the MPEP, and concluding that claims to a
machine-readable medium were non-statutory because they encompassed
both statutory random-access memory and non-statutory carrier waves).
Moreover, an expanded panel of this Board has held that a recited machine-
readable storage medium was ineligible under § 101 because it encompassed
transitory media. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PT AB
2013) (precedential).
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But unlike the Specifications in Mentor Graphics and Mewherter, the
Specification in the present appeal distinguishes clearly and unambiguously
computer readable storage media from computer readable signal media in
paragraphs 13 and 14, albeit with permissive, non-limiting language. That
the Specification does not say that computer readable storage media
excludes computer readable signal media, or otherwise indicate that they are
mutually exclusive as the Examiner indicates (Final Act. 3; Ans. 4--7) is of
no consequence here. On this record, ordinarily skilled artisans would
understand that computer readable storage media is not computer readable
signal media in light of the Specification's clear and unambiguous
distinction between the two forms of media. Moreover, the terms
"electromagnetic" and "infrared" in paragraph 13 of the Specification are
merely adjectives that modify the phrase "system, apparatus, or device" and,
therefore, merely describe a machine or manufacture-not a transitory
signal-as Appellants indicate. Reply Br. 3.
Given the Specification's bright line of demarcation, we agree with
Appellants (App. Br. 8-15; Reply Br. 2-3) that claim 9 is limited to non-
transitory media, namely computer readable storage media, when interpreted
in light of the Specification.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 9-16 under § 101.
THE OBVIOUSNESS REJECTION OVER WYATT AND BRAUN
Regarding independent claim 1, the Examiner finds that Wyatt
discloses, among other things, ( 1) determining candidate participants from a
"context" ( email thread of an email application); (2) displaying a user
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interface separate from a foreground application, where the user interface
lists candidate participants; and (3) sending an invite to those participants
responsive to user input received within the interface. Final Act. 4--7; Ans.
8-9. Although the Examiner acknowledges that Wyatt's system does not
necessarily determine a context responsive to detecting a trigger event,
where the context specifies a foreground application, the Examiner
nonetheless cites Braun for teaching this feature in concluding that the claim
would have been obvious. Final Act. 7-9.
Appellants argue that not only is the Examiner unclear as to exactly
which particular element in Wyatt constitutes the recited "context," the
Examiner's reliance on Braun for teaching determining the recited context
responsive to detecting a trigger event is said to be misplaced. See App. Br.
16-22; Reply Br. 3-7. According to Appellants, Braun's "context" refers to
effects that are to be generated by a force feedback device, where this
context is stored in association with a particular application. App. Br. 17-
22; Reply Br. 5-7. As such, Appellants contend, Braun's "context" is
already determined before the event that invokes the context and, therefore,
is not determined responsive to a trigger event as claimed. Id.
Appellants add that Wyatt and Braun are unrelated and, therefore, the
Examiner's proposed reason to combine the references lacks a rational
underpinning. App. Br. 22-27; Reply Br. 7-14. According to Appellants, it
is unnecessary to prioritize applications in Wyatt because the conditions that
require prioritizing in Braun, namely that different applications can be
associated with a particular event that causes an effect in a force feedback
device, are not present in Wyatt. App. Br. 25-26; Reply Br. 11-14.
Appellants argue other recited limitations summarized below.
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ISSUES
I. Under§ 103, has the Examiner erred by finding that Wyatt and
Braun collectively would have taught or suggested:
(1) determining a context responsive to detecting a trigger event,
where the context specifies a foreground application as recited in claim 1?
(2) analyzing a digital asset open within the foreground application as
recited in claim 2?
II. Is the Examiner's proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner's obviousness conclusion?
ANALYSIS
Claims 1, 3, 5, 7, 9--11, 13, and 15
We begin by construing the key disputed limitation of claim 1 which
recites, in pertinent part, a "context." The Specification does not define the
term "context," unlike other terms whose concrete definitions leave no doubt
as to their meaning. See, e.g., Spec. ,r,r 22, 26, 86-89 ( defining various
terms). Although claim 1 recites that (1) the "context" specifies a
foreground application5 executing within a data processing system, and (2)
candidate participants are determined from this "context," the claim does not
further detail the particulars of this "context," let alone clarify its meaning.
5 According to paragraph 32 of the Specification, an application that is
currently active or "in focus" may be referred to as a "foreground
application."
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Turning to the Specification, paragraph 32 notes that client 105 in
Figure 1 determines (1) a context specifying information for application 145,
and (2) determines candidate participants from this context. But here again,
this paragraph is short on specifics as to exactly what this "context" is.
Paragraph 34 explains that a context is presumed to be "instructive" of (1) a
particular issue that user 105 attempts to resolve, and (2) the particular
candidate participants who may be needed to resolve the issue.
The Specification's paragraph 35 adds that the context of client 105
includes,/or example, the foreground application, and can include any
digital asset open therein or currently displayed by the foreground
application. Paragraph 73 also describes the functionality of a "context
agent" in Figure 5 that determines a context including a foreground
application. Notably, this paragraph indicates, quite broadly, that the
context may further include not only a digital asset that is open within the
foreground application, but also "additional information." Our emphasis on
the permissive and exemplary language in these passages underscores that
despite informing our understanding of the recited "context," the term is not
limited to these descriptions.
Given this non-limiting description, we see no error in the Examiner's
reliance on Wyatt for at least suggesting a "context" that is associated with
an email thread of an email application, and that candidate participants are
determined from such a "context." Final Act. 5; Ans. 8-9. As shown in
Wyatt's Figure 4, the graphical user interface (GUI) 300 shows an email
thread 302 and a button 306 that allows a client to establish a synchronous
communication with other clients associated with the thread. Wyatt ,r,r 14--
15. Notably, the option to establish a synchronous communication via
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button 306 can be provided automatically after a select number of related
emails are present. See Wyatt ,r 15.
After button 306 is selected, the potential clients, shown in GUI 310
in Wyatt's Figure 5, are invited to participate in the synchronous
communication by selecting the "Create" button 322. Wyatt ,r,r 16-20. As
shown in Wyatt's Figure 6, clients participating in the synchronous
communication can view emails that were exported from the thread. Wyatt
Given this functionality, we see no error in the Examiner's finding
that Wyatt at least suggests determining a "context" associated with an email
thread of an email application, namely the ability to export addresses
associated with an email thread via button 306 in Figure 4 responsive to the
presence of a select number of related emails in the mailbox (i.e., a detected
"trigger event"). See Ans. 8-9 ( citing Wyatt ,r 15). That is, the select
number of related emails in the mailbox would effectively trigger this
context determination-a context associated with the application's ability to
export email addresses via button 306 in Figure 4. That Wyatt's paragraph
15 indicates that the option to establish a synchronous communication via
button 306 can be provided automatically after a select number of related
emails are present is telling in this regard.
Although Wyatt at least suggests determining a context responsive to
detecting a trigger event, and is, therefore, technically cumulative to Braun
in that regard, we nonetheless see no error in the Examiner's reliance on
Braun for at least suggesting the recited context determination. Not only
does Braun teach triggering events when a graphical object moves over a
window's close box in paragraph 125, but also assigns priority to an active
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or foreground application so that it receives event notifications in paragraph
128. Given these teachings in light of Wyatt's functionality, we see no error
in the Examiner's finding that the proposed combination would allow a
trigger to occur to first analyze system context, and if an email application
was active and open based on this analysis, to then further analyze email
context to initiate synchronous communication with other users as the
Examiner indicates. Ans. 16-17.
To be sure, unlike Wyatt, Braun's "context" refers to effects that are
generated by a force feedback device, where this context is stored in
association with a particular application. See Braun ,r,r 93-95; Fig. 4. In
that sense, then, Braun's "context" is determined before the event that
invokes the context and, therefore, is not determined responsive to a trigger
event as Appellants indicate. App. Br. 17-22; Reply Br. 5-7. But as noted
above, the Examiner relies on a different context in Braun, namely the
system context that determines whether applications are active and open to
prioritize those applications in paragraph 128. See Ans. 16-17. Given this
teaching, we see no reason why such a system context determination could
not be made in Wyatt's system, particularly given Wyatt's multiple
applications in the client system in Figure 2, and associated Gills shown in
Figures 4 to 6 as the Examiner indicates. See Ans. 14.
To the extent that Appellants contend that the Examiner proposes to
somehow incorporate Braun's force feedback device into Wyatt (see App.
Br. 27), we disagree. Rather, as noted above, the Examiner's proposed
combination is not based on such bodily incorporation, but rather the
references' collective teachings and suggestions. It is well settled that "a
determination of obviousness based on teachings from multiple references
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does not require an actual, physical substitution of elements." In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for
obviousness whether a secondary reference's features can be bodily
incorporated into the structure of the primary reference. In re Keller, 642
F.2d 413,425 (CCPA 1981). Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. Id. And here, the Examiner's proposed combination predictably
uses prior art elements according to their established functions to yield a
predictable result. See KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007). Accordingly, the Examiner's proposed combination of the cited
references is supported by articulated reasoning with some rational
underpinning to justify the Examiner's obviousness conclusion.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 3, 5, 7, 9--11, 13, and 15 not argued separately with
particularity.
Claim 2
We also sustain the Examiner's rejection of claim 2 reciting that
determining candidate participants from the context comprises analyzing a
digital asset open within the foreground application. See Final Act. 9; Ans.
17.
Despite Appellants' arguments to the contrary (App. Br. 27-28; Reply
Br. 14--15), Appellants do not persuasively rebut the Examiner's finding that
upon detecting a trigger event, the Wyatt/Braun system would first analyze
system context, and if an email application was active and open based on this
analysis, then further analyze email context to initiate synchronous
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communication with other users. Ans. 17. Even assuming, without
deciding, that email applications need not be active to receive email as
Appellants contend (Reply Br. 14--15), the Examiner's finding in this regard
is not based solely on receiving email, but analyzing the email's associated
context. See Ans. 17. Performing this analysis on an active and open email
application as the Examiner proposes would have been at least an obvious
variation. To the extent that Appellants contend otherwise, there is no
persuasive evidence on this record to substantiate such a contention.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 2.
THE OTHER OBVIOUSNESS REJECTIONS
We also sustain the Examiner's obviousness rejections of claims 4, 6,
8, 12, 14, and 16. Final Act. 11-14. Because these rejections are not argued
separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.
CONCLUSION
The Examiner erred in rejecting claims 9-16 under § 101, but did not
err in rejecting claims 1-16 under§ 103. Nor did the Examiner err in
provisionally rejecting claims 1-16 on the ground of non-statutory double
patenting.
DECISION
We affirm the Examiner's decision to reject claims 1-16. Because the
rejection of each appealed claim is affirmed on at least one of the grounds
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specified in the Office Action from which the appeal was taken, the
Examiner's decision to reject claims 1-16 is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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