Ex Parte Rokosz

Patent Trial and Appeal Board

May 24, 2013

10331413 (P.T.A.B. May. 24, 2013)

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.
10/331,413 12/30/2002 Vaughn Theodore Rokosz LOT920020050US1 (006) 2670
46321 7590 05/24/2013
CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
EXAMINER
BROWN, SHEREE N
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
05/24/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte VAUGHN THEODORE ROKOSZ
____________________

Appeal 2012-002860
Application 10/331,413
Technology Center 2100
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002860
Application 10/331,413

2
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-8, 10-12, 14, and 15. Claims 9 and 13 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF THE CASE
The invention on appeal is directed generally to the field of
groupware. More particularly, the invention relates to scheduling tasks in
groupware. (Spec. 1). Independent claim 1, reproduced below, is
representative of the subject matter on appeal:
1. A system for selectively exposing free time in a
group scheduling system, the system comprising:

a groupware system comprising a calendar of scheduled
meetings between a plurality of groupware system users;

a set of free time rules, each of said free time rules
specifying whether as a binary choice to configure at
least one of said scheduled meetings for display in a
groupware client either as free time, or as busy time;
and,

a free time rule processor configured to configure
individual ones of said scheduled meetings to appear in a
groupware client as free time to requesting ones of said
groupware system users based upon associated ones of
said free time rules.
(Disputed limitations emphasized).

REJECTION
1. The Examiner rejected claims 1-8, 10-12, 14, and 15 as being
anticipated under 35 U.S.C. § 102(e) by Srimuang (US Patent
Application Publication 2003/0061087).
Appeal 2012-002860
Application 10/331,413

3
PRIOR DECISIONS
Appeal No. 2009-003688, (Application No. 10/331,413) decided
November 24, 2009. (Examiner Affirmed).
Decision on Request for Rehearing , Appeal No. 2009-003688,
decided April 28, 2010. (Request for Rehearing Denied).

GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of the
anticipation rejection on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004); see also App. Br. 4.

ISSUE
Under § 102, did the Examiner err in finding that Srimuang discloses
the disputed limitations of:
a set of free time rules, each of said free time rules
specifying whether as a binary choice to configure at
least one of said scheduled meetings for display in a
groupware client either as free time, or as busy time,
within the meaning of representative claim 1 (emphasis added)?

CONTENTIONS
Appellant contends, inter alia:

Claims 1, 8 and 12, however, require that each rule in a
set of rules provide for the binary choice of displaying a
scheduled meeting as free time or busy time. [The] Examiner at
page 3 of the Last Final Office Action had made no attempt to
map the claim term "binary choice" to any portion of Srimuang.

Appeal 2012-002860
Application 10/331,413

4
To wit, Figure 2 and Paragraph [0012] discloses no set of
rules and certainly no rule along that states whether or not a
scheduled meeting should be displayed as free or busy time.
Rather, paragraph [0012] of Srimuang sets forth the teaching of
allowing up to a fixed number of appointments to be scheduled
for a specified time period.
(App. Br. 6).
ANALYSIS
As we stated in our Prior Decision (6), to the extent that Appellant's
arguments urging patentability are based on the informational content or
data type of the claimed “scheduled meetings,” we find such arguments are
predicated on non-functional descriptive material that is merely displayed to
convey a message to a human user.
We note that functional descriptive material consists of data structures
or computer programs which impart functionality when employed as a
computer component. In contrast, non-functional descriptive material (e.g.,
"scheduled meetings" displayed to a user) refers to data content that does not
change or affect the way the computing processes are performed. The
informational content of such nonfunctional descriptive material is not
entitled to weight in the patentability analysis.1

1 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative)
(Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June 12, 2006)); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed.
Appx. 959 (Fed. Cir. 2006). See also: MPEP §2111.05(III) (“where the
claim as a whole is directed conveying a message or meaning to a human
reader independent of the intended computer system, and/or the computer-
readable medium merely serves as a support for information or data, no
functional relationship exists. For example, a claim to a memory stick
containing tables of batting averages, or tracks of recorded music, utilizes
the intended computer system merely as a support for the information. Such
Appeal 2012-002860
Application 10/331,413

5
Regarding the disputed “binary choice” limitation, Appellant indicates
on page 8 of the “Remarks” accompanying the amendment of June 28, 2010
that “[c]laims 1, 8 and 12 are independent in nature and have been amended
in accordance with the guidance of page 5 of the Decision on Request for
Rehearing.” However, Appellant does not identify the corresponding
support in the Specification for the “binary choice” limitation added by
amendment, either in the “Remarks” that accompanied the amendment of
June 28, 2010, or in the “Summary of the Claimed Subject Matter” section
of the principal Brief (2-4) that is now before us in this second appeal on the
same patent application.
We find no literal support in Appellant’s Specification for the
disputed claim term “binary choice” (added by amendment on June 28,
2010).2 However, the claimed invention does not have to be described in
ipsis verbis in order to satisfy the written description requirement. Union
Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir.
2000).
In reviewing the record, we find clear § 112, first paragraph, written
description support for the claim term “binary choice” in the “Description of
the Related Art” section of Appellant’s Specification: “Yet, conventional
groupware scheduling systems offer only two choices when exposing the
schedule of a groupware user: ‘free’ or ‘busy.’” (Spec. [0005]). Thus,

claims are directed toward conveying meaning to the human reader rather
than towards establishing a functional relationship between recorded data
and the computer.”)(Emphasis added).

2 An amendment to the claims or the addition of a new claim must be
supported by the description of the invention in the application as filed. In re
Wright, 866 F.2d 422 (Fed. Cir. 1989). See also MPEP 2163.03 (I).
Appeal 2012-002860
Application 10/331,413

6
Appellant’s arguments on appeal are grounded on a claim term (“binary
choice”) that Appellant acknowledges in the Specification to be
conventional in the art. 3 (Id.).
If we assume arguendo that all the disputed claim limitations should
be accorded weight, we observe the Examiner maps the claimed “free time”
and “busy time” to elements 4P and 4A, respectively, of Figure 2, and
paragraph [0012] of Srimuang. See Ans. 5.
Figure 2 of Srimuang depicts an appointment scheduling calendar and
element 4P is shown as “FREE” at 4:00 PM, with element 4A designating
the 4:00 AM time slot as “UNAVAILABLE.” Paragraph [0012] of
Srimuang describes “inventive types of scheduling rules” to schedule people
and resources with each other.
We disagree with Appellant that Srimuang does not provide a rule
having a “binary choice” feature as claimed (i.e., two choices). Because a
particular time slot in Srimuang’s calendar cannot be both “FREE” and
“UNAVAILABLE” at the same time, we find at least one embodiment of
Srimuang’s rules is a “binary rule” that must initially designate a particular
time slot in the calendar shown in Figure 2 as either “FREE” or
“UNAVAILABLE” (i.e., effectively the same as “busy”), within the
meaning of representative claim 1. We find a particular time slot in

3 A statement by an applicant in the Specification or made during
prosecution identifying the work of another as “prior art” is an admission
which can be relied upon for both anticipation and obviousness
determinations, regardless of whether the admitted prior art would otherwise
qualify as prior art under the statutory categories of 35 U.S.C. 102.
Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir.
2003); Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed.
Cir. 1988).
Appeal 2012-002860
Application 10/331,413

7
Srimuang must be “FREE” (i.e., not contain a conflicting appointment)
before it can be further modified with a specific designated appointment
(i.e., busy), as shown in Figure 2 of Srimuang.
Regarding conflicting appointments, we further observe that
paragraph [0073] of Srimuang expressly discloses “rules for handling
conflicting events.” (Emphasis added). Thus, we find Srimuang’s
description broadly contemplates an embodiment that handles two
conflicting events (two choices) in a binary fashion, such as deleting or
moving a first previously scheduled appointment to “free” a particular time
slot for a second designated appointment (i.e., “busy”).
For at least these reasons, on this record, we find the weight of the
evidence supports the Examiner’s finding of anticipation. Accordingly, we
sustain the Examiner’s anticipation rejection of claim 1. Remaining claims
2-8, 10-12, 14, and 15 (not argued separately) fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).

Appeal 2012-002860
Application 10/331,413

8
DECISION
We affirm the Examiner’s rejection under § 102 of claims 1-8, 10-12,
14, and 15.
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).

ORDER
AFFIRMED

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