Ex Parte RokoszDownload PDFPatent Trial and Appeal BoardMay 24, 201310331413 (P.T.A.B. May. 24, 2013) Copy Citation 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 pgc Copy with citationCopy as parenthetical citation