10331413 (B.P.A.I. Nov. 23, 2009)

Ex Parte Rokosz

Board of Patent Appeals and InterferencesNov 23, 2009

10331413 (B.P.A.I. Nov. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte VAUGHN THEODORE ROKOSZ ___________ Appeal 2009-003688 Application 10/331,413 Technology Center 2100 ____________ Decided: November 24, 2009 ____________ Before JOSEPH L. DIXON, JAY P. LUCAS, and ST. JOHN COURTENAY III, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) (2002) from the Examiner’s 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) (2008). We AFFIRM. Appeal 2009-003688 Application 10/331,413 2 STATEMENT OF THE CASE INVENTION The invention on appeal is directed generally to the field of groupware. More particularly, the invention relates to scheduling tasks in groupware. (Spec. 1). ILLUSTRATIVE CLAIM 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 to configure at least one of said scheduled meetings for display in a groupware client as free time, or whether to configure said at least one of said scheduled meetings for display in a groupware client 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. PRIOR ART The Examiner relies upon the following reference as evidence: Srimuang 2003/0061087 A1 Mar. 27, 2003 THE REJECTION The Examiner rejected claims 1-8, 10-12, 14, and 15 under 35 U.S.C. § 102(e) as anticipated by Srimuang. Appeal 2009-003688 Application 10/331,413 3 GROUPING OF CLAIMS Based on Appellant’s arguments in the Briefs, we will decide the appeal on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE Regarding representative claim 1, Appellant contends that the portions of Srimuang relied on by the Examiner do not teach showing a scheduled meeting as free time. (App. Br. 5). In response, the Examiner contends that the argued “free time rules” are claimed in the alternative, and it is only necessary to show one of the alternatives. (Ans. 11). Nevertheless, the Examiner maintains that Srimuang discloses both alternatives. (Id. at 11-12). In the Reply Brief, Appellant further contends that each of the recited free time rules are “a binary choice that must be specified by the free time rules as set forth by the express language of the claims.” (Reply Br. 4, ¶2). Issue: Has Appellant shown that the Examiner erred in finding that Srimuang describes a scheduled meeting as free time, or at least one scheduled meeting as busy time? (Representative claim 1). PRINCIPLES OF LAW Anticipation under § 102 In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Appeal 2009-003688 Application 10/331,413 4 Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) (citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992)). Anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. In other words, if granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (citation omitted). Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). Therefore, we look to Appellant’s Briefs to show error in the Examiner’s proffered prima facie case. FINDINGS OF FACT In our analysis infra, we rely on the following findings of fact (FF): 1. Srimuang shows a calendar of employee A in Figure 2 (¶ [0083]). 2. Srimuang discloses that employee A has blocked out midnight to 8 AM as unavailable for any appointments every day, as shown in Figure 2. (Id.). 3. Srimuang discloses that employee A has indicated 8:00 AM and 4:00 PM are free, as shown in Figure 2. (Fig. 2). 4. Srimuang discloses that employee A has scheduled oil change service for up to three customers from noon until 4:00 PM, as shown in Figure 2. (Id.). Appeal 2009-003688 Application 10/331,413 5 ANALYSIS We decide the question of whether Appellant has shown the Examiner erred in finding that Srimuang describes a scheduled meeting as free time, or at least one scheduled meeting as busy time. (Representative claim 1). At the outset, we agree with the Examiner that in order to show anticipation, only one of the recited alternatives needs to be disclosed by the reference (Srimuang).1 Thus, the Examiner need only show a “set” (of a least one ) “free time” rules specifying: (1) “whether to configure at least one of said scheduled meetings for display . . . as free time,” or, (2) “whether to configure said at least one of said scheduled meetings for display . . . as busy time.” (Claim 1). Based upon our review of the evidence, we find Srimuang discloses a “free time” rule specifying at least (2), “whether to configure said at least one of said scheduled meetings for display . . . as busy time” (claim 1) by disclosing that employee A has scheduled oil change service (i.e., busy time) for up to three customers from noon until 4:00 PM, as shown in Figure 2. (FF 4). Moreover, we are persuaded by the Examiner’s reasoning that Srimuang also discloses the first alternative, i.e., scheduling meetings for display as free time. We broadly but reasonably construe the claimed “scheduled meetings” as reading on any designated slot in a calendar of scheduled meetings, as the actual subject matter of the designated happening is a non-functional limitation in the claim (see below). Given this 1 See MPEP § 2173.05(h), “Alternative Limitations” and Markush-style claiming. Appeal 2009-003688 Application 10/331,413 6 construction, we find Srimuang discloses that employee A has indicated that 8:00 AM and 4:00 PM are free time slots, as shown in Fig. 2. (FF 3; cf. FF 2). In addition, we find Appellant’s arguments for patentability regarding the aforementioned “scheduled meetings” are predicated on non-functional descriptive material that is merely displayed to a 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 exhibit a functional interrelationship with the substrate and does not affect the way the computing processes are performed. MPEP § 2106.01. The content of such nonfunctional descriptive material is not entitled to weight in the patentability analysis. In a precedential decision, an expanded panel recently held that elements that do not affect the claimed process are non-functional material and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887-1888 (BPAI 2008) (precedential) available at http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf. 2 Because Appellant’s arguments would require us to give weight to nonfunctional descriptive material, and for the additional reasons discussed above, we find Appellant has not met his burden of showing error in the Examiner’s finding of anticipation. Since Appellant has not separately 2 Cf. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory. . . . Nor does he seek to patent the content of information resident in a database.”). See also Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (nonprecedential), aff’d In re Curry, No. 2006-1003, (Fed. Cir. Jun. 12, 2006) and Rule 36; MPEP § 2106.01 (Eighth ed., Rev. 7, July 2008). Appeal 2009-003688 Application 10/331,413 7 argued claims 2-8, 10-12, 14, and 15, these claims fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). CONCLUSION Based on the findings of facts and analysis above: Appellant has not established that the Examiner erred in rejecting claims 1-8, 10-12, 14, and 15 under 35 U.S.C. § 102(e) as anticipated by Srimuang. DECISION We affirm the Examiner’s rejection of claims 1-8, 10-12, 14, and 15 under 35 U.S.C. §102(e). 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). AFFIRMED nhl CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG 950 PENINSULA CORPORATE CIRCLE SUITE 3020 BOCA RATON, FL 33487