INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Feb 27, 2020

14053260 - (D) (P.T.A.B. Feb. 27, 2020)

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.
14/053,260 10/14/2013 Gerard Cunningham GB920120116US2
8152-0233
1670
112978 7590 02/27/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
MCLEOD, MARSHALL M
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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 GERARD CUNNINGHAM, ELAINE HANLEY,
RONAN M. O'SUILLEABHAIN, and FRED RAGUILLAT
____________________

Appeal 2019-004948
Application 14/053,260
Technology Center 2400
____________________

Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
26–35. Claims 1–25 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We affirm in part.

DISCLOSED AND CLAIMED INVENTION
The invention relates to “[r]eal time collaboration involv[ing] use of
the Internet and presence technology for people to communicate amongst
themselves” (Spec. ¶ 1), and more particularly to a method for generating a
user unavailability alert in a collaborative environment, for example, an
environment where users collaborate using a communication network. See
Spec. ¶¶ 2, 18; Figs. 1–3; claim 26. According to Appellant:
Aspects of a collaborative environment may include, but are not
limited to, electronic mail (email), text messaging, instant
messaging (IM), telephone calls, telephone conferences, video
conferences, web conferences, social media (e.g., via social
networking sites), calendaring applications, and/or the like.
Within a collaborative environment, a user 105 may participate
in one or more collaborative sessions. Each collaborative session
may include user participation in one or more aspects of the
collaborative environment. Further, each collaborative session
can pertain to a particular subject, for example a project. One or
more users can be assigned actions (e.g., tasks) pertaining to the
particular subject. Further, one or more participants may be
assigned responsibility for monitoring the progress of other
participants on assigned actions (e.g., pending actions), or may
otherwise be impacted by the progress of other participants on
assigned actions.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as IBM Corporation. Appeal Br. 1.
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Spec. ¶ 18 (emphases added). More specifically, the system allows a user to
select a control that indicates the user’s unavailability, and if participants in
collaborative sessions may be impacted by the user’s unavailability, the
system generates and sends a message to the impacted participants
indicating the user’s unavailability. Spec. ¶¶ 23, 29–30. Claim 26,
reproduced below with bracketed lettering and emphases added, is
illustrative of the claimed subject matter:
26. A computer-implemented method of generating a user
unavailability alert in a collaborative environment, comprising:
receiving, from a user, a user input indicating an
unavailability of the user;
[A] identifying, responsive to the user input, a
collaborative session in which the user participated;
[B] identifying a pending action to be performed by the
user within the identified collaborative session;
[C] determining a completion time for the identified
pending action and a second participant of the collaborative
session; and
sending, based upon the user input indicating the
unavailability of the user and the completion time, a first
message to the second participant.

Appeal Br. 18, Claims Appendix (bracketed lettering and emphases added).

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hatoun
Chakra
Norwood
Caligor
US 2006/0069599 A1
US 2009/0319926 A1
US 2010/0250322 A1
US 2012/0239451 A1
Mar. 30, 2006
Dec. 24, 2009
Sept. 30, 2010
Sept. 20, 2012
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REJECTIONS
The Examiner made the following rejections:
Claims 26–30, 32, and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chakra and Hatoun. Final Act. 2–6.
Claims 31 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chakra, Hatoun, and Caligor. Final Act. 6–8.
Claim 35 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chakra, Hatoun, and Norwood. Final Act. 8–9.

ISSUES
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–
16) and the Reply Brief (Reply Br. 2–9),2 the following principal issues are
presented on appeal:
(1) Did the Examiner err in rejecting claims 26 and 30–35 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of
Chakra and Hatoun, because (a) Hatoun fails to teach or suggest identifying
“a collaborative session” and “a pending action to be performed” therein,
and “determining a completion time,” as recited in limitations A, B, and C of
representative claim 26; and/or (b) there is not proper motivation to combine
Chakra and Hatoun?

2 Notably, Appellant does not present any arguments as to the rejection of
claim 35. Therefore, we summarily sustain the Examiner’s rejection of
claim 35, and do not discuss this rejection further herein, except for our
conclusion. Appellants rely on the arguments presented as to claim 26 as to
the patentability of claims 31 and 34, and state that these claims stand/fall
with claim 26 (Appeal Br. 14–15). Therefore, we decide the outcome of the
rejection of claims 31 and 34 on the same basis as provided for claim 26.
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(2) Did the Examiner err in rejecting dependent claim 27 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of
Chakra and Hatoun, because Hatoun fails to teach or suggest identifying the
pending action by analyzing “collaborative media” associated with the
collaborative session, as recited in claim 27?
(3) Did the Examiner err in rejecting dependent claim 28 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of
Chakra and Hatoun, because Hatoun fails to teach or suggest sending the
first message to the second participant “based upon an analysis that
concludes that the unavailability of the user impacts and second participant,”
as recited in claim 28?
(4) Did the Examiner err in rejecting dependent claim 29 under
35 U.S.C. § 103(a) as being unpatentable over the base combination of
Chakra and Hatoun, because Hatoun fails to teach or suggest “wherein the
determining the completion time includes an amount of work already
performed by the user on the identified pending action,” as recited in claim
29?

ANALYSIS
Obviousness Rejection of Representative Claim 26
We have reviewed the Examiner’s rejection of claim 26 (Final Act. 2–
3) in light of Appellant’s arguments (Appeal Br. 4–11; Reply Br. 2–6) that
the Examiner has erred, as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (Ans. 3–6). Appellant’s arguments are not
persuasive of error. With regard to representative claim 26, we agree with
and adopt as our own the Examiner’s findings of facts and conclusions as set
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forth in the Final Rejection (Final Act. 2–3) and Answer (Ans. 3–6). We
provide the following explanation for emphasis.
Appellant has not shown the Examiner erred in rejecting claim 26
under 35 U.S.C. § 103(a) as being unpatentable over the base combination of
Chakra and Hatoun, because Hatoun teaches or suggests identifying “a
collaborative session” and “a pending action to be performed” therein, and
“determining a completion time,” as recited in limitations A, B, and C of
claim 26.
We agree with the Examiner that Hatoun teaches (i) identifying a
collaborative session based on a user’s input (see Final Act. 3 citing Hatoun
¶ 48); (ii) identifying a pending action to be performed in a collaborative
session (see Final Act. 3 citing Hatoun ¶ 48); and (iii) determining a due
date (i.e., a completion time) for the identified pending action or task (see
Final Act. 3 and Ans. 4 citing Hatoun ¶¶ 38, 45), as recited in limitations A,
B, and C of claim 26. We also agree with the Examiner’s determination (see
Ans. 3–4) that the combination of Chakra and Hatoun teaches or suggests
determining a completion time, because Hatoun’s use of a due date for task
completion and percent complete information taken with Chakra’s event
report 137 and completion task indicator with event specific data 136 (see
Chakra ¶ 26) would predictably yield determining a completion time.
With regard to the motivation to combine Chakra and Hatoun, we
agree with the Examiner’s rationale for making the combination set forth at
page 3 of the Final Rejection:
It would have been obvious to a person having ordinary skill in
the art at the time of the invention to modify the collaborative
systems of Chakra with the collaborative application teachings
of Hatoun. By modifying the collaborative calendar application
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disclosed at paragraph [0023] of Chakra [t]o further include the
ability to track workflow (i.e. task/workload status) (Hatoun;
Paragraph [0003]). In order to better provide project managers,
managers and users detailed task/workload status (Hatoun;
Paragraph [0003]) and to improve and/or add workflow
capabilities to applications (Hatoun; Paragraph [0008]).

Final Act. 3; and at pages 4 through 6 of the Answer:
Hatoun discloses in paragraph [0023], a ‘Due Date’; please also
see Hatoun Figure 6, item 440, which shows the Due Date,
including the time. The examiner further states that Hatoun in
paragraph [0023] discloses in part that ‘ ... The Due Date function
returns the date that a task is due for completion ... ‘. As such, it
would have been obvious to a person having ordinary skill in the
art to modify Chakra’s ‘completion status indicator’' as disclosed
in Chakra paragraph [0026] to further include a date and time of
completion as disclosed in Hatoun paragraph [0023]; Figure 6,
item 440. A person having ordinary skill in the art would find it
obvious to modify Chakra’s ‘completion status indicator’' which
one of ordinary skill in the art would know that an ‘status
indicator’' could be any piece of data for providing information
on any task. Thus, modifying Chakra's ‘completion status
indicator’ to include a date and time would have been obvious to
one of ordinary skill in the art when viewing Chakra in light of
Hatoun's Due Date indicator/field as disclosed in Hatoun Figure
6, item 440.

Ans. 4–5. Finally, we agree with the Examiner that:
obviousness may be established by combining or modifying the
teachings of the prior art to produce the claimed invention where
there is some teaching, suggestion, or motivation to do so found
either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art. See In re Fine, 837
F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958
F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR
International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d
1385 (2007).

Ans. 5–6.
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The Supreme Court and our reviewing court, the Court of Appeals for
the Federal Circuit, have repeatedly held that the motivation that a person of
ordinary skill in the art would have had to combine prior art references need
not be the same motivation that inspired the patent owner. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) (“[A]ny need or problem known in
the field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”); In re
Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006) (“[T]he skilled artisan need not
be motivated to combine [a prior art reference] for the same reason
contemplated by the [inventor]”); In re Beattie, 974 F.2d 1309, 1312 (Fed.
Cir. 1992) (“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
required that the references be combined for the reasons contemplated by the
inventor.”); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976). “[T]he
problem motivating the patentee may be only one of many addressed by the
patent’s subject matter.” KSR, 550 U.S. at 420. Any motivation, “whether
articulated in the references themselves or supported by evidence of the
knowledge of a skilled artisan, is sufficient.” Outdry Technologies Corp. v.
Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed Cir. 2017). In other words, some
motivation to combine is necessary, but it does not have to be the same
motivation cited by Appellants. This, the Examiner has provided.
In this light, Appellant’s contentions that (a) “the claimed invention
does not entail providing ‘detailed task/workload status’ or ‘improv[ing]
and/or add[ing] workflow capabilities to applications;’” and (b) in making
the combination “the Examiner is relying upon teachings that have nothing
to do with either (i) the claimed invention or (ii) the limitations that the
Examiner is relying upon Hatoun to teach” are not persuasive.
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In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 26. We
are not persuaded the Examiner erred in rejecting claim 26. Accordingly,
we sustain (i) the Examiner’s rejection of independent claim 26, as well as
corresponding dependent claims 30, 32, and 33 grouped therewith; and (ii)
the Examiner’s rejection of claim 35 not separately argued.

Obviousness Rejection of Dependent Claim 27
Claim 27 depends from claim 26, and recites, in pertinent part:
in response to the collaborative session being identified,
collaboration media associated with the collaborative session is
retrieved, and
the pending action is identified based upon an analysis of
the collaboration media.

Appeal Br. 18, Claims Appendix (emphases added). Appellant’s
Specification states that “the term ‘collaboration media’ means any media
generated during a collaboration session, for example, text, audio, video,
images, slides, and so on.” Spec. ¶ 25.
The Examiner relies upon paragraphs 45 and 48 as teaching or
suggesting the limitations of claim 27 (see Final Act. 4; Ans. 6–7),
determining that Hatoun’s examination of workflows is equivalent to the
recited analysis of collaboration media (see Ans. 6–7).
Paragraph 45 of Hatoun describes that “the workflow engine 140
examines the workflow being managed and executed by the workflow engine
140 to determine if there are any incomplete tasks” (Hatoun ¶ 45) (italicized
emphasis added). And, paragraph 48 of Hatoun describes that “any
documents associated with the incomplete task are identified.” Hatoun ¶ 48
(emphasis added). Thus, Hatoun does not teach analyzing the collaborative
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media as claimed, where collaborative media is defined as “any media
generated during a collaboration session, for example, text, audio, video,
images, slides, and so on.” Spec. ¶ 25. At best, Hatoun teaches
(i) identifying a document (see Hatoun Fig. 10B, step 720; ¶ 48); (ii)
examining a workflow or incomplete task, and not a collaborative media
(see Hatoun Fig. 10A; ¶ 45); and (iii) facilitating the filling out of a
workflow task form (see Hatoun Fig. 10B, steps 730, 735, 740; ¶ 48).
In this light, we concur with Appellant’s assertions (see Appeal Br.
11–12; Reply Br. 6–7) that neither Hatoun, nor the combination of Chakra
and Hatoun, shows or describes performing an “analysis of the collaboration
media” as set forth in claim 27.
Based on the foregoing, we find that the Examiner has not properly
established factual determinations and articulated reasoning with a rational
underpinning to support the legal conclusion of obviousness for dependent
claim 27, resulting in a failure to establish a prima facie of obviousness.

Obviousness Rejection of Dependent Claim 28
We have reviewed the Examiner’s rejections (Final Act. 4; Ans. 7–8)
in light of Appellant’s arguments in the briefs (see Appeal Br. 12–13; Reply
Br. 7–8) that the Examiner has erred. We disagree with Appellant’s
contentions. With regard to claim 28, we adopt as our own (1) the findings
and reasons set forth by the Examiner in the Final Office Action from which
this appeal is taken (Final Act. 4), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 7–8) in response to Appellant’s
Appeal Brief. We concur with the conclusions reached by the Examiner.
We agree with the Examiner’s findings that paragraphs 26 and 28, taken
with paragraphs 38 and 47, of Hatoun, teach or suggest sending the first
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message to the second participant “based upon an analysis that concludes
that the unavailability of the user impacts and second participant,” as recited
in claim 28. See Final Act. 4; Ans. 7–8. Specifically, we agree with the
Examiner’s rationale found at page 8 of the Answer, namely:
that viewing paragraph [0038] in light of cited paragraphs [0026]
and [0028] it is clear to one of ordinary skill in the art that the
‘unavailability of the user impacts the second participant’ as
disclosed in paragraph [0038] impacts ‘a document cannot be
approved until a draft of the document is written’. In other
words if a user is unavailable to draft/write a document it impact
a second person/participant's ability to approve said document.

Ans. 8; and “when Hatoun is viewed in context and the citations read in light
of appellants limitation and contentions, Hatoun's paragraphs [0038] and
[0047] [e.g., detecting and notifying a group of users of incomplete tasks]
teach appellants limitation” (Ans. 8).
In view of the foregoing, we are not persuaded the Examiner erred in
rejecting claim 28, and we sustain the Examiner’s rejection of independent
claim 28.

Obviousness Rejection of Dependent Claim 29
We have reviewed the Examiner’s rejections (Final Act. 5; Ans. 9–10)
in light of Appellant’s arguments in the briefs (Br. 13–14; Reply Br. 8–9)
that the Examiner has erred. We disagree with Appellant’s contentions.
With regard to claim 29, we adopt as our own (1) the findings and reasons
set forth by the Examiner in the Final Office Action from which this appeal
is taken (Final Act. 5), and (2) the reasons set forth by the Examiner in the
Examiner’s Answer (Ans. 9–10) in response to Appellant’s Appeal Brief.
We concur with the conclusions reached by the Examiner. And particularly,
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we agree with the Examiner’s finding that Hatoun’s Figure 4 (see Fig. 4,
column name header 325 and data block 330; see also ¶ 30) and Figure 6
(see Fig. 6, name/data field pair 420; see also ¶ 32) “clearly show[] user
percentages of work completed” (Ans. 9).
In view of the foregoing, we are not persuaded the Examiner erred in
rejecting claim 29, and we sustain the Examiner’s rejection of independent
claim 29.

Obviousness Rejection of Dependent Claims 31 and 34
Appellant does not present specific arguments regarding the
obviousness rejection of claims 31 and 34, but rather rely on the same
arguments presented for claim 26. See App. Br. 14–15. Appellant’s claim
26 arguments are not persuasive, as discussed above, and thus we sustain the
rejections of claims 31 and 34 for the same reasons as claim 26.

Summary
Under 35 U.S.C. § 103(a), Appellant has not shown the Examiner
erred in rejecting claims 26 and 28–35 over the base combination of Chakra
and Hatoun. Under 35 U.S.C. § 103(a), Appellant has shown the Examiner
erred in rejecting claim 27 over the combination of Chakra and Hatoun. For
the above reasons, we affirm the Examiner’s decision to reject claims 26 and
28–35, and we reverse the Examiner’s decision to reject claim 27.

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References Affirmed Reversed
26–30, 32,
33
103(a) Chakra,
Hatoun
26–30, 32,
33
27
31, 34 103(a) Chakra,
Hatoun,
Caligor
31, 34
35 103(a) Chakra,
Hatoun,
Norwood
35
Overall
Outcome
26, 28–35 27

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 IN PART