International Business Machines Corporation

Patent Trials and Appeals Board

May 8, 2020

2019003136 (P.T.A.B. May. 8, 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.
14/264,656 04/29/2014 Philip S.P. Chan AU920140008US1 3791
106324 7590 05/08/2020
IBM Corp. - Fishkill Drafting Center
SVL
650 Harry Road, Almaden Research Center
C4TA/J2B
San Jose, CA 95120
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP S.P. CHAN, LAURENCE A. HEY, WILLIAM J. IZARD,
and MATTHEW J. PONSFORD1
____________________

Appeal 2019-003136
Application 14/264,656
Technology Center 3600
____________________

Before JOSEPH L. DIXON, ROBERT E. NAPPI, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21 through 40. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, International Business Machines is the
real party in interest. Appeal Br. 3.
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INVENTION
The invention relates generally to generating a meeting agenda
associated with a calendar application and a team planning tool. Abstract.
Claim 21 is reproduced below.
21. A computer system for generating a meeting agenda
associated with a calendar application and a team planning tool,
the computer system comprising:
one or more processors, one or more computer-readable
memories, one or more computer-readable tangible storage
medium, and program instructions stored on at least one of the
one or more tangible storage medium for execution by at least
one of the one or more processors via at least one of the one or
more memories, wherein the computer system is capable of
performing a method comprising:
retrieving, from the team planning tool, a plurality
of work items;
determining, by the team planning tool, at least one
incomplete work item within the plurality of work items;
creating, in a meeting agenda of a meeting in the
calendar application, a topic for the at least one
incomplete work item;
assigning a focal point, from among attendees of
the meeting in the calendar application, for the created
topic; and
assigning a time limit for the created topic based
on the plurality of work items;
presenting, via a graphical user interface (GUI),
the meeting agenda to the assigned focal point;
in response to detecting data being entered into a
plurality of editable fields of the GUI, directly linking the
team planning tool to the meeting in the calendar
application via a uniform resource identifier (URI) of a
team in the team planning tool, wherein the team is
associated with the retrieved plurality of work items.
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EXAMINER’S REJECTIONS2
The Examiner rejected claims 21 through 40 under 35 U.S.C. § 101
for being directed to patent-ineligible subject matter. Non-Final Act. 3–6.
The Examiner rejected claims 21 through 40 under 35 U.S.C. § 103 as
being unpatentable over Butt (US 2006/0224430 A1) and Pabla (US
7,679,518 B1). Non-Final Act. 6–16.

PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement

2 Throughout this Decision we refer to the Appeal Brief filed November 26,
2018 (“Appeal Br.”); Reply Brief filed March 14, 2018 (“Reply Br.”) Non-
Final Office Action mailed June 27, 2018 (“Non-Final Act.”); and the
Examiner’s Answer mailed January 14, 2019 (“Ans.”).
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risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
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an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 2019 Revised Guidance, 84 Fed.
Reg. at 52–56.
DISCUSSION
Rejection under 35 U.S.C. § 101
The Examiner determines the claims are not patent eligible because

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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they are directed to a judicial exception without reciting significantly more.
Non-Final Act. 3–5. Specifically, the Examiner determines the claims recite
an idea of generating a meeting agenda by retrieving work items (data),
determining one incomplete work item, creating an agenda for the a topic
among the incomplete work, assigning a focal point to the topic, assigning a
time limit and presenting an agenda which is similar to ideas held abstract by
the courts. Non-Final Act. 4 (citing Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307 (Fed. Cir. 2016), Intellectual Ventures I LLC v. Erie
Indemnity Co. 850 F.3d 1315, 1328 (Fed. Cir. 2017, Digitech Image Techs.,
LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014),
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d
1343 (Fed. Cir. 2014), In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
613 (Fed. Cir. 2016) and Elec. Power Grp., LLC v. Alstom SA., 830 F.3d
1350 (Fed. Cir. 2016)). Further, the Examiner finds that the additional
limitations of a computer, calendar application, team planning tool, a GUI, a
uniform resource identifier of a team in the team planning tool are no more
than general purpose computers performing generic computer functions and
thus do not amount to significantly more than the abstract idea. Non-Final
Act. 4–5.
Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion
on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
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to patent-eligible subject matter is an issue of law that we review de novo.”).
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all the claims under 35 U.S.C. § 101.

Discussion
Appellant argues that the independent claims are not directed to an
abstract idea and that the Examiner’s analysis focuses on the preamble of the
claims. Appeal Br. 15–16. Further, the Appellant argues the Examiner’s
rejection is in error as the claims recite significantly more than an abstract
idea. Appeal Br. 16–18. Specifically, Appellant argues the claims recite a
team planning tool, a calendar application, a graphical user interface (GUI),
and recite a function of in response to the data being entered into a fled of
the GUI, directly linking the team plaining tool with the calendar
application. Appeal Br. 16–17. As such Appellant argues the claims are
rooted in technology and patent eligible. Appeal Br. 17 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Appellant argues:
The process of presenting the meeting agenda to the focal
point via a GUI and directly linking the team planning tool to
the meeting in the calendar application via a uniform resource
identifier (URI) of the team in the team planning tool are
significantly more than the allegedly abstract idea of
“generating a meeting agenda”, at least because these
limitations allow for the focal point to significantly engage with
both the planning tool and the calendar tool without having to
take direct manual action in both tools. This process improves
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user interfaces and user-engagement, and simplifies
configuration and uses of team planning and electronic calendar
applications.

Appeal Br. 17.

Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1, 24, and 32 under 35 U.S.C. § 101,
because the record does not support the Examiner’s determination that the
claims do not recite an improvement in a computer related technology.
We concur with the Examiner that independent claim 21 recite an
abstract concept. In the Non-Final Office Action the Examiner has
identified that the claims recite a method of generating an agenda based
upon retrieving data, determining an incomplete item, creating an agenda
assigning a focal point (data analysis steps) and presenting the results. Non-
Final Act. 3–4. Thus, in the analysis of the Non-Final Action, the Examiner
considered limitations beyond those in the preamble. Non-Final Act. 3–4.
Further, in the Non-Final Office Action and the Answer, the Examiner cites
numerous cases which involved similar concepts of gathering data analyzing
the data and displaying the results, including Electric Power Group and
Digitech which held that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” is an abstract idea a
mental process. Non-Final Act. 4.
However, we concur with Appellant that the claimed invention is
necessarily rooted in computer technology and improves the operation of the
computer network, as were the claims in DDR Holdings. Thus, we consider
the claims to be drawn to a practical application of the abstract idea. In
DDR Holdings, the claimed invention created a hybrid web page that
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combined advantageous elements from two web pages, bypassing the
expected manner of sending a visitor to another party’s web page, in order to
solve the internet-centric problem of retaining website visitors. DDR
Holdings, 773 F.3d at 1257–59. Here, each independent claim recites a GUI
and in response to the data being entered into the a plurality of fields of the
GUI, directly linking the team planning tool to the meeting calendar
application, via uniform resource identifier (URI) of the team planning tool.
Which we consider to be a computer centric solution to a computer problem,
and improves the interaction between a team planning application and a
calendar applications. See Specification ¶¶ 13, 23.
The Examiner has not included this limitation in the analysis of the
abstract idea, which we concur with as it is not a mental process. Non-Final
4. Rather the Examiner, concluded these limitations are not an improvement
to a computer or another technology and represents generic computer
functions. Non-Final 5–6, Answer 11–12. Further, in support of the
Examiner’s conclusion that the claims do not present an improvement to a
computer process but rather merely recite general purpose computers
performing generic functions, the Examiner states:
However, nowhere does the specification describe "in
response to detecting data being entered into a plurality of
editable fields of the GUI, directly linking the team planning
tool to the meeting in the calendar application via a uniform
resource identifier (URI) of a team in the team planning tool,
wherein the team is associated with the retrieved plurality of
work items," as recited in claims 21, 28 or 34.
As such, this disclosure supports the finding that no more
than a general purpose computer, performing generic computer
functions, is required by the claims.

Answer 13.
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We disagree with the Examiner as the analysis does not cite
sufficient evidence to show that in of response to the data being entered into
the a plurality of fields of the GUI, directly linking the team planning tool to
the meeting calendar application, via uniform resource identifier (URI) of
the team planning tool is a generic computer function as is required by
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Further, the
Examiner’s analysis is in essence stating that Appellant’s Specification lacks
written description for the claimed invention, which is appropriately
addressed under 35 U.S.C. § 112.5 Accordingly, we do not sustain the
Examiner rejection of claims 21 through 40 under 35 U.S.C. § 101.

Rejection under 35 U.S.C. § 103
Appellant’s arguments directed to the Examiner’s obviousness
rejection present us with two issues. The first issue presented by Appellant’s
arguments is whether the Examiner’s obviousness rejection is in error
because the combination of Bitt and Pabla do not teach the claimed
“retrieving the team planning tool, a plurality of work items as recited in
representative claim 21.” Appeal Br. 10–13. Specifically, Appellant argues
that Butt, which the Examiner relies upon to teach this limitation does not
teach that the “received available information” discussed in paragraph 51 of
Butt, includes a work item. Appeal Br. 10–11. Appellant argues:
In simple terms Butt's “available information” is defined
as “an appointed meeting start time, end time,
invited/confirmed meeting participants, their coupling to the

5 Should there be further prosecution of this application, the Examiner is
encouraged to develop the record concerning whether Appellant’s
Specification proves written description support for the claimed invention.
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meeting (e.g., connection), and so on.” (Butt at para [0051]) A
start time of a meeting is not a work item of the meeting;
neither is the meeting's end time. Similarly, meeting
participants are not work items, nor is their coupling to the
meeting. It is irrelevant that the “available information” are
derived from sources allegedly similar to sources for
identifying work items. Instead, what is relevant is the
information that is derived from those sources. By the plain
meaning of Appellant’s claim language and the plain meaning
of Butt’s disclosure, the two are not the same thing; Appellant
retrieves work items, Butt merely retrieves “available
information.”

Appeal Br. 12.
Appellant’s arguments directed to the first issue have not persuaded us
of error in the Examiner’s finding that Butt teaches retrieving, from a team
planning tool, a plurality of work items. The Examiner finds Butt teaches
the disputed limitation and cites to Butt, paragraph 51, which discusses a
manager (item 111) receiving information which extracts “meeting or
agenda item information” from spreadsheet, correspondence, word
processing notes or other documents by parsing the documents. Non-Final
7, Answer 6 (additionally citing Butt ¶ 84 and Appellant’s Specification
¶ 31). We concur with the Examiner. Initially, we note that Appellant’s
Specification does not define the term “work item.” Appellant’s
Specification discusses a “work item” as:
the fundamental mechanism to track and coordinate
development tasks and workflows and they provide the hub for
linkage between the various artifacts associated with the team
planning tool 112 (FIG. 1). As such, the Meeting agenda
generation program 116 (FIG. 1) may retrieve the list of work
items (i.e., the work) from the team planning tool 112 (FIG. 1).

Specification ¶ 31. Thus, Appellant’s Specification does not define “work
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item” but rather discusses identifies the “work item” as being a type of data,
used to track and coordinate tasks and that agenda items are generated from
the data. Appellant’s arguments focus on Butt’s discussion of the “available
information” discussed in Butt paragraph 51 as including “appointed
meeting start time, end time, invited/confirmed meeting participants, their
coupling to the meeting” not being the same as “work items.” Appeal Br.
11–12. However, the Examiner’s finding is based upon equating Butt’s
“meeting or agenda item information”, which the Examiner finds to track
and coordinate workflows, to the claimed “work item.” Appellant’s
arguments have not directly addressed this finding by the Examiner.6
Thus, Appellant’s arguments directed to the first issue have not
persuaded us the Examiner erred in finding the combination of Butt and
Pabla teaches retrieving, from a team planning tool, a plurality of work
items.
The second issue presented by Appellant’s arguments is whether
Examiner’s obviousness rejection is in error because the combination of Bitt
and Pabla do not teach the claimed step of “assigning a focal point” as
recited in representative claim 1. Appeal Br 13. Appellant argues that
paragraph 75 of Butt, which the Examiner relies upon to teach this limitation

6 In the Reply Brief, Appellant argues that even if the “meeting and agenda
information” meets the claimed “work item”, the Examiner has not shown it
is from a “team planning tool” as claimed. Reply Br. 2. These new
arguments in the Reply Brief could have been presented in the Appeal Brief,
are not prompted by the Examiner’s Answer, and are not based on any new
arguments or grounds of rejection in the Examiner’s Answer. As a result,
Appellant has waived such untimely argument because Appellant has not
shown good cause for belatedly raising the new argument. See 37 C.F.R.
§ 41.41(b)(2).
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and teaches prioritization of a task or participant and not assigning a focal
point for a task. Appeal Br. 13–14.
The Examiner in response to Appellant’s argument finds that Bitt in
paragraph 50 discusses agenda items are assigned to presenters and given a
priority. Answer 7. Thus, the Examiner concludes that Butt teaches
assigning a participant to a topic as claimed. Id.
We concur with the Examiner’s finding. Representative claim 21
recites “assigning a focal point, from among attendees of the meeting in the
calendar application, for the created topic.” Thus, the claimed focal point is
for a topic and is an assignment to an attendee. Paragraph 50 of Butt
identifies that meeting attendees are assigned as presenters of agenda items.
Appellant’s argument on page 4 of the Reply Brief that “as supported by
Appellant's Specification, a focal point may be defined as the owner of an
item of work. Butt, on the other hand, assigns a priority to a task or a
participant” is not persuasive. We do not see that Appellant’s Specification
provides an explicit definition focal point as an “owner of an item of work”
nor do we consider interpreting the claim in such a manner to be reasonable.
Representative claim 21 merely recites that the focal point is assigned to a
attendee. As such, Appellant’s augments directed to the second issue have
not persuaded us of error in the Examiner’s rejection of representative claim
21. As these are the only two issues presented with respect to the
obviousness rejections of claim 21 and claims 22 through 40 grouped with
claim 21, we sustain the Examiner’s obviousness rejection.

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CONCLUSION

Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 101 Eligibility 21–40
21–40 103 Butt, Pabla 21–40
Overall
Outcome
21–40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED