International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardMay 8, 202014264656 - (D) (P.T.A.B. May. 8, 2020) 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. 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. Appeal 2019-003136 Application 14/264,656 2 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. Appeal 2019-003136 Application 14/264,656 3 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.”). Appeal 2019-003136 Application 14/264,656 4 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 Appeal 2019-003136 Application 14/264,656 5 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). Appeal 2019-003136 Application 14/264,656 6 (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. Appeal 2019-003136 Application 14/264,656 7 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 Appeal 2019-003136 Application 14/264,656 8 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 Appeal 2019-003136 Application 14/264,656 9 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 Appeal 2019-003136 Application 14/264,656 10 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. Appeal 2019-003136 Application 14/264,656 11 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. Appeal 2019-003136 Application 14/264,656 12 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 Appeal 2019-003136 Application 14/264,656 13 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). Appeal 2019-003136 Application 14/264,656 14 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. Appeal 2019-003136 Application 14/264,656 15 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). 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