Sean Callanan et al.

Patent Trials and Appeals Board

Jan 31, 2020

14249144 - (D) (P.T.A.B. Jan. 31, 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.
14/249,144 04/09/2014 SEAN CALLANAN CAM920100043US2_8150-0676 9273
112978 7590 01/31/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
SWARTZ, STEPHEN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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 SEAN CALLANAN,
RUTHIE D. LYLE, PATRICK J. O’SULLIVAN,
FRED RAGUILLAT, and CAROL S. ZIMMET

Appeal 2018-004442
Application 14/249,144
Technology Center 3600
____________

Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–13, 23, 24, and 26–32. 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. Appellant identifies the real party in interest as IBM
Corporation. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A method comprising:
a computing device receiving of a command by an
attendance prompting tool to issue an attendance prompt to at
least one attendee of an electronically-scheduled event, wherein
said at least one attendee is denoted as being absent from the
electronically-scheduled event when the at least one attendee is
not present at a scheduled time of the electronically scheduled
event;
the computing device ascertaining, whether an existence
of at least one activity being performed by the at least one
attendee with at least one electronic device;
the computing device, if at least one activity exists,
generating an attendance prompt for the electronically-
scheduled event, wherein said attendance prompt comprises at
least a reminder message for the electronically-scheduled event
and an attendance update mechanism for the at least one
attendee to provide a response to the attendance prompt, and,
wherein the attendance prompt is compatible with the at least
one electronic device; and
the computing device interjecting, the generated
attendance prompt into the at least one activity, wherein
contents of the attendance prompt are presented to the at least
one attendee operating the at least one electronic device.
REFERENCES
Name Reference Date
Theimer et al.
(“Theimer”)
US 5,812,865 Sept. 22, 1998
Bittman US 6,173,153 B1 Jan. 9, 2001
Hodges US 2007/0162315 A1 July 12, 2007
Aaron et al. (“Aaron”) US 2008/0195312 A1 Aug. 14, 2008
Bhatia US 8,527,287 B1 Sept. 3, 2013
Crawford et al.
(“Crawford”)
US 8,898,231 B2 Nov. 25, 2014

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REJECTIONS
I. Claims 1–13, 23, 24, and 26–32 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.
II. Claims 26 and 27 are rejected under 35 U.S.C. § 102(b) as
anticipated by Bittman.
III. Claims 1–7, 11, 12, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bittman and Bhatia.
IV. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bittman, Bhatia, and Aaron.
V. Claims 9, 10, 13, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Bittman, Bhatia, and Theimer.
VI. Claims 28–30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bittman and Hodges.
VII. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bittman, Hodges, and Crawford.
VIII. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Bittman and Crawford.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
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Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (quotation marks omitted)). The first
step determines whether the claim is directed to judicially excluded subject
matter (such as a so-called “abstract idea”); the second step determines
whether there are any “additional elements” recited in the claim that (either
individually or as an “ordered combination”) amount to “significantly more”
than the identified judicially excepted subject matter itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed
to” an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
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processes — without integrating such abstract idea into a “practical
application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
The Appellant’s arguments focus on claim 1, taking the position
claims 2–13, 23, 24, and 26–32 stand or fall together with independent claim
1. Appeal Br. 9. The present analysis likewise addresses claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
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With respect to Step 1 of the 2019 Revised Guidance, the Examiner
determines that the claims are within identified categories of § 101. Final
Action 9.
In regard to Step 2A, Prong One, there are inconsistencies in the
Examiner’s identification of claim limitations said to recite a judicial
exception. In one aspect, the Examiner states (in relation to limitations in
independent claim 1):
[A]n abstract idea is deemed to be present in the claims, namely
the abstract idea of generating attendance prompts in order to
determine the attendance of a user for a scheduled event on a
device which utilizes the claim language of receiving,
ascertaining, generating, and interjecting.
Id. at 10. The Examiner characterizes the identified concept as “An Idea of
Itself” — a description that the Examiner considers to encompass “[a]n idea
standing alone such as an un-instantiated concept, plan or scheme,” as well
as a “mental process . . . that ‘can be performed in the human mind, or by a
human using a pen and paper.’” Id. In another aspect, the Examiner parses
independent claims 1 and 26 and regards every individual limitation of claim
1 and every individual limitation of claim 26 as “An Abstract Idea of Itself.”
Id. at 11–12.
Of the Examiner’s two approaches to the identification of a potential
judicial exception, the first one — whereby the “receiving,” “ascertaining,”
“generating,” and “interjecting” limitations of claim 1 are said to describe a
judicial exception (id. at 10) — comports better with the Step 2A, Prong
One, inquiry articulated in the 2019 Revised Guidance, insofar as the
identified concept is regarded as an abstract idea in the category of “[m]ental
processes” (84 Fed. Reg. at 52).
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The following limitations of claim 1 that the Examiner identifies (see
Final Action 10) may be regarded as encompassing activities that could be
performed mentally, as they embrace “observation, evaluation, judgment,
[or] opinion” (2019 Revised Guidance, 84 Fed. Reg. at 52):
a computing device receiving of a command by an attendance
prompting tool to issue an attendance prompt to at least one attendee
of an electronically-scheduled event, wherein said at least one
attendee is denoted as being absent from the electronically-scheduled
event when the at least one attendee is not present at a scheduled time
of the electronically scheduled event; [and]
the computing device ascertaining, whether an existence of at
least one activity being performed by the at least one attendee with at
least one electronic device.
See also Answer 6–7. Leaving aside the computer-implementation features,
these limitations involve the mental activities of observing the absence of an
attendee and recognizing that the attendee is otherwise occupied.
Accordingly, we agree with the Examiner’s analysis, corresponding to Step
2A, Prong One, to the extent that the foregoing identified “receiving” and
“ascertaining” limitations of claim 1 may be regarded as judicially excepted
subject matter — specifically an abstract idea in the category of a mental
process.
On the other hand, it is unclear how the “generating” and
“interjecting” limitations — both of which the Examiner includes as part of
a judicial exception (see Final Action 10) — would be subject to such a
categorization. These limitations of claim 1 state:
the computing device, if at least one activity exists,
generating an attendance prompt for the electronically-
scheduled event, wherein said attendance prompt comprises at
least a reminder message for the electronically-scheduled event
and an attendance update mechanism for the at least one
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attendee to provide a response to the attendance prompt, and,
wherein the attendance prompt is compatible with the at least
one electronic device; and
the computing device interjecting, the generated attendance
prompt into the at least one activity, wherein contents of the
attendance prompt are presented to the at least one attendee operating
the at least one electronic device.
The Examiner does not explain why these steps might be regarded as part of
a mental process. To the contrary, the “generating” and “interjecting” steps
call for the creation of a message in a form that is “compatible with the at
least one electronic device” and presenting such message in a manner
consistent with the medium of the claimed “activity.” For example, the
Specification refers to “an attendance prompt 225 being interjected into the
phone call of an absent attendee 215 can be a recorded audio message,
whereas the attendance prompt 225 for an instant messaging session can
require only text” and “if the absent attendee is in an instant messaging
session, the attendance prompt can be presented to the attendee within the
session’s window.” Spec. ¶¶ 36, 72.
The Appellant does not squarely address why the claims may or may
not be said to recite a mental process, as discussed above. The Appellant
contends that the claims should be determined to be eligible, under the so-
called “machine or transformation test,” because claim 1 includes computer-
based features:
All aspects of the claimed invention are tied to a computing
device (i.e., machine). Additionally, the claimed invention also
involves determining the existence of an activity on an
electronic device and sending an attendance prompt that is
compatible with the electronic device. Consequently, the
claimed invention meets the machine or transformation test,
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which is an “important and useful clue” that the claimed
invention, as whole, is directed to statutory subject matter.
Appeal Br. 13. Yet, as the Appellant concedes, the “machine or
transformation test” is not dispositive of the eligibility question. Id.
Moreover, the presence of computer features does not foreclose the
recitation of a judicial exception in claim 1.
We further note that there may be multiple ways to characterize
judicial exceptions described in patent claims. See, e.g., Apple, Inc. v.
Ameranth, Inc., 842, F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea
can generally be described at different levels of abstraction.”) In the instant
case, as an alternative to the approach discussed above, all the limitations of
claim 1 (leaving aside, however, the particulars of computer
implementation) may be regarded as reciting a “[c]ertain method[ ] of
organizing human activity” — i.e., “managing personal behavior or
relationships or interactions between people.” 2019 Revised Guidance, 84
Fed. Reg. at 52. Indeed, the method of claim 1 bears a strong similarity to
the “attention manager” claims addressed in Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335 (Fed. Cir. 2018), wherein the Federal Circuit explained:
Standing alone, the act of providing someone an additional set
of information without disrupting the ongoing provision of an
initial set of information is an abstract idea. As the district
court aptly observed, this “basic and longstanding practice can
be found in, for example, a television station’s use of a breaking
news ticker across the bottom of the screen.” The court also
pointed to the nontechnical human activity of passing a note to
a person who is in the middle of a meeting or conversation as
further illustrating the basic, longstanding practice that is the
focus of the claimed invention.
Interval Licensing, 896 F.3d at 1344 (citations omitted).
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In view of the foregoing discussion, we are not persuaded of error in
the Examiner’s analysis that corresponds to Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
Under an approach employed by the Examiner (see Final Action 10),
in regard to the Step 2A, Prong Two, inquiries, the “generating” and
“interjecting” limitations of claim 1 may be regarded as additional elements.
The Appellant argues that there are “technical” aspects to these claim
limitations that give rise to the patent-eligibility of claim 1:
An attendance prompt (i.e., a computer message) is generated
and generated to be compatible with the electronic device,
which is also a technical process. The attendance prompt is
then interjected into the activity, which involves, for example,
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the insertion of data into an instant messaging session, which is
another technical process.
Reply Br. 2–3. See also Appeal Br. 22–23.
Yet, the “generating” and “interjecting” limitations of claim 1 serve to
generally link the judicial exception to the computer environment and to add
the extra-solution activity of presenting a prompt to an absent attendee. See
Bilski v. Kappos, 561 U.S. 593, 610 (2010) (“[T]he prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment.’”) (quoting
Diamond v. Diehr, 450 U.S. 175, 191 (1981)). Therefore, the “generating”
and “interjecting” steps do not integrate judicial exceptions into practical
applications. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Alternatively, as discussed above, claim 1 may be understood as
reciting a “[c]ertain method[ ] of organizing human activity.” See id. at 52.
Under this alternative approach, the claimed subject matter that might be
regarded as comprising “additional limitations” is even further curtailed —
again providing no more than the technological context wherein the judicial
exception would be situated.
Under Step 2B of the 2019 Revised Guidance (84 Fed. Reg. at 56), a
claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
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(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
Under the Examiner’s analysis (see Final Action 10), the “generating”
and “interjecting” limitations of claim 1 may be regarded as additional
elements. Yet, these features are claimed in a broad, unspecific manner.
The “attendance prompt” that is “generat[ed]” has no particular form,
beyond the broad recitation that it is “compatible with the at least one
electronic device,” as claim 1 states. Nor does the claim language about
“interjecting” the “generated attendance prompt into the at least one
activity” provide any specificity beyond the spare statement, in claim 1, that
the “contents of the attendance prompt are presented to the at least one
attendee operating the at least one electronic device.” Indeed, the
Specification indicates that the broadly claimed “generating” and
“interjecting” features could take the form of “interject[ing]” “a recorded
audio message” “into [a] phone call of an absent attendee,” or providing
“text” in “an instant messaging session.” Spec. ¶ 36. See also Spec. ¶¶ 4,
72.
The Appellant suggests that the “generating” and “interjecting”
limitations might amount to significantly more than the recited judicial
exception. Appeal Br. 21–22. Yet, the Appellant’s position relies upon
features that do not appear in claim 1. The Appellant contends that “the
claimed invention requires generating an attendance prompt (i.e., the
creation of a data structure) that is compatible with the electronic device”
and “format[ting] the attendance prompt to accommodate the capabilities of
the electronic device.” Id. at 22. Such “creation of a data structure” and
“format[ting]” are not set forth in claim 1 and, therefore, cannot amount to
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significantly more than a recited judicial exception. Thus, the Appellant
does not persuade us of error, in regard to the inquiries of Step 2B.
In the alternative analysis presented above, wherein claim 1 is
understood as reciting a “[c]ertain method[ ] of organizing human activity”
(see id. at 52), the “additional limitations” amount to no more than the
linkage to the broadly recited computer implementation. The Appellant does
not even suggest that such a generic computer context (see Spec. ¶¶ 11–17)
— regardless of whether its elements were regarded individually or in
combination — might provide significantly more than a judicial exception.
Therefore, under the alternative analysis presented herein, we are not
persuaded that claim 1 might include “significantly more” than a judicial
exception, per the Step 2B analysis.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, in view of the foregoing analysis, we sustain the
rejection of independent claim 1 — as well as independent claim 26 and
dependent claims 2–13, 23, 24, and 27–32 (see Appeal Br. 9) — under 35
U.S.C. § 101.
Anticipation
Independent claim 26 and dependent claim 27 stand rejected as
anticipated by Bittman.
Claim 26 recites:
26. A computer program product, comprising:
a computer readable hardware storage device having
stored therein computer usable code,
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the computer usable code, which when executed by a
computer hardware system, causes the computer hardware
system to perform:
automatically determining that an attendee of an
electronically-scheduled event is not present at a
scheduled time of the event;
identifying, for the attendee previously-determined
to not be present at the event, an active session involving
the attendee; and
sending, to an electronic device associated with the
attendee and based upon the identified active session
involving the attendee, a message including an
attendance prompt, wherein
the electronic device presents the attendance prompt to
the attendee.2
According to the Examiner, Bittman teaches the “sending” limitation.
Final Action 21 (citing Bittman col. 6, ll. 37–48); Answer 16 (citing Bittman
col. 7, ll. 1–45). The Examiner states that the relevant portion of Bittman
teaches that “once a late user tries to access a class or meeting that they are
late to a messages [sic] is sent to the teacher prompting them to accept the
latecomer” and “the teacher or person running the meeting gets information
on the lateness of the user and can either accept or reject their attendance.”
Answer 16. The Examiner further explains:
This is viewed by the Examiner as a late participant connecting
and the system realizing they are there for a specific class or
meeting automatically. Since the information is passed for a
soft key approval [in Bittman,] this indicates that the active
session which is being run by the teacher is notified, indicating

2 As presented, claim 26 appears to include three indented paragraphs
(beginning with the words “automatically,” “identifying,” and “sending,”
respectively), followed by a final paragraph (beginning with the phrase “the
electronic device presents”). Appeal Br. 41 (Claims App.).
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the [Bittman] system has a concept of who is currently there
and newly added and determines based on the input of a teacher
to allow them or not into the meeting or class (i.e. allowing the
user into an active session).
Id.
Yet, as the Appellant argues, Bittman’s disclosure of a teacher
receiving an indication that a participant is tardy — i.e., disclosure
corresponding to the claimed “determining that an attendee of an
electronically-scheduled event is not present at a scheduled time of the
event” — cannot also disclose the claimed “sending, to an electronic device
associated with the attendee and based upon the identified active session
involving the attendee, a message including an attendance prompt.” See
Appeal Br. 26; Reply Br. 7–10.
The “sending” limitation of claim 26 requires a determination that the
“attendee” is absent. The Examiner’s position would render the “sending”
limitation meaningless, because this limitation would map to the same
disclosure that the Examiner relies upon for the “determining” limitation.
“Claims must be ‘interpreted with an eye toward giving effect to all terms in
the claim.’” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616
F.3d 1249, 1257 (Fed. Cir. 2010) (quoting Bicon, Inc. v. Straumann Co., 441
F.3d 945, 950 (Fed. Cir. 2006)). See also In re Power Integrations, Inc., 884
F.3d 1370, 1376 (Fed. Cir. 2018) (explaining that a “problem with the
board’s claim construction is that it renders claim language meaningless.”)
Furthermore, the Examiner’s mapping of the claim language to
Bittman conflicts with the claimed requirement that “a message including an
attendance prompt” be “sen[t] to an electronic device associated with the
attendee and based upon the identified active session involving the
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attendee,” such that “the electronic device presents the attendance prompt to
the attendee”:
While the Examiner asserts “the broadest reasonable
interpretation of the claim it is not clear that the attendee is
getting a second prompt,” the claim clearly requires that “the
electronic device presents the attendance prompt to the
attendee.” The information that is sent by the office to the
teacher ([Bittman’s] steps 185, 189) is neither an “attendance
prompt” nor presented to the attendee. As admitted with the
Examiner’s analysis . . ., “a messages is sent to the teacher
prompting them [sic] to accept the latecomer” and “teacher or
person running the meeting gets information on the lateness.”
The message is sent to the teacher — not the electronic device
of the attendee. Moreover[, in Bittman], the teacher is
prompted — not “the electronic device presents the attendance
prompt to the attendee,” as claimed.
Reply Br. 9.
In view of the foregoing analysis, we do not sustain the rejection of
independent claim 26, along with dependent claim 27, under 35 U.S.C.
§ 102(b).
Obviousness
I. Claims 1–13, 23, and 24
In the Examiner’s analysis, Bittman teaches the following limitations
of independent claim 1:
a computing device receiving of a command by an
attendance prompting tool to issue an attendance prompt to at
least one attendee of an electronically-scheduled event, wherein
said at least one attendee is denoted as being absent from the
electronically-scheduled event when the at least one attendee is
not present at a scheduled time of the electronically scheduled
event; [and]
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the computing device ascertaining, whether an existence
of at least one activity being performed by the at least one
attendee with at least one electronic device.
See Final Action 22 (citing Bittman col. 5, ll. 27–34, col. 6, ll. 36–47, col. 7,
ll. 21–39). See also Answer 17–19 (citing Bittman col. 7, ll. 1–47).
According to the Examiner, the claimed “receiving of a command . . .
to issue an attendance prompt” to the “at least one attendee,” “wherein said
at least one attendee is denoted as being absent,” maps to the cited portions
of Bittman that teach “provid[ing] attendance prompting as part of an
electronically scheduled class and indicating if a user is absent because they
didn’t respond to the prompt at the class.” Final Action 22. In Bittman, the
operation of responding to such a prompt is described as follows:
To begin the session, the teacher presses an attendance soft key
168, thereby triggering the software routine 168 to display a
prompt 169 at which the user enters a PIN code, thereby
verifying the session.
Bittman col. 6, ll. 42–45. See also id. col. 7, ll. 30–45.
The Examiner relies upon the same functionality of Bittman, for
teaching claim 1’s limitation of “ascertaining . . . an existence of at least one
activity being performed by the at least one attendee with at least one
electronic device.” Final Action 22 (citing Bittman col. 6, ll. 36–47).
According to the Examiner, Bittman discloses claim 1’s “ascertaining”
limitation, because “Bittman teaches computing devices that determine
whether a user is using an electronic device with respect to the class by
responding to the prompt with a pin code.” Id. See also Answer 17–19.
Yet, claim 1 recites “ascertaining” an “activity being performed by”
an “attendee,” which occurs after the attendee “is denoted as being absent
from the electronically-scheduled event.” Thereafter, the method of claim 1
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calls for “generating an attendance prompt” for the absent attendee and
“interjecting” this “attendance prompt” into the “activity” identified in the
“ascertaining” step.
Therefore, as the Appellant explains, the Examiner’s mapping of
claim 1 to Bittman conflicts with the temporal sequence set forth in claim 1.
Appeal Br. 27–29; Reply Br. 11. As the Appellant states: “[I]t does not
make sense for the ‘generating an attendance prompt’ to be performed ‘if at
least one activity exists’ since the Examiner has alleged that the ‘at least one
activity’ corresponds to a user responding to an attendance prompt.” Appeal
Br. 29.
Accordingly, we agree with the Appellant’s position that the
Examiner’s analysis does not sufficiently demonstrate that Bittman teaches
the “ascertaining” limitation of claim 1. Consequently, we do not sustain the
rejection of independent claim 1, and dependent claims 2–13, 23, and 24,
under 35 U.S.C. § 103(a).
II. Claims 28–32
The rejections of dependent claims 28–32 rely upon the Examiner’s
mapping of Bittman to base claim 26 (see Final Action 43–47), which is
addressed, above, in regard to the anticipation rejection of independent claim
26.
Accordingly, based upon the analysis provided above, in regard to
independent claim 26, we do not sustain the rejections of claims 28–32
under 35 U.S.C. § 103(a).
Appeal 2018-004442
Application 14/249,144

19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13, 23,
24, 26–32
101 Subject-matter
eligibility
1–13, 23,
24, 26–32

26, 27 102(b) Bittman 26, 27
1–7, 11, 12,
23, 24
103(a) Bittman, Bhatia 1–7, 11,
12, 23, 24
8 103(a) Bittman, Bhatia,
Aaron
8
9, 10, 13,
21
103(a) Bittman, Bhatia,
Theimer
9, 10, 13,
21
28–30 103(a) Bittman, Hodges 28–30
31 103(a) Bittman, Hodges,
Crawford
31
32 103(a) Bittman, Crawford 32
Overall Outcome 1–13, 23,
24, 26–32

TIME PERIOD FOR RESPONSE
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