Ex Parte Addae et al

Patent Trial and Appeal Board

Oct 15, 2018

12145631 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/145,631 06/25/2008 Martinez Vencia Addae
46429 7590 10/17/2018
CANTOR COLBURN LLP-IBM POUGHKEEPSIE
20 Church Street
22nd Floor
Hartford, CT 06103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
A US920080280US 1 3647
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/17/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTINEZ VENCIA AD DAE, FANG LU,
VANDANA MALLEMPATI, and JEHAN MOGHAZY
Appeal2017-004439 1
Application 12/145,631 2
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-9, 11-15, and 17-19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
August 25, 2016) and Reply Brief ("Reply Br.," filed January 24, 2017), and
the Examiner's Answer ("Ans.," mailed January 11, 2017) and Final Office
Action ("Final Act.," mailed April 29, 2016).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
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Application 12/145,631
CLAIMED INVENTION
Appellants' claimed invention "relates generally to information
processing systems and more particularly to a methodology and
implementation for scheduling meetings in calendar applications" (Spec. 1,
11. 9--12).
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for processing scheduling of meetings on a
primary user's calendar application, said method being
implemented in a hardware and/or software embodiment, said
method comprising;
enabling a primary user to input to said calendar
application a user priority level for each of a plurality of
requesting users, said requesting users being enabled to schedule
meetings on said calendar application of said primary user;
saving said primary user input to said calendar application
including a listing of said plurality of requesting users together
with corresponding primary user input priority levels for each of
said plurality of requesting users;
receiving a request from a requesting user to view said
calendar application of said primary user;
retrieving a user priority level for said requesting user in
response to said receiving;
retrieving user priority levels for other requesting users
having previously scheduled meetings on said calendar
application of said primary user;
displaying said primary user's calendar application on a
display device viewable by said requesting user, said primary
user's calendar application being displayed without showing
meetings previously scheduled by others having a lower user
priority level than said requesting user; and
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enabling said requesting user to schedule meetings on said
primary user's calendar application in accordance with said user
priority level assigned by said primary user to said requesting
user whereby said requesting user is enabled to schedule
meetings in place of previously scheduled meetings scheduled by
other requesting users having a lower user priority level on said
primary user's calendar application.
REJECTION
Claims 1-3, 5-9, 11-15, and 17-19 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
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."
The Supreme Court, however, has long interpreted§ 101 to include an
implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas"
are not patentable. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
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the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Appellants first argue that the § 101 rejection cannot be sustained
because "the Examiner has rejected applicant's claims as a group and does
not address each claim individually" (App. Br. 17). In this regard,
Appellants charge that "the Examiner does not address the wording of
appellant's claims individually but instead restates the claims in the
Examiner's own words and then rejects all of the claims as a group based
not upon the applicant's claim language but rather upon the Examiner's re-
statement of applicant's claims" (id.).
Appellants' argument is not persuasive of Examiner error at least
because there is no requirement that the Examiner's characterization of what
the claim is "directed to" must precisely mirror the claim language. Instead,
the Federal Circuit has explained that "the 'directed to' inquiry applies a
stage-one filter to claims, considered in light of the [S]pecification, based on
whether 'their character as a whole is directed to excluded subject matter."'
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp., 790 F.3d at 1346). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
Here, it is clear from a fair reading of the Specification that the
claimed invention is directed to scheduling meetings in calendar applications
(see, e.g., Spec. 2, 11. 19-27 ("The disclosed exemplary embodiments
provide for prioritizing meetings and allowing a certain set of favorite
people see the availability based on priority. . . . A high priority user is
enabled to schedule a meeting on other users' calendars based on the priority
level of the scheduling user.")). As such, we see no legal difficulty with the
Examiner's determination that the claims are directed to "scheduling [a]
meeting on a user calendar" (Final Act. 4).
Focusing on the first step of the Mayo/Alice framework, Appellants
argue that the claims are not merely abstract ideas because "[Appellants']
invention is claimed in three separate and implemented 'concrete' physical
configurations" (App. Br. 19-20). 3 But, that argument is not persuasive at
3 I.e., (1) a hardware-implemented and/or software-implemented step-by-
step machine process for scheduling of meetings on a primary user's
displayed calendar application (claims 1-3, 5, and 6); (2) a computer
program product comprising one or more computer-readable tangible
storage devices having program instructions stored on at least one of the one
or more storage devices for processing scheduling of meetings in a primary
user's calendar application (claims 7-9, 11, and 12); and (3) a calendaring
system for processing scheduling of meetings in a primary user's calendar
application, comprising, inter alia, a server, a user terminal, input means,
and a memory (claims 13-15 and 17-19).
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least because the Supreme Court has long "warn[ ed] ... against"
interpreting § 101 "in ways that make patent eligibility 'depend simply on
the draftsman's art."' Alice Corp., 134 S. Ct. at 2360 (alterations in original)
( citation omitted).
The law also is clear that "not every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry." In re
TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).
Although the claims recite physical components, e.g., a server, storage
devices, a user terminal, these physical components merely provide the
generic environment in which to implement the abstract idea, i.e.,
"scheduling [a] meeting on a user calendar." For example, we find no
indication in the Specification that the operations recited in the claims
require any specialized computer hardware or other inventive computer
components, invoke any assertedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components, which is not enough for patent-eligibility. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("And after
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. The bare fact
that a computer exists in the physical rather than purely conceptual realm 'is
beside the point.'" ( citation omitted)).
Turning to the second step of the Mayo/Alice framework, Appellants
argue that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claims include additional elements
that are "significantly more" than the judicial exception (App. Br. 20). Yet,
aside from reproducing the language of claim 1, Appellants offer no
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persuasive argument or technical reasoning to support that position (id.
at 20-21 ). For example, Appellants do not contend that the claims improve
the functioning of the computer itself or that they effect an improvement in
any other technology or technical field.
Responding to the Examiner's Answer in the Reply Brief, Appellants
charge that the Examiner has "oversimplified the claims by looking at them
generally and failing to account for the specific requirements of the claims"
(Reply Br. 4 ( emphasis omitted)). 4 Appellants assert that the claims are
directed to "an improvement to a computer-related technology that takes in
user priority levels for a primary user's calendar and automatically appl[ies]
sets of rules for scheduling a meeting with the primary user by the
requesting user" (id.). And Appellants maintain that the claims are, thus,
analogous to the claims at issue in McRO (id.).
Citing the USPTO's November 2, 2016 Memorandum to the Patent
Examining Corps, 5 Appellants assert that the claims in McRO described "a
specific way (use of particular rules to set morph weights and transitions
through phonemes) to solve the problem of producing accurate and realistic
lip synchronization and facial expressions in animated characters, rather
than merely claiming the idea of a solution or outcome" and that the
claim elements of independent claim 1, 7, and 13 similarly "describe a
particular way to solve the problem of assigning priority for calendar
requests and/or meetings for certain individuals as designated by a
4 We note that the pages of Appellants' Reply Brief are unnumbered; we
refer to the title page as page 1, and treat the pages that follow as though
consecutively numbered.
5 Available at https://www.uspto.gov/sites/default/files/documents/McRo-
Bascom-Memo. pdf
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primary user using a computer processor" (id. at 6). Further likening the
present claims to those in McRO, Appellants also assert that "[l]ike McRO,
the claimed invention is not merely describing the idea of a solution or
outcome of scheduling of meetings in a primary user's calendar application"
but instead "presenting the steps to take to achieve the solution, and ... is
not directed to an abstract idea according to the McRO court" (id. at 7).
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a "technological improvement over
the existing, manual 3-D animation techniques" through the "use[] [of] the
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice." McRO, 837 F.3d
at 1316. Specifically, the Federal Circuit determined that the claimed rules
allowed computers to produce accurate and realistic lip synchronization and
facial expressions in animated characters that previously could only be
produced by human animators; and that the rules were limiting because they
defined morph weight sets as a function of phoneme sub-sequences. Id.
at 1313. Appellants have not identified any analogous improvement here
that is attributable to the claimed invention.
Appellants assert, as described above, that the claimed invention
provides "an improvement to a computer-related technology" that applies a
set of priority rules in scheduling a meeting with a primary user by a
requesting user. But, we are not persuaded that the claims, thus, represent
any technological improvement. Instead, it appears clear, when considered
in light of the Specification, that the focus of the claimed invention, as
recited, for example, in independent claims 1, 7, and 13, is on achieving a
business objective (i.e., providing a meeting scheduling methodology and
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system by which meetings can be scheduled according to a priority level
thereby enabling more important meetings to be easily scheduled on
otherwise unavailable times and dates) (see Spec. 2, 11. 8-12)), and not on
any claimed means for achieving that goal that improves technology.
Rather than paralleling the claims in McRO, the present claims, in our
view, are substantially similar to the claims at issue in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). There, the
Federal Circuit held that the claims were not patent-eligible because "[t]he
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions."
Id. at 1354.
Similarly here, we find that claim 1, for example, involves nothing
more than collecting data (i.e., a listing of requesting users, together with
corresponding priority levels set by a primary user; and a request from a
requesting user to view the calendar application of the primary user);
analyzing the data (i.e., retrieving (and comparing) the priority level of the
requesting user to the priority levels of other requesting users having
previously scheduled meetings on the primary user's calendar application);
and displaying the results of the collection and analysis ( displaying the
primary user's calendar application without showing meetings previously
scheduled by others having a lower user priority level than the requesting
user)-without any asserted inventive technology for performing these
functions.
In the Reply Brief, Appellants additionally reference the Federal
Circuit decision in BASCOM Global Internet Services, Inc. v. AT&T
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Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and assert that the claimed
invention "follows a non-conventional and non-generic arrangement of
setting priority levels for requesting users and allowing the requesting users
to view and schedule meeting based on their priority level" and "follows a
non-conventional and non-generic arrangement of prioritizing requests from
certain users based on rules set by a primary user" (Reply Br. 9-10). Yet,
we find no parallel between Appellants' claims and the claims in BASCOM.
In BASCOM, the claims described an inventive concept in the non-
conventional and non-generic arrangement of known, conventional pieces.
BASCOM, 827 F.3d at 1350. Specifically, the Federal Circuit determined
that the claimed installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user provided an inventive concept in that it gave the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server. Id. Appellants do not identify any comparable non-conventional,
non-generic arrangement of elements that is recited in the present claims.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-3, 5-9, 11-15, and 17-19 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-3, 5-9, 11-15, and 17-19 under
35 U.S.C. § 101 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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