Ex Parte Boss et al

Patent Trial and Appeal Board

Feb 27, 2014

11170441 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/170,441 06/30/2005 Greg Boss YOR920050090US1 5985
48150 7590 02/28/2014
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
02/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
____________________ 5
6
Ex parte GREG BOSS, DAVID BURNS, ANDREW RICHARD JONES, 7
and KEVIN C. MCCONNELL 8
____________________ 9
10
Appeal 2011-005114 11
Application 11/170,441 12
Technology Center 3600 13
____________________ 14
15
16
Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, 17
ANTON W. FETTING, JOSEPH A. FISCHETTI, and MICHAEL 18
W. KIM, Administrative Patent Judges. 19
20
CRAWFORD, Administrative Patent Judge. 21
22
23
DECISION ON REQUEST FOR REHEARING 24
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Appellants filed a Request for Reconsideration (“Req.”) (filed Oct. 30, 1
2013) contending that the Board should consider the Decision on Appeal 2
(“Dec.”) (mailed Aug. 30, 2013) and reverse the Examiner’s rejections of 3
claims 1, 22-27, 29-34, 38-40, and 42-44 (Req. 1, 15).1 4
The applicable standard for a request for rehearing is set forth in 37 5
C.F.R. § 42.71(d), which provides in relevant part: 6
A party dissatisfied with a decision may file a request for 7
rehearing, without prior authorization from the Board. The 8
burden of showing a decision should be modified lies with the 9
party challenging the decision. The request must specifically 10
identify all matters the party believes the Board 11
misapprehended or overlooked, and the place where each 12
matter was previously addressed in a motion, opposition, or a 13
reply. 14
In the Decision on Appeal, the Board affirmed the following 15
Examiner’s rejections: 16
Claims 1, 24, and 26 under 35 U.S.C. § 102(b) as anticipated by 17
Cragun (US 2003/0149606 A1, pub. Aug. 7, 2003). 18
Claims 1, 24, 26, 30-32, 38-40, 42, and 44 under 35 U.S.C. § 103(a) 19
as unpatentable over Cragun and Horvitz (US 2005/0084082 A1, pub. 20
Apr. 21, 2005). 21
Claims 22, 23, 27, and 29 under 35 U.S.C. § 103(a) as unpatentable 22
over Cragun, Horvitz, and Capek (US 2003/0204474 A1, pub. 23
Oct 30, 2003). 24
Claims 25 and 34 under 35 U.S.C. § 103(a) as unpatentable over 25
Cragun, Horvitz, and Zey (US 6,611,275 B1, iss. Aug. 26, 2003). 26

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Claim 33 under 35 U.S.C. § 103(a) as unpatentable over Cragun, 1
Horvitz, and Appellants’ Admitted Prior Art. 2
Claim 43 under 35 U.S.C. § 103(a) as unpatentable over Cragun, 3
Horvitz, and Rembert (US 5,101,352, iss. Mar. 31, 1992). 4
APPELLANTS’ CONTENTIONS 5
Appellants argue that the Decision is erroneous in affirming the 6
Examiner’s rejections, because the Board raised a new issue by articulating 7
that the rationale for affirming the Examiner was based on an extrapolated 8
version of the fundamental patent doctrine of applying the broadest 9
reasonable interpretation of the claims. More specifically, the Appellants 10
argue that we misapprehended the law in holding that when the broadest 11
reasonable interpretation standard is applied to method claims on appeal, 12
conditional steps need not be found in the prior art. (Req. 1-3). 13
It is true we stated “[c]onditional steps in a method claim need not be 14
found in the prior art if, under broadest scenario, the method need not invoke 15
the steps.” (Dec. 4). In light of Appellants’ Request, we understand that this 16
statement could be interpreted as the Board dismissing consideration of 17
conditional steps. That is not the case. We take this opportunity to clarify 18
our position. 19
THE INVENTION 20
Appellants’ claimed invention relates to a calendar system (Spec. 1:6-21
9). 22
23
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Claim 1 is a method claim and is reproduced below: 1
1. A method of automatically scheduling a meeting in an 2
electronic calendar system, said method comprising: 3
accessing, using a processor on a computer, calendars of 4
all participants invited to a meeting being scheduled; 5
checking, using said processor, from each of said 6
participant's calendars, whether each said participant is 7
available for said meeting, in accordance with a priority of said 8
meeting and a three-stage scheduling sequence; and 9
scheduling said meeting on each of said participant's 10
calendar if all said participants are available, wherein said 11
three-stage scheduling sequence comprises: 12
checking whether all participants have at least one free 13
time slot and, if so, using one of said at least one 14
free time slot; 15
if no free time slot is found for all participants, checking 16
whether existing time commitments for 17
participants can be overridden as based on a 18
comparison with said priority of said meeting, as 19
beginning with existing time commitments having 20
a lowest priority; and 21
if no overridden time commitment slot is found based on 22
comparing priorities, checking whether existing 23
time commitments for participants can be 24
overridden as based on comparisons of a business 25
value/context category, as stored in a database that 26
provides business values for meetings. 27
28
Claim 30 is an apparatus claim and reproduced below: 29
30
30. An apparatus comprising: 31
a processor executing a calendar scheduler module that 32
automatically determines whether all participants invited to a 33
meeting are available and accordingly schedules said meeting, 34
using a three-stage scheduling process wherein: 35
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in a first stage, said processor checks whether all 1
participants have at least one free time slot and, if 2
so, uses one of said at least one free time slot; 3
if no free time slot is found for all participants, said 4
processor checks in a second stage whether 5
existing time commitments for participants can be 6
overridden compared with a priority of said 7
meeting, as beginning with time commitments 8
having lowest priorities; and 9
if no overridden time commitment slot is available based 10
on comparing priorities, said processor checks in a 11
third stage whether existing time commitments for 12
participants can be overridden based on 13
comparison of a business value/context category 14
for said meeting, as stored in a database of 15
contexts/projects that provide a business values for 16
meetings. 17
ANALYSIS 18
Anticipation Rejection of Method Claims 1, 24, and 26 19
Appellants argue that we presented a newly articulated legal theory by 20
interpreting claims in accordance with the broadest reasonable interpretation. 21
We do not agree. 22
At the outset, we note that our reviewing court has long established 23
that during examination before the U.S. Patent and Trademark Office (PTO), 24
claims are given their broadest reasonable interpretation consistent with the 25
specification. In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148 (Fed. 26
Cir. 2012); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Giving 27
claims their broadest reasonable construction “serves the public interest by 28
reducing the possibility that claims, finally allowed, will be given broader 29
scope than is justified.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 30
1984); accord In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re 31
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Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“An essential purpose of patent 1
examination is to fashion claims that are precise, clear, correct, and 2
unambiguous. Only in this way can uncertainties of claim scope be 3
removed, as much as possible, during the administrative process.”). 4
Therefore, we must give all claims before the PTO their broadest 5
reasonable interpretation. There is nothing new in applying this standard to 6
the claims on appeal. 7
Appellants specifically argue that we misapprehended the applicable 8
law by using the broadest reasonable interpretation standard to hold that 9
prior art that discloses one stage of the claimed three-stage process is 10
sufficient to form a proper basis for anticipation and obviousness rejections. 11
Appellants argue that our analysis was deficient as a matter of law and not 12
based on case law. 13
Appellants’ claimed invention is a method of scheduling a meeting in 14
an electronic calendar system. Independent claim 1 includes the step of 15
“checking whether all participants have at least one free time slot, and if so, 16
using one of the at least one free time slot[s]” to schedule the meeting. 17
Therefore, if a free time slot is found, the method of claim 1 stops. This is 18
the first stage of the recited three-stage scheduling sequence. 19
Independent claim 1 further recites that “if no free time slot is found 20
for all participants, checking whether existing time commitments for 21
participants can be overridden based on a comparison of said priority of said 22
meeting” (emphasis added). This is the second stage of the recited three-23
stage scheduling sequence. This stage does not occur if the first stage results 24
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in a free time slot being found. In addition, if time commitments can be 1
overridden based on priority of the meeting, the method stops. 2
The claim also recites that “if no overridden time commitment slot is 3
found in comparing priority of the meeting, checking whether existing time 4
commitments for participants can be overridden as based on comparison of a 5
business value/context category.” This is the third stage of the recited three-6
stage scheduling sequence. This step does not occur if a free time slot is 7
found in stage one, or if commitments for participants can be overridden, 8
based of priority of the meeting in stage two. 9
As such, the claim broadly recites a method that includes a second and 10
third stage only if certain conditions are not met. In this regard, the second 11
stage occurs only if a free time slot is not found, and the third stage occurs 12
only if a free time slot is not found and if commitments for participants 13
cannot be overridden based on priority of the meeting. Therefore, as we said 14
on page 4 of our original Decision, the second and third stages of the method 15
are conditional stages. 16
We note that, as we made clear in our original Decision, the 17
Appellants agree that the second and third stages are conditional steps: 18
The second and third stages are clearly defined by 19
conditional statements that define the entry into those 20
two stages. Thus, if the first stage fails to find a free time 21
slot, then the second stage is entered, and, if the second 22
stage fails to find an overridden time slot, then the third 23
stage is entered. 24
(Br. 12). 25
Appellants, in this Request, argue that our holding as to the following 26
is in error: that conditional steps in a method claim need not be found in the 27
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prior art if, when the claim is given its broadest reasonable interpretation, the 1
method need not invoke the steps. Appellants further argue that there is no 2
established case law to this effect. 3
As we discussed above, our reviewing court has held that claims 4
before the PTO are given the broadest reasonable construction consistent 5
with the specification. As we stated in our Decision on page 5, when 6
independent claim 1 is given this broadest reasonable construction, the claim 7
covers a method that stops if a free slot is found for all participants. 8
As further discussed in our original decision, conditional steps 9
employed in a method claim need not be found in the prior art if, under the 10
broadest scenario, the method need not invoke the steps. See Ex parte Katz, 11
2010-006083, 2011 WL 514314, at *4 (BPAI 2011) (non-precedential) 12
(citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 13
2004)). 14
Our reviewing court also holds this view. In an unpublished decision, 15
in an infringement context, the court said that “[i]t is of course true that 16
method steps may be contingent. If the condition for performing a 17
contingent step is not satisfied, the performance recited by the step need not 18
be carried out in order for the claimed method to be performed.” 19
Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 20
(Fed. Cir. 2007) (unpublished). We note that it is well established that 21
which would infringe if later in time, anticipates if earlier. Schering Corp. v. 22
Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (quoting Bristol-23
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 24
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2001)); Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889) (“That which 1
infringes, if later, would anticipate, if earlier.”). 2
In the instant case, when the method claims are given their 3
broadest reasonable interpretation, they are broad enough to cover a 4
method, which stops if at least one free time slot is found. In that 5
circumstance, the one free time slot is used and the method stops. As 6
independent claim 1 covers a method with only one stage, it is only 7
necessary that the prior art describe or suggest this one stage. 8
The Appellants’ construction, if accepted, would limit the scope of the 9
process claims to using a software module capable of performing all 3 steps 10
of a 3-stage scheduling sequence as defined in the claims. That is not an 11
accurate reading of what is reasonably broadly construed. Claim 1 provides 12
for “checking, using said processor . . . whether each said participant is 13
available for said meeting, in accordance with a priority of said meeting and 14
a three-stage scheduling sequence.” Emphasis added. There is no module 15
mentioned in the process claim. There is no software, no IF code. There is 16
nothing in this claim that includes any mechanism that must be capable of 17
performing all the steps – even the conditional ones – of the 3-stage 18
scheduling sequence. All that is required to meet the claim is a computer 19
“checking . . . whether each said participant is available . . . in accordance 20
with a . . . a three-stage scheduling sequence.” On the other hand, the 21
apparatus and medium claims do include a “calendar scheduler module.” So 22
in their case, it is essential to establishing a prima facie case of anticipation 23
that there be evidence expressly or inherently describing software capable of 24
performing all steps claimed – even the conditional ones. The wording of 25
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the apparatus and medium claims include a structural limitation the process 1
claims do not have. The claimed process is not limited to using a structure 2
capable of performing all steps and the apparatus/medium claims. To limit 3
the process claims in that way – that is, to accept the Appellants’ narrow 4
construction of the process claims – would impermissibly import software 5
limitations into the process claims. 6
In view of the foregoing, we decline to make any changes in our 7
Decision in regard to the anticipation rejection. 8
Obviousness 9
We also find no error in our decision regarding the obviousness 10
rejections of the pending methods claims for the same reasons. 11
In addition, our reviewing court has stated in regard to an obviousness 12
rejection, that a claim that is broad enough to cover obvious subject matter is 13
unpatentable, even if the scope of the claim also encompasses patentable 14
subject matter. In re Mraz, 455 F.2d 1069, 1072-73 (CCPA 1972). 15
The claims on appeal are broad enough to cover a method that has one 16
stage, a method that has two stages, and a method that has three stages. As 17
the broadest method covered by the claim, the one stage method, would have 18
been obvious at the time of the invention; the entire claim would have been 19
obvious. 20
As such, we decline to make any changes in our decision with regard 21
to the obviousness rejections of method claims 1, 22-27, 29, and 42-44. 22
We also decline to make any changes to our decisions in regard 23
to claims 30 and 32, which are apparatus and medium claims because 24
the Appellants argued these claims together with the method claims in 25
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the Brief and the Reply Brief. As such, we properly selected claim 1 as 1
a representative claim. (Dec. 7). Therefore, there was no error in not 2
treating the apparatus and medium claims separately as argued now by 3
the Appellants, because these claims were not argued separately by the 4
Appellants. 5
Although our claim construction analysis remains the same, we 6
have taken the opportunity to clarify our position in light of the 7
Appellants’ Request. In doing so, we have explained for the first time a 8
structural distinction between the method claims and apparatus and 9
medium claims. Because this may be interpreted as changing the basic 10
thrust of the rejections, and in the interest of justice, we denominate the 11
rejections we have affirmed as new grounds of rejection. Cf. Ex parte 12
Janakiraman, No. 2008-0998, slip op. at *6 (BPAI May 6, 2009) 13
(Informative) (“Under the specific facts of this case, our interpretation 14
of claim terms was not previously detailed by the Examiner. Further, 15
our claim interpretation differs from the Examiner’s and implicates 16
different reasoning.”) (available at: http://www.uspto.gov/ip/boards/ 17
bpai/decisions/inform/rh080998.pdf ). 18
19
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DECISION 1
We DENY the Request for Rehearing and decline to modify our 2
Decision to affirm the Examiner’s rejections but we GRANT the Request for 3
Rehearing in that we clarify our claim construction and denominate our 4
affirmance of the rejections as a new ground of rejection. 5
This decision contains a new ground of rejection pursuant to 37 6
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of 7
rejection pursuant to this paragraph shall not be considered final for judicial 8
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN 9
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 10
one of the following two options with respect to the new ground of rejection 11
to avoid termination of the appeal as to the rejected claims: 12
(1) Reopen prosecution. Submit an appropriate amendment of 13
the claims so rejected or new evidence relating to the claims so 14
rejected, or both, and have the matter reconsidered by the 15
examiner, in which event the proceeding will be remanded to 16
the examiner…. 17
(2) Request rehearing. Request that the proceeding be reheard 18
under § 41.52 by the Board upon the same record…. 19
No time period for taking any subsequent action in connection with 20
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21
22
GRANTED-IN-PART; 37 C.F.R. § 41.50(b) 23
24
25
hh 26