Ex Parte Canova et al

Board of Patent Appeals and Interferences

Jan 15, 2009

09571083 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANCIS JAMES CANOVA JR., NEAL OSBORN,
and MICHAEL E. LUNSFORD
____________________

Appeal 2008-2303
Application 09/571,0831
Technology Center 2400
____________________

Decided: January 15, 2009
____________________

Before: JAY P. LUCAS, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge LUCAS.

Opinion Dissenting filed by Administrative Patent Judge DANG.

LUCAS, Administrative Patent Judge with whom SIU, Administrative
Patent Judge joins, concurring.

1 Application filed May 15, 2000. The real party in interest is PalmSource, Inc.

Appeal 2008-2303
Application 09/571,083

DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal from a final rejection of claims 1 to 19, 28 and 29
under authority of 35 U.S.C. § 134. The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b). Claims 20 to
27 are canceled.
Appellants’ invention relates to method and system for scheduling a
meeting using a Personal Digital Assistant (PDA) and another PDA or
computer. In the words of the Appellants:
An embodiment of the invention provides a method for
scheduling an event. The method includes signaling a request from a
first computer to schedule an event to a second computer. A schedule
is then received from the second, the schedule includes indicators of
available time periods in the calendar period from the second
computer. A consolidated schedule is then generated. The
consolidated schedule comprises information comparing the indicators
of available time periods from the second computer with indicators of
available time periods from the first computer.

(Abstract, Specification, page 18).
Claim 1 is exemplary:
1. A method for scheduling an event using a first computer and a
second computer, the method comprising:

transmitting a signal between the first computer and the second
computer to request to schedule one or more new events:

wherein a first scheduling application that resides on the first
computer has a first set of events;

wherein a second scheduling application that resides on the second
computer has a second set of events;

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programmatically generating a consolidated schedule of available
time periods of the first scheduling application and available time periods of
the second scheduling application;
wherein programmatically generating a consolidate schedule includes
comparing versions of different sets of events, said versions including a
version of the first set of events and a version of the second set of events;

using the consolidated schedule to schedule a proposed event;

wherein the proposed event is not a member of any version of any set
of events compared to generated the consolidated schedule;

the first computer transmitting a request to the second computer to
schedule the proposed event;

the first computer receiving a message from the second computer;

if the message indicates that the proposed event can be scheduled,
causing the first computer to update the first scheduling application to reflect
that the proposed event is scheduled,

wherein the second scheduling application has been updated to reflect
that the proposed event is scheduled; and

if the message indicates that the proposed event cannot be scheduled,
then the first computer causing no update to the first scheduling application.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Davis US 4,363,093 Dec. 7, 1982
Frid-Nielsen US 5,519,606 May 21, 1996
Pivowar US 6,308,201 B1 Oct. 23, 2001

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REJECTIONS
R1: Claims 1 and 13 stand rejected under 35 U.S.C. § 112, ¶ 1 for failing
to comply with the written description requirement of that statute.
R2: Claims 1 to 19 stand rejected under 35 U.S.C. § 102(b) for being
anticipated by Frid-Nielson.
R3: Claims 1 to 19 stand rejected under 35 U.S.C. § 102(e) for being
anticipated by Pivowar.
R4: Claims 28 and 29 stand rejected under 35 U.S.C. 103(a) for being
obvious over Frid-Nielson in view of Davis.

Groups of Claims:
See 37 CFR § 1.41.37 (c) (vii). See also In re McDaniel, 293 F.3d
1379, 1383 (Fed. Cir. 2002) (“If the brief fails to meet either requirement [of
37 CFR § 1.192(c)(7)], the Board is free to select a single claim from each
group of claims subject to a common ground of rejection as representative of
all claims in that group and to decide the appeal of that rejection based
solely on the selected representative claim.”).
The claims will be discussed in the order of the rejections, R1 to R4.
Appellants contend that the claimed subject matter is not anticipated
by Frid-Nielson or Pivowar, or rendered obvious by Frid-Nielson in
combination with Davis, for failure of the references to teach the limitations
of the claims. The Examiner contends that each of the claims is properly
rejected.
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
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this opinion. Arguments which Appellants could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived.

We reverse the rejections.
ISSUE
The first issue is whether Appellants have shown that the Examiner
erred in rejecting the claims under 35 U.S.C. § 112, ¶ 1 for failure to fully
disclose the claimed subject matter. That issue turns on the disclosure
supporting the claimed limitation “the first computer receiving a message”.
The second issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102 and 35 U.S.C. § 103 . The
second issue turns on whether Frid-Nielson and Pivowar each teach the
addition of a new event (e.g. meeting) to the consolidated schedules in the
manner claimed.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a method and system for scheduling events
(e.g. meetings) on a handheld computer, such as a PDA. In the context of
arranging a meeting between two people with PDAs, the first step is to
communicate with each other and decide to have a meeting. (Fig. 3, #610
and 620-630; Spec. p. 6, l 1 – 17). If they agree, they signal such and
their PDAs generate a consolidated schedule on one or both of the
computers for the period of interest (e.g. this week). (Spec, p. 5, l. 15; see
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Fig. 3). Having generated the consolidated schedule, one of the users
then proposes a meeting (scheduled event) by signaling to the other user.
(P. 6, ll. 15-16). As shown in Fig. 4, graphic shadings, or colors indicate
times already allocated by one or the other users, and a lack of shading
indicates the free periods where the proposed new event may occur.
(P. 3, l. 23 to p. 7, l. 15). The Appellants then disclose one user tapping,
for example, a free period 346’ which highlights that specific free period,
proposes the meeting, and allows the users to enter text information such
as “Meeting w/Frank” #343’ or “Meeting with Mike” #343” in that
highlighted area. (P. 7, ll. 25 to 31). In various disclosed embodiments,
the free time is graphically indicated in various ways (e.g. color, gray-
scale patterns) (p. 11, l. 7) and may be ranked for desirability by the
desires of one or more of the users. (P. 11, l. 22).
2. Frid-Nielson teaches a system and method for reconciling schedules
between a PDA and a computer, or two computers (Col. 1, ll. 51-53).
The reconciliation (or synchronization) process, describe in Col. 5, l. 3 to
Col. 6, l. 12. After the granularity of the appointment tables has been
reconciled (e.g. half hour or hourly scheduling), appointments that are on
one table of scheduled appointments are copied to the other table if they
are missing from it. (Col. 5, ll. 34-36). By use of a user interface, after
the granularity adjustments, users can control the reconciliation activity-
the insertion, deletion, editing of the events in the list to make them
synchronized. (Col. 6, l. 65 -Col. 7, l. 2).
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3. The patent reference Pivowar uses a server #104 to synchronize
calendars, stored on various PDAs, with a desktop computer. (Col. 1, l.
55; col. 2, l. 13). Calendar information is exchanged between the PDAs
and the computer to keep the schedules of appointments synchronized.
(Col. 5, ll. 51-54).
PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
Once the Examiner has established a reasonable basis to question the
enablement provided for the claimed invention, the burden falls on the
Appellant to present persuasive arguments, supported by suitable proofs
where necessary, that one skilled in the art would be able to make and use
the claimed invention using the disclosure as a guide. See In re
Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973). In making the
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determination of enablement, the Examiner shall consider the original
disclosure and all evidence in the record, weighing evidence that supports
enablement against evidence that the Specification is not enabling.
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to the
artisan that, as of the filing date of the application, the inventor had
possession of the later claimed subject matter. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). "One shows that one is 'in possession'
of the invention by describing the invention, with all its claimed limitations,
not that which makes it obvious." Lockwood v. American Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis in original).
Although "the meaning of terms, phrases, or diagrams in a disclosure
is to be explained or interpreted from the vantage point of one skilled in the
art, all the limitations must appear in the specification." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The
Specification need not describe the claimed subject matter in exactly the
same terms as used in the claims, but it must contain an equivalent
description of the claimed subject matter. Id.
It is axiomatic that anticipation of a claim under § 102 can be found
only if the prior art reference discloses every element of the claim. See In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) and Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452,
1457 (Fed. Cir. 1984).

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ANALYSIS
From our review of the administrative record, we find that the
Examiner has presented a prima facie case for the rejections of Appellants’
claims under 35 U.S.C. §§ 112, 102, and 103. The prima facie case is
presented on pages 3 to 12 of the Examiner’s Answer. In opposition,
Appellants present a number of arguments.
Arguments with respect to the rejection
of claims 1 and 13
under 35 U.S.C. § 112 ¶ 1 [R1]

The first argument addresses the issue of statutory subject matter under
35 U.S.C. § 112, ¶ 1. Examiner has rejected independent claims 1 and 13
for
“contain[ing] subject matter which was not described in the
specification such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s) …had possession of the claimed
invention. Specifically, Examiner finds that the specification does not
support a communication from the second computer in the form of a
“message”. Examiner notes that per the specification, the second
computer provides a response to the first computer, which response
the Examiner understands to be either an acceptance in the form a
return schedule, or a rejection in the form of no response, (as
Examiner can find no enumerated means within the specification or
drawings (Fig. 3) by which an actual rejection is made other than by
non-response generally).”

(Ans., p. 3). The test for satisfaction of the written description requirement
of 35 U.S.C. § 112 ¶ 1 is whether all of the limitations of a claim are
supported by disclosure in the Specification. (See Vas-Cath Inc. v.
Mahurkar, (cited above) and Lockwood v. American Airlines, Inc. (cited
above)). Specifically, Examiner finds that the term “message” is not
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supported. Looking at the last two paragraphs of representative claim 1, we
note that the first computer transmits a request for a proposed event to the
second computer, and the “first computer receiv[es] a message from the
second computer.” The message either “indicates that the proposed event
can be scheduled” or “indicates that the proposed event cannot be
scheduled”.
In the Specification, Appellants indicate “The process then proceeds
to blocks 520 and 525 where the second handheld computer 200 receives
(block 520) and then responds (block 525) to the request.” (Spec., p. 5, ll.
5-6). There follows a description of a response (sending back a schedule) or
non-response sent back to the first computer. This response is sufficient to
indicate that a proposed event can or cannot be scheduled. The claim does
not put a heavy informational burden on the “message” received by the first
computer, it need only give a yes or no indication. We do find sufficient
support in the Specification to support a “message” of such limited content.
Thus, we agree with the Appellants (Br., p. 7, bottom) that they have
disclosed a message being sent and received.
We thus find error in the Examiner’s rejection R1 under 35 U.S.C.
§ 112 ¶ 1.

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Arguments with respect to the rejection
of claims 1 to 19, 28 and 29
under 35 U.S.C. § 102 and
35 U.S.C. § 103 respectively. [R2, R3 & R4]

Appellants contend that the Examiner erred in rejecting claims 1 to 19
under 35 U.S.C. § 102 for failure of the Frid-Nielson reference or the
Pivowar reference to disclose or suggest certain of the claimed limitations.
More particularly, Appellants contend that concerning representative claim
1, Frid-Nielson fails to disclose or suggest the limitation “if the message
indicates that the proposed event cannot be scheduled, then the first
computer causing no update to the first scheduling application”. (Br., p. 10,
middle). Additionally, Appellants contend that “in Frid-Nielson, any new
event to be added to one set of events being synchronized must have been a
member of the particular version of the sets being synchronized”, (Br., p. 11,
bottom), which is contrary to the negative limitation in the claim. A similar
contention is presented with respect to the Pivowar reference.
Reviewing the claimed method of the Appellants, we find that a key
aspect of the Appellants’ invention is the synchronization of the two
calendars of the two computers before and as part of the process of selection
of the time for a proposed event (see FF#1 above). Once the schedules on
the two computers, two PDAs, or the PDA and the computer have been
consolidated, the new meeting (i.e. the claimed “proposed event”) is then
placed in a free spot in the consolidated schedule. The negative limitation in
the claim makes it clear that the new proposed event is a part of the claimed
method for scheduling, and not an existing event currently resident on either
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of the PDAs’ schedules and part of the consolidation. (“[W]herein the
proposed event is not a member of any version of any set of events
compared to generate the consolidated schedule”). (Claim 1).
In contrast, the Frid-Nielson patent and the Pivowar patent strictly
address reconciling multiple PDAs with each other or with a desktop
computer. They are artifacts of the days when a PDA (e.g. a PALM Pilot or
such) would be “HotSync’d” by placing it in a cradle to conform the
meetings and contacts on the PDA with those on the user’s desktop
computer. We note, for example, Figure 4A of Frid-Nielson in which the
two tables T1 and T2 are synchronized. There is no teaching in Frid-Nielson
or in Pivowar of adding the “proposed event” to the synchronized
consolidated tables, as in the claims, and the Examiner has not pointed to
any such teaching. The PDA’s events are strictly reconciled with the events
on the tables of the desktop, for example.
The Examiner argues that the claims can be anticipated by Frid-
Nielson if the PDAs in Frid-Nielson are repeatedly synchronized. (Ans., p.
20, top). That is, the synchronization of Frid-Nielson can be done once, and
then a new event can be added to one of the PDAs, and then a
synchronization can be done again to add the new event. We have
considered this argument, but do not agree that this method is either inherent
nor taught by the references, or that it anticipates the claims. Though Frid-
Nielson and Pivowar both teach synchronizing the PDAs, in neither process
is a new event added to the consolidated list of event. The only
synchronized events are those already on the sets of events already stored on
the PDAs, which is contrary to the claim language quoted above. We agree
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that PDAs inherently accept the scheduling of an event (e.g. meeting), and
that we have a teaching of synchronizing the complete schedules in the
references. We also agree that it would be inherent to synchronize multiple
times, after adding new events to one of the PDAs. But then the new events
would be part of the stored scheduled event sets on one of the PDAs, and the
references do not teach adding the new event into the synchronizing process,
with the proposed event not being a member of the stored event sets. All of
the synchronizing in Frid-Nielson and Pivowar is of stored events in a
schedule. We thus agree with the Appellants’ arguments (p. 12, bottom;
p. 16, top) that the claimed limitation “wherein the proposed event is not a
member of any version of any set of events compared to generate the
consolidated schedule” is not found in the references.
We have also considered Appellants’ argument that the references fail
to teach the claimed limitation “if the message indicates that the proposed
event cannot be scheduled, then the first computer caus[es] no update to the
first scheduling application.” (Br., p. 10, middle). The Examiner has not
particularly pointed out where the references teach that limitation, and we do
not find it inherent in the references. The PDAs in Frid-Nielson and Pivowar
all schedule events, and then synchronize them with the computers or with
each other. When an event cannot be synchronized, it does not fail to
register on the PDA on which it is entered.
We have found error in the rejections R2 and R3 for failure of the
references Frid-Nielson and Pivowar to teach claimed limitations. The same
error extends to rejection R4 of claims 28 and 29 under 35 U.S.C. § 103 (a).
The Davis reference, a wireless processor intercommunications system, we
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find does not contain the required teachings missing from the primary
reference Frid-Nielson. Thus dependent claims 28 and 29 are not properly
subject to a rejection under 35 U.S.C. § 103 over those references.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner erred in rejecting claims 1 and 13 under 35 U.S.C. § 112, ¶1,
and 1 to 19 under 35 U.S.C. § 102 and claims 28 and 29 under 35 U.S.C.
§ 103.

DECISION
The rejection of claims 1 and 13 under 35 U.S.C. § 112, ¶ 1 for failing
to comply with the written description requirement of that statute is
reversed.
The rejection of claims 1 to 19 under 35 U.S.C. § 102(b) for being
anticipated by Frid-Nielson is reversed.
The rejection of claims 1 to 19 under 35 U.S.C. § 102(e) for being
anticipated by Pivowar is reversed.

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The rejection of claims 28 and 29 under 35 U.S.C. 103(a) for being
obvious over Frid-Nielson in view of Davis is reversed.

REVERSED

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DANG, Administrative Patent Judge, dissenting.

I respectfully dissent from my colleagues’ reversal of the prior-art
rejections (R2, R3, R4) of claims 1-19 over Frid-Nielsen.
Appellants contend that “a proposed event must be separate and
distinct from any set of events that produces the consolidated schedule
before the proposed event was accepted,” and that “Claim 1 plainly states,
‘the proposed event is not a member of any version of any set of events
compared to generate the consolidated schedule’ (emphasis added),” (App.
Br. 11). However, the Examiner finds that “a ‘proposed event’, by default,
is an existing event in a later version of the schedules, as later versions
inherently comprises earlier versions of the schedules plus new ‘proposed
events” (Ans. 22). The issue on this appeal is whether the Appellants have
shown error in the Examiner’s finding that Frid-Nielsen discloses “using the
consolidated schedule to schedule a proposed event; wherein the proposed
event is not a member of any version of any set of events compared to
generate the consolidated schedule” (claim 1).
Frid-Nielsen discloses generating a consolidated schedule between
schedule 301 of a portable device and schedule 302 of a desk top computer
(col. 4, ll. 16-21; Fig. 3a-3F). Frid-Nielsen further discloses entering a
proposed event (scheduling and other time information) with keyboard 104
or pointing device 105 (col. 3, ll. 34-36; Fig. 1) belonging to the portable
device or a desk top computer.
I find that entering a new event (to be consolidated) using the
keyboard 104 and the pointing device 105 of Frid-Nielsen to be scheduling
of a proposed event, wherein the schedule used to consolidate includes a
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previously consolidated schedule. That is, the new event proposed to be
consolidated anew will not be a member of any version of any set of events
used to compare and generate the previously consolidated schedule.
As the Examiner notes, “any ‘post-synchronization’ new event added
need not be a member of the original two synchronized sets” and “in the
event a random meeting time is chosen subsequent to schedule
synchronization, … [the new event] therefore could not have been a member
of the synchronized data sets” (Ans. 20). For example, should the schedule
of the portable device and schedule of the desk top computer be consolidated
for the month of December, a new event entered to the consolidated
schedule at the portable device to be consolidated anew in the month of
January with the desk top computer would be a proposed event that is not a
member of any version of any set of events compared to generate the
consolidated schedule in December. Thus, I find that Appellants’ claims do
not recite any limitation to distinguish the claimed invention from such
interpretation.
Appellants further argue that “the plain language of Claim 1 indicates,
a proposed event may very well be rejected by a second computer” (App. Br.
11) and that claim 1 “requires that a first computer schedule a proposed
event after receiving a message indicating that the proposed event can be
scheduled” (App. Br. 13). However, the Examiner finds that “no specific
‘rejection by a second computer’ is actually enumerated with Appellant’s
claim language” and that “human/user action is well-known to be required
for performing actions” (Ans. 23). Therefore, another issue on appeal is
whether the Appellants have shown error in the Examiner’s finding that
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Frid-Nielsen discloses “the first computer receiving a message from the
second computer; if the message indicates that the proposed event can be
scheduled, causing the first computer to update the first scheduling
application to reflect that the proposed event is scheduled, wherein the
second scheduling application has been updated to reflect that the proposed
event is scheduled; and if the message indicates that the proposed event
cannot be scheduled, then the first computer causing no update to the first
scheduling application” (claim 1).
Frid-Nielsen discloses consolidating schedules wherein a user at a
consolidating device requests reconciliation of the two schedules 301, 302
by selecting the “reconcile” option from the submenu 230 and the schedule
to be consolidated 301 or 302 is received by the consolidating device (col. 5,
ll. 3-13; Fig. 2, 3A-3F). Employing a user interface element 330, the user
can selectively accept or reject a proposed event on the schedule to be
consolidated (col. 5, ll. 18-22; Fig. 3A-3F), wherein if there is a conflict, the
user may reject the proposed event (col. 5, ll. 54-64).
I find that Frid-Nielsen’s sent schedule from a portable device
containing proposed events to be consolidated with the schedule of the
desktop computer to contain a “message,” wherein, based on a determination
of the “message” of whether there is a conflict with the portable device’s
schedule, the user can cause the desktop computer to update its scheduling
application. That is, after a determination that there is no conflict for the
proposed event and that the proposed event can be scheduled at the desktop
computer, the desktop computer’s scheduling application is updated.
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I agree with the Examiner that such “causing the first computer to
update” step does not necessarily require a second computer to perform the
action, which could be performed by a user, and, as the Examiner notes,
“human/user action is well-known to be required for performing actions”
(Ans. 23). In the previous example discussed above, for a new event entered
at the portable device (wherein the portable device’s scheduling application
has already been updated to reflect this new event) to be consolidated anew
with the desk top computer, if there is no conflict with the desktop
computer’s schedule, the user at the desktop can afterwards update the
desktop computer’s scheduling application. Thus, I find that Appellants’
claims do not recite any limitation to distinguish the claimed invention from
such interpretation.
In the Reply Brief, Appellants provide no argument to dispute that the
Examiner has correctly shown where these steps appear in the prior art, and
do not submit any corresponding arguments in the Reply Brief to contest the
Examiner’s finding. Appellants merely assert “Examiner again misquotes
and misinterprets the previously mentioned passage in Appellants’ response”
(Reply Br. 7). Appellants have not explained, and it is not otherwise
apparent, why Frid-Nielsen’s updating of a first computer by the user,
according to the Examiner’s finding, does not correspond to the claimed step
of causing a first computer to update.
For the above reasons, I conclude that Appellants have not shown that
the Examiner erred in finding that Frid-Nielsen discloses the claimed steps
and would affirm the rejection of claim 1 and claims 2-19 falling therewith.

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