Ex Parte Castaneda et al

Board of Patent Appeals and Interferences

Jan 23, 2012

11392137 (B.P.A.I. Jan. 23, 2012)

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.
11/392,137 03/29/2006 Frank J. Castaneda RSW920050224US1 (227) 6459
46320 7590 01/23/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
LIAO, JASON G
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
01/23/2012 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
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANK J. CASTANEDA and DAVID L. ZANTER
____________
Appeal 2009-013594
Application 11/392,137
1

Technology Center 2100
____________

Before MAHSHID D. SAADAT, MICHAEL R. ZECHER, and
BRUCE R. WINSOR, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL

1
Filed on March 29, 2006. The real party in interest is International
Business Machines Corp. App. Br. 1.
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner‟s rejection of claims 1-20. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method, system, and computer program product
directed to date-related event management and, in particular, to the
recurrences of date driven values. See Spec. ¶¶ [0001], [0006].
Illustrative Claim
1. A date driven date selective retrieval method for
recurrences in date driven data, the method comprising:

defining a date range;

retrieving exactly three cached instances for each of the
recurrences in the date driven data;

selecting only those recurrences that fall within the date
range according to the three cached instances for each of the
recurrences; and,

adding the selected recurrences to a subset of the date
driven values, and otherwise excluding remaining ones of the
recurrences from the subset.

Prior Art Relied Upon
Kasso US 5,893,073 Apr. 6, 1999
Boothby US 5,943,676 Aug. 24, 1999
Bocking US 2006/0095859 A1 May 4, 2006
(filed Nov. 3, 2004)

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BLACK‟S LAW DICTIONARY (8th ed. 2004) (The term “therefor” is
defined as “adv. For it or them; for that thing or action: for those thing or
actions .”).

Rejections on Appeal
Claims 13-20 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Ans. 4-5.
2

Claims 1-7, 9-11, and 13-19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bocking and Kasso.
3
Id at 5-
20.
Claims 8, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bocking, Kasso, and Boothby. Id at
21-23.
Appellants’ Contentions
1. Appellants contend that since the present Specification
identifies several examples of a computer-usable or computer-readable
medium that fall within the scope of § 101 (i.e., semiconductor or solid state
memory, magnetic tape, a removable computer diskette, a random access
memory (“RAM”), a read-only memory (“ROM”), a rigid magnetic disk,

2
All references to the Answer are to the Answer mailed on April 3, 2009,
which replaced the Answer mailed on March 3, 2009.
3
In the statement of the rejection, the Examiner states that claims 1-7, 9-11,
and 13-19 “may have been admitted by applicants” to be rejected under 35
U.S.C. § 102(e) as being anticipated by Bocking. Ans. 5-6. However, in the
body of the rejection, the Examiner only provides support for rejecting
claims 1-7, 9-11, and 13-19 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Bocking and Kasso. Id at 6-20. We therefore
presume that claims 1-7, 9-11, and 13-19 only stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Bocking and
Kasso.
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and an optical disk), independent claims 13 is directed to statutory subject
matter under § 101. App. Br. 5; Reply Br. 3-4.
2. Appellants contend that the Examiner fails to provide any claim
construction with respect to the claimed terms “recurrences” and “cached
instances,” and fails to identify how Bocking or Kasso teach or suggest such
claim limitations. App. Br. 13, 17; Reply Br. 8-13, 20-21. Moreover,
Appellants argue that Bocking‟s disclosure of caching existing entries does
not teach or suggest “retrieving [exactly three cached] instances for each of
the recurrences in the date driven data,” as recited in independent claim 1.
App. Br. 13 (emphasis in original); Reply Br. 14-16, 21-22. Appellants also
allege that Bocking‟s disclosure of both periodically recurring
appointments/meetings and caching existing calendar entries does not teach
or suggest “selecting only those recurrences that fall within the date [sic]
range according to the [three] cached instances of each of the recurrences,”
as claimed. App. Br. 14, 20 (emphasis in original); Reply Br. 14-16.
Finally, Appellants contend that the Examiner fails to provide a sufficient
rationale for combining Bocking and Kasso. App. Br. 15, 21; Reply Br. 7-8,
17-18.
Examiner’s Findings and Conclusions
1. The Examiner finds that the “…computer useable medium
embodying computer usable program code…” recited in independent claim
13 encompasses non-statutory subject matter, such as propagation mediums
(e.g., electronic, electromagnetic, and infrared signals). Ans. 25 and 27.
Therefore, since the claimed “computer useable medium” encompasses
carrier waves, the Examiner finds that the independent claim 13 is directed
to non-statutory subject matter under § 101. Id at 25-26.
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2. The Examiner finds that the claim terms “recurrences” and
“cached instances” are notoriously well known to an ordinarily skilled
artisan. Id at 33-34. In particular, the Examiner finds that since a reference
need not teach or suggest what is notoriously well known to an ordinarily
skilled artisan, the Examiner properly treated the claim term “recurrences”
when rendering independent claim 1 obvious. Id at 34, 42. Moreover, given
the prosecution history of the present application (i.e., Appellants state that
“[b]oth a data store and a cache are devices (i.e., storage) in which data is
stored”), the Examiner finds that an ordinarily skilled artisan would have
understood that the claimed “cached instance” is an instance of anything
stored in a cache. Id at 35-36.
In light of this claim construction, the Examiner finds that Bocking‟s
disclosure of caching instances in a date range, in conjunction with Kasso‟s
disclosure of a board meeting that takes place exactly three days every other
week, teaches or suggests “exactly three cached instances,” as recited in
independent claim 1. Id at 37-38, 45. Moreover, the Examiner finds that
Bocking‟s disclosure of a cache that provides repeated access to calendar
data teaches or suggests both the claimed steps of “retrieving” and
“selecting.” Id at 43-44. Finally, the Examiner finds that there is a
sufficient rationale to combine Bocking and Kasso. Id at 32-33, 39-40.

II. ISSUES
1. Did the Examiner err in finding that independent claim 13 is
directed to non-statutory subject matter? In particular, the issue turns on
whether the claimed “…computer useable medium embodying computer
usable program code…” encompasses a transitory, propagating signal.
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2. Did the Examiner err in concluding that the combination of
Bocking and Kasso renders independent claim 1 unpatentable? In particular,
the issue turns on whether:
(a) the proffered combination teaches or suggests “retrieving
exactly three cached instances for each of the recurrences in the date driven
data,” as recited in independent claim 1; and
(b) the proffered combination teaches or suggests “selecting only
those recurrences that fall within the date range according to the three
cached instances for each of the recurrences,” as recited in independent
claim 1; and
(c) the Examiner provides a sufficient rationale for the proffered
combination.

III. FINDINGS OF FACT (“FF”)
Appellants’ Specification
FF 1. Appellants‟ Specification states that:
a computer-useable or computer readable medium can be any
apparatus that can contain, store, communication, propagate, or
transport the program for use by or in connection with the
instruction execution system, apparatus, or device. The
medium can be an electronic, magnetic, optical,
electromagnetic, infrared, or semiconductor system (or
apparatus or device) or a propagation medium.

Spec. ¶ [0024].
Bocking
FF 2. Bocking discloses a calendar application for managing
appointments and meetings that automatically checks for and notifies a user
of scheduling conflicts with new appointments or meetings. In particular,
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Bocking discloses an associated calendar cache that includes a first subset of
existing calendar entries falling within a first date range. Further, Bocking
discloses creating a new calendar cache that includes a second subset of
existing calendar entries falling within a second date range, and covers a
predetermined time period (e.g., preferably before and after the date of the
new calendar entry). ¶¶ [0009]-[0010].
FF 3. Bocking discloses that the new calendar entry may be one of a
series of recurring appointments or meetings. For example, Bocking
discloses that a user may have a weekly staff meeting he or she wishes to
enter into the calendar application. ¶¶ [0012], [0034].
Kasso
FF 4. Kasso discloses entering the time and date into text boxes for
the first occurrence of each recurring event. For purposes of explanation,
Kasso disclose that the event at issue may be a board meeting that takes
place at 9:00 am on Mondays, Wednesdays, and Fridays every other week.
Col. 13, ll. 25-30.
FF 5. According to Kasso, once a user enters information about
events, the user may wish to view a calendar that illustrates when the
scheduled events will occur. Col. 14, ll. 57-59.

IV. ANALYSIS
35 U.S.C. § 101 Rejection
Claim 13
We do not find error in the Examiner‟s decision to reject independent
claim 13 as being directed to non-statutory subject matter. In particular,
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independent claim 13 recites, inter alia, “…a computer useable medium
embodying computer usable program code….”
Upon reviewing Appellants‟ Specification for context, a computer-
useable medium may include propagation mediums, such as electronic,
magnetic, optical, electromagnetic, or infrared signals. FF 1. Consequently,
we find that the claimed “…computer useable medium embodying computer
usable program code…” can be broadly, but reasonably construed to
encompass a transitory, propagating signal, which is non-statutory subject
matter. Further, since the claim is not limited to a non-transitory, tangible
medium within one of the four statutory classes of 35 U.S.C. § 101,
4
we
agree with the Examiner that independent claim 13 is directed to non-
statutory subject matter. Ans. 25-26. It follows that the Examiner has not
erred in rejecting independent claim 13 as being directed to non-statutory
subject matter.

4
“A transitory, propagating signal . . . is not a „process, machine,
manufacture, or composition of matter‟ [under 35 U.S.C. § 101]” and,
therefore, does not constitute patentable subject matter under § 101. In re
Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Claims that are so broad that
they read on nonstatutory as well as statutory subject matter are
unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation
omitted) (“Claims which are broad enough to read on obvious subject matter
are unpatentable even though they also read on nonobvious subject
matter.”). “A claim drawn to such a computer readable medium that covers
both transitory and non-transitory embodiments may be amended to narrow
the claim to cover only statutory embodiments to avoid a rejection under 35
U.S.C. § 101 by adding the limitation „non-transitory‟ to the claim.” David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 OFF.
GAZ. PAT. OFFICE 212 (Feb. 23, 2010).
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Claims 14-20
For the same reasons set forth supra, we find that dependent claims
14-20 are also directed to non-statutory subject matter.
35 U.S.C. § 103(a) Rejection—Combination of Bocking and Kasso
Claim 1
We do not find error in the Examiner‟s obviousness rejection of
independent claim 1. In particular, independent claim 1 recites, inter alia, 1)
“retrieving exactly three cached instances for each of the recurrences in the
date driven data;” and 2) “selecting only those recurrences that fall within
the date range according to the three cached instances for each of the
recurrences.”
At the outset, we note that “[t]here has never been a requirement for
an [E]xaminer to make an on-the-record claim construction of every term in
every rejected claim and to explain every possible difference between the
prior art and the claimed invention in order to make out a prima facie
rejection.” In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011) (emphasis
added). Nonetheless, we begin our analysis by considering the scope and
meaning of the claim terms “recurrences” and “cached instances,” which
must be given their broadest reasonable interpretation consistent with
Appellants‟ disclosure. As explained in In re Morris, 127 F.3d 1048 (Fed.
Cir. 1997):
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
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Id. at 1054. See also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating
that during examination “claims must be interpreted as broadly as their terms
reasonably allow”).
Appellants‟ Specification states that “[t]he user interface permits one
to define the first instance of the repeating series and to specify how the
series repeats. The definition of a repeating series often is referred to as a
„recurrence rule‟.” Spec. ¶ [0003]. Further, Appellants‟ Specification states
that “cache memories…provide temporary storage of at least some program
code in order to reduce the number of times code must be retrieved from
bulk storage during execution.” Id at ¶ [0025].
Upon reviewing Appellants‟ Specification for context, we find that the
claim term “recurrences” and “cached instances” may be broadly, but
reasonably construed as follows: 1) “recurrences” are a series of repeating
or recurring instances (e.g., events); 2) “cached instances” are instances of
memory (e.g., events) that are temporarily stored in a cache.
Consistent with our claim construction supra, we find that Bocking‟s
disclosure of a calendar cache that temporarily stores a series of recurring
appointments and meetings falling within a predetermined date range (e.g.,
week) (FFs 2 and 3), in conjunction with Kasso‟s disclosure of a recurring
board meeting that takes place on exactly three days every other week (FF
4), teaches or suggests the claimed “exactly three cached instances” of date
driven data. Further, we find that an ordinarily skilled artisan would have
readily appreciated retrieving exactly three instances of Kasso‟s recurring
board meetings (FF4) from Bocking‟s calendar cache (FF 2), and only
selecting the recurring board meetings that fall within a defined date range
(i.e., a week). FFs 2 and 3. Thus, we find that the combination of Bocking
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and Kasso teaches or suggests the steps of “retrieving exactly three cached
instances for each of the recurrences in the date driven data,” and “selecting
only those recurrences that fall within the date range according to the three
cached instances for each of the recurrences,” as recited in independent
claim 1.
Rationale to Combine
We are not persuaded by Appellants‟ argument that there is
insufficient rationale to combine Bocking and Kasso. App. Br. 15, 21;
Reply Br. 7-8, 17-18. The U.S. Supreme Court has held that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int'l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in a the fashion claimed
by the patent at issue.

Id. at 418. Additionally, the Court instructs that:
“[[r]]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”… however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

Id. (citation omitted).
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Upon reviewing the record before us, we find that the Examiner‟s
suggestion for the proposed modification in the prior art suffices as an
articulated reason with some rational underpinning to establish a prima facie
case of obviousness. See Ans. 7. In summary, we find that an ordinarily
skilled artisan at the time of the claimed invention would have combined
Bocking‟s disclosure of a calendar cache that temporarily stores a series of
recurring appointments and meetings falling within a date range (e.g., week)
(FFs 2 and 3), with Kasso‟s disclosure of a recurring board meeting that
takes place on exactly three days every other week. FF 4. This proffered
combination would predictably result in allowing a user who enters
information about events to view a calendar that illustrates when such events
will occur. FF 5.
Further, as prescribed by the controlling case law, while it is often
necessary for an Examiner to identify a reason for combining the familiar
elements obtained from the prior art in establishing a prima facie case of
obviousness, the identification of such a reason is not a sine qua non
requirement. See KSR, 550 U.S. at 418-19. So long as the Examiner
provides an articulated reasoning with some kind of a rational underpinning
to substantiate the obviousness rejection, such a conclusion is proper. See
id. at 418. In this case, the Examiner provided more than just a mere
conclusory statement. The Examiner states that it would have been obvious
to an ordinarily skilled artisan at the time of the claimed invention “to
modify the teaching of Bocking to include the selection of Monday,
Wednesday, Friday of Kasso for exactly three cached instances because a
user may wish to view a calendar that illustrates when the scheduled events
will occur (Kasso, column 14, lines 57-58).” Ans. 7 (emphasis omitted). In
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our view, such a statement suffices as an articulated reason with some
rational underpinning to support the proffered combination. It follows that
the Examiner has not erred in concluding that the combination of Bocking
and Kasso renders independent claim 1 unpatentable.
Claims 2-7, 9-11, and 13-19
Appellants do not provide separate and distinct arguments for
patentability with respect to independent claims 9 and 13, and dependent
claims 2-7, 10, 11, and 14-19. See App. Br. 9-21; Reply Br. 6-25.
Consequently, we accept Appellants‟ grouping of independent claims 9 and
13, and dependent claims 2-7, 10, 11, and 14-19, with independent claim 1.
App. Br. 9. Therefore, independent claims 9 and 13, and dependent claims
2-7, 10, 11, and 14-19, fall with independent claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii).

35 U.S.C. § 103(a) Rejection—Combination of Bocking, Fasso, and Boothby
Claims 8, 12, and 20
Appellants do not provide separate and distinct arguments for
patentability with respect to dependent claims 8, 12, and 20. See App. Br.
21-22; Reply Br. 6-25. Consequently, we accept Appellants‟ grouping of
dependent claims 8, 12, and 20 with independent claim 1. App. Br. 21.
Therefore, dependent claims 8, 12, and 20 fall with independent claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).

V. CONCLUSIONS OF LAW
1. The Examiner has not erred in rejecting claims 13-20 as being
directed to non-statutory subject matter under 35 U.S.C. § 101.
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2. The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).

VI. DECISION
1. We affirm the Examiner‟s decision to reject claims 13-20 as
being directed to non-statutory subject matter under 35 U.S.C. § 101.
2. We affirm the Examiner‟s decision to reject claims 1-20 as
being unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD