Ex Parte Hayes et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10906337 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENT FILLMORE HAYES, JR. and NIRAJ P. JOSHI
____________________

Appeal 2009-006525
Application 10/906,3371
Technology Center 2100
____________________

Decided: April 29, 2010
____________________

Before JOHN A. JEFFERY, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed February 15, 2005. The real party in interest is
International Business Machines Corporation.
Appeal 2009-006525
Application 10/906,337

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 19 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Appellants’ invention relates to an electronic calendar for scheduling
meeting appointments (Spec. ¶ [0001] and [0002]). In the words of
Appellants:
The invention includes methods and
computer program products for scheduling parts of
meetings using electronic calendars. A recipient
receives an electronic meeting invitation for a first
period of time. The recipient may accept the
invitation for a second period of time, where the
second period of time is shorter than the first
period of time and lies within the first period of
time. A meeting notice corresponding to the
second period of time is added to the recipient’s
electronic calendar. The visual appearance of the
recipient’s electronic calendar may be altered in
correspondence with the first period of time.
(Spec. ¶ [0006]).

Claim 1 is exemplary, and is reproduced below:
1. A method for scheduling meetings on
electronic calendars, said method comprising:

receiving a meeting invitation for a meeting
for a first period time;

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accepting part of the invitation in response
to a prompt for a second period of time that falls
within the first period of time, where the second
period of time is shorter than the first period of
time; and

including a meeting notice on a first
electronic calendar for the second period of time.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Microsoft ® Outlook ® 2000, Service Pack-3 (SP-3), release date
October, 21, 2002 (hereinafter “Outlook”).2

Gordon and Feddema. Special Edition Using Microsoft ® Outlook ® 2000
(Que, 1999)3 (hereinafter “Outlook ® 2000 Manual”).

REJECTION
The Examiner rejects the claims as follows:

Claims 1 to 19 stand rejected under 35 U.S.C. § 102(b) for being
anticipated by Outlook.

2 See “Office 2000 Update: Service Pack 3 (SP3),” available at
www.microsoft.com/downloads/details.aspx?FamilyID=5C011C70-47D0-
4306-9FA4-8E92D36332FE&displaylang=EN; see also “Outlook 2000
Security update – SP3” available at
www.versiontracker.com/dyn/moreinfo/win/13559; last checked for
availability on April 23, 2010.
3 See Safari Books Online at http://proquest.safaribooksonline.com/0-7897-
1909-6; last checked for availability on April 23, 2010.
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Appellants contend that the claimed subject matter is not anticipated
by Outlook because Outlook does not teach the claim limitation “accepting
part of the invitation in response to a prompt,” as recited in claim 1 (App.
Br. 4, middle to bottom). The Examiner contends that each of the claims is
properly rejected (Ans. 13, top).
The claims are grouped as per Appellants’ Briefs. Only those
arguments actually made by Appellants have been considered in this
opinion. Arguments that Appellants could have made but chose not to make
in the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 102(b). The issue specifically
turns on whether Appellants’ claim limitation “accepting part of the
invitation in response to a prompt” (claim 1) is taught by the Outlook
reference.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
Disclosure
1. Appellants have invented a computer program product and method for
scheduling electronic meetings (¶¶ [0001] and [0002]). The method
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involves sending a meeting request and accepting part of the meeting
request in response to a prompt. (See claim 1.)
Outlook
2. The Outlook reference teaches an electronic meeting scheduler (Figs. 1 to
3). Outlook involves sending a meeting request (Fig. 1) and accepting
part of the meeting request in response to a prompt (Figs. 2 and 3).
Outlook ® 2000 Manual
3. The Outlook ® 2000 Manual offers evidence that color screenshot
representations (i.e., representations that are not limited to black-and-
white) of the Outlook ® application do use colors, such as dark blue and
purple, to differentiate various types of times in an electronic calendar.
(See section entitled “Classifying an Appointment.”4)

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).

Our reviewing court states in In re Zletz that “claims must be
interpreted as broadly as their terms reasonably allow” (893 F.2d 319, 321
(Fed. Cir. 1989). However, “limitations are not to be read into the claims

4 See http://proquest.safaribooksonline.com/0-7897-1909-
6/ch13lev1sec3#X2ludGVybmFsX0ZsYXNoUmVhZGVyP3htbGlkPTAtNz
g5Ny0xOTA5LTYvY2gxMGxldjFzZWMzJmltYWdlcGFnZT0=; last
checked for availability on April 23, 2010.)
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from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993).

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 (Fed. Cir. 2005) (citation omitted).

ANALYSIS
From our review of the administrative record, we note that the
Examiner presents his factual findings of anticipation on pages 3 to 7 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments.

Arguments with respect to the rejection
of claims 1 to 19
under 35 U.S.C. § 102(b)

Appellants argue that Outlook fails to teach Appellants’ claim
limitation “accepting part of the invitation in response to a prompt for a
second period of time that falls within the first period of time.” (Claim 1)
(App. Br. 4, middle to bottom). Instead, Figure 2 shows the attendee
inputting a new endtime for the meeting invitation. (See Fig. 2; 8 to 8:30
a.m., instead of 8 to 10 a.m.) “However, the attendee does not accept part of
the invitation for a second period of time that falls within the first period of
time in response to a prompt.” (Id.).
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In reply, the Examiner concludes that Appellants’ claim limitation “in
response to a prompt” fails to distinguish “between [a] user activated prompt
or an automatic prompt.” (Ans. 9, top).
We carefully reviewed the Briefs, the Examiner’s Answer, the cited
portions of the reference, and indeed the entire reference. In this case, we
agree with the Examiner’s findings of anticipation for the following reasons.
We find that Appellants have invented a computer program product
and method for scheduling electronic meetings (FF#1). Appellants’ method
involves sending a meeting request and accepting part of the meeting request
in response to a prompt (id.). In comparison, the Outlook reference teaches
an electronic meeting scheduler (FF#2). Outlook involves sending a
meeting request (id.) and accepting part of the meeting request in response to
a prompt (id.).
Exemplary method claim 1 recites, in relevant part, “receiving a
meeting invitation” and “accepting part of the invitation in response to a
prompt.” Thus, we broadly but reasonably read Appellants’ claimed
“meeting invitation” as being no different from Appellants’ claimed
“prompt.” In other words, a person of ordinary skill in the art would have
understood that a user receiving a meeting request for the claimed “first time
period” has the option of “accepting part of the invitation in response to” the
claimed “meeting invitation” (i.e., a prompt). We thus find unpersuasive
Appellants’ argument that “the attendee [the receiving party] does not accept
part of the invitation for a second period of time that falls within the first
period of time in response to a prompt,” (App. Br. 4, bottom; emphasis
omitted) because the user receiving the claimed “meeting invitation” is
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being prompted by said claimed “electronic meeting invitation.”
Accordingly, we find no error.
Appellants further contend:
Changing the end time was solely the result
of the actions of Henry W. Orr [Outlook, Fig. 2].
Henry W. Orr did not accept part of the invitation
in response to a prompt. . . . as discussed in at least
paragraph [0019] of Appellants’ Specification.
Instead, Henry performed several actions on his
own behalf to change the end time on his calendar.
(App. Br. 6, middle.)
We read the claims in the broadest reasonable manner consistent with
the disclosure. (See In re Zletz, cited above.) However, this Board will not
read limitations into the claims from the disclosure. (See In re Van Geuns,
cited above.) Contrary to Appellants’ citation above to paragraph [0019],
we note that the relevant portion of the Specification for purposes of our
analysis is actually paragraph [0020], which reads:
Explicit specification [of the part of the
meeting that is accepted by the party receiving a
meeting invitation] may occur when, for example,
the user enters the second period of time directly;
implicit specification may occur when, for
example, the user accepts a portion of the meeting
in response to a prompt, a menu, or the like.

Appellants chose not to specifically place any limitations on what the
“accepting” step (claim 1) means, represents, or includes. Reading the
claims broadly but reasonably, we find that Appellants’ claimed “accepting
… in response to a prompt” (claim 1) reads on Outlook’s meeting invitation
since Outlook’s meeting invitation itself serves to electronically “prompt” a
user to “[accept] part of the invitation … for a second period of time that
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falls within the first period of time,” as claimed. Accordingly, we find no
error in the rejection of claim 1.
Appellants make no separate arguments for claims 7 and 13 (App. Br.
4, middle to 5, bottom). Therefore, these claims falls with claim 1 (37
C.F.R. § 41.37(c)(1)(vii)).
Next, regarding claims 2 and 8, Appellants argue: Outlook does not
teach “altering the visual appearance … with other blocked periods of time,”
as claimed. “Figure 3 [of the prior art] shows the calendar of the attendees
(Henry Orr and Haoshian Shih) along with the various times that are
blocked. There is no alteration in the visual appearance … for the other
blocked periods of time.” (App. Br. 6, middle to bottom; emphasis omitted)
In response, the Examiner points out that the limitations of the black-
and-white scanned prior art document (i.e., “Outlook”) do not confer the
colors associated with various blocks of time in the representation of
Outlook’s electronic calendar (Ans. 10, top). That is, the black-and-white
representation of the Outlook reference is limited in its ability to display the
colors present in the Outlook ® 2000 application (id.).
We select claim 2 as representative of the separately argued claims.
Dependent claim 2 recites, in relevant part, “altering the visual appearance
of the first electronic calendar in correspondence with the first period of time
so that the visual appearance of the first electronic calendar in
correspondence with the first period of time is different from the visual
appearance of the first electronic calendar in correspondence with other
blocked periods of time.”
To overcome a shortcoming in the cited reference, we note that the
Examiner has shown evidence that Outlook does teach “altering the visual
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appearance,” as claimed (Ans. 10, top). More specifically, referring to the
Outlook ® 2000 Manual, the Examiner points out that in the section entitled
“Classifying an Appointment,” each Outlook appointment “has a colored
border that identifies the appointment’s classification. The colors are
• Busy—Dark blue
• Free—White
• Out of Office—Purple
• Tentative—Light blue.”

(See FF#3, Ans. 9, bottom to 10, middle.)

We carefully reviewed the Outlook ® 2000 Manual, which offers
evidence that color screenshot representations (i.e., representations that are
not limited to black-and-white reproductions) of the Outlook ® application
do indeed use colors, such as dark blue and purple, to differentiate various
types of times in an electronic calendar (FF#3). For the above-stated
reasons, we find unconvincing Appellants’ argument that Outlook does not
teach “altering the visual appearance … with other blocked periods of time,”
as claimed. Accordingly, we find no error in the rejection of claim 2.
Above, we selected claim 2 as representative of claims 2 and 8.
Appellants make no separate arguments for claim 8 (App. Br. 6, top to 7,
top). Therefore, this claim falls with claim 2 (37 C.F.R. § 41.37(c)(1)(vii)).
Appellants make separate arguments concerning each of claims 3 and
17. (See App. Br. 7, middle and 8, middle.) Appellants contend that
Outlook fails to teach “altering the visual appearance … includes coloring”
(claim 3) and the claim limitation “the visual appearance of the first
electronic calendar … is altered by being colored” (claim 17) (id.).
However, we found above that the Examiner has provided evidence that the
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shortcomings of the black-and-white scanned prior art are overcome by the
evidence found in the Outlook ® 2000 Manual. (See supra.) Thus, for the
same reasons stated above regarding claim 2, we find unconvincing
Appellants’ argument that Outlook fails to teach “altering the visual
appearance … includes coloring” and the claim limitation “the visual
appearance of the first electronic calendar … is altered by being colored,” as
recited in claims 3 and 17, respectively. Accordingly, we find no error
regarding claims 3 and 17. Since dependent claims 9, 15, 18, and 19 are not
argued separately, these claims fall with claims 3 and 17. (See 37 C.F.R. §
41.37(c)(1)(vii).)
Appellants make no additional separate arguments regarding claims 4
to 6, 10 to 12, 14, and 16. (See App. Br. 5, bottom to 6, top.) Instead,
Appellants rely upon their arguments regarding claim 1 (id.). Since we
found no error in the rejection of claim 1 (see supra), claims 4 to 6, 10 to 12,
14, and 16 fall therewith. (See 37 C.F.R. § 41.37(c)(1)(vii).)

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 19.

DECISION
The Examiner’s rejection of claims 1 to 19 is affirmed.

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).
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AFFIRMED

peb

IBM CORP. (WSM)
c/o WINSTEAD SECHREST & MINICK P.C.
P.O. BOX 50784
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