Ex Parte He et al

Patent Trial and Appeal Board

Jun 20, 2018

13177807 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/177,807 07/07/2011
51835 7590 06/20/2018
IBM Lotus & Rational SW
c/o Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marlborough, MA 01752
FIRST NAMED INVENTOR
Jenny Jing He
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.
GB920ll0004US1_068 7204
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
06/20/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JENNY JING HE and JOHN ARNOLD OWEN
Appeal 2016-005605
Application 13/177 ,807
Technology Center 3600
Before JOHN A. EV ANS, LARRY J. HUME, and JAMES W. DEJMEK,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of Claims 1, 3-9, and 19. App. Br. 1. Claims
10-18 have been withdrawn. App. Br. 3--4. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellants identify International Business Machines Corporation, as the
real party in interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 17, 2015, "App. Br."); the Reply
Brief (filed May 6, 2016, "Reply Br."); the Examiner's Answer (mailed
March 9, 2016, "Ans."); the Final Action (mailed August 28, 2015, "Final
Appeal 2016-005605
Application 13/177,807
STATEMENT OF THE CASE
The Invention
The claims relate to a system, method for reminding a user of on-line
scheduled, repeated events. See Abstract.
Claims 1 and 19 are independent. Claim 1 is illustrative and is
reproduced below with some formatting added:
1. A computer-implemented method for reminding a user of
an online scheduled repeating event, comprising:
generating, by a special purpose computer, a repeating
event schedule record in a calendar application corresponding
to a first repeating meeting schedule including a repeating
event, the first repeating meeting schedule including a first
range of dates between a first date and a second date, the first
date being a starting date of the first repeating meeting
schedule;
generating, by a special purpose computer, a reminder
record to inform a user of an approaching end of the repeating
event at the second date, wherein generating the reminder
record comprises:
providing a repeating event schedule form for
scheduling the repeating event;
selecting from the repeating event schedule form a
reminder request;
displaying a reminder request form in the calendar
application when a response is received to the reminder
request; and
generating the reminder record from the reminder
request form;
Act."); and the Specification (filed July 7, 2011, "Spec.") for their respective
details.
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Application 13/177,807
configuring, by a special purpose computer, the repeating
event schedule record to include a link to the reminder record,
wherein the reminder record is automatically displayed at a
computer display when the link is selected, and wherein the link
to the reminder record includes an electronic connector that
establishes access to a record stored in a memory and
corresponding to a last event of the first repeating event
schedule; and
accessing, by a special purpose computer, the reminder
record in response to the link being selected, the reminder
record including a connector that presents a second repeating
meeting schedule that is different from the first repeating
meeting schedule, and includes data from the first repeating
meeting schedule, the second repeating meeting schedule
including a second range of dates between a third date and a
fourth date, the third date corresponding to a repeating event
after the repeating event at the second date, the third date being
a starting date of the second repeating meeting schedule, the
third date being after the first and second dates, the third date
being different than the first date, the reminder record further
including a link to the first repeating meeting schedule to
display the first repeating meeting schedule, and the repeating
event schedule record including a field indicating whether the
second repeating meeting schedule has been scheduled.
(App. Br., Claims Appendix, 21-22.)
Rejection
Claims 1, 3-9, and 193 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more. Final
Act. 4--6.
3 Claim no. 2 was cancelled by Amendment, filed June 9, 2015.
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Application 13/177,807
ANALYSIS
We have reviewed the rejection of Claims 1, 3-9, and 19 in light of
Appellants' arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellants actually raised in the Brief. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellants identify reversible error.
Upon consideration of the arguments presented in the Appeal Brief
and the Reply Brief, we agree with the Examiner that all the pending claims
are patent ineligible under 35 U.S.C. § 101. We adopt as our own the
findings and reasons set forth in the rejections from which this appeal is
taken and in the Examiner's Answer, to the extent consistent with our
analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellants' arguments seriatim, as they are presented in the Appeal
Brief, pages 10-19.
CLAIMS 1, 3-9, AND 19: NON-STATUTORY SUBJECT MATTER.
Appellants argue these claims generally as a group. See App.
Br. 18-19.
35 USC§ 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "laws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
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Application 13/177,807
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294-97 (2012); Diamond v. Diehr,
450 U.S. 175, 185 (1981).
The Examiner finds Claims 1, 3-9, and 19 are directed to patent-
ineligible subject matter, specifically the abstract idea of reminding a user of
an online, scheduled repeating event, which, the Examiner concludes, is a
type of organizing human activity. Final Act. 4.
Appellants contend the claimed method is not directed to an abstract
concept, but rather addresses a problem with managing electronic calendar
applications. App. Br. 11. Specifically, Appellants argue the claimed
"computer-implemented method for reminding a user of an online scheduled
repeating event" does not recite a fundamental economic practice, a method
of organizing human activity, a bare concept, a mathematical relationship, or
mental process that can be performed in the human mind or using pen and
paper. Id.
Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id. The
Court also cautions that we must "tread carefully in construing this
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Application 13/177,807
exclusionary principle lest it swallow all of patent law." Alice, 134 S. Ct.
at 2354. This is because at some level, "all inventions ... embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas." Id. Thus, an invention is not rendered ineligible for patent
protection simply because it involves an abstract concept. See Diamond v.
Diehr, 450 U.S. 175, 187 (1981). "[A]pplication[s]" of such concepts "'to a
new and useful end,"' we have said, remain eligible for patent protection.
Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
To answer the question whether the claims are directed to a patent-
ineligible concept, "we consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, at 2355 ( citations omitted).
At Step 1, we agree with the Examiner that the claims are directed to a
method, albeit computerized, of reminding persons of scheduled events. We
also agree that the claimed method is abstract because it is a method of
organizing human behavior.
Alice Step 2.
Appellants rely on DDR Holdings4 to argue their claimed solution is
necessarily rooted in computer technology in order to overcome a problem
"specifically arising in the realm of computer networks," or more
specifically, to overcome a problem specifically arising in post-Internet
technology, and not "merely reciting the performance of some business
4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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practice known from the pre-Internet world along with the requirement to
perform it on the Internet." App. Br. 12.
The Examiner finds scheduling and calendar issues such as managing
recurring meetings existed before the Internet and the claims are merely
addressing such a problem within the current context of computers and
technology. Ans. 4.
The Examiner finds the claims recite a special purpose computer, but
the actual computer limitations in the claims do not recite anything that can
be considered beyond generic or conventional features. Id. 5
Appellants admit "scheduling concepts obviously existed before
computers," but repeat their contention that the present claims address a
problem "peculiar to the internet." Reply Br. 3. However, Appellants fail to
persuasively distinguish the purported internet-specific problem addressed
by the claims.
Therefore, in light of the above factual findings and legal conclusions
and, on the record before us, we are not persuaded the claims recite
"significantly more" than an abstract idea.
DECISION
We affirm the rejection of Claims 1, 3-9, and 19 under 35 U.S.C.
§ 101.
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). See
5 As evidence of the conventional nature of the claimed computer
components, we point to Appellants' Specification at paragraph 44.
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37 C.F.R. § 4I.50(f).
AFFIRMED
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