Ex Parte John et al

Patent Trial and Appeal Board

Mar 20, 2013

11047001 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte AJITA JOHN, REINHARD P. KLEMM, and
DOREE D. SELIGMANN
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Appeal 2010-009780
Application 11/047,001
Technology Center 2100
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Before MAHSHID D. SAADAT, LYNNE E. PETTIGREW, and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.
Appeal 2010-009780
Application 11/047,001

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STATEMENT OF THE CASE
Appellants’ Invention
According to Appellants, the invention relates generally to
communication methods and systems, and more particularly, to methods and
systems that control the availability of a user in an enterprise environment.
Spec. 1, ll.10-12.

Representative Claim
Independent claim 1 is representative and reads as follows:
1. A method comprising:
receiving a request from a user to change an
availability status of the user; and
granting the request to change the availability status
only if one or more criteria are satisfied.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kanada US 2002/0194317 A1 Dec. 19, 2002
Dodd US 2005/0102154 A1 May 12, 2005
Betts US 2005/0166260 A1 Jul. 28, 2005
Batni US 2006/0067227 A1 Mar. 30, 2006
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Application 11/047,001

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Rejections
Claims 1-6, 8-9, 11-15, 17-18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kanada in view of Dodd, in further view
of Batni. Ans. 3-7.1
Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kanada in view of Dodd and Batni, and in further view of
Betts. Ans. 7-8.
ISSUE
Based on Appellants’ arguments, the issue on appeal is whether the
Examiner erred in rejecting claims 1, 10, and 19 under 35 U.S.C. § 103(a)
because Kanada, Dodd, and Batni fail to teach or suggest “granting the
request to change the availability status only if one or more criteria” are
satisfied. Br. 11-12.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions. Further, we have reviewed the Examiner’s response to
Appellants’ arguments. We do not agree with Appellants’ conclusions that
the Examiner has erred for the following reasons.
Independent claims 1, 10, and 19 recite granting “the request to
change the availability status only if one or more criteria” are satisfied. The

1 Independent claims 10 and 19 are not listed in the statement of the
rejection, but are nonetheless included in this ground of rejection in the Final
Rejection and the Examiner’s Answer. Final Rej. 5-6; Ans. 6-7. We,
therefore, consider this ground of rejection as also including claims 10 and
19.
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Application 11/047,001

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Examiner rejects these claims over the combination of Kanada, Dodd, and
Batni. Ans. 3-7. Appellants contend that neither of these references teaches
the disputed limitation. Br. 11-12. Specifically, Appellants argue that the
Examiner erred in finding that Dodd meets this limitation, because Dodd
does not disclose user’s availability, presence information, or similar
information. Br. 11. In Appellants’ view, “a discussion of availability is
nowhere to be found.” Br. 12.
However, the Examiner points to Batni as teaching this limitation.
Ans. 9; see also Final Rej. 3, 6. In particular, the Examiner finds that Batni
teaches, as illustrated in Figure 5, a change in the availability status based on
the availability of network resources during a pre-determined time interval.
Ans. 9. Following the method illustrated in Figure 5, at step 518, the
availability status is checked via the timestamp criteria. Id. Then, at step
520, when the current time stamp is greater than the network controller
timestamp, the availability status is changed. Ans. 9 (citing Batni ¶ [0040]).
The Examiner’s findings and conclusions regarding Batni’s disclosure
of the disputed limitation are reasonable and remain unrebutted by
Appellants in a Reply brief. As such, we are unpersuaded that the Examiner
has erred in finding that Batni teaches the disputed limitation.
For the foregoing reasons, we sustain the 35 U.S.C. § 103(a) rejection
of claims 1, 10, and 19 over Kanada, Dodd, and Batni.2 We also sustain the

2 We note that the instant appeal was filed prior to the Supreme Court’s
opinion in Bilski v Kappos, 130 S.Ct. 3218 (June 28, 2010). In the event of
further prosecution, we leave it to the Examiner to evaluate claims 1-20 for
compliance with 35 U.S.C. § 101 in view of Bilski v Kappos, 130 S.Ct. 3218
(June 28, 2010), MPEP revised § 2106.01 (August 2012), and CyberSource
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Examiner’s § 103(a) rejection of dependent claims 2-6, 8-9, 11-15, 17-18,
and 20, which were not separately argued by Appellants. See Br. 12-13. For
the same reasons, we sustain the Examiner’s § 103(a) rejection of dependent
claims 7 and 16 over Kanada, Dodd, Batni, and Betts, because Appellants do
not challenge the Examiner’s findings with respect to Betts or the additional
limitations in those claims. Br. 13.
CONCLUSION
On the record before us, we conclude that the Examiner did not err in
rejecting claims 1-6, 8-9, 10, 11-15, 17-18, 19, and 20 under 35 U.S.C. §
103(a) as being unpatentable over Kanada in view of Dodd, and in further
view of Batni; and claims 7 and 16 under 35 U.S.C. § 103(a) as being

Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), as
well as compliance with 35 U.S.C. § 112, first paragraph. For example, at
least, independent claims 1 and 10 are computer-implemented functional
claims and do not appear to meet the safeharbor “machine-or-
transformation” (MoT) test of Bilski. In addition, claim 19 may be broadly
construed to cover forms of non-transitory tangible media and transitory
propagating signals per se in view of the ordinary and customary meaning of
computer readable media, particularly where Appellants’ Specification
defines such media as being a “transmission medium.” See Spec. 7, ll. 23-
27. As such, we leave it to the Examiner to evaluate and reject these claims
under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re
Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007); and U.S. Patent and
Trademark Office, Interim Examination Instructions for Evaluating Subject
Matter Eligibility Under 35 U.S.C. § 101, at 2 (Aug. 2009), available at
http://www.uspto.gov/patents/law/comments/2009-08-
25_interim_101_instructions.pdf (emphases omitted); see also David J.
Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010) (citation omitted).

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unpatentable over Kanada in view of Dodd and Batni, and in further view of
Betts.
DECISION
We affirm the Examiner’s decision to reject claims 1-20 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

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