Ex Parte Johnson et al

Patent Trial and Appeal Board

Mar 27, 2013

10876215 (P.T.A.B. Mar. 27, 2013)

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.
10/876,215 06/24/2004 Michael Johnson H360.101.101 1416
25281 7590 03/28/2013
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
PAGE, EVAN RANDALL
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
03/28/2013 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 MICHAEL JOHNSON and ERIK HANSON
____________________

Appeal 2011-001363
Application 10/876,215
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001363
Application 10/876,215

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-10 and 12-44. We have jurisdiction under 35
U.S.C. § 6(b).
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A multi-institution scheduling system
comprising:
a computer system configured for executing
a scheduling application, the application including:
an administration component adapted for
establishing parameters for a first program in the
multi-institution scheduling system, the parameters
including at least one other program that can share
shifts with the first program; and
a scheduling component adapted for creating
a shift for the first program including designating
whether the at least one other program has access
to the shift for scheduling at the same time as the
first program has access to the shift for scheduling.

References
The Examiner relies upon the following prior art references:
Pearse
Mahapatro
O’Brien
US 5,270,920
US 6,571,215 B1
US 6,587,831 B1
Dec. 14, 1993
May 27, 2003
Jul. 1, 2003
Orlick
Rapp
Kilgore
Hopkins
US 2002/0049733 A1
US 2002/0116232 A1
US 2003/0017443 A1
US 2003/0219707 A1
Apr. 25, 2002
Aug. 22, 2002
Jan. 23, 2003
Nov. 27, 2003
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Rejections
I. Claims 34-44 are rejected under 35 U.S.C. § 101 for being directed to
non-statutory subject matter. Ans. 3.
II. Claims 1-8, 12-19, and 24-44 are rejected under § 103(a) as
unpatentable over Orlick, admitted prior art, and Rapp. Ans. 4.
III. Claim 9 is rejected under § 103(a) as unpatentable over Orlick,
admitted prior art, Rapp, and Mahapatro. Ans. 8.
IV. Claim 10 is rejected under § 103(a) as unpatentable over Orlick,
admitted prior art, Rapp, Mahapatro, and Pearse. Ans. 9.
V. Claim 20 is rejected under § 103(a) as unpatentable over Orlick,
admitted prior art, Rapp, and O’Brien. Ans. 10.
VI. Claims 21 and 22 is rejected under § 103(a) as unpatentable over
Orlick, admitted prior art, Rapp, and Kilgore. Ans. 11.
VII. Claim 23 is rejected under § 103(a) as unpatentable over Orlick,
admitted prior art, Rapp, and Hopkins. Ans. 12.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection I – Section 101
Appellants argue that the “multi-institution scheduling system” recited
in claim 34 is described in the Specification as “clearly a machine or
apparatus” and thus is “tied to the method.” Reply Br. 2. The existence of a
machine does not mean there is a tie, and further, limitations from the
Specification are not imported into the claim. Accordingly, Appellants’
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Application 10/876,215

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argument for claim 34 is unpersuasive. Claims 35-43, not argued separately,
are selected to fall therewith.
Appellants argue that the subject matter of claim 44 cannot include
signal waves because the claim states that the “computer readable medium”
is “bearing code embodied therein” and that “code embodied in an article of
manufacture” is not a transitory medium. Reply Br. 2. Appellants’
argument is unpersuasive because code can be embodied in (i.e., transmitted
within) transitory signals and Appellants have not limited the scope of their
claim to only include non-transitory signals. Accordingly, Appellants’
argument for claim 44 is unpersuasive. See David J. Kappos, Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010) (“The broadest reasonable interpretation of a claim drawn to
a computer readable medium … typically covers forms of … transitory
propagating signals”).

Rejection II – Obviousness of Claims 1-8, 12-19, and 24-44
In this rejection, of particular importance is the Examiner’s utilization
of admitted prior art (Spec., para. [0003]) to support the conclusion that it
would have been obvious to add “allowing programs to share shifts to the
[scheduling] system of Orlick in order to allow shifts to be filled by students
from various institutions.” Ans. 5-6. This portion of the Specification
discusses how institutions may find students from other training programs or
schools to fill in their own unfilled shifts. It also discusses that changes to
shifts need to be communicated between the institution and students. In his
Declaration, Mr. Johnson states that “some negotiation between schools”
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exists to deal with shift allotments, but it is uncommon for such problems to
be solved “in a fully efficient manner.” Decl., 2.
Appellants argue claims 1-8, 12-19, and 24-44 as a group. We select
claim 1 as representative. Appellants’ argument is that paragraph 3 of the
Specification does not teach shift sharing as claimed. App. Br. 8; Reply Br.
3. The admitted prior art, however, does indicate that shift sharing occurs,
whether or not that is in the form of a formalized process. The Examiner’s
findings are supported by a preponderance of the record, because paragraph
3 of the Specification does in fact show an example of a program allowed to
share a shift with another program, which also means it has access to do so.
Appellants are correct in that this is not a formalized process, but the
Examiner’s proposed modification to Orlick is to incorporate this admittedly
known process, which thus results in a formalized process (i.e., parameters
and selecting in a computerized context). Accordingly, we are not apprised
of error in the Examiner’s findings, which provide a rational underpinning
for the Examiner’s conclusion that the claimed subject matter is obvious.
Appellants also argue that the admitted prior art teaches away from
the Examiner’s proposed combination. Reply Br. 3. However, Appellants
merely argue that the prior art does not teach a limitation, which (even if
true) is not a teaching away. Appellants fail to point to any disclosure in the
Specification that teaches away. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) (prior art does not teach away from claimed subject matter
merely by disclosing a different solution to a similar problem unless the
prior art also criticizes, discredits, or otherwise discourages the solution
claimed). Accordingly, this argument is unpersuasive.
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Having reviewed Appellants’ arguments in both Briefs, we are not
apprised of error in the Examiner’s rejection of claim 1. Claims 2-8, 12-19,
and 24-44 fall therewith.
Rejection III – Claim 9
Claim 9 depends from claim 1 and further specifies that the
scheduling component allows for specifying a start date for the shift and a
date indicating when the shift will be available for scheduling. The
Examiner found that Orlick describes specifying a start date and Mahapatro
describes indicating a date when the shift (schedulable resource) will be
available. Ans. 9, 14.
Appellants argue that Mahapatro describes when a resource is
available for scheduling, not a shift. App. Br. 10-11; Reply Br. 4.
Appellants’ argument is unpersuasive of error. The question is whether the
prior art renders obvious the claimed invention, not whether the specific
prior art structures can be physically combined to create the claimed
invention. See, e.g., In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Appellants do not explain why a
teaching of specifying when a resource (room, person, equipment) is
available for scheduling does not render obvious specifying when a time slot
is available for scheduling, as the Examiner proposes. Appellants do not
explain, nor do we see, any logical difference in indicating when a room,
person, equipment, or a time slot (i.e., shift) is available. Accordingly, we
are not apprised of error in the Examiner’s rejection of claim 9.

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Rejection IV – Claim 10
Claim 10 depends from claim 9 and further requires providing an alert
if certain conditions exist such that the shift would never be visible for
scheduling. The Examiner found that Pearse describes generation of an alert
if a constraint is violated and that it would have been obvious to include
such a feature in the proposed modification of Orlick based on the conflict
indicator between start date and availability date as disclosed by Mahapatro,
in order to prevent incorrect scheduling. Ans. 10, 15.
Appellants argue that Pearse does not describe an alert for a shift not
being visible for scheduling. App. Br. 11-12; Reply Br. 5. Appellants’
argument does apprise us of error in the Examiner’s proposed combination,
however, because the Examiner’s proposed combination does not rely on
Pearse to specifically teach the particular alert but rather to teach an alert if
the constraints (taught in Orlick as modified by Rapp and Mahapatro) are
not met. It is the proposed combination that forms the basis of the rejection,
not Pearse in isolation. Accordingly, we are not apprised of error in the
Examiner’s articulated rejection.
Rejections V – VII
Appellants separately argue these rejections but rely on the
unpersuasive arguments set forth above. App. Br. 12-13; Reply Br. 5-6.

DECISION
We AFFIRM the Examiner’s decision regarding claims 1-10 and 12-
44.

Appeal 2011-001363
Application 10/876,215

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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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