Ex Parte O

Board of Patent Appeals and Interferences

Aug 28, 2012

11318972 (B.P.A.I. Aug. 28, 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.
11/318,972 12/27/2005 Patrick O'Sullivan LOT920050119US1 (114) 5392
46321 7590 08/28/2012
CAREY, RODRIGUEZ, GREENBERG & O''KEEFE, LLP
STEVEN M. GREENBERG
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
LAN, TZU-HSIANG
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
08/28/2012 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 PATRICK O'SULLIVAN1
____________________

Appeal 2011-004603
Application 11/318,972
Technology Center 3600
____________________
Before, ANTON W. FETTING, KEVIN F. TURNER, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 International Business Machines Corporation is the real party in interest.
2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 3, 2010) and Reply Brief (“Reply Br.,” November 19,
2010), and the Examiner’s Answer (“Ans.,” mailed September 29, 2010).
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Application No. 11/318,972

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THE INVENTION
Appellant’s disclosure relates to a method, system and computer
program product for using an employee’s presence awareness data to
generate the employee’s time card based upon the repeatedly collected
presence awareness data. (Abs.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for computing employee work patterns through
presence and place awareness, the method comprising:
repeatedly collecting presence awareness data in place awareness
logic executing in memory by a processor of a computing
system, for an employee already logged into the computing
system, the presence awareness data indicating when the
employee utilizes resources of the computing system; and,
generating a time card for the employee based upon the
repeatedly collected presence awareness data.
(App. Br., Claims Appendix 13.)

PRIOR ART REJECTIONS
The prior art references relied upon by the Examiner in rejecting the
claims are:
Skinner 6,622,116 B2 Sep.16, 2003
Bunch 6,795,856 B1 Sep. 21, 2004
McFarlane 2002/0111887 Al Aug. 15, 2002
Miller 2005/0171830 Al Aug. 4, 2005
DeHaas 2005/0108383 Al May 19, 2005

The Examiner made the following rejections:
Claims 1-8 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
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Claims 1, 9, and 12 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane and Skinner.
Claims 2, 7, 8, 13, 18, and 19 rejected under 35 U.S.C. § 103(a) as
being unpatentable over McFarlane, Skinner, and Miller.
Claims 3, 4, 14, and 15 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane, Skinner, and DeHaas.
Claims 5, 6, 16, and 17 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane, Skinner, Miller and DeHaas.
Claims 10 and 11 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane, Skinner, and Bunch.

ISSUES3
Did the Examiner err in asserting that claims 1-8 are directed to non-
statutory subject matter under 35 U.S.C. § 101?
Does the combination of McFarlane and Skinner teach or suggest the
subject matter of claims 1, 9, and 12 under 35 U.S.C. § 103(a)?
Does the combination of McFarlane, Skinner, and Miller teach or
suggest the subject matter of claims 2, 7, 8, 13, 18, and 19 under 35 U.S.C.
§ 103(a)?
Does the combination of McFarlane, Skinner, and DeHaas teach or
suggest the subject matter of claims 3, 4, 14, and 15 under 35 U.S.C.
§ 103(a)?

3 We have considered in this decision only those arguments that Appellant
actually raised in the Briefs. Arguments which Appellant could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Application No. 11/318,972

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Does the combination of McFarlane, Skinner, Miller and DeHaas
teach or suggest the subject matter of claims 5, 6, 16, and 17 under 35
U.S.C. § 103(a)?
Does the combination of McFarlane, Skinner, and Bunch teach or
suggest the subject matter of claims 10 and 11 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
1. Appellant’s Specification describes that “presence awareness data”
can be computed from “a period of time when the employee actively
interacts with an employee computer in the workplace.” (¶ [0014].)
2. McFarlane is directed to a method of monitoring employee online
activity which provides detailed reporting on employee Internet, e-mail
(in/out), and dial-in activity. (Abs.; ¶ [0001].)
3. McFarlane describes that employees may access the company
electronic resources through a dial-in connection using a home or portable
computer to access the company’s internal computer system. (¶ [0001].)
4. McFarlane describes that its system “summarizes utilization of
company resources by employee in a manner that enables managers to easily
and efficiently review the usage information for all employees over which
they have particular responsibility.” (¶ [0010].)
5. McFarlane’s employee activity summary reports include
information such as the number of times the employee dialed into the
company computer, number of browser requests, number of emails sent and
received, number of bytes transferred in and out of the company’s computer,
and session length. (¶¶ [0031] – [0035].)
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ANALYSIS
Claims 1-8 rejected under 35 U.S.C. § 101.4
The Examiner asserts that independent method claim 1 is directed to
non-statutory subject matter. Specifically, the Examiner finds that under the
broadest reasonable interpretation, claim 1 “can be understood as using
computer to gather data, mentally process gathered data, and then mentally
generate a time card for the employee based on computer collected data.”
(Ans. 13.)
In response, Appellant contends that “claim 1 indicates that presence
awareness data is repeatedly collected in place awareness logic executing in
memory by a processor of a computing system--hardly reflective of an
attempt to claim an abstract idea.” (App. Br. 7; Reply Br. 2-3.)
We are not persuaded by Appellant’s contention and in view of the
Supreme Court’s guidance in Bilski v. Kappos, 130 S. Ct. 3218 (2010),
conclude that independent claim 1 is directed to an abstract idea.
In making this determination, we note that independent method claim
1 recites two steps: a first step of “repeatedly collecting presence awareness
data” and a second step of generating a time card based upon these data.
While Appellant appears to argue that the step of “collecting presence
awareness data” is tied to a particular machine, i.e., logic executing in
memory by a processor, we find this “collecting” step to be no more than
insignificant extra-solution activity which fails to impart eligible subject
matter into the claim. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The
notion that post-solution activity, no matter how conventional or obvious in

4 Appellant argues claims 1-8 as a group, we take claim 1 as representative.
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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itself, can transform an unpatentable principle into a patentable process
exalts form over substance.”)
Notwithstanding, even if we were to find that the claimed “collecting”
step does impose a meaningful limitation, which we do not, Appellant’s
claim does not specifically recite that the step of “collecting presence
awareness data” is performed by the processor itself, but rather, recites that
the “presence awareness data” is located in “place awareness logic executing
in memory by a processor of a computing system.”
Therefore, under the broadest reasonable interpretation, we find that
the steps recited by independent claim 1 could be performed in the human
mind, or by a human using a pen and paper to collect presence awareness
data and then generate a time card based upon these data. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)
(holding method for verifying the validity of a credit card transaction over
the Internet to be non-statutory as an abstract idea capable of being
performed in the human mind or by a human using a pen and paper.)
Accordingly, we sustain the Examiner’s rejection of claims 1-8 under
35 U.S.C. § 101.

Claims 1, 9, and 12 rejected under 35 U.S.C. § 103(a) as being unpatentable
over McFarlane and Skinner.
Appellant argues that the combination of McFarlane and Skinner fails
to teach or suggest “presence awareness data indicating when the employee
utilizes resources of the computing system,” as generally recited by
independent claims 1, 9, and 12. (App. Br. 11; Reply Br. 4-5.) Specifically,
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Appellant asserts that McFarlane refers to “dial-in activity” which pertains
to the use of a telephone and not to the usage of a computer system. (App.
Br. 11.) Additionally, in their Reply Brief, Appellant appears to
acknowledge that the “dial-in activity” in McFarlane is directed to computer
usage, which Appellant contends, “may provide presence awareness data,
but do[es] not provide place awareness data.” (Reply Br. 5.)
We are not persuaded by Appellant’s argument and agree with the
Examiner that McFarlane discloses the step of “repeatedly collecting
presence awareness data . . . indicating when the employee utilizes resources
of the computing system.” (Ans. 5.) Specifically, McFarlane discloses that
its system monitors employee online activity including an employee’s
Internet usage, e-mailing (in/out), and dial-in activity. (FF 2.)
Contrary to Appellant’s assertion that “dial-in activity” pertains to the
use of a telephone, McFarlane clearly discloses that “dial-in activity” is
related to computer usage of the company’s internal computer system from a
remote location. (FF 3.) McFarlane describes that its system monitors
information such as the number of times the employee dialed into the
company computer, number of browser requests, number of emails sent and
received, number of bytes transferred in and out of the company’s computer,
and an employee’s session length (FF 4, 5), which we find addresses
“presence awareness data,” as presently claimed. (See FF 1.)
Thus, we find that McFarlane discloses “presence awareness data
indicating when the employee utilizes resources of the computing system,”
and as such, we find the combination of McFarlane and Skinner teaches or
suggests the step of “repeatedly collecting presence awareness data . . .
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indicating when the employee utilizes resources of the computing system,”
as generally recited by independent claims 1, 9, and 12.
Turning next to Appellant’s contention that McFarlane fails to teach
or suggest “place awareness data” (Reply Br. 5), we are not persuaded by
Appellant’s contention as it is not based on limitations appearing in the body
of claims 1, 9, and 12. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d
1225, 1231 (Fed. Cir. 2005) (while the specification can be examined for
proper context of a claim term, limitations from the specification will not be
imported into the claims).
While we acknowledge that the preambles of independent claims 1
and 12 recite “[a] method for computing employee work patterns through
presence and place awareness” and “computer program product . . . for
computing employee work patterns through presence and place awareness,”
respectively, the body of claims 1 and 12 only recite “presence awareness
data.” Specifically, claims 1 and 12 recite “collecting presence awareness
data” and “generating a time card based upon the repeatedly collected
presence awareness data,” which we find is distinct from the “presence and
place awareness” of the preambles.
Therefore, in the absence of any persuasive evidence as to why we
should read “place awareness,” as it appears in the preambles, into “presence
awareness data,” we are not persuaded by Appellant’s contention. “If the
body of the claim sets out the complete invention, and the preamble is not
necessary to give ‘life, meaning, and vitality’ to the claim, ‘then the
preamble is of no significance to claim construction because it cannot be
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said to constitute or explain a claim limitation.’” Bristol-Myers Squibb Co.
v. Ben Venue Labs, Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001).
Accordingly, we sustain the Examiner’s rejection of independent
claims 1, 9, and 12 under 35 U.S.C. § 103(a) as unpatentable over
McFarlane and Skinner.

Claims 2, 7, 8, 13, 18, and 19 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane, Skinner, and Miller.
Appellant does not separately argue claims 2, 7, 8, 13, 18, and 19
which depend from independent claims 1, 9, and 12, respectively, and so we
sustain the rejection of these claims under 35 U.S.C. § 103(a) as
unpatentable over McFarlane, Skinner, and Miller for the same reasons we
found as to claims 1, 9, and 12 supra.

Claims 3, 4, 14, and 15 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane, Skinner, and DeHaas.
Appellant does not separately argue claims 3, 4, 14, and 15 which
depend from independent claims 1 and 12, respectively, and so we sustain
the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over
McFarlane, Skinner, and DeHaas for the same reasons we found as to claims
1, 9, and 12 supra.

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Claims 5, 6, 16, and 17 rejected under 35 U.S.C. § 103(a) as being
unpatentable over McFarlane, Skinner, Miller and DeHaas.
Appellant does not separately argue claims 5, 6, 16, and 17 which
depend from independent claims 1 and 12, respectively, and so we sustain
the rejection of these claims under 35 U.S.C. § 103(a) as unpatentable over
McFarlane, Skinner, Miller and DeHaas for the same reasons we found as to
claims 1, 9, and 12 supra.

Claims 10 and 11 rejected under 35 U.S.C. § 103(a) as being unpatentable
over McFarlane, Skinner, and Bunch.
Appellant does not separately argue claims 10 and 11 which depend
from independent claim 9, and so we sustain the rejection of these claims
under 35 U.S.C. § 103(a) as unpatentable over McFarlane, Skinner, and
Bunch for the same reasons we found as to claims 1, 9, and 12 supra.

CONCLUSIONS
We conclude that:
the Examiner did not err in asserting that claims 1-8 are directed to
non-statutory subject matter under 35 U.S.C. § 101;
the combination of McFarlane and Skinner teaches or suggests the
subject matter of claims 1, 9, and 12 under 35 U.S.C. § 103(a);
the combination of McFarlane, Skinner, and Miller teaches or
suggests the subject matter of claims 2, 7, 8, 13, 18, and 19 under 35 U.S.C.
§ 103(a);
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the combination of McFarlane, Skinner, and DeHaas teaches or
suggests the subject matter of claims 3, 4, 14, and 15 under 35 U.S.C.
§ 103(a);
the combination of McFarlane, Skinner, Miller and DeHaas teaches or
suggests the subject matter of claims 5, 6, 16, and 17 under 35 U.S.C.
§ 103(a); and
the combination of McFarlane, Skinner, and Bunch teaches or
suggests the subject matter of claims 10 and 11 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections under 35 U.S.C. §§ 101
and 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). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

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