Ex Parte O et al

Patent Trial and Appeal Board

Feb 11, 2014

11967853 (P.T.A.B. Feb. 11, 2014)

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.
11/967,853 12/31/2007 Patrick Joseph O'Sullivan RSW920070383US1 7740
75949 7590 02/11/2014
IBM CORPORATION
C/O: VanCott Bagley, Cornwall & McCarthy
36 South State Street
Suite 1900
Salt Lake City, UT 84111
EXAMINER
ISOM, JOHN W
ART UNIT PAPER NUMBER
2447
MAIL DATE DELIVERY MODE
02/11/2014 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 PATRICK JOSEPH O'SULLIVAN,
LIAM HARPUR, FRED RAGUILLAT,
CAROL SUE ZIMMET, and DANIEL TERLIZZI
____________________

Appeal 2011-009040
Application 11/967,853
Technology Center 2400
____________________

Before: JOSEPH A. FISCHETTI, JOHN W. MORRISON, and
NINA L. MEDLOCK, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009040
Application 11/967,853

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-8, 11-18, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED INVENTION
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, by a calendar management computing system,
an indication of a meeting being scheduled in a calendar
application between a plurality of attendees, wherein a first one
of the attendees is designated an owner of the meeting;
determining, by the calendar management computing
system, whether at least a second one of the meeting attendees
is a manager of the owner of the meeting based upon
information about the meeting attendees in an organizational
structure; and
if the at least a second one of the meeting attendees is a
manager of the owner of the meeting, associating, by the
calendar management computing system, ownership privileges
for the meeting with the at least a second one of the meeting
attendees.

REFERENCES
Kurosawa
Bates
US 6,047,288
US 6,781,920 B2
Apr. 4, 2000
Aug. 24, 2004
Astle
Schuh
US 2004/0059587 A1
US 2005/0273510 A1
Mar. 25, 2004
Dec. 8, 2005
Appeal 2011-009040
Application 11/967,853

3

REJECTIONS
Claims 11-18 and 22 are rejected under 35 U.S.C. §101 as directed to
non-statutory subject matter.
Claim 1 is rejected on the ground of non-statutory obviousness-type
double patenting over various claims of co-pending U.S. Patent Application
No. 12/346,045, Bates, Kurosawa and Schuh.
Claims 1-7, 11-17, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bates, Kurosawa, and Schuh.
Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bates, Kurosawa, Schuh, and Astle.

ANALYSIS
Claims 11-18 and 22 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Our reviewing court has held that transitory,
propagating signals are not within any of the four statutory categories.
Therefore, a claim directed to a computer readable medium embodied in a
signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007); see also Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential). “A transitory propagating signal . . . is not a
‘process, machine, manufacture, or composition of matter.’ [These] four
categories define the explicit scope and reach of subject matter patentable
under 35 U.S.C § 101; thus, such a signal cannot be patentable subject
matter.” Nuijten, 500 F.3d at 1357.
Claim 11 is directed to “[a] computer program product stored on a
computer readable storage medium.” App. Br., Clms. App’x. The
Appeal 2011-009040
Application 11/967,853

4
Specification describes that “computer-usable medium may include a
propagated data signal with the computer-usable program code embodied
therewith, either in baseband or as part of a carrier wave.” Spec. para.
[0010]. Thus, Appellants have explicitly included transitory media.
Absent explicit limitation to non-transitory media (or explicit
exclusion of transitory media) in a claim or specification, a claim directed to
a “computer readable storage medium” encompasses transitory media and is
therefore not patent-eligible subject matter under 35 U.S.C. § 101.
Mewherter, 107 USPQ2d at 1862 (precedential-in-part) (“those of ordinary
skill in the art would understand the claim term ‘machine-readable storage
medium’ would include signals per se.”). Therefore, we sustain the rejection
of claim 11, and its dependent claims 12-18 and 22, under 35 U.S.C. § 101.

Non-Statutory Obviousness Type Double Patenting
Appellants contend that “[b]ecause this is a provisional rejection,
Appellant is not required to make any response at this time.” App. Br. 13.
We agree. As of Feb. 4, 2014, no claims have issued from the co-pending
application. In light of this Board’s decision in Ex parte Moncla, 95
USPQ2d 1884 (BPAI 2010) (precedential), we do not reach the merits of the
Examiner’s provisional double patenting rejection at this time, because it
would be premature to do so.
Obviousness over Bates, Kurosawa, and Schuh
Claims 1 and 11
Independent claim 1 recites, inter alia, the step of
determining, by the calendar management computing
system, whether at least a second one of the meeting attendees
is a manager of the owner of the meeting based upon
Appeal 2011-009040
Application 11/967,853

5
information about the meeting attendees in an organizational
structure; and if the at least a second one of the meeting
attendees is a manager of the owner of the meeting, associating,
by the calendar management computing system, ownership
privileges for the meeting with the at least a second one of the
meeting attendees.
App. Br., Clms. App’x (emphasis added). Independent claim 11 is a
computer program which preforms the method similar to claim 1. Id.
The Examiner finds that Bates teaches substantially all of the recited
limitations, but does not teach the above step. See Ans. 11. The Examiner
then finds that Kurosawa teaches “if the at least a second one of the meeting
attendees is a manager of the owner of the meeting, associating, by the
calendar management computing system, privileges for the meeting with the
at least a second one of the meeting attendees.” Id. However, Kurosawa
does not teach that the associated privileges are ownership privileges. See
Kurosawa, col. 4, ll. 24-50, Fig. 21. The Examiner then finds that Schuh
discloses “the conference server has the ability to let the moderator transfer
primary moderator status to another individual and that this disclosure
teaches ‘associating, by the calendar management computing system,
ownership privileges for the meeting with the at least a second one of the
meeting attendees.’” Ans. 31.
The Examiner then concludes that “it would have been obvious . . .
to combine the teaching of Schuh with the claimed subject matter as taught
by Bates in view of Kurosawa, in order to permit conferencing to proceed
smoothly and without delay” Id., citing Schuh, para. [0023].
Appellants argue that “Kurosawa requires that the chairperson only
be given privileges to change settings.” App. Br., 14, 20, Reply Br, 9-10.
(Quote at Reply Br. 10.) From this, Appellants contend that “Kurosawa
Appeal 2011-009040
Application 11/967,853

6
teaches away from determining whether a second meeting attendee is a
manager of the owner of the meeting, and, if he or she is, then associating
ownership privileges for the meeting with the meeting owner's manager.”
App. Br., 15. “[P]rior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants have not identified any portion of Kurosawa that criticizes,
discredits, or discourages the claimed solution. Accordingly, we do not find
Appellants’ argument to be persuasive.
Appellants next argue that none of the individual references teaches
the entire method step. In particular, the Appellants argue
like Bates and Kurosawa, Schuh fails to teach or suggest,
“determining, by the calendar management computing system,
whether at least a second one of the meeting attendees is a
manager of the owner of the meeting based upon information
about the meeting attendees in an organizational structure, and
if the at least a second one of the meeting attendees is a
manager of the owner of the meeting, associating, by the
calendar management computing system, ownership privileges
for the meeting with the at least a second one of the meeting
attendees.”
App. Br. 16, 22, Reply Br. 11. This argument fails to address the
combination of references relied on by the Examiner. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In this rejection, the
Examiner relies on Kurosawa for the teaching of associating meeting
privileges with a manager of the owner of the meeting. Additionally, the
Appeal 2011-009040
Application 11/967,853

7
Examiner relies on Schuh for the teaching that the privileges of the “owner,”
or primary moderator, may be transferred to another individual.
Accordingly, we do not find Appellants’ argument to be persuasive.
Appellants further argue “Schuh teaches away from the subject matter
of claim 1 by requiring that a ‘primary moderator can specify one or more
alternate moderators and specify the set of alternate moderator permissions,’
before such permissions are relinquished to the alternate moderators.” App.
Br. 17, citing Schuh, para. [0024]. Appellants fail to provide any evidence
that Schuh criticizes, discredits, or discourages the claimed solution. Fulton,
391 F.3d at 1201. Accordingly, Appellants’ argument is not persuasive.
Addressing the computer program product of claim 11, Appellants
argue
Thus, in contrast to Bates, Kurosawa, and Schuh, claim 11
recites, “[a] computer program product stored on a computer
readable storage medium, having a plurality of instructions,
which, when executed by a processor, cause the processor to
perform operations comprising ... determining ... whether at
least a second one of the meeting attendees is a manager of the
owner of the meeting based upon information about the meeting
attendees in an organizational structure, and if the at least a
second one of the meeting attendees is a manager of the owner
of the meeting, associating, by the calendar management
computing system, ownership privileges for the meeting with
the at least a second one of the meeting attendees.” This subject
matter is clearly not taught or suggested by Bates, Kurosawa,
and Schuh.
App. Br. 22-23. Appellants do not identify any specific errors in the prior
art teachings. Accordingly, we are not persuaded by Appellants’ argument
as statements baldly submitting that limitations are not present in the prior
art are not persuasive as to error on part of the Examiner when the Examiner
Appeal 2011-009040
Application 11/967,853

8
has specified portions of the prior art that describe those limitations. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
In Reply, Appellants further argue that “Schuh, like Kurosawa, simply
provides for a member of a group to assign permissions to another member
(e.g. moderator permissions, or permissions to have access to various
meeting functions).” Reply Br. 11. However, this argument does not
identify any error in the Examiner’s finding that Kurosawa teaches
associating privileges with the manager of the owner of the meeting. See
Ans. 12. Accordingly, we are not persuaded by Appellants’ argument.
Appellants next argue that Kurosawa fails to teach an organizational
structure. In particular, Appellants argue
Kurosawa fails to teach or suggest that a second meeting
attendee is a manager of the owner of the meeting based upon
information about the meeting attendees in an organizational
structure, In fact, Kurosawa explicitly teaches that the group
may consist of persons who are not associated with the same
organizational structure when it teaches the user class “World.”
Reply Br. 12-13, citing Kurosawa col. 26, ll. 51-52. First, Appellants do not
provide any persuasive evidence or technical argument why the owner and
manager of an owner is not an organizational structure. Second, the claims
do not limit the attendees to members of the organizational structure.
Accordingly, we are not persuaded by Appellants’ argument.
For the above reasons, we sustain the rejection of independent claims
1 and 11, and their dependent claims 2-7, 12-17, 21 and 22, which are not
separately argued, as unpatentable over Bates, Kurosawa, and Schuh.

Claims 7 and 17
Appeal 2011-009040
Application 11/967,853

9
Claims 7 and 17 both recite the limitation of “wherein associating
ownership privileges . . . includes enabling the at least a second one of the
meeting attendees to remove one or more of the plurality of attendees.”
App. Br., Clms. App’x. The Examiner finds Schuh teaches “alternate
moderators might be permitted to remove other alternate moderators.” Ans.
17, citing Schuh para. [0015] and [0018]. Appellants argue “the removal of
alternate moderators is not analogous to removal of one or more of a
plurality of attendees.” Reply. Br. 19. However, Schuh discloses that a
primary moderator can “admit and/or exclude specific participants.” Schuh,
para. [0024]. Thus, we are not persuaded of Examiner error. Accordingly,
we sustain the rejection of claims 7 and 17 as unpatentable over Bates,
Kurosawa, and Schuh.

Obviousness over Bates, Kurosawa, Schuh and Astle
Claims 8 and 18 depend from independent claims 1 and 11,
respectively. Appellants do not present separate arguments for the
patentability of claims 8 and 18 other than the arguments discussed above
with respect to the underlying independent claims 1 and 11. See App. Br.
24, Reply Br. 20. For the above reasons, we sustain the rejection of claims 8
and 18 as unpatentable over Bates, Kurosawa, Schuh, and Astle.

DECISION
For the above reasons, the Examiner’s decision to reject claim 1-8,
11-18, 21, and 22 is affirmed.

Appeal 2011-009040
Application 11/967,853

10
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

Vsh