Ex Parte O et al

Patent Trial and Appeal Board

Feb 27, 2014

11934849 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK J. O’SULLIVAN, HEMA SRIKANTH,
and CAROL S. ZIMMET
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Appeal 2011-010695
Application 11/934,849
Technology Center 2400
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and
EDWARD A. BROWN, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-010695
Application 11/934,849

2
STATEMENT OF THE CASE
Patrick J. O’Sullivan et al. (Appellants) filed a request for rehearing
under 37 C.F.R. § 41.52 (hereinafter “Request”), dated February 20, 2014,
of our decision mailed December 20, 2013 (hereinafter “Decision”). In that
Decision, we affirmed the Examiner’s rejection of claims 8-12 and 19 under
35 U.S.C. § 101; reversed the Examiner’s rejection of claims 1-3, 6-10, 13,
and 16-19 under 35 U.S.C. § 102(b) as being anticipated by Doss; affirmed
the rejection of claims 4, 5, 11, 12, 14, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Doss, but designated our affirmance as a new
ground pursuant to 37 C.F.R. § 41.50(b); and entered a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) of claims 1-3, 6-10, 13, and 16-19
under 35 U.S.C. § 103(a) as being unpatentable over Doss.
OPINION
Appellants’ Request alleges that the Board “appears to have not
accounted for the claim terms ‘in response to determining a
contemporaneously calendared event for the user.’” Request 3. Appellants
characterize the scenario set forth on page 5 of our Decision as the Board
taking the position that “by an end user manually overriding an availability
status during a calendared meeting, the automatic updating of the availability
status of the end user at the conclusion of the calendared meeting satisfies
the claimed limitation of overriding an instant messaging . . . do not disturb
state.” Id. at 4. Appellants add that the afore-mentioned scenario “does not
suppose that the end user manually setting the IM status to DND in response
to a determination of a contemporaneously calendared event for the user
[sic].” Id. at 5.
Appeal 2011-010695
Application 11/934,849

3
Appellants are not correct that the Board overlooked the “in response
to determining a contemporaneously calendared event for the user” language
of claim 1 (or similar language in the other independent claims 6, 8, and 13).
The Board accounted for the claim requirement of overriding a do not
disturb state “in response to determining a contemporaneously calendared
event for the user.” As clearly pointed out in our Decision, the Board found
that the calendared 10:00 – 11:00 meeting is the “calendared event.”
Decision 5. The manually-set DND status at the beginning of the scenario
discussed on page 5 of our Decision continues in Doss’ system until
manually changed by the user to some other status or until automatically
changed (i.e., overridden) in response to the Doss system determining a
contemporaneously calendared event dictating a different status. In the
discussed scenario, the Doss system determines such an event at 10:00 (i.e.,
the calendared 10:00-11:00 meeting) and overrides the manually-set DND
status with the default “active” status for in-person meetings during the
duration of the meeting.
Appellants’ Request misapprehends, or mischaracterizes the event in
the discussed scenario that the Board found satisfies the overriding step.
The Board did not, as Appellants’ characterization seemingly suggests,
consider the “automatic updating of the availability status of the end user at
the conclusion of the calendared meeting” to satisfy the claimed “overriding
. . . in response to determining a contemporaneously calendared event” step.
Rather, the Board considered the automatic update of status from DND to
“active” upon determination of the calendared 10:00 – 11:00 meeting to
satisfy the claimed “overriding . . . in response to determining a
contemporaneously calendared event” step.
Appeal 2011-010695
Application 11/934,849

4
For the above reasons, the arguments in Appellants’ Request do not
convince us that we erred in affirming the Examiner’s rejection of claims 4,
5, 11, 12, 14, and 15 under 35 U.S.C. § 103(a) as being unpatentable over
Doss, and in entering a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) of claims 1-3, 6-10, 13, and 16-19 under 35 U.S.C. § 103(a) as
being unpatentable over Doss.
FINALITY OF DECISION
This decision is now final for purposes of judicial review.
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)(iv).
DENIED

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