Ex Parte Purohit et al

Patent Trial and Appeal Board

Nov 21, 2013

10112913 (P.T.A.B. Nov. 21, 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.
10/112,913 03/28/2002 Atul Purohit OIC0146C1US 4504
60975 7590 11/22/2013
CAMPBELL STEPHENSON LLP
11401 CENTURY OAKS TERRACE
BLDG. H, SUITE 250
AUSTIN, TX 78758
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
11/22/2013 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 ATUL PUROHIT, HARISH BANSAL, JUN WANG,
PRAVEEN KRISHNAN, and CHRISTOPHER SCOTT NASH
____________________

Appeal 2011-011600
Application 10/112,913
Technology Center 3600
____________________

Before: HUBERT C. LORIN, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/112,913

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-4, 6-15, 27-29, and 32-38. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART and enter a New Ground of Rejection
pursuant to 37 C.F.R. § 41.50(b).1

BACKGROUND
Appellants’ invention is directed to techniques to facilitate the
scheduling activities (Spec., para. [101]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer-implemented method for scheduling activities,
comprising:
receiving a request, from a user device, to book an
appointment for an activity in a particular schedule;
providing, to the user device, a plurality of time slots as
possible appointment choices for the appointment, wherein time
slots in the plurality of time slots provided as the possible
appointment choices are available in the schedule for booking
the activity;
locking the plurality of time slots provided as the
possible appointment choices to the user device, wherein the
locking makes the plurality of time slots provided as the
possible appointment choices unavailable for subsequent
requests;

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Mar. 8, 2011) and Reply Brief (“Reply Br.,” filed June 27, 2011), and
the Examiner’s Answer (“Ans.,” mailed Apr. 26, 2011).
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receiving, from the user device, a selection for one of the
time slots in the plurality of time slots provided as the possible
appointment choices;
unlocking all time slots in the plurality of time slots
provided as the possible appointment choices other than the
selected one of the time slots, wherein the unlocking is
performed in response to the receiving the selection, and the
unlocking causes the unlocked time slots to become available
for subsequent requests; and
booking the activity in the selected time slot by updating
information stored in a computer memory device.
The Examiner relies upon the following as evidence of
unpatentability:
Waytena
Cummings
Schreiber
Glazer
US 5,978,770
US 6,345,260 B1
US 6,438,747 B1
US 7,174,303 B2
Nov. 2, 1999
Feb. 5, 2002
Aug. 20, 2002
Feb. 6, 2007
Powell US 2001/0049619 A1 Dec. 6, 2001

THE REJECTIONS
The following rejections are before us for review:
Claim 1 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
Claims 1, 3, 4, 6-15, 27, and 29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Cummings, Glazer, and Official Notice2.
Claims 2 and 32 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Cummings, Glazer, Official Notice, Powell, and Schreiber.

2 We take as inadvertent error the omission of any reference to Official
Notice in the Examiner’s statement of the “Claim Rejections – 35 [U.S.C.]
§ 103” because the obviousness analysis relies on evidence in the form of
Official Notice. (See, e.g., Ans. 6-7).
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Claims 28 and 33-36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cummings, Glazer, Official Notice, and Powell.
Claims 37 and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cummings, Glazer, Official Notice, Powell, and Waytena.

FACTUAL FINDINGS
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Additional facts may
appear in the Analysis section.
1. Cummings discloses providing a time slot as a possible appointment
choice for the appointment that is available in the schedule for booking
the activity, in that a user may book a tentative appointment with a
doctor by selecting a time slot. (Col. 8, ll. 20-31).
2. Cummings discloses providing the appointment choice to the user
device when the system is communicated to the physician’s office and
the physician’s pager. (Col. 8, ll. 41-48; see also Col. 9, ll. 10-16).
3. Glazer discloses locking the time slot provided as a possible
appointment choice by making the time slot unavailable for subsequent
requests, stating “[d]uring the latency between the customer's
appointment request and the sponsoring organization's confirmation or
denial, the time slot selected by the customer 20 or 24 will be
unavailable for scheduling by other customers . . . .” (Col. 6, ll. 59-64).
4. Waytena discloses the “attraction computer processes the incoming
reservation request to determine whether and when the reservation can
be accommodated. A proposed reservation time is provisionally stored
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in a virtual queue and transmitted back to the PCD for confirmation or
rejection by the patron.” (Col. 3, ll. 15-20).
5. Waytena discloses a method to determine where to attempt to insert a
reservation request asking for a particular time, into an ordered queue of
reservations, stored in time sequence. (Col. 23, ll. 46-60).

ANALYSIS
Rejection under 35 U.S.C. § 112, First Paragraph
The Examiner rejects claim 1 as lacking support in the original
disclosure for the amended claim language of “locking the plurality of time
slots provided as possible appointment choices to the user device,” based on
the new language being “unclear how the intangible data of the ‘time slot’ is
locked to the tangible ‘user device.’” (Ans. 4).
The Appellants argue that “the phrase ‘to the user device’ is a clause
that modifies the ‘providing’ (and does not modify the ‘locking’).” (App.
Br. 10; see also Reply Br. 13-14). We agree with the Appellants’ claim
construction (App. Br. 10, Reply Br. 12). The Examiner is concerned about
the claim limitation to locking time slots that are “provided . . . to the user
device" (claim 1). The Examiner construes this to mean locking the user
device. But the claim phrase is reasonably broadly construed as referring to
locking time slots, not a device. When so construed, the claimed subject
matter is described in the Specification.
Accordingly, the rejection under 35 U.S.C. § 112, first paragraph, of
claim 1 is reversed.

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Rejection of claims 1, 3, 4, 6-15, 27, and 29 under 35 U.S.C. § 103(a)
The Appellants argue independent claims 1, 27, and 29 as a group
(App. Br. 15, Reply Br. 20); we select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii).
The Appellants challenge the rejection on the ground that Cummings
discloses only locking a single time slot, and that “[b]ooking a single
appointment time from a set of acceptable appointment times is not the same
as booking, reserving, protecting, or locking the entire set of the acceptable
appointment times that were [sic] initially supplied to the user.” (App. Br.
14; see also Reply Br. 18, App. Br. 12-15, Reply Br. 15-20).
Claim 1 calls for
• Providing plurality of time slots – making them available;
• Locking them all – i.e., make them unavailable;
• Receiving a selection for a time slot;
• Unlocking all except the the selected one; and,
• Booking the selected one.
Cummings discloses providing a single time slot as a possible
appointment choice, when the user selects an appointment time that is
presented as a tentative booking to a physician’s user device. (FF 1, 2). In
essence, Cummings discloses
• Providing plurality of time slots – making them available;
• Receiving a selection for a time slot;
• Locking the selected one; and,
• Booking the selected one.
Glazer discloses “[d]uring the latency between the customer’s
appointment request and the sponsoring organization’s confirmation or
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denial, the time slot selected . . . will be unavailable for scheduling by other
customers,” (FF 3), which we interpret to mean locking the selected time
slot. Accordingly, per Glazer, locking slots was known at the time of
Appellants’ invention.
The difference between what is claimed and what Cummings
discloses is that in the claimed process all the time slots are locked when a
selection is requested, while in Cummings all the time slots are unlocked.
The Examiner argues in part that Cummings discloses the
locking/unlocking as claimed: “locking the plurality of time slots provided
as possible appointment choices to the user device ([Cummings] col. 8, lines
20-31; col. 10, lines 1-11; Time slots may be tentatively scheduled, or
locked.)” Ans. 6.
The Appellants disagree, arguing that Cummings does not disclose
what the Examiner alleges. App. Br. 13.
In our view, the claim step of locking all the time slots is met by
repeatedly practicing the Cummings method. By simply repeating a request
for a time slot per the Cummings method, one would yield, as expected, the
locking of all the available time slots. As pointed out by the Examiner,
merely repeating a step, or making a single time slot into multiple time slots,
“has no patentable significance unless it produces a new or unexpected
result.” (Ans. 24). Cf. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1330-31 (Fed. Cir. 2009) (finding obvious a claimed invention that
required performance of three steps known in the prior art, followed by
repetition of those steps until a desired result was obtained).
Additionally, a request to forego a previously requested time slot is
implicit to the practice of the Cummings scheduling process. This is so
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because canceling or changing a reservation per se, for example, is
notoriously well known in the scheduling art. In evaluating references, it is
proper to take into account not only the specific teachings of the references
but also the inferences, which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Accordingly, in the situation where there are two time slots, the
Cummings method provides both to be scheduled and locked and then
canceling one, leaving the other selected. The claimed method reasonably
broadly covers this scenario. For this reason, we find that it would have
been obvious to one of ordinary skill in the art, in view of Cummings, to
repeatedly request time slots (and as a consequence lock all the time slots)
and then to cancel time slots (thereby unlocking them), thereby reaching the
claimed method.
We recognize that this rationale departs from that of the Examiner.
Accordingly, albeit we affirm the rejection, we will denominate it as a new
ground of rejection.
For foregoing reasons, we affirm the rejection of claims 1, 27, and 29,
as well as dependent claims 3, 4, and 6-15 that were not separately argued.

Rejections of claims 2, 28, and 32-37 under 35 U.S.C. § 103(a)
We also affirm the rejections of claims 2, 28, and 32-37, for the same
reasons set forth above, because these claims are argued only by reference to
the arguments above. (App. Br. 16-17, Reply Br. 21-23).

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Rejection of claim 38 under 35 U.S.C. § 103(a)
Dependent claim 38 recites, inter alia, “prior to the providing the
[substitute] plurality of time slots, performing a check on a no-later-than
time included in the request.”
The Appellants contend that the cited portions of Waytena do not
disclose this claim language. (App. Br. 20-21, Reply Br. 29-32). The
Examiner cites to Waytena, column 3, lines 16-17, and column 23, lines 46-
60, as disclosing the limitation. (Ans. 20, 29-30). The first of these
passages discloses merely that the system will “determine whether and when
the reservation can be accommodated.” (FF 4). This does not address a
“no-later-than time” in a reservation request. In the second passage,
Waytena discloses accepting a reservation request for a particular time, and
attempting to insert the request as a reservation into an ordered list of
existing reservations, organized sequentially by time. (FF 5). This also does
not address any requested “no-later-than time” as claimed.
The Examiner has therefore not set forth a prima facie case of
obviousness that addresses all the claimed limitations, so we will not sustain
the rejection of claim 38 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection under 35 U.S.C. § 112, first paragraph, of
claim 1 is reversed.
The Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1-4,
6-15, 27-29, and 32-37 are affirmed. We denominate the rejections under
35 U.S.C. § 103(a) of claims 1-4, 6-15, 27-29, and 32-37 as new grounds of
rejection.
The Examiner’s rejection under 35 U.S.C. § 103(a) of claim 38 is
reversed.

NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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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).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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