Hernan A. Cunico et al.

Patent Trials and Appeals Board

Dec 19, 2019

15483474 - (D) (P.T.A.B. Dec. 19, 2019)

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.
15/483,474 04/10/2017 Hernan A. Cunico SVL920150132US2_8150-0762 1039
112978 7590 12/19/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
ZEWDU, MELESS NMN
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
12/19/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HERNAN A. CUNICO and ASIMA SILVA
____________________

Appeal 2018-007261
Application 15/483,474
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party-in-interest as IBM Corporation.
Appeal Br. 1.
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Application 15/483,474

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CLAIMED SUBJECT MATTER
Claim 21 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
21. A computer-implemented method, comprising:
[A.] sending, responsive to detecting an unanswered message
sent by a sender to a receiving mobile device of a
recipient of the unanswered message and based upon an
escalation plan for the recipient, a first escalation
message to a first contact of the recipient; and
[B.] sending, responsive to determining that the unanswered
message is still unanswered subsequent to the sending the
first escalation message, a second escalation message to
a second contact of the recipient, wherein the second
contact of the recipient is determined using:
[i.] the escalation plan,
[ii.] a relationship between the sender and the recipient,
[iii.] a relationship between the second contact and the
recipient, and
[iv.] a proximity of the second contact to a last known
location of the receiving mobile device.
REFERENCES2
The prior art relied upon by the Examiner is:
Name Reference Date
Jordan US 8,611,869 B2 Dec. 17, 2013
Fisher US 2014/0179354 A1 June 26, 2014

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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REJECTIONS
A.
The Examiner rejects claims 35–40 under 35 U.S.C. § 101 because
“the claimed invention is directed to non-statutory subject matter.” Final
Act. 9.
We select claim 35 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant does not separately argue claims 36–40. Except for our ultimate
decision, we do not discuss the § 101 rejection of claims 36–40
further herein.
B.
The Examiner rejects claims 21–40 under 35 U.S.C. § 103 as being
unpatentable over the combination of Jordan and Fisher. Final Act. 6–8.
As to the § 103 rejection, Appellant presents separate arguments for
claims 21–25. Appeal Br. 10–19.3 Appellant does not argue separate
patentability for claims 26–40. We select:
claim 21 as representative of claims 21, 26–28, 33–35, and 40;
claim 22 as representative of claims 22, 29, and 36;
claim 23 as representative of claims 23, 30, and 37;
claim 24 as representative of claims 24, 31, and 38; and
claim 25 as representative of claims 25, 32, and 39.
Except for our ultimate decision, we do not address claims 26–40 further
herein.

3 We read any reference to “claim 1” on page 10 of the Appeal Brief as to
–claim 21–. Examiner does similarly. Ans. 7.
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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) has
published revised guidance on the application of § 101. USPTO’s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”). Under that guidance,
As before, Step 1 of the USPTO’s eligibility analysis entails
considering whether the claimed subject matter falls within the
four statutory categories of patentable subject matter identified
by 35 U.S.C. 101: Process, machine, manufacture, or
composition of matter.
2019 Memorandum 14.
B. The Panel’s § 101 Analysis
Claim 35 recites in-part “[a] computer program product, comprising:
a computer readable storage medium having program code stored therein.”
(Emphasis added.)
The Examiner determines that claims 35–40 “do not fall within at
least one of the four categories of patent eligible subject matter.” May 18,
2017 Non-Final Act. 2.
Citing to paragraph 65 of the Specification, Appellant contendsraises
the following argument in contending that the Examiner erred in rejecting
claim 35 under 35 U.S.C. § 101.
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[A] portion of paragraph [0065] is reproduced below:
A computer readable storage medium, as used
herein, is not to be construed as being transitory
signals per se, . . . .
Consequently, Appellants’ specification discloses the opposite to
that described by the Examiner. . . . Examiner cannot construe
the claim language of claim 35 as encompassing transitory
signals per [se].
Appeal Br. 8–9; see In re Morris, 127 F.3d 1048, 1053 (Fed. Cir. 1997)
(“[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in the applicant’s specification.” (emphasis
added)).
We do not find in the Answer any Examiner response to Appellant’s
§ 101 contention. Therefore, based on Appellant’s contention, we determine
the Examiner’s analysis fails to demonstrate that claim 35 does not fall
within at least one of the four categories of patent-eligible subject matter.
C. § 103 – Claim 21
C. 1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
Independent claim [21] recites, in part, the limitations of
“the second contact of the recipient is determined using: . . . a
relationship between the sender and the recipient.” Regarding
these limitations, on page 9 of the First Office Action, the
Examiner relied solely upon Jordan to teach these limitations.
Specifically, the Examiner cited column 5, lines 47-65 of Jordan
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without any additional explanation. . . . Appellants respectfully
disagree.
While this passage refers to relationships between the
mobile device user (i.e., corresponding to the claimed recipient)
and the alternate contact (i.e., corresponding to the claimed
second contact), absent from this passage is any mention of
using the relationship between the sender and the recipient as
a basis for determining the second contact. . . . Consequently,
Jordan fails to teach the limitations for which Jordan alone is
being relied upon to teach.
Appeal Br. 10–11.
We are unpersuaded by Appellant’s contention. Appellant
restrictively limits his contention to Jordan’s teachings at column 5, lines
47–65. We look in addition to Jordan’s teachings at column 5, lines 28–31,
and column 4, line 66, through column 5, line 10, which were cited by the
Examiner. At column 4, line 67, through column 5, line 1, Jordan teaches
that “priority may be based on the communication initiator (e.g., spouse,
child, co-worker),” which is a relationship between the sender and recipient.
At column 5, lines 57–60, Jordan teaches that “[o]ne or more alternate
contacts 16 are identified based on the location of the mobile device 12 and
relationships between the mobile device user [i.e., recipient] and the
alternate contacts 16 (step 66).” At column 5, lines 64–65, Jordan teaches
that “[t]he alternate contact 16 may also have a relationship with the
communication initiator 10.”
We determine that these teachings of Jordan are suggestive to an
artisan that, in addition to determining priority using the relationship
between the sender and recipient, the alternative contact can be determined
based on the relationship between the sender and recipient.
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C. 2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
Appellants respectfully submit that Fisher is non[-
]analogous prior art that cannot be properly applied against the
claimed invention. The determination that a prior art reference is
analogous prior art is an issue of fact. . . . Whether a prior art
reference is from a non[-]analogous art involves (a) determining
whether the reference is within the same field of endeavor and
(b) determining whether the reference is reasonably pertinent to
a known problem in the art. In re Bigio, 381 F.3rd [sic] 1320,
1325 (Fed Cir. 2004).
Appeal Br. 13 (emphasis added).
The claimed invention is within the field of message
escalation (i.e., in the context of an unanswered message from a
sender to a recipient). Fisher, however, is not within the field of
message escalation. Instead, Fisher is directed to identifying
contact opportunities (e.g., “use the obtained contact information
to make sales pitches to the potential customers ... or by visiting
the potential customers at their residence or business address”).
Moreover, the Examiner has not alleged that Fisher is reasonably
pertinent to a known need or problem in the field of endeavor.
Thus, Fisher is non[-]analogous prior art that cannot be applied
against the claimed invention.
Appeal Br. 14 (emphasis added).
The Examiner also asserts that “both Jordan and Fisher
deal with identifying contact based on location.” However,
“identifying contact based on location” is not the field of
endeavor to which Appellants’ invention is directed.
Appeal Br. 15 (emphasis added).
We are unpersuaded by Appellant’s contention. First, Appellant
misstates the holding in Bigio. The correct statement in Bigio is:
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Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
Bigio, 381 F.3d at 1325. Stated differently, a reference may be properly
considered analogous art if it is reasonably pertinent to a problem addressed
by the inventor; that is, if it would have logically commended itself to an
inventor’s attention. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Second, even if we accept Appellant’s contention that “‘identifying
contact based on location’ is not the field of endeavor to which Appellants’
invention is directed” (Appeal Br. 15), we determine that identifying a
contact based on location is a particular problem with which the inventor is
involved (Spec. ¶ 4), and Fisher is reasonably pertinent (Fisher ¶ 43) to that
particular problem.
D. § 103 – Claim 22
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 22 under 35 U.S.C. § 103.
As claimed, the plan involves a “number of escalation
messages and category of relationship.” While the Examiner’s
cited passage [of column 5, lines 18–32 of Jordan] makes a
passing mention to “repeated communications are received from
the same person,” the Examiner’s cited passage is silent as to the
claimed “category of relationship.” Therefore, Jordan fails to
teach the limitations at issue recited in claim 22.
Appeal Br. 16.
We are unpersuaded by Appellant’s contention. At, column 4, line
66, through column 5, line 10, Jordan explicitly teaches using a category of
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relationship, as do column 5, lines 58–59 and 64–65; and column 6, lines
22–47.
E. § 103 – Claim 23
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 23 under 35 U.S.C. § 103.
As claimed, the plan involves “rules for posting an
escalation message to a social networking system.” While the
Examiner’s cited passage [of column 4, lines 31–39 of Jordan]
uses a social networking site to identify relationships between the
user and other contacts, this does [not] involve posting an
escalation message to the social networking site. Therefore,
Jordan fails to teach the limitations at issue recited in claim 23.
Appeal Br. 17.
As to Appellant’s contention, we are unpersuaded. Jordan states:
The user may limit the people that can be identified as an
alternate contact 16. For example, the user may tag people
within their social network that the alternate contact notifier 18
may contact.
Jordan, column 4, lines 36–39. We agree with the Examiner that Jordan’s
teaching of tagging people within their social network as contacts equates to
rules for posting an escalation message to a social networking system.
F. § 103 – Claim 24
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 24 under 35 U.S.C. § 103.
As noted above, the limitations at issue recognize the
escalation plan specifies rules that recognize different categories
of relationship exist between the contact and the recipient and
between the sender and the recipient. While the Examiner’s cited
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column 5, lines 47-65 refers to relationships, this passage is silent
as to different categories of relationships.
Appeal Br. 18.
As to Appellant’s contention, we are unpersuaded. As we have
already noted above, at Column 4, line 66, through column 5, line 10, Jordan
explicitly teaches using a category of relationship, as do column 5, lines 58–
59 and 64–65; and column 6, lines 22–47.
G. § 103 – Claim 25
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 25 under 35 U.S.C. § 103.
The Examiner’s cited passage [of column 4, line 58
through column 5, line 17 of Jordan] initially describes how
priority information 24 is used to identify a communication as a
“priority communication.” This passage also explains how
priority may be based upon a number of factors. Referring to
column 5, Jordan also explains how a user may configure
preferences, such as when a particular person attempts to contact
the user with a communication, that communication will be
labeled as priority. Finally, Jordan identifies other types of
communications that can be designated as priority. Notably,
nothing about the Examiner’s cited passage within Jordan refers
to “an amount of the unanswered message to expose within the
first and second escalation messages.” Therefore, Jordan fails to
teach the limitations at issue recited in claim 25.
Appeal Br. 19.
As to Appellant’s contention, we are unpersuaded. At column 6, lines
23–47, Jordan teaches that a message to a “daughter” contact may vary in
content. The daughter contact message may be a basic message (e.g., “tell
her mother to check her phone”) or “it may be more detailed.” Id. We deem
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this to reasonably suggest that any part or all of the unanswered message
may be part of that more detailed contact message.
CONCLUSION
Appellant has shown the Examiner erred in rejecting claims 35–40
under 35 U.S.C. § 101, as directed to patent-ineligible subject matter.
The Examiner has not erred in rejecting claims 21–40 as unpatentable
under 35 U.S.C. § 103.
The Examiner’s rejection of claims 35–40 as patent ineligible under
35 U.S.C. § 101 is reversed.
The Examiner’s rejection of claims 21–40 as being unpatentable
under 35 U.S.C. § 103 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
35–40 101 Eligibility 35–40
21–40 103 Jordan, Fisher 21–40
Overall
Outcome

21–40
TIME PERIOD FOR RESPONSE
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).

AFFIRMED