Ex Parte Bank et al

Patent Trial and Appeal BoardApr 11, 2016

12366322 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/366,322 0210512009 Judith Helen Bank 52023 7590 04/13/2016 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 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 ATTORNEY DOCKET NO. RSW920080287US 1 8152-0124 CONFIRMATION NO. 7617 EXAMINER MARCUS, LELAND R ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 04/13/2016 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 WDITH HELEN BANK, REGINA ANN MOLIFF, and CHRISTINE POSLUSZNY Appeal2013-009995 1 Application 12/366,3222 Technology Center 3600 Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Throughout this Opinion, we refer to the Appeal Brief ("Appeal Br.," filed Jan. 15, 2013), the Reply Brief ("Reply Br.," filed Aug. 5, 2013), the Examiner's Answer ("Ans.," mailed June 6, 2013), the Final Action ("Final Act.," mailed Aug. 16, 2012), and the Specification ("Spec.," filed Feb. 5, 2009). 2 According to the Appellants, the real party in interest is IBM Corporation. Appeal Br. 1. Appeal2013-009995 Application 12/366,322 STATEMENT OF THE CASE The Appellants' invention is directed "generally to scheduling meetings in a data processing system and more specifically to automatically creating subgroups for a scheduled meeting based on responses to an invitation." Spec. i-f 1. Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is exemplary of the subject matter on appeal and is reproduced below: 1. A computer implemented process to automatically create sub-groups from a group of responders to a meeting invitation sent by email, comprising: using a computer and a graphical user interface displayed by the computer, and responsive to a plurality of subgroup inputs to a first screen of the graphical user interface, determining a number of subgroups and a subgroup size parameter; responsive to a plurality of survey inputs to a second screen of the graphical user interface, determining a question and a criteria associated with the question to create a survey; responsive to a plurality of list inputs, determining a list of invitees and a response date by which an invitee is to return a plurality of responses in a completed survey; sending a plurality of invitations with the survey attached to each invitee on the list; accumulating the plurality of responses in a response file; and accessing the response file and automatically processing the plurality of responses by organizing the list of invitees into a plurality of subgroups according to each invitee's response to the question, the subgroup size, and the subgroup size parameter. Appeal Br. 21 (Claims App.). 2 Appeal2013-009995 Application 12/366,322 REJECTIONS Claims 1-7 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kaufman (US 2007/0027889 Al, pub. Feb. 1, 2007) and Voorhees (US 2004/0039626 Al, pub. Feb. 26, 2004). Final Act. 2. Claims 8-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kaufman, Voorhees, and Official Notice. Final Act. 5. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 ANALYSIS Each of independent claims 1, 8, and 15 recites the limitation substantially similar to "responsive to a plurality of subgroup inputs to a first screen of the graphical user interface, determining a number of subgroups and a subgroup size parameter." Claims App. The Examiner relies on Kaufman for disclosing the limitation. Final Act. 2. In particular, the Examiner finds that Kaufman discloses members providing data input concerning groups and subgroups (see Ans. 10, citing Kaufman i-fi-124, 27, 28), and that the game is commenced upon a condition that a predetermined number of people join the game and a predetermined number of groups be formed (id.). The Examiner finds that the 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2013-009995 Application 12/366,322 "predetermined number of people" in a group is functionally the determined subgroup size parameter as claimed. Id. We are persuaded by the Appellants' argument that Kaufman does not disclose the limitation of "responsive to a plurality of subgroup inputs ... determining a number of subgroups and a subgroup size parameter" as claimed. See Appeal Br. 11-12; Reply Br. 3. Kaufman discloses that a member may provide input via a device to a web page. See Kaufman i-f 13. Kaufman at paragraph 24 further discloses a "dating game" to which, in response to a member request/input or to another event, a plurality of members are invited to join and "for a game to be commenced upon a condition that a predetermined number of people join the game and that a predetermined number of groups may be formed." We agree with Appellants that Kaufman does not disclose determining the predetermined number of groups and number of people based on the data input. See Reply Br. 3. Although paragraph 28 of Kaufman discloses that after a predetermined amount of time, each group may be divided into two or more subgroups, determined "by a likelihood of benefit, e.g., enjoyment of the players," i.e., determining groups and subgroups responsive to input, Kaufman does not disclose determining a number of subgroups and a subgroups size parameter responsive to data input. Thus, for the above reason, we do not sustain the Examiner's rejections of independent claims 1, 8, and 15. For the same reason, we also do not sustain the Examiner's rejections of dependent claims 2-7, 9-14, and 16-20. 4 Appeal2013-009995 Application 12/366,322 DECISION The Examiner's rejections of claims 1-20 under 35 U.S.C. Â§ 103(a) are REVERSED. REVERSED 5