Ex Parte Gupta

Patent Trial and Appeal Board

Nov 24, 2014

12326636 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PUNEET K. GUPTA
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Appeal 2012-007892
Application 12/326,636
Technology Center 2400
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Before CARLA M. KRIVAK, CARL W. WHITEHEAD JR., and
HUNG H. BUI, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 and 3.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.3

1 The Real Party in Interest is Metriscape, Br. 3.
2 Claim 2 has been canceled and is not on appeal.
3 Our decision refers to Appellant’s Appeal Brief filed November 15, 2011
(“App. Br.”); Examiner’s Answer mailed December 21, 2011 (“Ans.”); and
original Specification filed December 2, 2008 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention discloses a communication system equipped
with a single, comprehensive application (software) to integrate (1) an
instant message (IM) interface and a calendar interface. Spec. 18:18–24.
Users are connected via a network where software code operating on a
user’s device (e.g., laptop or mobile device) allows the user to organize and
categorize IM contacts, detect online activity and location of contacts, share
calendars of selected contacts and merge his or her calendar with another
user’s calendar if the other user has authorized sharing. The merged calendar
provides one user information regarding at least open dates and times
common to two users. Id. at 42:17–45:10, Figs. 10–11, and Abstract.

Representative Claim
Claim 1 is the only independent claims on appeal. Representative
claim 1 is reproduced below:
1. A communication system comprising:
an instant messaging software application executing on a
computerized appliance from a non-transitory machine-readable
medium, the application comprising:
code categorizing and organizing contacts;
code detecting online activity and current online
location of listed contacts;
a shared calendar utility wherein individual users
may indicate and schedule future activities by date and time,
including ability for each user to authorize sharing parameters
such that other users may view other users schedules; and
code providing one user ability to merge his or her
calendar with another user’s calendar if the other user has
authorized sharing, the merged calendar providing the one user
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Application 12/326,636

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information regarding at least open dates and times common to
the two users.

App. Br. 12 (Claims Appendix) (emphasis added).

Evidence Considered
Shah US 2005/008048 A1 Apr. 14, 2005
Tam US 7,118,073 B1 Mar. 6, 2007
Groves US 7,383,308 B1 Jun. 3, 2008

Examiner’s Rejections4

(1) Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shah, Groves, and Tam. Ans. 5–7.
(2) Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shah, Groves, Tam, and Swearingen. Ans. 7–8.

Issues on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the combination of Shah, Groves, and Tam discloses or suggests “a
shared calendar utility wherein individual users may indicate and schedule
future activities by date and time, including ability for each user to authorize
sharing parameters such that other users may view other users schedules”
and “code providing one user ability to merge his or her calendar with

4 In Appellant’s Appeal Brief, Appellant also identifies an objection to
claim 1. App. Br. 8. However, that objection has been withdrawn and, as
such, is no longer on appeal. Ans. 4.
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another user’s calendar if the other user has authorized sharing” as recited
in Appellant’s independent claim 1. App. Br. 9–11.

ANALYSIS
As an initial matter, we note Appellant’s independent claim 1 includes
a wherein clause containing optional elements, i.e., “wherein individual
users may indicate and schedule future activities by date and time, including
ability for each user to authorize sharing parameters such that other users
may view other users schedules” (emphasis added). In our view, such a
wherein clause does not narrow the scope of the claim because these
limitations are stated in the possibility or probability form “may.” As a
matter of linguistic precision, “optional elements do not narrow the claim
because they can always be omitted.” See In re Johnston, 435 F.3d. 1381,
1384 (Fed. Cir. 2006).
Assuming arguendo that weight may be given to the disputed
“wherein” clause, we find the preponderance of evidence supports the
Examiner’s findings that: (1) Shah discloses “code providing one user
ability to merge his or her calendar with another user’s calendar if the other
user has authorized sharing” and (2) Tam discloses “a shared calendar
utility wherein individual users may indicate and schedule future activities
by date and time, including ability for each user to authorize sharing
parameters such that other users may view other users schedules” as recited
in Appellant’s independent claim 1. Ans. 9–16 (citing Shah ¶ 86; Tam 9:1–
6, 12:19–38, 28:24-30, 29:6–27, Fig. 26, Fig. 28 and Fig. 29). In the
absence of Appellant’s response, we also find the combined teachings of
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Shah, Groves, and Tam would have suggested the subject matter of
Appellant’s independent claim 1. Accordingly, we sustain the Examiner’s
obviousness rejection of independent claim 1 and its dependent claim 3,
which was not argued separately, for the reason set forth in the Answer,
which we incorporate herein by reference.

DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1 and
3.
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

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