Ex Parte Lyle et al

Patent Trial and Appeal Board

Sep 27, 2012

11274575 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RUTHIE D. LYLE and CAROL S. ZIMMET
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Appeal 2010-004508
Application 11/274,575
Technology Center 2100
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Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004508
Application 11/274,575

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STATEMENT OF THE CASE
Appellants are appealing claims 1-19. Appeal Brief 1-2. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm.

Introduction
The invention is directed to “a method, system, and computer program
product for synchronizing a group distribution list with a meeting invitation
list.” Appeal Brief 2 (citation omitted).

Illustrative Claim
1. A computerized method of synchronizing a group
distribution list with a meeting invitation list in an electronic
calendar application environment wherein a calendar event
including a meeting invitation list is created, comprising at least
one computing device for processing the steps of:

detecting a group distribution list in the meeting
invitation list, wherein the group distribution list is a list of one
or more individuals, resources, or both individuals and
resources that are linked together with a common focus;

monitoring the group distribution list, wherein the
monitoring detects changes to a distribution list update field of
the group distribution list; and

updating the meeting invitation list with a detected
change to the group distribution list.

Appeal 2010-004508
Application 11/274,575

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Rejection on Appeal
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta (U.S. Patent Application Publication Number
2002/0099777 A1; published July 25, 2002), Nielsen (U.S. Patent Number
5,864,684; issued January 26, 1999), and Matthews (U.S. Patent Application
Publication Number 2003/0050986 A1; published March 13, 2003). Answer
3-14.

Issue on Appeal
Do Gupta, Nielsen, and Matthews, alone or in combination, “teach or
suggest each and every feature of these claims [1, 10, and 19]?” See Appeal
Brief 4.

ANALYSIS
We disagree with Appellants’ assertions regarding the Examiner’s
rejection of the claims on appeal. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer (Ans. 3-14) in response to arguments made in Appellants’ Appeal
Brief. We concur with the conclusion reached by the Examiner. We
highlight and address certain findings and arguments below.
Appellants argue that Gupta does not teach any qualities of the group
distribution list; Gupta does not teach “resources that are linked together
with a common focus.” Appeal Brief 5. Appellants further argue, “[t]he
‘meeting invitation list’ and ‘group distribution list’ recited in this feature of
Appellants’] invention are not synonymous. Respectfully, it is not logical
Appeal 2010-004508
Application 11/274,575

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to assert that the one line from Gupta quoted above teaches both the
‘meeting invitation list’ and ‘group distribution list.’” Id.
Appellants also argue that “[t]here is no teaching or suggestion in
Nielsen that any field within any given group distribution list is monitored
for changes.” Appeal Brief 6. Appellants further argue that “Matthews does
not teach or suggest ‘updating the meeting invitation list.’” Id.
“Appellants] submit] that for the reasons stated above, the cited
combination fails to establish a prima facie showing of obviousness under 35
U.S.C. §] 103(a).” Id.
We are not persuaded of Examiner’s error because Appellants’
arguments do not take into account what the collective teachings of the prior
art would have suggested to one of ordinary skill in the art and are therefore
ineffective to rebut the Examiner’s prima facie case of obviousness. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” (Emphasis added) (citations
omitted)).
Therefore we sustain the Examiner’s rejection of claim 1, as well as
claims 2-19 not separately argued.

DECISION
The rejection of claims 1-19 is affirmed.
Appeal 2010-004508
Application 11/274,575

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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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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