Ex Parte Mandalia et al

Patent Trial and Appeal Board

Dec 12, 2012

11198536 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BAIJU D. MANDALIA, JOSEPH G. RUSNAK and
ROBERT J. SUNDSTROM
____________

Appeal 2010-008066
Application 11/198,536
Technology Center 2400
____________

Before DEBRA K. STEPHENS, KRISTEN L. DROESCH and
HUNG H. BUI, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2010-008066
Application 11/198,536

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STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-20.1 We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
BACKGROUND
Appellants’ disclosed invention relates to automatically scheduling
and establishing conferences. Spec. ¶ 0001.
Claim 1 is illustrative and is reproduced below (disputed limitations in
italics):
1. A method of automatically conducting a conference
comprising:
responsive to updating a data store, generating an event
indicating an update to the data store has occurred in relation
to at least one document within the data store;
responsive detecting the event, identifying each user of a
plurality of users subscribed to the event as a conference
participant;
determining availability for each of the plurality of
conference participants;
selecting a date and time for the conference based upon
the availability of each of the plurality of conference
participants; and

1 The Notice of Appeal indicates that the last decision of the Examiner is
appealed. The Examiner finally rejected all of claims 1-20. Final Office
Action Aug. 5, 2009. The Appeal Brief indicates that the rejection of claims
1-5, 8-11, 14-18 and 20 is appealed (Br. 5), but also indicates that the claims
rejected in the Final Action are the same as the claims presented for review
on appeal (Br. 6). Since Appellants’ Notice of Appeal and Appeal Brief both
indicate that all of the finally rejected claims are presented on appeal, we
treat all of claims 1-20 as appealed.
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automatically initiating the conference among the
conference participants on the date and at the time
corresponding to the conference.

Rejections
Claims 1-5, 8-11, 14-18 and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Benco (2005/0018826 A1) and Matsubara2
(7,467,190 B2).
Claims 6, 7, 12, 13 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Benco, Matsubara and Ethier (2006/0045029 A1).
ISSUE
Did the Examiner err in finding that the combination of Benco and
Matsubara teaches or suggests “an event indicating an update to the data
store has occurred in relation to at least one document within the data store,”
and “responsive [to] detecting the event, identifying each user of a plurality
of users subscribed to the event as a conference participant,” as recited in
independent claims 1, 10 and 16?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief presented in response to the Final Office
Action (“FOA”). We agree with Appellants’ conclusions. We highlight and
address specific findings and arguments for emphasis as follows.
The Examiner does not rely on Benco, but instead relies on Matsubara
for describing the disputed limitations. Ans. 4. In support of the limitation
“responsive to updating a data store, generating an event indicating an

2 Referred to by the Examiner as “Mat”.
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Application 11/198,536

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update to the data store has occurred in relation to at least one document
within the data store,” the Examiner directs attention to column 3, line 61
through column 4, line 10 of Matsubara as describing that if a file is
modified, a message will be sent to the management server, and then the
management server will notify the notification server. Id. In support of the
limitation “responsive detecting the event, identifying each user of a
plurality of users subscribed to the event as a conference participant,” the
Examiner directs attention to column 3, lines 23-45 of Matsubara as
describing that the notification server will determine which users (peers)
subscribed to the changes and notify these users (peers). Ans. 4; see also
Ans. 8 (citing Matsubara col. 4, ll. 4-12). The Examiner asserts that the peers
or users can also participate in a conference. Ans. 8 (citing Matsubara col. 3,
ll. 33-45); see also FOA 3 (asserting “these users might be the conference
participants”). The Examiner further finds that Matsubara “teaches that
responsive to the event, identify a plurality of users subscribed to the event,
these peers in one embodiment are conference participants.” Ans. 8.
Appellants argue that none of the cited references teach or suggest the
disputed claim limitations. Br. 12. In particular, Appellants argue that
Matsubara is silent regarding “identifying each user . . . as a conference
participant,” but instead Matsubara describes a flowchart in which users are
notified of an update to an information source. Id. Appellants further argue
that the Examiner’s finding that the users (i.e., peers) are or might be the
conference participants (i.e., the same users or peers that subscribe to the file
and receive notifications regarding changes to the file) is unsubstantiated by
the disclosure of Matsubara. Br. 12.
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We agree with Appellants’ arguments. Specifically, Matsubara
describes that if an information source (File-X) is modified, the following
occurs: (1) a message will be sent to the management server notifying the
management server that File-X has been modified (Fig. 2, step 103; col. 3, ll.
61-66), (2) the management server will communicate a message to the
notification server that File-X has been modified (Fig. 2, step 104; col. 3, l.
66-col. 7, l. 3), and (3) in response to receiving the message from the
management server (Fig. 2, step 105), the notification server will
communicate an alert message to each peer client (i.e., user) that has
subscribed to File-X (Fig. 2, step 106; col. 4, ll. 4-7). Further, Matsubara
describes that in another embodiment the information source can also refer
to a virtual shared space where a conference can take place and can also
correspond to events related to the conference, such as someone joining the
conference, leaving the conference, or a vote. Col. 3, ll. 33-45; col 5, ll. 14-
54. However, the Examiner does not direct us to where Matsubara teaches or
suggests that responsive to detecting the event indicating an update related to
a document within the data store has occurred (i.e., the modification of File-
X), identifying each user (i.e., peer client) subscribed to the event (i.e.,
subscribed to File-X) as a conference participant.
For at least this reason, we cannot sustain the rejection of claims 1-5,
8-11, 14-18 and 20 as unpatentable over Benco and Matsubara. As applied
by the Examiner, Ethier does not remedy the deficiencies of the combination
of Benco and Matsubara. Ans. 6-7. Accordingly, for the same reasons as
claims 1-5, 8-11, 14-18 and 20, we cannot sustain the rejection of claims 6,
7, 12, 13 and 19 as unpatentable over Benco, Matsubara and Ethier.
Appeal 2010-008066
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In the Event of Further Prosecution
We have decided the appeal before us. In the event of further
prosecution, we direct the Examiner’s attention to independent claim 16
which recites: “machine readable storage, having stored thereon a computer
program having a plurality of code sections executable by a machine for
causing the machine to perform the steps of . . . .” We leave it to the
Examiner to determine whether the broadest reasonable meaning, of
“machine readable storage” recited in claim 16, and those claims dependent
therefrom, encompasses non-statutory subject matter (i.e., transitory
propagating signals). In particular, we note that Appellants’ Specification
discloses the following: “[c]omputer program, software application, and/or
other variants of these terms, in the present context, mean any expression, in
any language, code, or notation, of a set of instructions intended to cause a
system having an information processing capability to perform a particular
function . . . .” Spec. ¶ 0053 (emphasis added). When read in light of
Appellants’ Specification, the claimed “machine readable storage” may be
construed as encompassing both transitory, propagating signals and
recordable type media. Transitory, propagating signals are not patentable
subject matter under § 101. In re Nuitjen, 500 F.3d 1346, 1353-54 (Fed. Cir.
2007). See also U.S. Patent & Trademark Office, Interim Examination
Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C.
§ 101, Aug. 2009, at 2, available at http://www.uspto.gov/
web/offices/pac/dapp/opla/2009-08-25_ interim_101_instructions.pdf (“A
claim that covers both statutory and non-statutory embodiments . . .
embraces subject matter that is not eligible for patent protection and
therefore is directed to non-statutory subject matter.”).
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DECISION
We REVERSE the rejection of claims 1-5, 8-11, 14-18 and 20 under
35 U.S.C. § 103(a) as unpatentable over Benco and Matsubara.
We REVERSE the rejection of claims 6, 7, 12, 13 and 19 under 35
U.S.C. § 103(a) as unpatentable over Benco, and Matsubara and Ethier.
REVERSED

msc