Ex Parte Singh et al

Patent Trials and Appeals BoardMar 29, 2019

11554842 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/554,842 10/31/2006 Munindar P. Singh 49277 7590 04/02/2019 SCENERA RESEARCH, LLC 155 Fleet Street Portsmouth, NH 03801 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. CONFIRMATION NO. I358/US 6034 EXAMINER KING,JOHNB ART UNIT PAPER NUMBER 2498 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): uspto.correspondence@sceneralabs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MUNINDAR P. SINGH and MONA SINGH Appeal2017-005601 Application 11/554,842 1 Technology Center 2400 Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Munindar P. Singh and Mona Singh ("Appellants") appeal from the final rejection of claims 1--42. We have jurisdiction to review the case under 35 U.S.C. Â§Â§ 6 and 134. The invention relates generally to methods and systems for coordinating a synchronous activity (i.e., an activity where two or more principals are simultaneously available; e.g., a phone call) between a first and a second principal (e.g., human users). Spec. ,r,r 6, 13, 16. 1 Appellants identify Scenera Mobile Technologies, LLC as the real party in interest. Appeal Br. 3. Appeal2017-005601 Application 11/554,842 Claimed Subject Matter There are four independent claims on appeal. Claim 1 is illustrative and reproduced below: 1. A method for coordinating a synchronous activity, the method comprising: receiving, by a first assistant component, an instruction from a first principal to send a tag request including at least one request parameter to a second principal to participate in an activity, wherein at least one of the first and second principals is a human; determining, by a first assistant component, whether the second principal is subscribed to a tag request service; sending, by the first assistant component if the second principal is subscribed to the tag request service, the tag request for the second principal; determining, based on the least one request parameter, by a second assistant component, whether the second principal is available to participate in the activity after the tag request is received, without receiving a response to the tag request from the second principal; sending, at the time the second principal is available to participate in the activity, by the second assistant component, a response indicating the second principal is available to participate in the activity; determining, by the first assistant component, that the first principal is available to receive a notification; and notifying, by the first assistant component, the first principal that the second principal is available to participate in the activity in response to receiving the response and determining that the first principal is available to receive the notification. Appeal Br. 32 (Claims App'x). 2 Appeal2017-005601 Application 11/554,842 Rejections The Examiner rejected claims 1--42 under 35 U.S.C. Â§ 101 as directed to ineligible subject matter in the form of abstract ideas without significantly more. The Examiner made the following five rejections under 35 U.S.C. Â§ I03(a): Claims 1, 2, 7-10, 14, 15, 20-24, 27-31, and 36-39 over Shaffer et al. (US 2006/0268698 Al, pub. Nov. 30, 2006) ("Shaffer '698"), Shaffer et al. (US 2007/0121878 Al, pub. May 31, 2007) ("Shaffer '878"), and Gilbert (US 2005/0009507 Al, pub. Jan. 13, 2005) ("Gilbert")2; Claims 3, 16, and 32 over Shaffer '698, Shaffer '878, and Lucovsky et al. (US 2003/0131069 Al, pub. July 10, 2003) ("Lucovsky"); Claims 4---6, 17-19, and 33-35 over Shaffer '698, Shaffer '878, Lucovsky, and Seligmann et al. (US 2006/0182251 Al, pub. Aug. 17, 2006) ("Seligmann"); Claims 11, 12, 25, 40, and 41 over Shaffer '698, Shaffer '878, and Lee (US 7,068,775 Bl, iss. June 27, 2006) ("Lee"); and Claims 13, 26, and 42 over Shaffer '698, Shaffer '878, and Fulton et al. (US 2005/0041793 Al, pub. Feb. 24, 2005) ("Fulton"). Summary of Decision We AFFIRM. 2 The Examiner does not include Gilbert in the rejection heading (Final Act. 7 (mailed July 9, 2015), but relies on Gilbert in the rejection (id. at 11- 12). Appellants recognize that the rejection relies upon Gilbert. Appeal Br. 10 (listing Gilbert as one of the three references upon which the rejection is based). 3 Appeal2017-005601 Application 11/554,842 ANALYSIS Rejection under 35 USCÂ§ 101 An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc. and Alice. Id. at 217-18 (citing Mayo, 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 ( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India 4 Appeal2017-005601 Application 11/554,842 rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 (internal quotation omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). 5 Appeal2017-005601 Application 11/554,842 "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of Â§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. Alice/Mayo Step One The Specification explains that "[ e ]lectronic communication devices, such as smart phones and mobile phones, offer a variety of convenient services to their users that traditional analog telephones are not equipped to provide." Spec. ,r 2. Nonetheless, "such devices still suffer from the inefficiencies and frustrations of attempting to arrange an activity, such as a phone call, with another principal or user." Id. ,r 3. The Specification explains that attempting to arrange a phone call can often result in a 6 Appeal2017-005601 Application 11/554,842 sequence "typically referred to as 'phone tag,"' which "can repeat several times and is highly inefficient and time consuming." Id. Thus, the Specification provides "a method and system for coordinating a synchronous activity between a first and a second principal." Id. ,r 6. The claims, as discussed below, are directed to those methods and systems. As an initial matter, Appellants argue claims 1--42 as a group. Appeal Br. 13-25; see generally Reply Br. (relying on arguments raised in the Appeal Brief in response to the Â§ 101 rejection). Therefore, we select claim 1 for consideration. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Step 1 of the Guidance Under the Guidance, we must first determine whether claim 1 falls within the four statutory categories of patent subject matter identified by 35 U.S.C. Â§ 101. Claim 1 recites a series of steps and, therefore, falls within the process category of Â§ 101. Revised Step 2A, Prong 1 of the Guidance Despite falling within this statutory category, we must determine whether the claim is directed to a judicial exception, such as an abstract idea. See Alice, 573 U.S. at 218. To this end, we must determine whether the claim (1) recites a judicial exception and (2) fails to integrate the exception into a practical application. Guidance, 84 Fed. Reg. at 54--55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test, which the Guidance refers to as Step 2A. See id. The Examiner found: The underlying invention merely mimics a fundamental practice of a normal secretarial transaction ( e.g. secretaries 7 Appeal2017-005601 Application 11/554,842 mediating the setup of a phone call on behalf of their respective boss). This is considered as an abstract idea in itself as this can be performed by a human in multiple fields of use such as a secretarial position. Ans. 6; see Final Act. 2 ("The claims are primarily directed toward two party communication whereby the process of e.g. 'phone tag' is alleviated by respective 'assistant components' determining the availability for their respective party."). Claim 1 recites "[a] method for coordinating a synchronous activity," e.g., a phone call. Each of the specific limitations recites a step of organizing human activity. In particular, claim 1 recites: receiving, by a first assistant component, an instruction from a first principal to send a tag request including at least one request parameter to a second principal to participate in an activity, wherein at least one of the principals is a human; determining, by a first assistant component, whether the second principal is subscribed to a tag request service; sending, by the first assistant component if the second principal is subscribed to the tag request service, the tag request for the second principal; determining, based on the least one request parameter, by a second assistant component, whether the second principal is available to participate in the activity after the tag request is received, without receiving a response to the tag request from the second principal; sending, at the time the second principal is available to participate in the activity, by the second assistant component, a response indicating the second principal is available to participate in the activity; determining, by the first assistant component, that the first principal is available to receive a notification; and notifying, by the first assistant component, the first principal that the second principal is available to participate in the activity in response to receiving the response and determining that the first principal is available to receive the notification. 8 Appeal2017-005601 Application 11/554,842 Each of these claimed steps recites a method of organizing human activity, in that they are "managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)." See Guidance, 84 Fed. Reg. at 52. Additionally, although some functions are performed using a computer (see Final Act. 6 (finding that the first assistant and second assistant components reside on a central server and are merely software structures that function on a single central device)), the method steps themselves involve people performing those functions or software performing those functions to facilitate an interaction. For example, the step of "receiving, by a first assistant component, an instruction from a first principal to send a tag request including at least one request parameter to a second principal to participate in an activity, wherein at least one of the principals is a human" involves a person giving an instruction to send a tag request to a second principal ( e.g., a person) to participate in an activity, such as a phone call. As such, claim 1 recites an abstract idea based on these steps of organizing human activity. Revised Step 2A, Prong 2 of the Guidance Although claim 1 recites an abstract idea based on these steps of organizing human activity, we must determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claim is more than a drafting effort designed to monopolize the abstract idea. See Fed. Reg. at 54--55. To do this, we evaluate the "additional elements individually and in combination to determine whether they integrate the exception into a practical application, 9 Appeal2017-005601 Application 11/554,842 using one or more of the considerations laid out by the Supreme Court and the Federal Circuit." Id. at 5 5. Notably, the only additional limitations recited in claim 1 beyond the abstract idea are the first and second assistant components. These additional limitations, however, are simply generic computer components that perform generic computer functions, e.g., sending, receiving, and processing (i.e., determining) information. The additional limitations do not integrate the abstract idea into a practical application. First, the method does not concern an improvement to a technology (see Final Act. 3) because, although the method can be executed on a computer, the purported improvement is a way to schedule a synchronous activity ( e.g., a phone call) while minimizing inefficiencies in the process (e.g., phone tag). See MPEP Â§ 2106.05(a). In other words, the method merely implements a purported improvement to organizing human behavior on, e.g., general-purpose communication devices and personal computers. See, e.g., Spec. ,r 16 ("The system 10 includes a plurality of communication devices 1 OOa, 1 OOb communicatively coupled to a server 150 via a network 130, such as the Internet .... Each device 100a, 100b is associated with a principal 120a, 120b, which can be a human user."), ,r 17 ("[T]he communication device, e.g., 1 OOa can be a laptop or desktop computer, a digital camera/phone, a PDA, a smart phone, and the like. The device 100a includes circuitry for communicating with the server 150 and with other devices lOOb."), ,r 18 ("the communication device 100a can include a user agent component 110a that is configured to monitor the first principal's 120a availability to receive information and/or to participate in synchronous activities"), ,r 19 ("the server 150 can be a personal computer or some other 10 Appeal2017-005601 Application 11/554,842 device capable of processing and storing data"). This is indistinguishable from merely providing instructions to apply the method on a general purpose computer. See MPEP ,r 2106.05(Â±). Second, all the claim essentially does is tie the use of communication devices, all of which display information and conduct communications, to a particular purpose, i.e., coordinating a synchronous activity such as a phone call. See id. Â§ 2106.05(h). Third, because the steps involve general purpose computer operations, the method does not represent a "particular machine," or transform a physical object. See MPEP Â§ 2106.05(b }-( c ). Accordingly, the claimed method does not integrate the abstract idea into a practical application. Alice/Mayo Step Two Revised Step 2B of the Guidance Because claim 1 does not integrate the judicial exception into a practice application, we determine whether the additional elements of the claim individually or in combination, provide an inventive concept. 84 Fed. Reg. at 56. To this end, we determine whether the additional elements (1) add a specific limitation of combination of limitations that is not well- understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply append well- understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. Id. As explained above, the first and second assistant components are the only additional elements beyond the abstract idea. The first and second assistant components, however, are generic computer components that perform generic computer functions, e.g., sending, receiving, and processing 11 Appeal2017-005601 Application 11/554,842 information-functions that are well-understood, routine, and conventional. As the Examiner found, "[ t ]he underlying invention merely mimics the fundamental practice of a normal secretarial transaction ( e.g. secretaries mediating the setup of a phone call on behalf of their respective boss)[.]" Final Act. 2-3. In particular, the first recited step of "receiving, by a first assistant component, an instruction from a first principal to send a tag request including at least one request parameter to a second principal to participate in an activity, wherein at least one of the first and second principals is a human" encompasses any form of making a request for an appointment. See Spec. ,r 28 ("[T]he first principal 120a can elect to generate a quick tag or a careful tag depending on the circumstances and on the nature of the activity. In one embodiment, a quick tag requires the principal 120a to provide minimal request parameters, while a careful tag requires the principal 120a to specify values for each request parameter."); id. ,r 2 7 ("the request parameters can include at least one of an identifier of the second principal 120b, a time frame in which the activity is to be performed, a location of the first principal 120a and/or the second principal 120b for the activity, an urgency indicator, and a tag request expiration time"). The next steps of "determining ... ," "sending ... ," "determining ... ," "sending ... ," "determining ... ," and "notifying ... " 3 are simply the automated functions of a normal secretarial transaction, e.g., in setting up a phone call. These are each well-known, routine, and conventional steps. See Final Act. 3 ("The claims do not include additional elements that are sufficient to amount to significantly more than the judicial 3 The full recitation of each step is reproduced above. 12 Appeal2017-005601 Application 11/554,842 exception because the limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and convention activities previously known to the industry ( e.g. receiving data, sending data, etc.")); see also Ans. 7-8 (same). Accordingly, we conclude that the recited first and second assistant components are well-understood, routine, and conventional generic computing functionality. Thus, claim 1 amounts to "'nothing significantly more' than an instruction to apply the abstract idea ... using some unspecified, generic computer." Alice, 573 U.S. at 225-226 (citing Mayo, 566 U.S. at 7); see also Guidance, 84 Fed. Reg. at 56. We also consider each of Appellants' arguments, but are unpersuaded of Examiner error. First, Appellants argue "the Office has failed to even identify an accepted category of abstract idea." Appeal Br. 21. Appellants explain, "[ m Jore particularly, the Office has failed to identify whether the claims are analogous to fundamental economic practices ( e.g., intermediated settlement), methods of organizing human activities (e.g., steps to hedge risk), 'an idea in itself ( e.g., principle, an original cause, a motive), or a mathematical relationship/formula." Id. We disagree. The Examiner explained that the claims are "considered as an abstract idea in itself as ... [they] can be performed by a human in multiple fields of use such as a secretarial position." Ans. 6 ("the claimed steps can be performed as a human activity"); see Final Act. 2 ("The underlying invention merely mimics a fundamental practice of a normal secretarial transaction .... "). These findings align sufficiently with our 13 Appeal2017-005601 Application 11/554,842 determination that the claims are directed to the methods of organizing human activities category of abstract ideas. Second, we disagree with Appellants' argument (Appeal Br. 21-22) that the Examiner failed to identify where the alleged abstract idea is recited or described in the claims. The Examiner found, "[t]he claims are primarily directed toward two[-]party communication whereby the process of e.g. 'phone tag' is alleviated by respective 'assistant components' determining the availability of their respective party." Final Act. 2. The Examiner explained, "[a] first assistant is tied to the first principal ( e.g. initiator of a call), and a second assistant is tied to the second principal ( e.g. receiver of a call). Each assistant is aware of their respective user's presence/availability in order to setup a communication between said users." Id. We understand the Examiner essentially to identify each recited limitation of the claims. See Ans. 6-8 (same). Third, contrary to Appellants' argument (Appeal Br. 22-23), the Examiner sufficiently established and we agree that organizing human activity by setting up a phone call is long prevalent in our system of commerce. See, e.g., Final Act. 2 ("The underlying invention merely mimics a fundamental practice of a normal secretarial transaction .... "). Fourth, managing personal behavior or relationships or interactions between people is a method of organizing human activity that falls within the scope ofÂ§ 101. See Guidance, 84 Fed. Reg. at 52 (footnote 13 citing numerous decisions). Appellants' arguments to the contrary are, thus, not persuasive. Appeal Br. 23. Fifth, we are not persuaded by Appellants' argument that the elements of the claimed method add "significantly more" than the abstract idea such 14 Appeal2017-005601 Application 11/554,842 that the claim "does not pose a risk of tying up the alleged abstract idea or pre-empting others from using the alleged abstract idea." Appeal Br. 23-24. Appellants quote the method steps of claim 1, contending the claim includes multiple limitations "such as a 'receiving' step, a 'determining' step, another 'determining' step, a 'sending' step, another 'determining' step, and a 'notifying' step that are not well-understood, routine, or convention in the field and confine the abstract idea that is being alleged in claim 1 to a particular useful application." Id. at 24. We addressed each of these limitations above, determining the opposite. See BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine, but rather whether the claim includes additional elements beyond the abstract idea or a combination of elements that is not well-understood, routine, or conventional). Further, "[ w ]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Additionally, Appellants contend that the claims "recite a solution that is 'not merely the routine or conventional use of the Internet."' Appeal Br. 25. The Examiner, however, did not find that the claims recited the use of the Internet. Ans. 7 ("The Examiner would initially note that the claims do not recite the use of the Internet."). Further, we agree with the Examiner that "the limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and convention activities previously known to the industry." Ans. 7. Accordingly, we 15 Appeal2017-005601 Application 11/554,842 determine claim 1 does not provide additional limitations beyond the abstract idea to transform the abstract idea into eligible subject matter. For the reasons discussed above, we determine claim 1 is directed to ineligible subject matter in the form of abstract ideas without significantly more. Additionally, because Appellants argue claims 1--42 as a group (Appeal Br. 13-25; see generally Reply Br. (relying on arguments raised in the Appeal Brief in response to theÂ§ 101 rejection)), claims 2--42 fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Accordingly, we sustain the rejection of claims 1--42 under Â§ 101. Rejections under 35 USCÂ§ 103(a) For each rejection underÂ§ 103(a), the Examiner relies upon Shaffer '698 as teaching the step of "receiving, by a first assistant component, an instruction from a first principal to send a tag request including at least one request parameter to a second principal to participate in an activity, wherein at least one of the first and second principals is a human," as recited in claim 1. See, e.g., Final Act. 7-8 (citing Shaffer '698 ,r,r 16-18, 26, 36, Fig. 1). In particular, the Examiner points to paragraph 36 of Shaffer '698 as teaching the inclusion of at least one request parameter. Id. at 8 ( citing Shaffer '698 ,r 36). The Examiner finds: The first assistant is recognized as the communication platform 50 in fig. 1, par. 0016 which may execute the requisite operations of the presence based eCamp-On feature (see: par. 0026)) including at least one request parameter (par. 003 6, configuring presence data to indicate a proper "call-back" mechanism is recognized as a request parameter, note that the claim does not indicate a certain point in time the request parameter must be sent) to a second principal to participate in an activity, wherein at least one of the first and second principals is a human .... 16 Appeal2017-005601 Application 11/554,842 Id. Appellants contend the Examiner erred because Shaffer '698 does not teach that the tag request includes at least one request parameter. Appeal Br. 26. Appellants assert that the claims require the tag request and request parameter "be sent at the same time." Id.; see Reply Br. 4--5 ("the use of the term 'request parameter' clearly indicates that the parameter(s) are parameter(s) of the request, i.e., the tag request" (emphasis added)). Appellants point to the recitation of "including" in the phrase "a tag request including at least one request parameter," as supporting their argument. Reply Br. 4. Additionally, Appellants point to paragraph 34 of the Specification, which provides, "second assistant component 160b can determine whether the first principal 120a is qualified for each of the request parameters in the tag request." Id. at 5. Appellants contend this example supports their argument that the request parameters are parameters of ( or in, as the example in the Specification states) the tag request. In contrast, Appellants explain that Shaffer '698 's "configuring presence data to indicate a proper 'call-back' mechanism" occurs after a call is initiated in Shaffer '698. Appeal Br. 26. Thus, because Shaffer '698 does not send a request parameter with its tag request, Appellants contend Shaff er '698 fails to teach this limitation. Id. In the Answer, the Examiner reiterates that "the claims are not specific on any aspect of 'time' being used in the request." Ans. 9. The Examiner explains, the claims do not recite any timeframe associated with the sending of the tag request and the request parameter. The claims merely recite that a request is sent and that the request includes a parameter, but they could be sent as separate packets over a 17 Appeal2017-005601 Application 11/554,842 Id. network or they could be sent at separate times. Nothing in the claim specifically requires the request and the parameter to be sent at the same identical time. Each independent claim----claims 1, 14, 27, and 28-recites "a tag request including at least one request parameter." Each claim uses the term "including" to signify that at least one request parameter is included in the tag request, i.e., is part of the tag request. Additionally, if there was doubt regarding the use of "including," we agree with Appellants that "request parameter" indicates that the parameter is linked to the request. In other words, it is a parameter of the tag request itself. We agree with the Examiner, however, that there is no specific time constraint regarding how long it takes for either the first assistant component to receive the tag request including at least one request parameter, the determining step that follows, or the sending step that following the first determining step. In other words, the tag request could be sent over a period of time and as separate packets over a network as the Examiner finds. Ans. 9. Regardless of how long it takes, though, because the tag request includes a parameter, the sending of the parameter is part of the sending of the tag request itself. In the example from Shaffer '698 upon which the Examiner relies (see Shaffer '698 ,r,r 35-36), the tag request is received by a first assistant component, followed by the first determining step, followed by sending the tag request. Thereafter, the first assistant receives a request parameter (presence data) and sends that parameter to the second principal. In other words, the sequence in Shaffer '698 is different than that recited in the claims because the first principal' s presence data is not sent as a parameter 18 Appeal2017-005601 Application 11/554,842 of the tag request. See id. ,r 36 (explaining that the first principal (John) is called away after sending the tag request and then configures his presence data to reflect his current availability). In other words, even though we do not find that the claims require the simultaneous sending of the tag request and request parameter (because they could be sent as multiple data packets, as found by the Examiner), the claims require the request parameter be part of the tag request. For the reasons explained above, Shaffer '698 does not disclose this limitation expressly and the Examiner does not rely upon modifying Shaffer '698 to teach this limitation of the claims. Accordingly, because each independent claim recites the tag request includes at least one request parameter and because the Examiner relies upon Shaffer '698 as teaching this limitation of the claims, we do not sustain the rejections based on Â§ 103. 35 us.c. Â§ 112(!) The Examiner and Appellants disagree as to whether certain claim terms invokeÂ§ 112(Â±). See Final Act. 3---6; Appeal Br. 13. Appellants, however, do not argue that these interpretation questions impact the analysis of any rejection before us. Accordingly, we need not decide these disputes to resolve the rejections on appeal. DECISION We AFFIRM the rejection of claims 1--42 under 35 U.S.C. Â§ 101. We REVERSE the rejections of claims 1--42 under 35 U.S.C. Â§ 103(a). 19 Appeal2017-005601 Application 11/554,842 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 20