Microsoft Technology Licensing, LLCDownload PDFPatent Trials and Appeals BoardAug 27, 20202020002822 (P.T.A.B. Aug. 27, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/637,976 06/29/2017 Sri Ramya MALLIPUDI 402447-US-NP (9038-US) 1065 143198 7590 08/27/2020 MICHAEL BEST & FRIEDRICH LLP (MS) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER WEBB III, JAMES L ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/27/2020 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SRI RAMYA MALLIPUDI, HIROSHI TSUKAHARA, VIGNESH SACHIDANANDAM, NED B. FRIEND and PETER L. ENGRAV Appeal 2020-002822 Application 15/637,976 Technology Center 3600 Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1, 3–5, 7–12, and 14–23, which are all claims pending in the application. Appellant has canceled claims 2, 6, and 13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Microsoft Technology Licensing, LLC as the real party in interest. Appeal Br. 2. Appeal 2020-002822 Application 15/637,976 2 STATEMENT OF THE CASE2 The claims are directed to “electronic calendars, and, more particularly, to electronic calendar services that generate suggested calendar events.” See Spec. ¶ 1. Claim 1, reproduced below, is representative of the subject matter on appeal (italics added to disputed limitations): 1. A system for generating suggested calendar events within an electronic calendar, the system comprising: an electronic processor configured to access a plurality of data records associated with a user, each of the plurality of data records including data associated with one of a plurality of calendar events, generate and output a user interface displaying an electronic calendar of the user, the user interface including a first section, wherein the first section includes a timeline and a representation of at least one of the plurality of calendar events positioned in a chronological order along the timeline, determine a suggested calendar event for the user, generate and output a representation of the suggested calendar event within a second section of the user interface separate from the first section, wherein the representation of the suggested calendar event is aligned chronologically with the timeline of the first section, and in response to the user accepting the suggested calendar event, 2 Our decision relies upon the Final Office Action mailed July 11, 2019 (“Final Act.”), the Appeal Brief filed Oct. 29, 2019 (“Appeal Br.”); the Examiner’s Answer mailed Dec. 31, 2019 (“Ans.”); and the Reply Brief filed Feb. 28, 2020 (“Reply Br.”); and the original Specification, drawings, and claims, filed June 29, 2017 (“Spec.”). Appeal 2020-002822 Application 15/637,976 3 add a data record for the suggested calendar event to the plurality of data records associated with the user, and generate and output an updated version of the electronic calendar of the user within the user interface based on the plurality of data records. (emphasis added). Evidence The Examiner relies upon the following prior art as evidence in support of Rejections B–F: Metsatahti et al. (“Metsatahti”) US 2005/0108253 A1 May 19, 2005 Jain et al. (“Jain”) US 2008/0189159 A1 Aug. 7, 2008 Zhao US 2013/0145282 A1 June 6, 2013 Bernier et al. (“Bernier”) US 2014/0229217 A1 Aug. 14, 2014 Rejections A. Claims 1, 3–5, 7–12, and 14–23 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 6. B. Claims 1, 5, 7, 9, 11, 12, 14, 16–19, and 21–23 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Bernier. Final Act. 9– 14. C. Claim 3 is rejected under 35 U.S.C. § 103 as being obvious over the combination of Bernier and Metsatahti. Final Act. 15–16. D. Claim 4 is rejected under 35 U.S.C. § 103 as being obvious over the combination of Bernier, Metsatahti and Zhao. Final Act. 17. Appeal 2020-002822 Application 15/637,976 4 E. Claims 8, 10, and 15 are rejected under 35 U.S.C. § 103 as being obvious over the combination of Bernier and Zhao. Final Act. 17–18. F. Claim 20 is rejected under 35 U.S.C. § 103 as being obvious over the combination of Bernier and Jain. Final Act. 19–20. Claim Grouping Based on Appellant’s arguments (Appeal Br. 7–13) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of 35 U.S.C. § 102 Rejection B of claims 1, 5, 7, 9, 11, 12, 14, 16–19, and 21–23 on the basis of representative claim 1. We address separately § 112(a), written description Rejection A of claims 1, 3–5, 7–12, and 14–23, and obviousness Rejections C–F of claims 3, 4, 8, 10, 15, and 20, infra. Issues and Analysis In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). 1. 35 U.S.C. § 112(a) Rejection A of Claims 1, 3–5, 7–12, and 14–23. Issue Did the Examiner err in rejecting claims 1, 3–5, 7–12, and 14–23 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement? Appeal 2020-002822 Application 15/637,976 5 Analysis Claim 1 recites in pertinent part: “generate and output a representation of the suggested calendar event within a second section of the user interface separate from the first section, wherein the representation of the suggested calendar event is aligned chronologically with the timeline of the first section.” Appeal Br. 15, Claims App. (emphasis added). The Examiner finds the claim 1 language “‘wherein the representation of the suggested calendar event is aligned chronologically with the timeline of the first section’ . . . does not appear to be supported by the originally filed disclosure” and introduces new matter. Final Act. 7–8 (emphasis added). Appellant disagrees, and contends: Applicant respectfully asserts that at least FIGS. 7 and 10 of the pending application (reproduced below) provides support. FIG. 7 illustrates how a suggested event (205) is displayed chronologically along the same time line as a user’s accepted events (representations l00A, l00B, l00C). FIG. 10 illustrates that, when a user accepts the suggested event, the suggested event is moved down by the user’s accepted events in the same position (i.e., the same chronological position along a timeline (97) of a user’s electronic calendar (95)). In fact, Paragraph [0031] of the pending application provides that the timeline of the electronic calendar may be represented as a horizontal line tracking the passage of time (from earlier times on the left to later times on the right), where each of the user’s accepted events is positioned chronologically along the timeline. Applicant also respectfully points the Examiner’s attention to Paragraph [0021] of the pending application discussing the advantages of the claimed subject matter, including increasing the usability and flexibility of an electronic calendar. In particular, Paragraph [0021] of the pending application provides that “[b]y displaying the suggested calendar events within the user’s electronic calendar [(as illustrated in FIG. 7)], a user can Appeal 2020-002822 Application 15/637,976 6 quickly determine whether the suggested calendar event fits within the user’s schedule ...” If the suggested calendar event was not aligned chronologically with the timeline of the user’s accepted events, a user could not quickly determine whether the suggested calendar event fits within the user’s schedule, and, thus, would decrease usability and flexibility of the electronic calendar. Appeal Br. 7–8. The written description “must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation and quotations omitted). The test is whether the disclosure “conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. “[A]ctual ‘possession’ or reduction to practice outside of the specification is not enough. Rather ... it is the specification itself that must demonstrate possession.” Id. at 1352; see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306-07 (Fed. Cir. 2008) (emphasis added) (explaining that § 112, ¶ 1 “requires that the written description actually or inherently disclose the claim element”). “[I]t is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . Rather, it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added). Here, we find the written description Rejection A of claim 1 appears to be based essentially upon the Examiner’s narrow construction of the claim Appeal 2020-002822 Application 15/637,976 7 term “aligned chronologically” irrespective of the subject matter disclosed by Appellant’s Specification and drawings. However, claims must be given “their broadest reasonable interpretation [(BRI)] consistent with the [S]pecification” and “in light of the [S]pecification as it would be interpreted by one of ordinary skill in the art.” American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Applying BRI here, we conclude the claim 1 limitation (“wherein the representation of the suggested calendar event is aligned chronologically with the timeline of the first section”) broadly covers any property of chronological alignment between the “representation of the suggested calendar event” and “the timeline of the first section.” (emphasis added). Thus, as claimed, the representation of the calendar event is not required to “move in a chronological manner,” nor “move in the same chronological manner,” as the Examiner concludes (Ans. 6), but merely must be aligned chronologically in some manner. Id. (emphasis added). Therefore, we accept Appellant’s claim construction (as argued in the Reply Brief 4) of the claim term “aligned chronologically” as broad but reasonable, i.e., as sharing some property of chronological alignment between “the representation of the suggested calendar event” and “the timeline of the first section.” Claim 1. As Appellant specifically argues: “there is support in the original disclosure that the various sections of the electronic calendar are chronologically aligned (i.e., share a property of chronological alignment).” Reply Br. 4 (emphasis added). For essentially the same reasons argued by Appellant in the Briefs, as discussed above, we find the drawings and supporting descriptions of Appeal 2020-002822 Application 15/637,976 8 Appellant’s electronic calendar (e.g., Figs. 3, 4, 7, 10; Spec., at least ¶¶ 21, 31, 34, 42), sufficiently demonstrate that Appellant had possession of the claimed invention at the time the application was filed. Therefore, we reverse the Examiner’s written description Rejection A under 35 U.S.C. § 112(a) of independent claim 1. We also reverse Rejection A of independent claims 11 and 16, which recite the same disputed “wherein” clause limitation, and for the same reason, we reverse Rejection A of all remaining dependent claims. Accordingly, we reverse the Examiner’s Rejection A of claims 1, 3–5, 7–12, and 14–23 under 35 U.S.C. § 112(a). 3. 35 U.S.C. § 102 Rejection B of Claims 1, 5, 7, 9, 11, 12, 14, 16–19, and 21–23 Issue Under 35 U.S.C. § 102, we address the following argued limitation regarding anticipation Rejection B of claims 1, 5, 7, 9, 11, 12, 14, 16–19, and 21–23: Issue: Did the Examiner err by finding that Bernier’s timelines and calendar events disclose the disputed limitations “generate and output a representation of the suggested calendar event within a second section of the user interface separate from the first section, wherein the representation of the suggested calendar event is aligned chronologically with the timeline of Appeal 2020-002822 Application 15/637,976 9 the first section,” within the meaning of representative claim 1? (emphasis added). 3 Appellant contends: Although the interfaces of FIGS. 24 and 26 of Bernier include a schedule display portion and a suggestion display portion, the interfaces of Bernier do not teach or suggest an alignment between the portions as recited in Claim 1. As recited in Claim 1, the first section includes “a timeline and a representation of at least one of the plurality of calendar events positioned in a chronological order along the timeline,” and the second section includes “a representation of the suggested calendar event” and is “aligned chronologically with the timeline of the first section.” In other words, the first section and the second section are aligned chronologically, such that when the representation of the suggested calendar event is displayed within the second section, the representation of the suggested calendar event is aligned chronologically with the timeline and the representation of at least one of the plurality of calendar events of the first section. Appeal Br. 11. Regarding the Examiner’s citations to Bernier’s Figs. 24 and 26 disclosing the disputed limitation (Final Act. 10), Appellant further argues: Although the interfaces illustrated in FIG. 24 and 26 of Bernier include displaying a schedule of a worker (via the schedule display portion) and a suggested activity (via the suggestion display portion), Bernier makes no mention whatsoever to a chronological alignment of the schedule display portion and the suggestion display portion as recited in Claim 1. In particular, Bernier makes no mention whatsoever to a suggested activity displayed in the suggestion display portion being "aligned chronologically with the timeline" of the worker's schedule, as 3 Claims must be given “their broadest reasonable interpretation consistent with the [S]pecification” and “in light of the [S]pecification as it would be interpreted by one of ordinary skill in the art.” American Academy of Science Tech Center, 367 F.3d at 1364. Appeal 2020-002822 Application 15/637,976 10 recited in Claim 1. In fact, as illustrated in FIGS. 24 and 26 of Bernier, the suggested activities displayed in the suggestion display portion of the interfaces do not include any type of date/time information. Appeal Br. 12. The Examiner disagrees with Appellant, and further explains the basis for the rejection in the Answer. As an issue of claim construction, the Examiner concludes: “The claim requires a second section (suggested calendar event) to be chronologically aligned with a first section (timeline).” Ans. 8 (emphasis added). The Examiner further concludes that the “broadest reasonable interpretation in light of the specification of chronologically aligned is one section (suggested events) being within the time period corresponding to a second section (calendar of events).” Id. (emphasis added). The Examiner finds Bernier’s schedule display portion 2404 and suggestion display portion 2406 disclose the first and second sections of the user interface recited in claim 1, respectively. See Ans. 8 (citing Bernier Fig. 24). Appellant responds in the Reply Brief: Even assuming for the sake of argument that the suggested activities of the Bernier have some type of temporal correlation or relationship with a user's schedule, the Bernier does not illustrate or describe the suggested activities being outputted in such a manner that the representations of the suggested activities are visually aligned chronologically with the user’s schedule. In other words, Bernier makes no mention whatsoever of a visual representation of the temporal correlation or relationship (a chronological alignment as alleged by the Examiner) between the representation of the suggested activities and the user's schedule. Appeal 2020-002822 Application 15/637,976 11 Reply Br. 6. Turning to the evidence, Bernier, at paragraph 249, describes: In some implementations, suggestion display portion 2404 may display information relating to suggestions. For example, suggestion display portion 2404 may display one or more suggestions provided by a suggestion management module the same as or similar to suggestion management module 120. Information relating to suggestions may comprise, for example, types of suggestions displayed, subsets of time periods corresponding to the selected time period of the schedule for which to display suggestions, information relating to one or more suggestions for activities, and/ or other information relating to suggestions. Information relating to one or more suggestions for activities may comprise relevant information associated with the suggestion. For example, the relevant information may include one or more of: a date of the activity, location information associated with the activity (e.g., a specific location at which the activity is to be performed, a map of the location, directions to the location, and/or other location information), one or more rationales for the activity, one or more customers associated with the activity, one or more products associated with the activity, one or more scores (for the overall suggestion, for one or more factors associated with the suggestion, for one or more parameters associated with the factors, and/or other scores) related to the suggestion, performance execution information related to the suggestion, whether a suggestion is a new suggestion, and/or other relevant information. Bernier ¶ 249; Fig. 24. (emphasis added). As noted above, we accept Appellant’s claim construction for the claim term “chronological alignment” in the Reply Brief (4) as broad but reasonable, i.e., as sharing some property of chronological alignment between the representation of the calendar event and the timeline. As argued by Appellant: “there is support in the original disclosure that the various Appeal 2020-002822 Application 15/637,976 12 sections of the electronic calendar are chronologically aligned (i.e., share a property of chronological alignment).” Reply Br. 4 (emphasis added). Given this broader construction, we are not persuaded by Appellant’s arguments because we find Bernier’s daily view of both the doctor’s schedule (“schedule display portion 2404” ¶ 246) as depicted to the right in juxtaposition to the corresponding suggestions for “followup” appointment dates (“suggestion display portion 2406” ¶ 246) disclose the disputed limitation “wherein the representation of the suggested calendar event is aligned chronologically with the timeline of the first section.” Ans. 9, citing Bernier ¶ 249.4 We find chronological alignment by days of the week (Mon.— Fri.) is disclosed in Bernier (Fig. 24) between the daily timeline in the “first” section (right daily schedule section 2404) and the representation of the suggested calendar event (i.e., the “followup” appointment days left section 2406). Moreover, Appellant’s argument in the Reply Brief is dispositive: “Even assuming for the sake of argument that the suggested activities of [] Bernier have some type of temporal correlation” . . . Bernier does not disclose the representations of the suggested activities “are visually aligned chronologically with the user's schedule.” Reply Br. 6 (emphasis added). 4 We note there appears to be a typographical error in the first sentence of Bernier ¶ 249, where 2406 is mistyped as 2404. Appeal 2020-002822 Application 15/637,976 13 However, “visually” aligned is not recited in the claims.5 Appellant’s argument (id.) is not persuasive because it is not commensurate with the scope of the claims. Accordingly, on this record, we are not persuaded the Examiner erred in finding Bernier discloses the disputed limitations as recited in claim 1. Therefore, we affirm Rejection B of claim 1 under 35 U.S.C. § 102(a)(1) as anticipated by Bernier. Appellant did not separately argue independent claims 11 and 16, nor dependent claims 5, 7, 9, 12, 14, 17–19, and 21–23, as also rejected under Rejection B. See Appeal Br. 13. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, these claims fall with independent claim 1. Rejections C, D, E, and F under 35 U.S.C. § 103 Appellant does not separately argue the remaining dependent claims 3, 4, 8, 10, 15, and 20 that were rejected under obviousness rejections C–F. Therefore, we affirm the Examiner’s Rejections C–F of these claims, based upon the doctrine of waiver under our procedural rule. See 37 C.F.R. § 41.37(c)(1)(iv). Conclusions (1) The Examiner erred with respect to Rejection A of claims 1, 3–5, 7–12, and 14–23, under 35 U.S.C. § 112(a) (written description). 5 [L]imitations are not to be read into the claims from the specification” (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Appeal 2020-002822 Application 15/637,976 14 (2) The Examiner did not err with respect to anticipation Rejection B of claims 1, 5, 7, 9, 11, 12, 14, 16–19, and 21–23, under 35 U.S.C. § 102(a)(1) over Bernier. (3) The Examiner did not err with respect to § 103 obviousness Rejections C–F of claims 3, 4, 8, 10, 15, and 20 over the cited combinations of prior art. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis/Referenc es Affirmed Reversed 1, 3–5, 7–12, 14–23 112(a) Written description 1, 3–5, 7– 12, 14–23 1, 5, 7, 9, 11, 12, 14, 16–19, 21–23 102(a) Bernier 1, 5, 7, 9, 11, 12, 14, 16–19, 21–23 3 103 Bernier, Metsatahti 3 4 103 Bernier, Metsatahti, Zhao 4 8, 10, 15 103 Bernier, Zhao 8, 10, 15 20 103 Bernier, Jain 20 Overall Outcome 1, 3–5, 7–12, 14–23 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). Appeal 2020-002822 Application 15/637,976 15 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 Copy with citationCopy as parenthetical citation