Ex Parte Johnson et al

Patent Trial and Appeal Board

Oct 18, 2016

12793323 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121793,323 06/03/2010 Todd E. Johnson
46296 7590 10/20/2016
MARTIN & ASSOCIATES, LLC
P.O. BOX548
CARTHAGE, MO 64836-0548
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.
ROC920100038US1 6451
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/20/2016 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):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD E. JOHNSON and JOHN E. PETRI
Appeal 2014-006071 1
Application 12/793,3232
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
June 30, 2013) and Reply Brief ("Reply Br.," filed April 24, 2014), and the
Examiner's Answer ("Ans.," mailed February 24, 2014) and Final Office
Action ("Final Act.," mailed March 5, 2013).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2014-006071
Application 12/793,323
CLAIMED fNVENTION
Appellants' claimed invention "generally relates to workflow systems,
and more specifically relates to automating workflow participation so a
participant's input to the workflow may be automated" (Spec. i-f 2).
Claims 1, 8, and 16 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor; and
a workflow system residing in the memory and executed
by the at least one processor, the workflow system operating on
a workflow that comprises a plurality of tasks assigned to a
plurality of participants, the workflow system reading a history
for a selected participant comprising past performance for the
selected participant as monitored by the workflow system, and
reading a task automation policy that defines criteria for
automated completion of a selected task by the selected
participant, the workflow system determining when the criteria
for automated completion of the selected task is satisfied, and
automatically performing the selected task on behalf of the
selected participant without input from the selected participant at
the time the selected task is automatically performed based on
the history for the selected participant when the criteria for
automated completion of the selected task is satisfied.
REJECTION
Claims 1, 3---6, 8, 10-13, 16, and 18-21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Endo (US 5,974,392, iss. Oct. 26, 1999). 3
3 The Examiner has withdrawn the rejection of claims 2, 7, 9, 14, 15, 17,
and 22 under 35 U.S.C. § 103(a) as unpatentable over Endo. Ans. 3.
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Appeal2014-006071
Application 12/793,323
ANALYSIS
Independent claim 1 and dependent claims 3-6
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Endo does
not disclose or suggest "reading a task automation policy that defines criteria
for automated completion of a selected task by the selected participant" and
"automatically performing the selected task ... without input from the
selected participant ... when the criteria for automated completion of the
selected task is satisfied," as recited in claim 1 (App. Br. 7-13). The
Examiner cites column 5, lines 1-12, column 7, lines 39--67, and column 8,
lines 7-39 as disclosing the argued limitation. But we agree with Appellants
that there is nothing in the cited portions of Endo that discloses or suggests
automatically completing a selected task if the criteria for automated
completion of the task, as defined by a task automation policy, is satisfied,
as called for in claim 1.
Endo is directed to a workflow system in which a manager server unit
of the workflow system divides a work effort into a plurality of tasks and
allocates the tasks to "client units of task execution persons" based on
personal data (stored in a personal data file) regarding each task execution
person, including the person's ability to perform each executable task (Endo,
Abstract). Endo discloses that the system comprises, inter alia, a task
execution person modifying means comprising ( 1) a task execution person
modifying section for replacing a task execution person who is unable to
execute an allocated task with another execution person and (2) a task flow
modifying section for modifying the task flow, e.g., to bypass or avoid a
task, when an abnormality occurs (see id. at col. 5, 11. 1-12; col. 7, 1. 9-
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Application 12/793,323
col. 8, 1. 3) or when there is no adequate task execution person capable of
performing the task (id. at col. 8, 11. 7-39).
The Examiner acknowledges that "Endo fails to explicitly state
'automatically performing the selected task .... "' (Final Act. 4). But the
Examiner concludes that "it would have been obvious that the actions of
rerouting, bypassing, or re-assigning the task for completion constitute
automatically completing the task, at least insofar as presently claimed"
(Final Act. 4--5). In this regard, the Examiner reasons that because "the
criteria for transfer/re-assignment of tasks for completion are executed
automatically by the system and the transfer of the tasks is also performed
by the system, the completion of the task is reasonably considered to have
been automatically performed by the system on behalf of the initial
participant" (Ans. 4--5).
The difficulty with the Examiner's reasoning is that it is inconsistent
with the plain claim language. Claim 1 expressly recites that "the selected
task is automatically peiformed ... when the criteria for automated
completion of the selected task is satisfied" (emphasis added).
Even assuming for the sake of argument that in the Endo system "the
criteria for transfer/re-assignment of tasks for completion are executed
automatically by the system and the transfer of the tasks is also performed
by the system," we fail to see how transferring a task to a second person,
who then manually performs the task, constitutes "automatically"
performing the task, i.e., automated completion of the task, as called for in
claim 1. The reasoning becomes even more difficult to sustain where the
system modifies the work flow to avoid or bypass the selected task. In that
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Application 12/793,323
situation, the task is not performed at all, let alone performed
"automatically."
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1under35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 2-7.
Independent claims 8 and 16 and dependent claims 10-13 and 18-21
Independent claims 8 and 16 include language substantially similar to
the language of claim 1. Therefore, we do not sustain the rejection under
35 U.S.C. § 103(a) of independent claims 8 and 16, and claims 10-13 and
18-21, which depend therefrom, for the same reasons set forth above with
respect to claim 1.
DECISION
The Examiner's rejection of claims 1, 3---6, 8, 10-13, 16, and 18-21
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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