Ex Parte Porcari et al

Patent Trial and Appeal Board

Oct 31, 2012

10441924 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/441,924 05/20/2003 Damian O. Porcari 81044598 2634
28395 7590 10/31/2012
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
CLOUD, JOIYA M
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
10/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAMIAN O. PORCARI and DAVID DINSDALE
____________

Appeal 2010-004024
Application 10/441,924
Technology Center 2400
____________

Before DENISE M. POTHIER, BRUCE R. WINSOR,
and DAVID C. MCKONE, Administrative Patent Judges.

MCKONE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9-22, and 24-30, which constitute all the claims pending in this
application. See App. Br. 2.1 Claims 8 and 23 are cancelled. See id. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this opinion, we refer to the March 5, 2009, Final Rejection,
the Appeal Brief filed June 29, 2009, the Examiner’s Answer mailed
September 22, 2009, and the Reply Brief filed November 23, 2009.
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Application 10/441,924

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STATEMENT OF THE CASE
Appellants’ invention relates to software for managing legal
workflow. See, e.g., Spec. 1. Claim 1, which is illustrative of the invention,
reads as follows:
1. A computer system for workflow chaser
management in a distributed legal workflow environment, the
computer system providing central administration of legal
workflow conducted by a plurality of distributed participants
and comprising a computer network including one or more
computers operably programmed and configured to:
(i) generate a plurality of workflow chasers associated
with a plurality of workflow records wherein each workflow
chaser is a reminder of legal workflow actions to be completed,
each workflow chaser including at least a record, action, target
user and display date attribute wherein the action comprises a
legal workflow action to be completed by the target user and
wherein the display date attribute comprises a date on which the
workflow chaser will be displayed;
(ii) compare attributes of the plurality of workflow
chasers to identify at least one redundant workflow chaser;
(iii) remove the at least one redundant workflow chaser;
and
(iv) implement the remaining workflow chasers in the
distributed legal workflow environment wherein the remaining
workflow chasers are implemented by displaying them to their
respective target users on their respective display dates.

THE REJECTION
Claims 1-7, 9-22, and 24-30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Homsi (US Patent No. 7,065,493 B1, published
June 20, 2006, and filed April 6, 2001) in view of Klein (US Patent No.
6,496,853 B1, Dec. 17, 2002). See Ans. 3-6.
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ISSUES
Appellants present arguments for independent claim 1 (see App. Br.
3-6) and contend that independent claim 16 is patentable for the same
reasons (see App. Br. 6). Appellants do not separately argue the rejections
of the dependent claims. See id. Accordingly, we will discuss Appellants’
contentions by reference to claim 1.
Appellants contend that:
1. Neither Homsi nor Klein discloses “wherein the remaining
workflow chasers are implemented by displaying them to their respective
target users on their respective display dates,” as recited in claim 1 (see App.
Br. 3-4); and
2. A person of ordinary skill in the art would not have sought to
combine Homsi and Klein (see App. Br. 5-6).
Accordingly, the issues raised by Appellants’ contentions are as
follows: (1) Did the Examiner err in finding that Homsi and Klein teach or
suggest “wherein the remaining workflow chasers are implemented by
displaying them to their respective target users on their respective display
dates” and (2) Did the Examiner articulate a reason, with rational
underpinning, to combine Homsi and Klein?

ANALYSIS
While not importing its disclosure into claim 1, we turn to the
Specification for an understanding of the disputed step of implementing the
remaining workflow chasers in claim 1. Appellants describe a computer
system for tracking and managing workflow in a legal department. See
Spec., Abstract. The system works, in part, by creating and managing
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“chasers,” which are “automated reminder[s] of legal workflow actions to be
completed.” Spec. 11:23-24. Legal workflow actions can include, for
example, deadlines to respond to office actions from the United States Patent
and Trademark Office. See Spec. 2:22-29. The Specification explains that
multiple inter-related reminders can be created for the same task; for
example, where a deadline is extendible, reminders can be created for each
extension. See id. However, when the task is completed, some of those
reminders become unnecessary. See Spec. 2:29-3:12. The system compares
chasers to each other to identify “redundant” chasers, e.g., duplicate or
unnecessary chasers, and deletes or deactivates the redundant chasers. Spec.
20:33-21:20. The remaining chasers are displayed to the “target users” of
those chasers on the respective due dates. Spec. 21:4-7.
Homsi describes a workflow software application for use with a Lotus
Notes® database. See Homsi, col. 4, ll. 33-39. One feature of Homsi’s
software is a “deadline handler” that sends “reminders” to recipients. See
Ans. 4 (citing Homsi, col. 11, ll. 40-47); see also Homsi, col. 11, ll. 33-39.
Klein discloses a “Message Manager” for managing electronic messages.
See Ans. 4 (citing Klein, col. 3, ll. 39-46). Klein’s Message Manager
identifies messages with redundant content and manages those messages
(e.g., by deleting redundant messages) so that a user does not need to review
redundant content. See Ans. 4 (citing Klein, Abstract, col. 3, ll. 39-46), see
also col. 5, ll. 9-16. The Examiner found that together, these two references
teach claim 1. See Ans. 3-4. Appellants disagree, contending that these
references do not teach “wherein the remaining workflow chasers are
implemented by displaying them to their respective target users on their
respective display dates.” See App. Br. 3.
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The Examiner initially finds that Homsi teaches “implement[ing] the
remaining workflow chasers in the distributed legal workflow environment
wherein the remaining workflow chasers are implemented by displaying
them to their respective target users on their respective display dates.” See
Ans. 4 (citing col. 11, ll. 40-47). The Examiner later states that “Homsi does
not explicitly disclose . . . (iv) implement the remaining chasers in the
distributed legal workflow environment,” and finds that Klein discloses it.
Id. (citing Klein, Abstract, col. 3, ll. 39-46). In the Response to Argument
section, the Examiner states that “Klein is not relied upon to meet this
limitation” (Ans. 6) but then concludes that “the citations of Klein cited by
the Examiner, in the Abstract and col. 3, lines 39-46 clearly teaches the
functionality of identifying redundant content of messages and deleting the
redundant messages with the remaining chasers being interpreted as the non-
deleted messages” (Ans. 7).
Yet, even with these inconsistent statements, the Examiner’s rejection
is sustainable on either ground. That is, Klein and Homsi each teach
“implement[ing] the remaining workflow chasers in the distributed legal
workflow environment wherein the remaining workflow chasers are
implemented by displaying them to their respective target users on their
respective display dates.” We address both alternatives below.
First, the Examiner finds that Homsi discloses “displaying [chasers] to
their respective target users on their respective display dates.” Ans. 6-7
(citing Homsi, Fig. 12). See also Ans. 4 (finding this limitation disclosed at
Homsi, col. 11, ll. 40-47). The Examiner reasons that it is “presumed
possible,” after removal of redundant reminders (as taught by Klein), to
implement the remaining reminders. Ans. 7. We interpret this finding as
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recognizing that an ordinarily skilled artisan would have found the logical
course of action in a workflow software application, like Homsi’s system, to
be the displaying of reminders that have not been removed when those non-
removed reminders become due. We agree with that reasoning. Appellants
have provided no persuasive reason why Homsi’s system, upon removing
redundant reminders as taught by Klein, would cease displaying the
reminders that remain. Accordingly, we find that Homsi teaches, or at least
suggests, “implement[ing] the remaining workflow chasers in the distributed
legal workflow environment wherein the remaining workflow chasers are
implemented by displaying them to their respective target users on their
respective display dates.”
Second, regarding Klein, Appellants argue that “[n]othing in [the
passages in Klein cited by the Examiner] suggests that remaining workflow
chasers are displayed to their respective target users on their respective
display dates” and instead those passages “merely suggest[] that emails
having redundant contents are identified as such” and may “be deleted” or
“managed ‘so that the user need not review the redundant contents.’” App.
Br. 4-5. The Examiner responds that Klein teaches “deleting the redundant
messages with the remaining chasers being interpreted as the non-deleted
messages.” Ans. 7 (citing col. 3, ll. 39-46).
We find that Klein in fact does teach displaying to respective target
users “remaining” emails, i.e., those emails not deleted due to redundancy.
Klein’s Message Manager includes a “Message Receiver” and a “Message
Presenter.” Klein, col. 3, ll. 39-41. The Message Receiver identifies and
manages (e.g., deletes) redundant messages. See Klein, col. 3, ll. 41-46.
The Message Presenter then displays to the user “currently pending
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messages,” i.e., messages that were not deleted. See Klein, col. 3, ll. 64-66;
col. 11, l. 66–col. 12, l. 10. Accordingly, we find that Klein also teaches
“implement[ing] the remaining workflow chasers in the distributed legal
workflow environment wherein the remaining workflow chasers are
implemented by displaying them to their respective target users on their
respective display dates.”
Appellants also disagree with the Examiner’s reasoning that it would
have been obvious to “‘have incorporate[d] Homsi’s teachings to the
teachings of Klein for the purpose [of] preventing the view of redundant
messages by [Homsi’s] users.’” App. Br. 5 (quoting Final Rej. 3) (second
and third brackets in original). Without elaboration, Appellants contend that
the Examiner’s reasoning incorrectly presumes that Homsi’s system has
redundant messages. Id. The Examiner responds that, absent a “specific
mechanism that would prevent redundant messages from occurring,” a
skilled artisan would conclude that redundant reminders could occur in
Homsi’s system. Ans. 7. The Examiner then points to Appellants’
Background Art section discussing redundant electronic messages and
reminders as commonplace (and potentially problematic) in the prior art.
See Ans. 7; Spec. 2:22–3:12.
In reply, Appellants assert, without explanation, that Homsi “appears
to avoid redundancies.” See Reply Br. 2 (citing Homsi, col. 5, ll. 36-39). In
Appellants’ citation, Homsi states that “the forms must meet some basic
requirements that will prevent duplications and resulting conflicts in
design.” Homsi, col. 5, ll. 36-38. Here, Homsi seeks to avoid duplicative
forms, not duplicative messages or reminders. According to Homsi, a user
can create reminders using a form. See Homsi, col. 11, ll. 23-27 (“For
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example, if an application form contains an input field for ‘deadline date’,
users are able to set the deadline type to ‘user defined deadline date’. The
flowbuilder router would then manage the deadline based on the value of the
defined field.”). However, Appellants do not point to any evidence that
Homsi’s forms are commensurate in scope with Homsi’s reminders, or that
the cited passage (Homsi, col. 5, ll. 36-38) addresses duplicative reminders
or redundant workflow chasers as recited.
Moreover, when creating reminders using Homsi’s system, users can
add redundancy: “[u]sers are able to also specify the number of reminders
and the repeat interval.” Homsi, col. 11, ll. 42-43. If these reminders are
ignored, Homsi’s system can additionally send an email message to alert the
user. See Homsi, col. 11, ll. 47-51. Homsi also states that “several forms in
a database are able to trigger the same event, thereby allowing for a
convenient way of sharing workflow cycles.” Homsi, col. 7, ll. 38-40.
Thus, we agree with the Examiner that Homsi teaches the potential for
redundant messages and reminders and suggests a desire to delete reminders
once an action is completed. As such, an ordinarily skilled artisan would
have recognized that a feature of removing redundant reminders as taught by
Klein would have improved Homsi’s system in a similar manner. We are
therefore not persuaded by Appellants’ argument that Homsi teaches
avoiding redundant chasers.
Accordingly, we sustain the rejection of (1) claim 1; (2) claim 16,
which include recitations substantially the same as those of claim 1; (3)
claims 2-7 and 9-15, which depend on claim 1; and (4) claims 17-22 and 24-
30, which depend on claim 16.

Appeal 2010-004024
Application 10/441,924

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ORDER
The decision of the Examiner to reject claims 1-7, 9-22, and 24-30 is
affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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