Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
The following NON-FINAL Office Action is in response to communication filed on the Request for Continued Examination filed on 10/29/2025.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
The Examiner has noted the Applicants claiming Priority from Provisional Application 63/348,869 filed 06/03/2022.
Status of Claims
Claims 1, 3-11, 13-14, 21-28 are currently pending.
Claims 1, 9 are currently amended.
Claims 2, 12, 15-20 were previously cancelled.
Claims 1, 3-11, 13-14, 21-28 are currently under examination and have been rejected as follows.
Continued Examination under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/29/2025 has been entered.
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Response to Amendment
The previously pending rejection under 35 USC 101 will be maintained. The 101 rejection is updated in light of the amendments.
The previously pending rejection under 35 USC 103 will be maintained. The 103 rejection is updated in light of the amendments.
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Response to Arguments
Regarding Applicant’s remarks pertaining to 35 USC 101:
Step 2A Prong 1:
Applicant argues on page 8 of remarks 10/29/2025:
“Claim 1 as amended (and similarly claim 9) recites a non-generic process utilizing annotations and templates as a means for syncing docketing systems. The specifically claimed use of annotations which correlate to docketing requirements and input parameters to select templates for cross-checking does not preempt all other techniques for using generic computer components to sync docketing systems. For at least these reasons, the claims in combination contain an inventive concept and are not directed to an abstract idea. Therefore, the claims are patent eligible, and reconsideration and withdrawal of the§ 101 rejection are respectfully requested.”
Examiner respectfully disagrees. The claims as amended describe or set forth organizing and annotating docket items based on requirements, calculating due dates, selecting templates, and cross-checking docket items, which fall within agreements in the form of contracts and legal obligations as they pertain to commercial or legal interactions under the abstract grouping of Certain Methods of Organizing Human Activity (MPEP 2106.04(a)(2) II); and also fall within concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) under the abstract grouping of Mental Processes (MPEP 2106.04(a)(2) III). Accordingly, the claims recite an abstract idea.
Step 2A Prong 2 / 2B:
Applicant argues on page 7 of remarks 10/29/2025:
“…The Office Action alleges that the instant application claims computer functions in a merely generic manner and therefore does not integrate the alleged judicial exception into a practical application. Applicant respectfully disagrees, and submits that the claims are arranged in a non-conventional manner and recite a specific implementation of a technical process for syncing databases. Applicant respectfully submits that the subject matter recited in the instant claims is the kind of technical improvement that the courts have found to be patent eligible, such as in the case of Bascom Global Internet Services, Inc. v. AT&T Corp.
“…Like the patent in Bascom, Applicant's claims in combination are arranged in a non-conventional manner and recite a specific implementation of the alleged abstract idea in the independent claims.”
Examiner respectfully disagrees. The federal appeals court decision to overturn the district court’s decision to dismiss Bascom relied on distinguishing internet filtering from a long-standing fundamental practice. “BASCOM characterized the recent Supreme Court and Federal Circuit decisions invalidating claims under § 101 as focusing on claims that are directed to a longstanding fundamental practice that exists independent of computer technology. BASCOM asserted that its claims are different because filtering Internet content was not longstanding or fundamental at the time of the invention and is not independent of the Internet.” Alternatively stated, the appeals court asserted that the practice of internet filtering was not routine or conventional because of the novelty of the internet at the time of the patent (March 1997).
Applicant specification ¶ [0003] states: “The present disclosure provides a method of leveraging a secondary, external patent docket, as a back-up for priority dates and items in a primary, automated docketing system. In this method, a number of priority dates and items can be identified in the first docket…. These priority items can be taken from a secondary docket maintained by a third party, such as a client or governmental agency. Copies of these items from the secondary docket can be imported into the primary, automated docket. Cross-checking can be done to ensure a fail-safe for priority dates.” The claims as amended describe technical solutions for this method such as “automatically applying a first set of annotations to the docket item downloaded from the governmental database, wherein each annotation from the first set of annotations correlates to one docketing requirement contained in the docket item”. However, this limitation and others fall short providing the technical details as to how the solution is accomplished. Rather than demonstrating an improvement in technology by presenting a technical solution to a technical problem, the claims appear to present a technical solution to an entrepreneurial problem, reciting limitations at a high level of generality without providing significantly more.
Thus, the previously pending rejection under 35 USC 101 will be maintained. The 101 rejection is updated in light of the amendments.
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Regarding Applicant’s remarks pertaining to 35 USC 103:
Applicant argues on page 9 of remarks 10/29/2025:
“Independent claim 1 as amended presently recites the limitations indicated above and
independent claim 9 has been amended to include similar limitations. The Office Action concedes
that Kamarei does not disclose ‘applying a first set of annotations to the docket item indicating
docketing requirements’ and ‘identifying the docketing requirements indicated by the first set of
annotations’ and cites Quinn for allegedly curing this deficiency.
“In Quinn, a client's order form is reviewed to confirm data entry was completed properly.
While the order form in Quinn may include information relating to the filing of a document, Quinn
does not appear to discuss correlating such information with a first set of annotations. Therefore,
Quinn does not teach or suggest a first set of annotations ... wherein each annotation from the first set of annotations correlates to one docketing requirement contained in the docket item. Kamarei does not cure this deficiency of Quinn, and Shek is not relied on for rejecting these limitations of claim 1.”
Examiner respectfully considers Applicants arguments but finds them moot. Examiner points to additional support from previously presented reference Shek (¶ [066-067]) which teaches or suggests automatically applying a first set of annotations to the docket item [..], wherein each annotation from the first set of annotations correlates to one docketing requirement contained in the docket item. Details of this citation and others addressing disclosed art which teaches the other claim limitations as amended are included in the 103 section below.
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Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-11, 13-14, 21-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1, 3-8, 21-24 are directed to a method or process which is a statutory category.
Claims 9-11, 13-14, 25-26 are directed to a system or machine which is a statutory category.
Step 2A Prong One: The claims recite, describe, or set forth concepts performed in the human mind (including an observation, evaluation, judgement, or opinion). Specifically, the claims recite, describe or set forth concepts including: “maintaining the primary docketing system”, “…applying a first set of annotations to the docket item”, “selecting a first template”, “calculating… a primary due date”, “docketing the primary due date with the docket item”, “selecting a second template”, “calculating… a secondary due date”, “identifying input parameters”, “selecting a second template”, and “cross-checking the docket item”. Organizing and annotating docket items based on requirements, calculating due dates, selecting templates, and cross-checking docket items fall within agreements in the form of contracts and legal obligations as they pertain to commercial or legal interactions under the abstract grouping of Certain Methods of Organizing Human Activity (MPEP 2106.04(a)(2) II); and also fall within concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) under the abstract grouping of Mental Processes (MPEP 2106.04(a)(2) III)1.
Examiner also points to MPEP2106.04(a)(2) III C finding that computer aided processes such as: 1. Performing a mental process on a generic computer, 2. Performing a mental process in a computer environment, 3. Using a computer as a tool to perform a mental process can still be considered to recite a mental process.
Accordingly, the claims recite an abstract idea.
Step 2A Prong Two: Independent claims 1, 9 recite the following computer-based additional elements: “docketing system”, “computer”, “template”, “back-up docketing tool”, “computer readable medium”, “memory”, “processor”, “governmental database”, and “docket”. These additional elements merely provide an abstract-idea-based-solution implemented with computer hardware and software components which fail to integrate the abstract idea into a practical application. The capabilities of the additional computer-based elements include maintaining docket items and templates, downloading docket items from a government database, applying annotations correlating to docket requirements and input parameters, selecting templates, calculating due dates, and cross-checking docket items. The additional elements are recited at a high level of generality (i.e. as a generic computer performing functions of collecting, organizing, comparing, modifying, and storing data, etc.) such that they amount to no more than mere instructions to apply the exception using generic computer components. These capabilities can be viewed as not meaningfully different than a business method or algorithm being applied on a general-purpose computer as tested per MPEP 2106.05(f)(2)(i).
Step 2B: The courts have recognized the following computer functions analogous to the instant application as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP 2106.05(d) II):
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012);
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
According to MPEP 2106.05(f)(1), considering whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite the technological details of how the actual technological solution to the actual technological problem is accomplished. The recitation of claim limitations that attempt to cover an entrepreneurial and thus abstract solution to an entrepreneurial problem with no technological details on how the technological result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application (Step 2A Prong Two), and for the same reasons also do not provide significantly more (Step 2B) because this type of recitation is equivalent to the words "apply it". Therefore, when reading the above claimed additional computer-based elements in light of the original specification, the Examiner finds that they merely apply said abstract idea. Thus, these additional limitations, considered individually and in combination, amount to mere instructions to implement an abstract idea on a general-purpose computer or use the computer as a tool to perform the above identified abstract idea and therefore do not integrate the judicial exception into a practical application without imposing meaningful limits on practicing the abstract idea.
Dependent claims 3-8, 10-11, 13-14, 21-28 do not appear to provide any new additional computer-based elements outside the independent claims, let alone for such additional computer-based elements to integrate the abstract idea into practical application (Step 2A prong two) or providing significantly more (Step 2B).
Further, dependent claims 3-8, 10-11, 13-14, 21-28 merely incorporate the additional elements recited in claims 1, 9 along with further narrowing of the abstract idea of claims 1, 9 along with their execution of the abstract idea. The functions of the additional computer-based elements are narrowed to capabilities such as downloading, calculating, docketing, comparing, cross-checking, identifying, rectifying, selecting, copying, collecting, receiving, creating, and generating various forms of data such as docket items, base dates, due dates, communications, deadlines, documents, filings, portfolios, errors, requirements, annotations, etc. which, when evaluated per MPEP 2106.05(f)(2) represent mere invocation of computers to perform an existing process. Therefore, the additional elements recited in the claimed invention individually and in combination fail to integrate a judicial exception into a practical application (Step 2A prong two) and for the same reasons they also fail to provide significantly more (Step 2B). Thus, Claims 1, 3-11, 13-14, 21-28 are reasoned to be patent ineligible.
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Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-11, 13-14, 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over:
Kamarei et al. US 6859806 B1 hereinafter Kamarei in view of
Shek WO 2019197924 A1 hereinafter Shek, and in further view of
Quinn, Jr. US 20120036077 A1 hereinafter Quinn. As per,
Claim 1: Kamarei teaches “A method of creating a back-up docket in a primary docketing system, the method comprising:
“maintaining the primary docketing system containing a plurality of docket items and a plurality of templates” (Kamarei col. 4 line 64: FIG. 2 shows a preferred embodiment of the invention having automated docketing and filing modules for interactions between the host server system, a governmental system, and a third-party authorized system. Col. 5 line 6: FIG. 5 shows a flow chart of the preferred embodiment of automated docketing for a client system through interfacing with a governmental entity. Col. 9 line 3: As shown in FIG. 6 in a preferred embodiment, upon registration of the Client System, the Host Server System provides the Client System with a default Client Rules Subset 42 [template]. Each default Client Rules Subset preferably has Pattern Data 44 relating to a particular legal field, such as patent prosecution, trademark prosecution or litigation, an Action Prompt 30 [docket item] associated with the Pattern Data and a Time Calculus 46. [Also see Kamarei claim 15 describing pattern data fields consistent with templates]);
“automatically downloading a docket item from a governmental database, the docket item including a base date” (Kamarei col. 10 line 24: As shown in FIG. 5 in one embodiment, a Docket Request Message 28 is forwarded from the Governmental System 24 to the Host Server System 10. The Docket request Message comprises of a Governmental System Identifier 34, Pattern Data 44 and Pattern Data Date for a legal case identified by a case number. Line 37: The Gateway Server 14 then identifies the Pattern Data and the Pattern Data Date [base date] in the Docket Request Message 28 forwarded by the Governmental System. Line 64: Optionally, the Governmental System appends an electronic document, in ASCII, Word Perfect, MSWord, GIF, JPG, PDF, or any other type of format to the Docket Request Message. [Also see Fig. 5 and related text]);
[..]
“selecting a first template [..]” (Kamarei col. 8 line 34: Each Client Rules Subset [template] is modifiable by the Client System and therefore customizable to the requirements of that Client System. Optionally, each user or Subordinated user of the Client System 12 can define [select] Client Rules Subset 42 to fit their unique requirements);
“calculating, using a first template, a primary due date associated with the docket item” (Kamarei Col. 8 line 45: As shown in FIG. 3 the Client Rules Subset [template] contains one or more Pattern Data 44, each associated with an Action Prompt 30 and Time Calculus 46. Col. 8 line 66: A Time Calculus 46 comprises of any one or combination of the following; a formula for computing a date forward from a Pattern Data, a formula for calculating a date backwards from a Pattern Data);
“docketing the primary due date with the docket item in the primary docketing system” (Kamarei col. 10 line 3: …the Host Server System saves the Action Prompt and the Action Prompt Due Date in the Case Listing Database 20 for future retrieval by the Client System);
“in response to the docketing of the primary due date with the docket item, [..] applying a second set of annotations to the docket item downloaded from the governmental database, wherein each annotation from the second set of annotations correlates to one input parameter contained in the docket item” (Kamarei col. 12 line 10: If the second Client System is registered with the Host Server System, preferably by authorization of the client, the administrator of the Host Server System, edits [annotates] the legal case data for the transferred case to indicate that the Second Client System 12, with a new attorney, a new address, a new email address, or any other new data [input parameters], has been designated in charge of the legal case in the Host Server System's database, and Stores the Specific legal case under the Second Client System cases in the Case Listing Database 20. [Also see Kamarei Col. 10 lines 24-67 regarding download from government database]);
“selecting a second template [..]” (Kamarei col. 12 line 27: If the second Client System is not registered with the Host Server System, preferably they register with the Host Server System and Specify their preferences for Action Prompts, Action Prompt Due Dates, Time Calculus 46, and Action Prompt Delivery Type 48 in the Client Rules Subset [template]);
“calculating, using the second template, a secondary due date associated with the docket item” (Kamarei col. 12 line 8: …the legal case is transferred from the first Client System to a second Client System by instructions of the client. Line 20: …the second Client System 12 receives Action Prompts 30 and Action Prompt Due Dates, using Action Prompt Delivery Types 48 specified by the Second Client System. In this manner, legal docketing has been accomplished according to the reminder Schedules and terminology of the Second Client System without manual entry of substantially identical [duplicative] data and without delay. If the second Client System is not registered with the Host Server System, preferably they register with the Host Server System and Specify their preferences for Action Prompts, Action Prompt Due Dates, Time Calculus 46, and Action Prompt Delivery Type 48 in the Client Rules Subset. Once the second Client System is registered, the administrator of the Host Server System transfers the legal case to the second Client System as specified above);
“[..].”
Although Kamarei teaches retrieving docket items from a government system, calculating due dates, and transferring docketing items to a second system with a second set of annotations, Kamarei does not specifically teach automatically applying annotations correlating to docketing requirements and input parameter and selecting templates based on annotations, nor comparing and cross-checking docketing items.
* However *
Shek in analogous art of automated docketing systems teaches or suggests:
“automatically applying a first set of annotations to the docket item [..], wherein each annotation from the first set of annotations correlates to one docketing requirement contained in the docket item” (Shek ¶ [066]: Block 805 depicts the determination of the document type. A document type is the type of incoming correspondence. An example of this is a United States Patent and Trademark Office notice of allowance and fee(s) due. Another example of this is the United States Patent and Trademark Office information notice to applicant. The document type acts as a template in determining the relevant fields that are required to be docketed, and hence converted to machine readable data [EN: first annotated] as depicted in Block 810. An embodiment of block 810 is to take a scanned document, and then use optical recognition to pull the necessary data from the document and put it into a JSON file. ¶ [067]: The machine-readable data [EN: first annotated] is then parsed in block 815 to transform the data into the previously defined incoming correspondence data [EN: second annotated]. An example of parsing the data in block 815 is removing any symbols from the text, redefining the dates to a certain standard [EN: input parameter] (e.g. changing the text of a date from DD/MM/YY to MM/DD/YY), or removing unnecessary or excess data. Parsing the data is done to normalize the data and bring the data into the same format that the client server database 305 uses…. The loop then repeats itself until there are no further actions to perform);
“[selecting a first template] based on the first set of annotations” (Shek ¶ [066]: Block 805 depicts the determination [EN: selection] of the document type. A document type is the type of incoming correspondence…. The document type acts as a template in determining the relevant fields that are required to be docketed, and hence converted to machine readable data [EN: first annotated] as depicted in Block 810. An embodiment of block 810 is to take a scanned document, and then use optical recognition to pull the necessary data from the document and put it into a JSON file)
“[..] automatically applying a second set of annotations to the docket item [..] correlate[d] to one input parameter [..]” (Shek ¶ [067]: The machine-readable data [EN: first annotated] is then parsed in block 815 to transform the data into the previously defined incoming correspondence data [EN: second annotated]. An example of parsing the data in block 815 is removing any symbols from the text, redefining the dates to a certain standard [EN: input parameters] (e.g. changing the text of a date from DD/MM/YY to MM/DD/YY), or removing unnecessary or excess data. Parsing the data is done to normalize the data and bring the data into the same format that the client server database 305 uses…. The loop then repeats itself until there are no further actions to perform);
“[selecting a second template] based on the second set of annotations” (Shek end-¶ [067]: The loop then repeats itself until there are no further actions to perform. [Also see Shek ¶ [066-067]).
Shek and Kamarei are found as analogous art of automated docketing systems. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Kamarei’s legal docketing system in combination to have included Shek’s teachings regarding automatically applying annotations correlating to docketing requirements and input parameter and selecting templates based on annotations. The benefit of these additional features would have helped further streamline and automate docketing tasks by overcoming data entry obstacles (Shek ¶ [002]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Kamarei in view of Shek (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of endeavor of automated docketing systems. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Kamarei in view of Shek above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
* Furthermore *
Quinn in analogous art of automated docketing systems teaches or suggests:
“cross-checking the docket item” (Quinn ¶ [0048]: When the drafting law firm 16 receives the documents checklist, it is asked to double-check the priority information listed on the document checklist against their own data in law firm database 56 at step 120. This priority information can include the priority filing dates, priority countries and the priority application numbers. The filing manager 12 also calculates and prominently displays a filing deadline date on the document checklist. As set forth above, this filing deadline date is calculated by the database of the filing manager 12 dependent upon the priority information, the country where applications are to be filed and the types of filings requested. [Also see Fig. 4A and related text]);
Quinn, Shek and Kamarei are found as analogous art of automated docketing systems. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Kamarei / Shek’s legal docketing system to have included Quinn’s teachings around cross-checking docketing items. The benefit of these additional features would have aided in managing costs while maintaining quality for legal document filings at corporate firms (Quinn ¶ [0005]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Kamarei in view of Shek and Quinn (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of endeavor of automated docketing systems. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Kamarei in view of Shek and Quinn above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
Claim 9: Kamarei teaches “A system for creating a back-up docket in a primary docketing system the system comprising:
“the primary docketing system configured to docket and maintain a patent portfolio containing a plurality of docket items; maintain a plurality of templates” (Kamarei col. 4 line 64: FIG. 2 shows a preferred embodiment of the invention having automated docketing and filing modules for interactions between the host server system, a governmental system, and a third-party authorized system. Col. 5 line 6: FIG. 5 shows a flow chart of the preferred embodiment of automated docketing for a client System through interfacing with a governmental entity),
“automatically download a docket item from a governmental database, the docket item containing a base date” (Kamarei col. 10 line 24: As shown in FIG. 5 in one embodiment, a Docket Request Message 28 is forwarded from the Governmental System 24 to the Host Server System 10. The Docket request Message comprises of a Governmental System Identifier 34, Pattern Data 44 and Pattern Data Date for a legal case identified by a case number. Line 37: The Gateway Server 14 then identifies the Pattern Data and the Pattern Data Date [base date] in the Docket Request Message 28 forwarded by the Governmental System. Line 64: Optionally, the Governmental System appends an electronic document, in ASCII, Word Perfect, MSWord, GIF, JPG, PDF, or any other type of format to the Docket Request Message. [Also see Fig. 5 and related text]);
[..]
“select a first template from the primary docketing system [..], the first template configured to calculate a primary due date based on the base date” (Kamarei col. 8 line 34: Each Client Rules Subset [template] is modifiable by the Client System and therefore customizable to the requirements of that Client System. Optionally, each user or Subordinated user of the Client System 12 can define [select] Client Rules Subset 42 to fit their unique requirements. Col. 8 line 45: As shown in FIG. 3 the Client Rules Subset contains one or more Pattern Data 44, each associated with an Action Prompt 30 and Time Calculus 46. Kamarei col. 8 line 66: A Time Calculus 46 comprises of any one or combination of the following; a formula for computing a date forward from a Pattern Data, a formula for calculating a date backwards from a Pattern Data. Col. 14 line 31: The method of claim 1 wherein the time calculus comprises of any one or combination of the following; a formula for computing a date forward from a base date, a formula for calculating a date backwards from a base date. [Also see Fig. 7: “This action is triggered from the following date:” and selectable option “Other/Base or Mail Date”; and related text]); “and
“docket the primary due date with the docket item in the primary docketing system;
“a second docketing system separate from the first docketing system, the second docketing system configured to:
“maintain a plurality of docket items and a plurality of templates” (Kamarei col. 4 line 64: FIG. 2 shows a preferred embodiment of the invention having automated docketing and filing modules for interactions between the host server system, a governmental system, and a third-party authorized system. Col. 5 line 6: FIG. 5 shows a flow chart of the preferred embodiment of automated docketing for a client system through interfacing with a governmental entity);
“in response to the docketing of the primary due date with the docket item, [..] apply a second set of annotations to the docket item downloaded from the governmental database, wherein each annotation from the second set of annotations correlates to one input parameter contained in the docket item” (Kamarei col. 12 line 10: If the second Client System is registered with the Host Server System, preferably by authorization of the client, the administrator of the Host Server System, edits [annotates] the legal case data for the transferred case to indicate that the Second Client System 12, with a new attorney, a new address, a new email address, or any other new data [input parameters], has been designated in charge of the legal case in the Host Server System's database, and Stores the Specific legal case under the Second Client System cases in the Case Listing Database 20 [Also see Kamarei Col. 10 lines 24-67]);
“select a second template from the second docketing system [..]” (Kamarei col. 12 line 27: If the second Client System is not registered with the Host Server System, preferably they register with the Host Server System and Specify their preferences for Action Prompts, Action Prompt Due Dates, Time Calculus 46, and Action Prompt Delivery Type 48 in the Client Rules Subset [template]) (Shek end-¶ [067]: The loop then repeats itself until there are no further actions to perform. [Also see Shek ¶ [066-067]); “and
“calculate, using the second template a secondary due date based on a base date” (Kamarei col. 12 line 8: …the legal case is transferred from the first Client System to a second Client System by instructions of the client. Line 20: …the second Client System 12 receives Action Prompts 30 and Action Prompt Due Dates, using Action Prompt Delivery Types 48 specified by the Second Client System. In this manner, legal docketing has been accomplished according to the reminder Schedules and terminology of the Second Client System without manual entry of substantially identical [duplicative] data and without delay. If the second Client System is not registered with the Host Server System, preferably they register with the Host Server System and Specify their preferences for Action Prompts, Action Prompt Due Dates, Time Calculus 46, and Action Prompt Delivery Type 48 in the Client Rules Subset. Once the second Client System is registered, the administrator of the Host Server System transfers the legal case to the second Client System as specified above);
“[..].”
Although Kamarei teaches a patent portfolio docketing system which calculates due dates, selecting priority items to copy, and transferring docketing items to a second system with a second set of annotations, Kamarei does not specifically teach automatically applying annotations correlating to docketing requirements and input parameter and selecting templates based on annotations, nor comparing and cross-checking docketing items.
* However *
Shek in analogous art of automated docketing systems teaches or suggests:
“automatically apply a first set of annotations to the docket item [..], wherein each annotation from the first set of annotations correlates to one docketing requirement contained in the docket item” (Shek ¶ [066]: Block 805 depicts the determination of the document type. A document type is the type of incoming correspondence. An example of this is a United States Patent and Trademark Office notice of allowance and fee(s) due. Another example of this is the United States Patent and Trademark Office information notice to applicant. The document type acts as a template in determining the relevant fields that are required to be docketed, and hence converted to machine readable data [EN: first annotated] as depicted in Block 810. An embodiment of block 810 is to take a scanned document, and then use optical recognition to pull the necessary data from the document and put it into a JSON file. ¶ [067]: The machine-readable data [EN: first annotated] is then parsed in block 815 to transform the data into the previously defined incoming correspondence data [EN: second annotated]. An example of parsing the data in block 815 is removing any symbols from the text, redefining the dates to a certain standard [EN: input parameter] (e.g. changing the text of a date from DD/MM/YY to MM/DD/YY), or removing unnecessary or excess data. Parsing the data is done to normalize the data and bring the data into the same format that the client server database 305 uses…. The loop then repeats itself until there are no further actions to perform);
“[select a first template from the primary docketing system] based on the first set of annotations [..]” (Shek ¶ [066]: Block 805 depicts the determination [EN: selection] of the document type. A document type is the type of incoming correspondence…. The document type acts as a template in determining the relevant fields that are required to be docketed, and hence converted to machine readable data [EN: first annotated] as depicted in Block 810. An embodiment of block 810 is to take a scanned document, and then use optical recognition to pull the necessary data from the document and put it into a JSON file);
“[..] automatically apply a second set of annotations to the docket item [..] correlate[d] to one input parameter [..]” (Shek ¶ [067]: The machine-readable data [EN: first annotated] is then parsed in block 815 to transform the data into the previously defined incoming correspondence data [EN: second annotated]. An example of parsing the data in block 815 is removing any symbols from the text, redefining the dates to a certain standard [EN: input parameter] (e.g. changing the text of a date from DD/MM/YY to MM/DD/YY), or removing unnecessary or excess data. Parsing the data is done to normalize the data and bring the data into the same format that the client server database 305 uses…. The loop then repeats itself until there are no further actions to perform);
“[select a second template from the second docketing system] based on the second set of annotations” (Shek end-¶ [067]: The loop then repeats itself until there are no further actions to perform. [Also see Shek ¶ [066-067]).
Shek and Kamarei are found as analogous art of automated docketing systems. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Kamarei’s legal docketing system in combination to have included Shek’s teachings regarding automatically applying annotations correlating to docketing requirements and input parameter and selecting templates based on annotations. The benefit of these additional features would have helped further streamline and automate docketing tasks by overcoming data entry obstacles (Shek ¶ [002]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Kamarei in view of Shek (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of endeavor of automated docketing systems. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Kamarei in view of Shek above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
* Furthermore *
Quinn in analogous art of automated docketing systems teaches or suggests:
“a back-up docketing tool actuatable for executing a cross-check function” (Quinn ¶ [0048]: When the drafting law firm 16 receives the documents checklist, it is asked to double-check the priority information listed on the document checklist against their own data in law firm database 56 at step 120. This priority information can include the priority filing dates, priority countries and the priority application numbers. The filing manager 12 also calculates and prominently displays a filing deadline date on the document checklist. As set forth above, this filing deadline date is calculated by the database of the filing manager 12 dependent upon the priority information, the country where applications are to be filed and the types of filings requested. [Also see Fig. 4A and related text]).
Quinn, Shek and Kamarei are found as analogous art of automated docketing systems. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Kamarei / Shek’s legal docketing system to have included Quinn’s teachings around cross-checking docketing items. The benefit of these additional features would have aided in managing costs while maintaining quality for legal document filings at corporate firms (Quinn ¶ [0005]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Kamarei in view of Shek and Quinn (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of endeavor of automated docketing systems. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Kamarei in view of Shek and Quinn above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
Claim 3: Kamarei / Shek / Quinn teaches all of the limitations in claim 1 above.
Kamarei further teaches “further comprising providing the first template, wherein providing the first template comprises obtaining the first template from an internal system” (Kamarei col. 9 line 3: As shown in FIG. 6 in a preferred embodiment, upon registration of the Client System, the Host Server System provides the Client System with a default Client Rules Subset 42 [template]. Each default Client Rules Subset preferably has Pattern Data 44 relating to a particular legal field, such as patent prosecution, trademark prosecution or litigation, an Action Prompt 30 associated with the Pattern Data and a Time Calculus 46. Thereafter, as shown in FIG. 7 the Client System [internal system] optionally modifies any one or combination of the Pattern Data, Action Prompt, or the Time Calculus).
Claim 4: Kamarei / Shek / Quinn teaches all of the limitations in claim 1 above.
Kamarei further teaches “further comprising providing the second template, wherein providing the second template comprises obtaining the second template from an external system maintained by a third party” (Kamarei col. 9 line 10: Thereafter, as shown in FIG. 7 the Client System optionally modifies any one or combination of the Pattern Data, Action Prompt, or the Time Calculus. The Pattern Data, Action Prompt, or the Time Calculus is optionally modifiable by a third-party authorized by the Client System).
Claim 5: Kamarei / Shek / Quinn teaches all of the limitations in claim 4 above.
Kamarei further teaches “wherein the third party comprise a governmental agency, a foreign associate, an outside firm, or a client company” (Kamarei col. 6 line 30: In an embodiment third-parties such as Third-party Authorized Systems 26 or Governmental Systems 24 register unique Identifiers 34 with the Host Server System. Thereafter, whenever the Third-party Authorized System or Governmental System wishes to communicate with the Host Server System, an Identifier is presented to the Host Server System for identification purposes).
Claim 6: Kamarei / Quinn / Shek teaches all of the limitations in claim 1 above.
Kamarei further teaches “further comprising docketing the secondary due date in a second docketing system” (Kamarei col. 12 line 23: legal docketing has been accomplished according to the reminder Schedules and terminology of the Second Client System without manual entry of Substantially identical data and without delay).
Claim 7: Kamarei / Shek / Quinn teaches all of the limitations in claim 1 above.
Kamarei further teaches “wherein the docket item comprises one or more of communications, deadlines, documents, or combinations thereof” (Kamarei col. 4 line 28: The host server system receives a docket request message from the client system, identifies the client system using a client system identifier, identifies the customizable client rules subset for the client system, using the pattern data contained in the docket request message selects an action prompt from the customizable client rules subset, computes an action prompt due date for each of the action prompts using the pattern data date and time calculus, and records the client system defined action prompt and computed action prompt due date for the legal case selected by the client system [Also see Fig. 6 and related text]).
Claim 8: Kamarei / Shek / Quinn teaches all of the limitations in claim 1 above.
Kamarei further teaches “The method of claim 1, wherein the docket item comprises a priority date in a patent portfolio, wherein the priority date comprises a deadline for a continuation filing, a divisional filing, a conversion filing, a non-provisional filing, a PCT filing, a national stage filing, or combinations thereof” (Kamarei col. 8 line 52: Pattern Data 44 comprises of any one or combination of the following; … a priority date field. [Also see Fig. 7 and related text, and Fig. 8 “Foreign Filing Date” and related text]).
Claim 10: Kamarei / Shek / Quinn teaches all of the limitations in claim 9 above.
Kamarei further teaches “The system of claim 9, wherein the primary docketing system and the second docketing system are maintained by different parties” (Kamarei col. 12 line 12: …the administrator of the Host Server System, edits the legal case data for the transferred case to indicate that the Second Client System 12, with a new attorney, a new address, a new email address, or any other new data, has been designated in charge of the legal case in the Host Server System's database, and Stores the Specific legal case under the Second Client System cases in the Case Listing Database 20).
Claim 11: Kamarei / Shek / Quinn teaches all of the limitat