DETAILED ACTION
Status of the Claims
The following is a Final Office Action in response to amendments and remarks filed 07 April 2026.
Claims 1 and 14 have been amended.
Claims 1-20 are pending and have been examined.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicants argue that the 35 U.S.C. 101 rejection under the Alice Corp. vs. CLS Bank Int’l be withdrawn; however the Examiner respectfully disagrees. In response to Applicants’ arguments (again) that the claims inventive concept are an improvement (Desjardins and DDR Holdings); the Examiner respectfully disagrees. Contrary to Applicant’s assertions, the specification lacks any disclosure of evidence to demonstrate that the invention is seeking to improve upon the existing technology or, more specifically, that the claimed invention is directed towards addressing and improving upon an issue that arose from the technology, but merely demonstrating that the claimed invention is directed towards the abstract idea and merely applying or utilizing generic computing devices performing their generic functions to carry out the well-understood, routine, and conventional activities in the technical field of business process/workflow/task management via reminders due to the benefits that computing devices provided, i.e. faster, more efficient, and etc. The courts further stated "The Supreme Court has not established a definitive rule to determine what constitutes an "abstract idea" sufficient to satisfy the first step of the Mayo/Alice inquiry. See id. at 2357. Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases. "[The Court] need not labor to delimit the precise contours of the 'abstract ideas' category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here." Alice, 134 S. Ct. at 2357; see also OIP Techs., 788 F.3d at 1362. For instance, fundamental economic and conventional business practices are often found to be abstract ideas, even if performed on a computer. See, e.g., OIP Techs., 788 F.3d at 1362-63."The claims, considered individually or as a whole, do not amount to significantly more than the abstract idea(s) as the claimed structures and components are all only used generically to apply the abstract idea(s). At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea. As such, the arguments are not persuasive, and the rejection not withdrawn.
The Examiner also notes this argument appears to be whether or not the use of computer or computing components for increased speed and efficiency makes the claims eligible; however the Examiner respectfully disagrees. Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)). The claim(s) is/are not patent eligible and the rejection not withdrawn.
Applicant’s arguments with respect to the prior art have been fully considered but are not persuasive for a plurality of reasons. Firstly, and again, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Secondly, and again, Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Next, and again, Applicant’s remarks are merely conclusory, and an over generalization of the cited references, only mentioning one (1) cited portion of Beaven. As such, these arguments are not persuasive, and the rejection not overcome.
Applicant argues that Beavan does not teach the newly amended claims; however the Examiner respectfully disagrees. Firstly, one of ordinary skill in the art would interpret the cost (as previously cited) “All Goals View: when this button is clicked, the user is presented with screen (see FIG. 16) which repeats the hierarchy on the left and adds relevant information on the right in five categories useful to users when the users want to assess the validity of the current goal hierarchy, including cost, payback priority, domain, and due date (expressed as time remaining before expected completion). From this screen, the user can select other views where the hierarchy is sorted by category represented by the column heading, e.g., is sorted in descending order of costs, screen (see FIG. 17), thereby helping people decide whether the level of investment required can be afforded. Likewise, using column headings as buttons, the user can sort the hierarchy into various views according to payback (see FIG. 19), priority (see FIG. 19), domain (see FIG. 16), or due date. These views facilitate meetings and deliberations where users need to quickly produce a variety of sorted views to achieve the variety of perspectives needed to reach informed decisions. For example, a view sorted by payback, with cost information also visible, helps users decide whether the return on investment will be sufficient to justify financially. Sorting by priority allows users to view the relative weightings that have been given to the goals and initiatives based on factors deemed important from a prioritization perspective. In a typical case, from a strategic perspective, the view sort by domain is highly desirable because this view shows how the goals and initiatives affect different aspects of the organization, e.g., from dealing with customers, to processes, organization, and economics. As a result, users can make common sense decisions about, for example, whether all the needed changes in all the domains have been accounted for (Beaven ¶131)” as clearly including expenses incurred for extending deadlines (i.e. all costs or the ability to put deadlines/penalties in order). Secondly, Applicant is arguing much more narrowly than actually claimed, and actually contrary to the claim language. The claims specifically require a selection of the priority parameter from the user, and only after the selection is received does the automated prioritization occur. Secondly, even assuming arguendo, Beavan does discuss how “Finally, the model could include hierarchies of domains and a goal or a project could be assigned to a single domain. The graphical user interface for the system permitted display of goals and projects in terms of the hierarchies they were members of, in terms of the domains they belonged to, and in terms of scheduling, priority, and cost. Once a particular goal or project had been selected in the GUI, the information related to the goal or project could be displayed in the GUI and modified (Beaven ¶4)” and as noted above in Beavan ¶131 which clearly discusses how the model is able to provide the alerts/reminders automatically based upon the received user input for priority etc. Still further, under the broadest reasonable interpretation, simply applying one or more filter input and receiving a list based upon the filter criteria would read upon the claims. As such, these arguments are not persuasive, and the rejection not overcome.
In response to arguments in reference to any depending claims that have not been individually addressed, all rejections made towards these dependent claims are maintained due to a lack of reply by the Applicants in regards to distinctly and specifically pointing out the supposed errors in the Examiner's prior office action (37 CFR 1.111). The Examiner asserts that the Applicants only argue that the dependent claims should be allowable because the independent claims are unobvious and patentable over the prior art.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite the newly amended limitations “wherein prioritizing comprises automatically adjusting a rank order of the one or more task reminders based on whether the next deadline is extendable and the expense incurred for extending the deadline” however there is no discussion, throughout the entirety of the specification and drawings, how the any list is determined, let alone a rank ordered list that is automatically determined based upon the next deadline being extendable and the expense incurred for extending the deadline. Paragraph [0058]-[0060] states “However, a large number of various parameters may be used when calculating the priority of deadlines. In some instances, the case A's first, non-extended deadline, may fall in the same time frame as another deadline for case B. In this instance, the case B may be higher priority than case A. For this reason, the dynamic reminder tool 350 may analyze the warring deadlines and prioritize the other deadline in case B, indicating that the user could or should let the first deadline in case A lapse and take the second, extended deadline in case A, incurring the associated extension cost. The dynamic reminder tool 350 takes into account a variety of parameters and priorities when analyzing and making these suggestions. For example, individual preference, the cost of extending, client priority, drop-dead deadlines, high priority tasks, and other factors may be used to synthesize a list of docket reminders, prioritizing some tasks or deadlines over others. This cost-benefit analysis may be wholistic, or may be focused on one or two parameters, such as cost of fees. The dynamic reminder tool 350 may be used to dynamically alter such a list of reminders. For example, if the case B above is higher priority, the dynamic reminder tool 350 may place tasks for case B higher in the reminder list than those for case A. However, if the user updates the parameters on which the dynamic reminder tool 350 calculates the reminder list, to emphasize cost savings above other priorities, the dynamic reminder tool 350 may raise the first deadline of case A higher to avoid incurring extension costs.” While some sort of priority is able to be determined (i.e. case A prioritized over case B), there is no further mention or discussion as to how a ranked list is automatically formed based upon the next deadline being extendable and the expense incurred for extending the deadline. As such, the Examiner asserts this as evidence that the newly amended claims are new matter.
Claims 1 and 14 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite the newly amended limitations “modifying, by the one or more processors, the at least one document by embedding one or more annotations in the at least one document, each annotation including: an indication of one or more deadlines; at least one party responsible for the one or more deadlines, and a cost associated with each deadline of the one or more deadlines, wherein the cost is related to an expense incurred for extending the deadline; extracting one or more embedded annotations from the document; determining, based on the one or more embedded annotations extracted from the document, a next task to be worked on, the next task associated with a next deadline” however there is no discussion, throughout the entirety of the specification and drawings, of any document embeddings whatsoever, nor is there any discussion about how the annotations are extracted from embeddings and tasks are determined. As such, the Examiner asserts this as evidence that the newly amended claims are new matter.
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 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to a process (an act, or series of acts or steps), a machine (a concrete thing, consisting of parts, or of certain devices and combination of devices), and a manufacture (an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery). Thus, each of the claims falls within one of the four statutory categories (Step 1). However, the claim(s) recite(s) prioritizing and updating reminders based upon determined task costs, deadlines, and party associated therewith which is an abstract idea of a mental process as well as organizing human activities.
The limitations of “extracting one or more embedded annotations from the document; determining, based on the one or more embedded annotations extracted from the document, a next task to be worked on, the next task associated with a next deadline; determining, based on the next task and the next deadline, one or more task reminders; prioritizing the one or more task reminders based on at least the selection of the priority parameter, wherein prioritizing comprises automatically adjusting a rank order of the one or more task reminders based on whether the next deadline is extendable and the expense incurred for extending the deadline; producing the prioritized one or more task reminders on the user interface; re-prioritizing the one or more task reminders based on receiving a subsequent selection of a different priority parameter from the set of priority parameters by automatically recomputing a rank order of the one or more task reminders based on the at least subsequent selection and producing the re-prioritized one or more task reminders on the user interface” as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process—concepts performed in the human mind (including an observation, evaluation, judgment, opinion) or organizing human activities--fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) but for the recitation of generic computer components (Step 2A Prong 1). That is, other than reciting “An automated reminder method comprising” (or “A system for creating automated reminders, the system comprising: a memory that stores instructions for implementing a dynamic reminder tool; and one or more processors that execute the instructions to perform operations including:” in claim 14) nothing in the claim element precludes the step from practically being performed in the mind or from the methods of organizing human interactions grouping. For example, but for the “An automated reminder method implemented by one or more processors executing instructions stored in a memory” (or “A system for creating automated reminders, the system comprising: a memory that stores instructions for implementing a dynamic reminder tool; and one or more processors that execute the instructions to perform operations including:” in claim 14) language, “receiving,” “modifying,” “extracting,” “determining,” “determining,” “prioritizing,” “producing,” and “re-prioritizing” in the context of this claim encompasses the user manually comparing task, cost, deadlines and parties responsible for reminder prioritization which is a mental process/judgement as well as/or a business relation/fundamental economic practice/commercial or legal interaction/managing personal behavior. However, if possible, the Examiner should consider the limitations together as a single abstract idea rather than as a plurality of separate abstract ideas to be analyzed individually. “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)). Here, the limitations are considered together as a single abstract idea for further analysis. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations as a method of organizing human activities, while some of the limitations may be performed in the mind after certain limitations are performed, but for the recitation of generic computer components, then it falls within the grouping of abstract ideas. (Step 2A, Prong One: YES). Accordingly, the claim(s) recite(s) an abstract idea.
This judicial exception is not integrated into a practical application (Step 2A Prong Two). The “on a user interface” in the steps is simply a post solution output which is an insignificant extrasolution activity. Next, the claims only recite one additional element – using one or more processors to perform the steps. The one or more processors in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of electronic data query, storage, and retrieval of tasks/deadlines/costs) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Specifically the claims amount to nothing more than an instruction to apply the abstract idea using a generic computer or invoking computers as tools by adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d)(I) discussing MPEP 2106.05(f). Accordingly, the combination of these additional elements does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea, even when considered as a whole (Step 2A Prong Two: NO).
The claim does not include a combination of additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). As discussed above with respect to integration of the abstract idea into a practical application (Step 2A Prong 2), the combination of additional elements of using one or more processors to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Reevaluating here in step 2B, the displaying on a user interface step(s) which are insignificant extrasolution activities are also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs court decisions in MPEP 2106.05(d)(II) indicate that the mere receipt or transmission of data over a network is well-understood, routine, and conventional function when it is claimed in a merely generic manner (as is here). Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim. As such, the claim(s) is/are not patent eligible, even when considered as a whole (Step 2B: NO).
Claims 2-13 and 15-20 recite the additional limitations further limiting the reminder and how the reminder is updated, which is still directed towards the abstract idea previously identified and is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 1 and 14, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, the additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 1-20 are therefore not eligible subject matter, even when considered as a whole.
Claim Rejections - 35 USC § 103
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.
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, 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 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lundberg et al. (US PG Pub. 2014/0052667) and further in view of Beaven et al. (US PG Pub. 2012/0311044).
As per claims 1 and 14, Lundberg discloses an automated reminder method implemented by one or more processors executing instructions stored in a memory, a system for creating automated reminders, the system comprising: a memory that stores instructions for implementing a dynamic reminder tool; and one or more processors that execute the instructions to perform operations including: the method comprising (systems and method, Lundberg Abstract; various devices, systems, server, ¶15-¶16; processor, hardware-implemented module, ¶448-¶449);
receiving, by an interface on the one or more processors, an electronic communication containing at least one document (documents, Lundberg ¶22 and ¶28; user interface, ¶16);
modifying, by the one or more processors, the at least one document by embedding one or more annotations in the at least one document, each annotation including (notes, able to be copied to and from designated activity, Lundberg ¶190-¶193):
an indication of one or more deadlines (In an example implementation activity tasks/due dates are read and translated to Timeline format, and aligned in a timeline view of the case processes. Cost data for each activity can be kept and read to supply budget information. Activities may also be tagged as optional or essential, and if optional their costs could be suppressed to see how total budget is affected, ¶163-¶164; timeline, milestones, ¶165; a tool keeps track of and maintains the purpose for which a patent is being pursued. This information may be provided to the attorney or other appropriate personnel during key decisions making times during the patent's lifetime. This information may be used by the appropriate personnel to determine whether to open prosecution, file for appeal, pay issue fee, pay maintenance fee, enforce patent, etc. Often times over the course of a patent's lifetime, personnel on both the client and attorney side change and the reason for filing that patent is lost. This is important, because as time goes on, this reason may no longer be relevant and the proceeding with prosecution or continuing to pay maintenance fees is no longer necessary. Therefore, this tool helps to enable clients to pursue only those inventions for which the reason for filing the patents are still necessary and relevant. Purpose oriented prosecution will thus save time and money involved in filing, pursuing, and maintaining patents that are ostensibly useless for the client, ¶169; alerts for payments due, maintenance fee payment alerts, ¶157);
at least one party responsible for the one or more deadlines (In an example implementation activity tasks/due dates are read and translated to Timeline format, and aligned in a timeline view of the case processes. Cost data for each activity can be kept and read to supply budget information. Activities may also be tagged as optional or essential, and if optional their costs could be suppressed to see how total budget is affected, ¶163-¶164; timeline, milestones, ¶165; a tool keeps track of and maintains the purpose for which a patent is being pursued. This information may be provided to the attorney or other appropriate personnel during key decisions making times during the patent's lifetime. This information may be used by the appropriate personnel to determine whether to open prosecution, file for appeal, pay issue fee, pay maintenance fee, enforce patent, etc. Often times over the course of a patent's lifetime, personnel on both the client and attorney side change and the reason for filing that patent is lost. This is important, because as time goes on, this reason may no longer be relevant and the proceeding with prosecution or continuing to pay maintenance fees is no longer necessary. Therefore, this tool helps to enable clients to pursue only those inventions for which the reason for filing the patents are still necessary and relevant. Purpose oriented prosecution will thus save time and money involved in filing, pursuing, and maintaining patents that are ostensibly useless for the client, ¶169; alerts for payments due, maintenance fee payment alerts, ¶157), and
a cost associated with each deadline of the one or more deadlines, wherein the cost is related to an expense incurred for extending the deadline (In an example implementation activity tasks/due dates are read and translated to Timeline format, and aligned in a timeline view of the case processes. Cost data for each activity can be kept and read to supply budget information. Activities may also be tagged as optional or essential, and if optional their costs could be suppressed to see how total budget is affected, ¶163-¶164; timeline, milestones, ¶165; a tool keeps track of and maintains the purpose for which a patent is being pursued. This information may be provided to the attorney or other appropriate personnel during key decisions making times during the patent's lifetime. This information may be used by the appropriate personnel to determine whether to open prosecution, file for appeal, pay issue fee, pay maintenance fee, enforce patent, etc. Often times over the course of a patent's lifetime, personnel on both the client and attorney side change and the reason for filing that patent is lost. This is important, because as time goes on, this reason may no longer be relevant and the proceeding with prosecution or continuing to pay maintenance fees is no longer necessary. Therefore, this tool helps to enable clients to pursue only those inventions for which the reason for filing the patents are still necessary and relevant. Purpose oriented prosecution will thus save time and money involved in filing, pursuing, and maintaining patents that are ostensibly useless for the client, ¶169; alerts for payments due, maintenance fee payment alerts, ¶157);
extracting one or more embedded annotations from the document (extract key information, Lundberg ¶161; notes copied, ¶190-¶193);
determining, based on the one or more embedded annotations extracted from the document, a next task to be worked on, the next task associated with a next deadline (extract key information, Lundberg ¶161; In an example implementation activity tasks/due dates are read and translated to Timeline format, and aligned in a timeline view of the case processes. Cost data for each activity can be kept and read to supply budget information. Activities may also be tagged as optional or essential, and if optional their costs could be suppressed to see how total budget is affected, ¶164; timeline, milestones, ¶165)
determining, based on the next task and the next deadline, one or more task reminders (the docketing management system includes translation tools to send data to other software programs. For example, tasks in an external productivity suite (e.g., MICROSOFT OUTLOOK.TM.) may be created from docketed due dates in the docketing management system. The docketing management system may send e-mail summaries the tasks that have been created, tasks that are due, and tasks that are upcoming (e.g., due in two weeks). In various embodiments, e-mail messages may also be created that include documents from the docketing management system and with the "replyID" web service automatically re-files itself into docketing management system upon receiving a reply message. In an embodiment, the docketing management system includes the ability to forward e-mails to other e-mail accounts. A tool may also include the ability to selectively determine which emails to forward (e.g., such that notifier emails and internal report out emails may not be forwarded), Lundberg ¶177-¶178) (Examiner notes that notifications, messages, alerts, alarms, automated communications, e-mails, etc. with task details therein are equivalent to the reminders associated with a task to be worked on);
displaying, on a user interface, the next task and a set of predefined priority parameters, the set of predefined priority parameters comprising at least a deadline extendibility parameter and a next deadline cost information parameter (a tool keeps track of and maintains the purpose for which a patent is being pursued. This information may be provided to the attorney or other appropriate personnel during key decisions making times during the patent's lifetime. This information may be used by the appropriate personnel to determine whether to open prosecution, file for appeal, pay issue fee, pay maintenance fee, enforce patent, etc. Often times over the course of a patent's lifetime, personnel on both the client and attorney side change and the reason for filing that patent is lost. This is important, because as time goes on, this reason may no longer be relevant and the proceeding with prosecution or continuing to pay maintenance fees is no longer necessary. Therefore, this tool helps to enable clients to pursue only those inventions for which the reason for filing the patents are still necessary and relevant. Purpose oriented prosecution will thus save time and money involved in filing, pursuing, and maintaining patents that are ostensibly useless for the client, Lundberg ¶169; alerts for payments due, maintenance fee payment alerts, ¶157; user interface, see patents, notifiers, reminders, ¶258; user interface for a maintenance fee analyzer, ¶260);
receiving a selection of a priority parameter from the set of predefined priority parameters (i) reminders can come multiple ways--as noted above; j) add reminders to LinkedIn or to Facebook--social network tie-in. these are places that someone would likely stay connected to; k) connect to LinkedIn or Facebook, or other SN, and monitor if the person is present, and if the person disappears from there, flag them as "missing" to invoke follow up tracking; 1) have application in LinkedIn or Facebook that keeps track of patent maintenance fee due dates, and notifies user when due; m) have iPhone/smart phone app that keeps track of dates, they could be embedded in App not only downloaded, and generates alerts for payment--while fee may change, typically date due will not; n) create a "remind me" hierarchy--start with automated e-mail/call/text to first person on list. If they don't reply, go to the second person, and so on, till you exhaust list, trying to reach someone, ¶258; reminders with quotes sent, ¶437; notifying one or more law firms, agent, ¶342-¶343)
While Lundberg discloses the ability to use a hierarchy for reminders as well as alarms for verifications needed (Lundberg ¶430-¶440), Lundberg does not expressly disclose prioritizing the one or more task reminders based on at least the selection of the priority parameter, wherein prioritizing comprises automatically adjusting a rank order of the one or more task reminders based on whether the next deadline is extendable and the expense incurred for extending the deadline; producing the prioritized one or more task reminders on the user interface; re-prioritizing the one or more task reminders based on receiving a subsequent selection of a different priority parameter from the set of priority parameters by automatically recomputing a rank order of the one or more task reminders based on the at least subsequent selection and producing the re-prioritized one or more task reminders on the user interface.
However, Beaven teaches:
prioritizing the one or more task reminders based on at least the selection of the priority parameter, wherein prioritizing comprises automatically adjusting a rank order of the one or more task reminders based on whether the next deadline is extendable and the expense incurred for extending the deadline (time-based reminders, Beaven ¶155; alerts and reminders for changes, due dates, ¶170-¶176; priority, weighting, ¶131; strategic features such as cost and payback, ¶78; sorting by priority such as costs in descending order, ¶131; a common attribute structure that provides information (e.g., costs, payback, priority, risks, due dates) for any goal and contributing initiative so the goals and initiatives can be sorted against a piece of information to facilitate ongoing decision making. For example, if resources are limited, the user can sort initiatives by cost, payback, and priority, or if the user wants to see how the portfolio will affect any part of the organization, the user can sort by domain, ¶48);
producing the prioritized one or more task reminders on the user interface (The Agile Manager not only facilitates the planning/execution cycle for any particular goal or initiative, but also allows the user to put all the priority goals and each priority goal's contributing initiatives into a strategic implementation portfolio or hierarchy (FIG. 3.). The portfolio view relates contributing initiatives or projects to their overarching goals and to each other, and allows the user to sort these initiatives, projects, or goals in a variety of ways. For example, the user can sort the initiatives in terms of their impact on the domain structure of the organization, by strategic factors such as cost, payback, and priority, or according to the status and stage the goals and initiatives are in to allow better management, Beaven ¶77-¶78; sorting by priority, ¶131);
re-prioritizing the one or more task reminders based on receiving a subsequent selection of a different priority parameter from the set of priority parameters by automatically recomputing a rank order of the one or more task reminders based on the at least subsequent selection and producing the re-prioritized one or more task reminders on the user interface ((5) a common attribute structure that provides information (e.g., costs, payback, priority, risks, due dates) for any goal and contributing initiative so the goals and initiatives can be sorted against a piece of information to facilitate ongoing decision making. For example, if resources are limited, the user can sort initiatives by cost, payback, and priority, or if the user wants to see how the portfolio will affect any part of the organization, the user can sort by domain, Beaven ¶43; edit priority, Beaven ¶93 and Fig. 28; changes made automatically, ¶116)
Both the Beaven and Lundberg references are analogous in that both are directed towards/concerned with collaborative work environments. Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to use Beaven’s ability to prioritize reminders or alerts by a criteria such as due date or strategic features in Lundberg’s system to improve the system and method with reasonable expectation that this would result in a collaborative management system that is able to send the appropriate reminders.
The motivation being that there is a need for collaborative work which permits the collaborators both to make their own model of the collaborative work and to modify that model without the help of skilled programmers. For example, a model of a law firm made using the system may include a goal and project hierarchy for each of the firm's clients. Each client's goal and project hierarchy may include a billing project for the client. The model may further include a domain hierarchy that includes a billing domain, and the billing project for each client may belong to the billing domain. The billing project for a client is thus visible not only from the point of view of the client's domain and project hierarchy, but also from the point of view of the billing domain (Beaven ¶4-¶5).
Furthermore, one of ordinary skill, before the effective filing date of the claimed invention, would have found it obvious to repeat the processes in claims 1 and 14 for re-prioritizing or additional prioritizing because duplication is obvious, MPEP 2144.04.VI.B. The duplication of parts (or steps) has no patentable significance unless a new and unexpected result is produced. Examiner finds no evidence that performing the processes in claims 1 and 14 for re-prioritizing or additional prioritizing would produce new and unexpected results as compared to performing the processes in claims 1 and 14 for only a first prioritization.
As per claim 2, Lundberg and Beaven disclose as shown above with respect to claim 1. Lundberg further discloses wherein prioritizing the one or more task reminders is done by a user (customized for particular clients, Lundberg ¶168; In an embodiment, the docketing management system includes a features of queuing generated "notifier" emails for docket items that get sent to internal matter personnel to be sent the following day rather than immediately. This may allow documents to be added prior to the notifications so that the activity is complete with all the information. In an embodiment, the docketing management system includes translation tools to send data to other software programs. For example, tasks in an external productivity suite (e.g., MICROSOFT OUTLOOK.TM.) may be created from docketed due dates in the docketing management system. The docketing management system may send e-mail summaries the tasks that have been created, tasks that are due, and tasks that are upcoming (e.g., due in two weeks). In various embodiments, e-mail messages may also be created that include documents from the docketing management system and with the "replyID" web service automatically re-files itself into docketing management system upon receiving a reply message. In an embodiment, the docketing management system includes the ability to forward e-mails to other e-mail accounts. A tool may also include the ability to selectively determine which emails to forward (e.g., such that notifier emails and internal report out emails may not be forwarded), ¶176-¶178; Users may be asked to provide at least a predefined minimum number of notification paths (e.g., multiple points of contact with both an email address and a physical address, telephone SMS). In one example embodiment, the contact information may require confirmation. In one example embodiment, to get certified mail, the users may be required to pay an additional amount, ¶442; user creates group, notify group, ¶396).
As per claim 3, Lundberg and Beaven disclose as shown above with respect to claim 1. Lundberg further discloses wherein prioritizing the one or more task reminders is based on user input (In an embodiment, the docketing management system includes a features of queuing generated "notifier" emails for docket items that get sent to internal matter personnel to be sent the following day rather than immediately. This may allow documents to be added prior to the notifications so that the activity is complete with all the information. In an embodiment, the docketing management system includes translation tools to send data to other software programs. For example, tasks in an external productivity suite (e.g., MICROSOFT OUTLOOK.TM.) may be created from docketed due dates in the docketing management system. The docketing management system may send e-mail summaries the tasks that have been created, tasks that are due, and tasks that are upcoming (e.g., due in two weeks). In various embodiments, e-mail messages may also be created that include documents from the docketing management system and with the "replyID" web service automatically re-files itself into docketing management system upon receiving a reply message. In an embodiment, the docketing management system includes the ability to forward e-mails to other e-mail accounts. A tool may also include the ability to selectively determine which emails to forward (e.g., such that notifier emails and internal report out emails may not be forwarded), Lundberg ¶176-¶178; In some example embodiments, users (e.g., clients/owners of patents) may not add patents or applications to the registry. In one example embodiment, only patents or applications that the registry has chosen to handle may be listed. 3) Patent owners or their representatives may go to the registry and pick patents or applications for: [0432] a) scheduling of payments due; [0433] b) amounts due; [0434] c) reminders; [0435] d) analytics; [0436] e) getting instantaneous quotes or estimates; [0437] f) having reminders with quotes sent; [0438] g) verifying ownership; [0439] h) watching for changes in ownership; [0440] 4) Owners may be responsible to pay online before any payments are made. Payments may be accepted in various ways, ¶430-¶440; notify group, ¶396).
As per claim 4, Lundberg and Beaven disclose as shown above with respect to claim 1. Lundberg further discloses wherein prioritizing the one or more task reminders is based on a client priority parameter from the set of predefined priority parameters (a tool keeps track of and maintains the purpose for which a patent is being pursued. This information may be provided to the attorney or other appropriate personnel during key decisions making times during the patent's lifetime. This information may be used by the appropriate personnel to determine whether to open prosecution, file for appeal, pay issue fee, pay maintenance fee, enforce patent, etc. Often times over the course of a patent's lifetime, personnel on both the client and attorney side change and the reason for filing that patent is lost. This is important, because as time goes on, this reason may no longer be relevant and the proceeding with prosecution or continuing to pay maintenance fees is no longer necessary. Therefore, this tool helps to enable clients to pursue only those inventions for which the reason for filing the patents are still necessary and relevant. Purpose oriented prosecution will thus save time and money involved in filing, pursuing, and maintaining patents that are ostensibly useless for the client, Lundberg ¶169; alerts for payments due, maintenance fee payment alerts, ¶157; user interface, see patents, notifiers, reminders, ¶258; user interface for a maintenance fee analyzer, ¶260).
As per claim 5, Lundberg and Beaven disclose as shown above with respect to claim 1. Lundberg further discloses wherein prioritizing the one or more task reminders is based on the at least one party responsible for the one or more deadlines party responsible (In an embodiment, the docketing management system includes a features of queuing generated "notifier" emails for docket items that get sent to internal matter personnel to be sent the following day rather than immediately. This may allow documents to be added prior to the notifications so that the activity is complete with all the information. In an embodiment, the docketing management system includes translation tools to send data to other software programs. For example, tasks in an external productivity suite (e.g., MICROSOFT OUTLOOK.TM.) may be created from docketed due dates in the docketing management system. The docketing management system may send e-mail summaries the tasks that have been created, tasks that are due, and tasks that are upcoming (e.g., due in two weeks). In various embodiments, e-mail messages may also be created that include documents from the docketing management system and with the "replyID" web service automatically re-files itself into docketing management system upon receiving a reply message. In an embodiment, the docketing management system includes the ability to forward e-mails to other e-mail accounts. A tool may also include the ability to selectively determine which emails to forward (e.g., such that notifier emails and internal report out emails may not be forwarded), Lundberg ¶176-¶178; In some example embodiments, users (e.g., clients/owners of patents) may not add patents or applications to the registry. In one example embodiment, only patents or applications that the registry has chosen to handle may be listed. 3) Patent owners or their representatives may go to the registry and pick patents or applications for: [0432] a) scheduling of payments due; [0433] b) amounts due; [0434] c) reminders; [0435] d) analytics; [0436] e) getting instantaneous quotes or estimates; [0437] f) having reminders with quotes sent; [0438] g) verifying ownership; [0439] h) watching for changes in ownership; [0440] 4) Owners may be responsible to pay online before any payments are made. Payments may be accepted in various ways, ¶430-¶440; notify group, ¶396).
As per claims 6 and 15, Lundberg and Beaven disclose as shown above with respect to claims 1 and 14. Lundberg further discloses wherein prioritizing the one or more task reminders is based on an upcoming cost priority parameter (user interface, see patents, notifiers, reminders, ¶258; user interface for a maintenance fee analyzer, ¶260).
As per claims 7-9 and 16, Lundberg and Beaven disclose as shown above with respect to claims 1 and 14. Lundberg further discloses wherein re-prioritizing the one or more task reminders is based on receiving an updated cost associated with each deadline of the one or more deadlines indicated in the document;; wherein producing the prioritized one or more task reminders further comprises indicating an urgency of a task reminder based on the selection; wherein re-prioritizing the one or more task reminders comprises repeating a reminder based on one the subsequent selection (i) reminders can come multiple ways--as noted above; j) add reminders to LinkedIn or to Facebook--social network tie-in. these are places that someone would likely stay connected to; k) connect to LinkedIn or Facebook, or other SN, and monitor if the person is present, and if the person disappears from there, flag them as "missing" to invoke follow up tracking; 1) have application in LinkedIn or Facebook that keeps track of patent maintenance fee due dates, and notifies user when due; m) have iPhone/smart phone app that keeps track of dates, they could be embedded in App not only downloaded, and generates alerts for payment--while fee may change, typically date due will not; n) create a "remind me" hierarchy--start with automated e-mail/call/text to first person on list. If they don't reply, go to the second person, and so on, till you exhaust list, trying to reach someone, ¶258; reminders with quotes sent, ¶437; notifying one or more law firms, agent, ¶342-¶343).
As per claims 10 and 17, Lundberg and Beaven disclose as shown above with respect to claims 1 and 14. Lundberg further discloses wherein re-prioritizing the one or more task reminders comprises prioritizing a reminder above other reminders based on the subsequent selection (i) reminders can come multiple ways--as noted above; j) add reminders to LinkedIn or to Facebook--social network tie-in. these are places that someone would likely stay connected to; k) connect to LinkedIn or Facebook, or other SN, and monitor if the person is present, and if the person disappears from there, flag them as "missing" to invoke follow up tracking; 1) have application in LinkedIn or Facebook that keeps track of patent maintenance fee due dates, and notifies user when due; m) have iPhone/smart phone app that keeps track of dates, they could be embedded in App not only downloaded, and generates alerts for payment--while fee may change, typically date due will not; n) create a "remind me" hierarchy--start with automated e-mail/call/text to first person on list. If they don't reply, go to the second person, and so on, till you exhaust list, trying to reach someone, ¶258; reminders with quotes sent, ¶437; notifying one or more law firms, agent, ¶342-¶343).
As per claims 11 and 18, Lundberg and Beaven disclose as shown above with respect to claims 1 and 14. Lundberg further discloses wherein further comprising re-prioritizing the one or more task reminders in response to an indication of work being started on the next task to be worked on (In various embodiments, a visual process manager tool is implemented. It may include the following features: 1) Each Process (e.g., draft application, office action report, response, etc.) has a timeline (or calendar). Timeline is visual of process due dates and milestones; 2) each process has it's own Process Options or Decisions; 3) each process has a messaging area that attorneys/paralegals can post messages regarding the process. These messages can then be sent to client via one or more or all of media: e-mail, text, written letter, telephone call (recorded); 4) each process has messaging area that can store and retain key client messages or instructions, either in the form of a recorded telephone call or message, a saved e-mail, a saved text message, an image of a document; 5) process can require client verification of key processes by either: automated telephone call with dtmf of voice response; automated e-mail with reply or click through to page with verification options, Lundberg ¶165).
As per claims 12 and 19, Lundberg and Beaven disclose as shown above with respect to claims 1 and 14. Lundberg further discloses wherein producing the one or more task reminders comprises producing a dashboard that is user-configurable, wherein producing the prioritized task reminders is done on the dashboard (dashboard, Lundberg ¶59).
As per claims 13 and 20, Lundberg and Beaven disclose as shown above with respect to claims 12 and 19. Lundberg further discloses wherein re-prioritizing the one or more task reminders is done on the dashboard and comprises producing an additional task reminder based on an indication of upcoming higher costs associated with the next task to be worked on (i) reminders can come multiple ways--as noted above; j) add reminders to LinkedIn or to Facebook--social network tie-in. these are places that someone would likely stay connected to; k) connect to LinkedIn or Facebook, or other SN, and monitor if the person is present, and if the person disappears from there, flag them as "missing" to invoke follow up tracking; 1) have application in LinkedIn or Facebook that keeps track of patent maintenance fee due dates, and notifies user when due; m) have iPhone/smart phone app that keeps track of dates, they could be embedded in App not only downloaded, and generates alerts for payment--while fee may change, typically date due will not; n) create a "remind me" hierarchy--start with automated e-mail/call/text to first person on list. If they don't reply, go to the second person, and so on, till you exhaust list, trying to reach someone, ¶258; reminders with quotes sent, ¶437; notifying one or more law firms, agent, ¶342-¶343).
Furthermore, one of ordinary skill, before the effective filing date of the claimed invention, would have found it obvious to repeat the processes in claims 1 and 14 for second or additional reminders because duplication is obvious, MPEP 2144.04.VI.B. The duplication of parts (or steps) has no patentable significance unless a new and unexpected result is produced. Examiner finds no evidence that performing the processes in claims 13 and 20 for second or additional reminders would produce new and unexpected results as compared to performing the processes in claims 1 and 14 for only a first reminder.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW B WHITAKER whose telephone number is (571)270-7563. The examiner can normally be reached on M-F, 8am-5pm, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynda Jasmin can be reached on (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW B WHITAKER/Primary Examiner, Art Unit 3629
Prosecution Insights