DETAILED ACTION
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 30, 2026 has been entered.
Status of Application
Claims 1, 8, 12 and 17 have been amended and are hereby entered.
Claims 1 – 20 are pending and have been examined.
This action is made NON-FINAL.
Response to Arguments
Applicant's arguments last filed on July 30, 2026 have been fully considered but they are not persuasive.
Regarding the applicant's arguments against the 101 rejection of pending claims on pages 13-14: Applicant’s arguments directed to 101 analysis were considered. However, these arguments are not persuasive and the examiner respectfully disagrees for the following reasons:
For Step 2A-Prong 1 and Prong 2 starting in p. 13: Regarding to amended claims reciting “substantially more than claims the Board considered”, as alleged by the Applicant: Upon re-evaluation of these claims the Examiner concluded that the claims are still reciting (as “set forth” or described) the abstract ideas previously identified, even when considered both individually and as an ordered combination. See MPEP 2106.04, subsection II.
Secondly, even if the amended claims are not reciting “machine learning” analytics/technology, these pending claims and their certain limitations such as “calculating”/” updating” probabilities steps that were still reciting mathematical concepts/calculations. Please, refer to the Claim Rejections - 35 USC § 103 section for further details.
Thirdly, the amended claims, individually and as an ordered combination, were still considered by the Examiner to be invoking the use of a generic computer (e.g. “apply it”) or reciting mere instructions to implement an abstract idea on a computer used as a tool (see MPEP 2106.05 (f) and 2106.04(d)(I)). Specifically, the claims’ limitations are reciting the use of a generic computer using scraping, image/text analysis technologies broadly recited, to further receive patent-related data related to patent office procedures as well as previous docketing activities, processing those docketing activities, storing/updating the activity information and to achieve the intended result of using the activity information to determine the next probably docket activity as a Patent management tool to manage patents through their patent life cycle. Lastly, these limitations and their additional elements, individually and in combination, are not “significantly more” as these are recited in a high level of generality that cannot provide an inventive concept at Step 2B, and are not integrating the abstract idea into a practical application. (see MPEP 2106.05(f)). Thus, for all the reasons stated above, the Examiner respectfully disagrees, and maintains 35 USC § 101 rejection for these pending claims.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The analysis of this claimed invention recited in the claims begins in view of independent claims 1 and 8, the most representative claim of the independent claims set 1, 8, 12 and 17, as follows:
At Step 1: Claims 1 - 11 falls under statutory category of a process, while claims 12 - 20 are directed to a machine.
At Step 2A Prong 1: Examiner notes that Claims 1 (representative of claim 12) and claim 8 (representative of claim 17) recites an abstract idea in the following limitations:
For claim 1 (representative of claim 12):
…receiving…electronic docketing information for a matter from multiple patent data stores …
automatically acquiring…patent-related data from a plurality of heterogeneous sources… the acquiring including scraping a portion of the patent-related data from a patent office website;
parsing…the acquired patent-related data using a combination of automatic image recognition and text analysis to extract structured information including at least filing date, issue date, title, abstract, and claims;
determining…that at least a portion of the extracted structured information is inaccurate;
based on the determining, flagging the at least a portion of the extracted structured information;
normalizing…the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning to transform the data into a standardized readable format compatible with the patent management database;
generating…a database entry from the normalized data by formulating an insert query combining a plurality of parsed pieces of the structured information;
storing…the database entry in a structured format in …storing encrypted patent prosecution histories;
automatically accessing…storing patent prosecution histories, at least one previously docketed docketing activity data for the matter;
automatically identifying…at least one next most probable docketing activity, identifying comprising:
maintaining, in a table, at least one record for each docketing activity, the record including probability data for the next most probable docketing activities based on data available for matters…and data available…;
calculating, for each candidate next docketing activity, a probability that the candidate next docketing activity is the next activity to be docketed based on the at least one previously docketed docketing activity for the matter; and
updating the probability data in the table as new docketing activities are docketed, such that the probability data for the next most probable docketing activities evolves;
automatically retrieving…updated docketing activity data for the at least one next most probable docketing activity;
creating and storing…
a customized docketing activity template comprising:
jurisdiction-specific patent office deadline calculation rules,
client-specific workflow automation rules, and
electronic document handling procedures;
automatically modifying…the at least one next most probable docketing activity by:
applying rules of the customized docketing activity template,
updating the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries,
calculating response due dates based on the jurisdiction-specific patent office deadline calculation rules, a type of filing of the matter, and at least one of a filing date, a prosecution date, and a grant date of the matter, and
generating electronic docketing entries; and
transmitting…data for displaying the modified at least one next most probable docketing activity…, wherein the displayed data includes interactive elements for managing calculated response due dates and automated workflow rules.
For claim 8 (representative of claim 17):
…storing…a table…wherein the table includes at least one record for each docketing activity and associated docketing activity template information; and
entering and continuously updating…docketing activity probability data in fields of the at least one record for each docketing activity by:
maintaining probability data based on data available for matters… and data available…in the at least one record for each docketing activity;
calculating, for each candidate next docketing activity, a probability that each candidate next docketing activity is the next activity to be docketed based on at least one previously docketed docketing activity for a matter; and
updating the probability data in the table as new docketing activities are docketed, such that the probability data for each candidate next docketing activity evolves;
automatically retrieving…updated patent prosecution data…;
automatically acquiring…patent-related data from a plurality of heterogeneous sources…the acquiring including scraping a portion of the patent-related data from a patent office website;
parsing…the acquired patent-related data using a combination of automatic image recognition and text analysis to extract structured information including at least filing date, issue date, title, abstract, and claims;
determining…that at least a portion of the extracted structured information is inaccurate;
based on the determining, flagging the at least a portion of the extracted structured information;
normalizing…the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning to transform the data into a standardized, format compatible with the patent management database;
creating and storing the normalized data in a structured format…customized docketing workflow templates comprising:
jurisdiction-specific patent office deadline calculation rules,
client-specific workflow automation procedures, and
electronic document handling rules;
updating…the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries;
calculating…response due dates for docketing activities based on the jurisdiction-specific patent office deadline calculation rules, a type of filing of the matter, and at least one of a filing date, a prosecution date, and a grant date of the matter; and
transmitting…data for displaying probable next docketing activities and calculated due dates…
Generally, and as disclosed in the specification in ¶0002 and ¶0022, this claimed invention provides “a patent management system (such as a patent docketing system) and patent matters” that further involves “(1) storing all key intellectual property information in a centralized and consolidated database; (2) providing access to critical information from documents (e.g., correspondences between law firms and the U.S. PTO,or law firms and clients) and deadlines (e.g., PTO deadlines and non-PTO deadlines); and (3) providing customizable workflows for streaming and automating the patent management processes throughout the patent lifecycle.” However, the abstract idea(s) of a certain method of organizing human activity (See MPEP 2106.04(a)(2), subsection II) are/is recited in claims 1 and 8, firstly in the form of “commercial or legal interactions”. The abstract idea is recited in the limitations which suggest a process similar to standard practice litigation management or any legal practice. This is common practice when attorneys are advising clients prior to trial or prior to any next action. Attorneys have acted with the probable next action in mind long before the invention of computers. Specifically, the steps directed in part to “receiving” by “scraping” docketing information that is parsed via image/text recognition, normalized while determining and flagging inaccurate information portions and stored with generated database entries to “automatically access” at least one “previously docketed docketing activity data” for the matter and “identifying” at least one “next most probable docketing activity” based on probability data for the next probable docketing activities for the matter to further select a matter for docketing and create “customized docketing workflow templates” that are used while “calculating/updating” conditional docketing activity based on rules, jurisdiction and updated the probability data to “calculate” response due dates, a type of filing of the matter, and at least one of a filing date, a prosecution date, and a grant date of the matter and generate “electronic docketing entries” and/or display “probable next docketing activities and calculated due dates”. Because such steps are handling and organizing docketing information that encompasses agreements in the form of contracts and/or legal obligations (i.e. providing standard processes found in standard practice in litigation practices or legal practices). Thus, the steps merely further embellishments of the abstract idea and does not further limit the claimed invention to render the claims patentable subject matter. The limitations, substantially comprising the body of the claim, recite standard processes found in standard practice in litigation practices or legal practices. This is common practice when attorneys are advising their clients regarding potential filings or responses, or potential trial proceedings.
The steps directed in part to “parse” and “normalize” patent-related data, “determining” and “flagging” inaccurate portions of the extracted structured information, “automatically identifying” next most probable docketing activities, “calculating” probabilities based on candidate next docketing activities frequency to “create” a customized docketing activity template based on “jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules”; to “automatically modify” the “at least one next most probable docketing activity” by rule application and response due dates, matter filling types, filling, prosecution and grant dates calculations; and generate “electronic docketing entries” (this last limitation from claims 1 and 12 only) fall under the abstract idea of mental processes that can be practically be performed in the human mind or in pen and paper (See MPEP 2106.04(a)(2), subsection III). Because evaluating patent-related data to identify and calculate frequency and probability data for docketed docketing activity for a matter to create corresponding templates based on handling patent document criteria/rules to modify probable activities and generate docketing entries encompass observation, evaluation and judgement. Also, these steps can either be done with the help of physical aid such as pen and paper or can be performed by humans without or with the assistance (e.g. tool) a computer. Thus, the steps do not negate and further still reads in the mental nature of the limitation(s), when determining/calculating such patent-related information for creating the corresponding templates and entries, as well as the concept is merely claimed to be performed on a generic computer and is merely using a computer as a tool to perform the concept of handling patent prosecution documentation via an electronic docket (see MPEP 2106.04(a)(2)(III)(B & C)).
As for steps of “automatically identifying” next most probable docketing activities and its subsequent limitations it comprises thereof, these steps encompass mathematical calculations. Specifically, when “calculating” probabilities that “the candidate next docketing activity is the next activity to be docketed” based on the “at least one previously docketed docketing activity for the matter” and “updating” the probabilities in the table as new docketing activities are docketed, such that the probability data for the next most probable docketing activities evolves” (i.e. suggesting the re-calculations of the data) which can be performed mentally or in pen and paper. Further, under the broadest reasonable interpretation the system requires specific mathematical calculations (using an artificial intelligence (Al) neural network having artificial neurons arranged in layers and connected with each other by connections…training the AI network by changing one or more of the connections between the artificial neurons in the AI neural network based on the feedback that is received… training the AI neural network during one or more additional iterations for machine learning of the AI neural network). “Data conditioning may include data rearrangement, normalization, filtering (e.g., removing duplicates), sorting, binning, or other operations to transform the data into a common format (e.g., using similar date formats and name formats)” (see at least Specification in ¶0033) to perform calculations and therefore encompasses mathematical concepts. “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. Thus, the claimed invention falls within the mental process/certain method of organizing human activity grouping of abstract ideas, and steps recited above fall within the mathematical concepts grouping of abstract ideas. The limitations are considered together as a single abstract idea for further analysis. Finally, the steps mentioned above do not negate and further still reads in the mental nature of the limitation(s), when calculating and re-calculating such probability data, as well as the concept is merely claimed to be performed on a generic computer and is merely using a computer as a tool to perform the concept of having the latest patent-related documentation and dates in their respective life cycle (see MPEP 2106.04(a)(2)(III)(B & C)).
At Step 2A Prong 2: For independent claims 1, 8, 12 and 17, The judicial exception(s) or abstract idea previously identified is not integrated into a practical application (see MPEP 2106.04 (d)). The claims recite the additional element(s) of one or more processors operatively coupled to a network, application programming interfaces (APIs), a patent management database; multiple servers; at least one of PAIR, foreign patent office APIs, patent office website and assignment databases; a distributed matter database; multiple computer systems; one or more external patent management systems; a template database; a client interface device, a graphical user interface; and an interactive graphical user interface. These additional elements, individually and in combination, and while considering the claims as a whole, are merely used as a tool to perform the abstract idea (See MPEP 2106.05(f)). Specifically, these steps are recited as being performed by the computer. The computer are recited at a high level of generality that is being used as a tool to perform the generic computer functions for identifying “at least one next most probable docketing activity”, maintaining “each docketing activity” records and calculating/updating conditional activities among other historical data for probability data for the next most probable docketing activities as they evolve (i.e. as being updated/refined). Thus, these steps mentioned above are further describing and applying the abstract idea without placing any limits on how the technological components are being improved, while distinguishing in the claim language, the performing limitations from functions that generic computer components can perform.
As for the steps of “automatically acquiring…patent-related data from a plurality of heterogeneous sources… the acquiring including scraping a portion of the patent-related data” and “parsing” acquired patent-related data to extract structured information by “using the combination of automatic image recognition and text analysis”, these steps are also broadly recited is performed generally to apply the abstract idea without placing any limits on how the “scraping” and “parsing” of the patent-related data is performed distinctively from generic computer components and without the function being generally be invoked as an “apply it” to a computer. Furthermore, the Applicant’s specification in ¶0047 discloses that the claimed invention system’s module “may use a combination of automatic image recognition and text analysis” that can be applied which further confirms the use of these technologies by a computer (i.e. invoking “apply it” as a tool) without further discussing how these technologies in combination are improving the computer functioning, but rather improves the abstract idea itself.
Finally, the steps directed in part to “storing” a table with one record for each docketing activity, and associated docketing activity template information, “entering and continuously updating” docketing activity probability data, “maintaining” probability data based on data available for matters, “updating” the probability data in the table (from claims 8 and 17) “receiving” electronic docketing information, “automatically acquiring” patent-related data, “storing” database entries, “maintaining” records in a table, “automatically retrieving” and “acquiring” updated docketing activity data/updated patent prosecution data, “updating” the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries and “transmitting” data for displaying probable next docketing activities and calculated due dates in the representative claims are really nothing more than links to computer for implementing the use of ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components (refer to MPEP 2106.05 f (2)). Thus, in these limitation steps, the computer is used to perform an abstract idea, as discussed above in Step 2A, Prong One, such that it amounts to no more than mere instructions to apply the exception using a generic computer.
Step 2B: For independent claims 1, 8, 12 and 17, these claims do not provide an inventive concept. The recited additional elements of the claim(s) are the following: one or more processors operatively coupled to a network, application programming interfaces (APIs), a patent management database; multiple servers; at least one of PAIR, foreign patent office APIs, patent office website and assignment databases; a distributed matter database; multiple computer systems; one or more external patent management systems; a template database; a client interface device, a graphical user interface; and an interactive graphical user interface. These additional elements are not sufficient to amount significantly more than the judicial exception or abstract idea (see MPEP 2106.05). Because, as indicated in Step 2A Prong 2, these additional element(s) claimed are merely, instructions to “apply” the abstract ideas, which cannot provide an inventive concept. Thus, even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer, which do not provide an inventive concept at Step 2B.
For dependent claims 2-7, 9-11, 13-16 and 18-20, the same analysis is incorporated. Due to their dependency to the independent claims analyzed, these claims cover or fall under the same abstract idea(s) of a method of organizing human activity, mental processes and mathematical concepts. They describe additional limitations steps of:
Claims 2-7, 9-11, 13-16 and 18-20: further describes the abstract idea of the method of automatically docketing patent matters and further describes the customization/recordation of docketing activity template by receiving/selecting/accessing/presenting docketing activities and matters, docketing of related information and updating/calculating/storing the docketing information and response due dates along with the display of pull-down menus. Thus, being directed to the abstract idea group of “commercial or legal interactions” as these limitations are still encompassing agreements in the form of contracts and/or legal obligations (i.e. providing standard processes found in standard practice in litigation practices or legal practices) and further include observation, evaluation and judgement as well as mathematical concepts and calculations.
Step 2A Prong 2 and Step 2B: For dependent claims 2-7, 9-11, 13-16 and 18-20, these claims do not include additional elements. Rather what is claimed simply further defines the same abstract idea that was set forth in independent claims 1, 8, 12 and 17. Nothing additional is claimed that is not part of the abstract idea. Specifically, claims 2-7, 9-11, 13-16, and 18-20 include certain limitations that are directed to data processing and transmission which the courts have recognized as insignificant extra-solution activities (see at least M.P.E.P. 2106.05 (f))). Claims 2-7, 9-11, 13-16, and 18-20 are further embellishments of the abstract idea of receiving information and analyzing the information for display and do not amount to significantly more.
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.
Claims 1 - 5, 8 - 15 and 17 - 20 are rejected under 35 U.S.C. 103 as being unpatentable over Gross (U.S. Pub No. 20120191757 A1) in view of Lundberg (U.S. Pub No. 20060212331 A1).
Regarding claims 1 and 12:
This independent claim set is represented by claim 1
Gross teaches:
receiving, by one or more processors operatively coupled to a network, electronic docketing information for a matter from multiple patent data stores via application programming interfaces (APIs); (In ¶0108; Fig. 3 (305); Figs. 14A – 15B: teaches “an initial step 305 the system identifies and catalogs every case/application being handled by the target organization. The data acquisition process preferably employs a standard, open source web browser (such as Firefox) instrumented via a plugin mechanism to send a set of data from viewed pages to a data acquisition server (which may be part of databases 142)”. Further, the use of APIs is disclosed in ¶0122, wherein “the data retrieval can be done through a conventional web interface 128 in accordance with the target organization's rules for such access, but it will be understood of course that if an API is made available by the target organization this can be used as well. This would allow for the organization analyzer data to be updated more rapidly and with far less overhead.”)
automatically acquiring, by the one or more processors, patent-related data from a plurality of heterogeneous sources, including at least one of PAIR, foreign patent office APIs, and assignment databases, the acquiring including scraping a portion of the patent-related data from a patent office website; (In ¶0121 – 122; Fig. 1 (126); Fig. 15A (1515): teaches a “data collector 1500” that can determine how many reexams to scrape, and submit the number at 1535 to the data collection server” and “bootstrapping of the data is thus followed by periodic updates, which are preferably performed on daily basis to ensure that new materials are brought to the attention of the system users as quickly as possible. For example in a reexamination context, the PTO transaction records and/or image files in databases 126 (FIG. 1) are scanned to identify new events/entries” and “the data retrieval can be done through a conventional web interface 128 in accordance with the target organization's rules for such access, but it will be understood of course that if an API is made available by the target organization this can be used as well.”)
parsing, by the one or more processors, the acquired patent-related data using a combination of automatic image recognition and text analysis to extract structured information including at least filing date, issue date, title, abstract, and claims; (In ¶0118; Fig. 1 (126); Fig. 15A (1510 and 1515): teaches that upon collecting “image or data files” with “optical character recognition to enhance data review of the governmental agency database” (see ¶0116), “the data collection server parses the data at 1510, manipulates it as necessary and updates a collection database 1515.” Further, in ¶0244, “the user can scan and review cases using a control number, a filing date, patent number, inventor, assignee, status, etc.” and “the system could use a priority date/filing date to conduct the in depth search” (see ¶0282). Refer to ¶0173 – 174 for data extraction details as well as “text indices are also actively maintained and constructed for each document OCRd by the system to ensure text based and search predicate based querying of the underlying content in the submissions.”)
determining, by the one or more processors, that at least a portion of the extracted structured information is inaccurate; based on the determining, flagging the at least a portion of the extracted structured information; (In ¶0122; Figs.1 and 3: teaches “bootstrapping of the data is thus followed by periodic updates, which are preferably performed on daily basis to ensure that new materials are brought to the attention of the system users as quickly as possible. For example in a reexamination context, the PTO transaction records and/or image files in databases 126 (FIG. 1) are scanned to identify new events/entries. In a preferred embodiment described below the main focus is on reexamination cases, but it will be understood that other cases can be automatically processed and compiled as well, including reissue cases and user-selected cases 307.” Thus, in ¶0132 – 134, “the system identifies a subset of key documents at step 310. Again, the system may decide to filter, ignore, or prioritize the intake of documents to give more importance to some types of documents over others” and “At step 314 the documents are preferably coded in some convenient fashion to make them more easy to be indexed, sorted, queried and/or analyzed” wherein these examples are directed to determining and flagging inaccurate data for manual corrections, in accordance to the example given in ¶0047 from Applicant disclosure. Further, “As is to be expected, in some instances the documents relating to cases handled by the organization may not always be in readily accessible form in a database 126. In such instances it may be necessary to manually inspect, retrieve and scan the documents for a file/case to ensure completeness as seen in step 316” as shown in Fig. 3.)
normalizing, by the one or more processors, the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning, to transform the data into a standardized, format compatible with a patent management database; (In ¶0172; Fig. 1 (126); Fig. 5 (550); Fig. 15A (1510 and 1515): teaches “in some instances it may be desirable to “scrub” database 550 so that obvious errors are removed”, in accordance to example given in ¶0033 from Applicant disclosure. Refer to ¶0300 wherein “the relative number of applications matching the query is represented by a size of the corresponding image block” resulting in a heat map. For example, “the number of applications in class 715 could be perceived to be much larger than the number of applications found in class 700. The sizes of the matching classes could be normalized and scaled to fit within a defined area of a window using any number of conventional techniques.” See ¶0266 for data de-duplication details and ¶0197 for data extraction and organization details.)
generating, by the one or more processors, a database entry from the normalized data by formulating an insert query combining a plurality of parsed pieces of the structured information; (In ¶0181: teaches that “events are logged for each case in database 560. In a preferred approach, this database contains an entry for each event generated by target entity 110 for any case being processed. The events are preferably logged with reference to multiple indicia including some or all of the following: an event number; an associated case reference number; a system reference id number; an event classifier (e.g., what type of event occurred) and a time stamp. Other types of data may also be included if desired, including an entity responsible for the event, links to any documents associated with the event, and so on”, in accordance to example given in ¶0048 from Applicant disclosure. Refer to ¶0172 wherein the database can be “scrubed” to remove errors and see ¶0300 wherein queried matching classes for numerous applications can be normalized and scaled to fit in a window area.)
storing, by the one or more processors, the database entry in a structured format in a distributed matter database storing patent prosecution histories, at least one previously docketed docketing activity data for the matter; (In ¶0136; Fig. 3 (330 and 335): teaches “this data one or more customized case databases 335 and associated indices are constructed at step 330. The customized databases may be in the form of separate files, tables, etc., and may be configured using any number of known techniques”.)
automatically accessing, by the one or more processors from a distributed matter database storing encrypted patent prosecution histories, at least one previously docketed docketing activity data for the matter; (In ¶0104 – 105: teaches an “example in the case of a patent application or reexamination, the name of the inventor, the serial number, or the representative registration number can be solicited. Contributions can be checked to prevent duplication and other efforts to manipulate the results. The data is preferably encrypted/de-personalized as it is stored in database 230 to avoid tracing of the profile contributions.” Further, “access to the information could be controlled on a rolling basis so that with each time cycle the users could participate in a new auction with the result of a different group being qualified to access the data in question. This restricted access may be used, again, for certain specific analyses so that the larger community still has access to the bulk aggregate information of interest. Other examples and variations will be apparent to those skilled in the art.”.)
automatically identifying, by the one or more processors across multiple computer systems, at least one next most probable docketing activity, the identifying comprising: (In ¶0126; Fig. 15A (1515): teaches that “the probability model preferably studies events within the target organization to determine their relative temporal relationship. For example, it may be determined, from analyzing all or at least selected ones of the organizations cases that a first event (E1) 122 generated within target organization 115 by logic 120 (FIG. 1) for a particular case is correlated very highly with a second event (En) 124 within a certain time window T1, which may span a period of N days. Other events could be similarly correlated to determine their relationship, and to generate a table of calculated expected probabilities {P1-Pn} of new events occurring within a time window for each case {C1-Cn} under analysis.” See also ¶0128 wherein “as these are typically published and available to the public, it is not difficult to incorporate them on a dynamic basis as part of the probability model. For example, after filing a reexamination, the USPTO has a certain number of days (90) fixed by regulations, to issue an initial determination. Therefore, there is a strong correlation between such events which is easily identifiable, and if such regulations are varied (to change the time to say 60 days), the system should quickly learn to revise the models based on this dynamic parameter rather than solely prior historical information. Other organizations may have similar temporal restrictions which can be gleaned and exploited this way to optimize a prioritization of cases in an update schedule.” Refer to ¶0159 wherein “patents can be analyzed with respect to a number of different characteristics, including general technology area, specific classification, specification word content, claim wording/content, inventor pedigree, assignee name, priority date, citations, prior art cited, underlying Examiner, and many other factors known in the art. Using these characteristics the system can compare the target patent against all (or some selected group) of patents which have been subjected to reexamination to determine the probability of success, timing, etc. It should be noted that the outcomes can be specified with different degrees of granularity, so that for example, specific target claims can be examined within the target patent, along with the patent as a whole.”)
maintaining, in a table, at least one record for each docketing activity, the record including probability data for the next most probable docketing activities based on data available for matters in the patent management system and data available from one or more external patent management systems; (In ¶0118 – 119; Fig. 15A (1515 and 1525); Fig. 15B (1535 and 1560): teaches that “Records can also be kept at 1520 of the contributions of each browser within an acquisition history table 1525 (since multiple instances can be run) that contributes data and which browsers have been sent which control numbers to scrape” and that “data collection is driven by a data request queue 1565 (FIG. 15B)” wherein “queue 1565 can be with ranges of control numbers 1535 or can be updated at 1545 according to the data that have already been acquired. The updating mode at 1555 and 1560 is used to ensure that the database stays adequately up-to-date while re-checking data from older control numbers at some desired frequency. It will be understood that any number of request queue strategies may be employed depending on the nature of the proceedings involved.” Further, in ¶0127, an example wherein “the system would construct an update schedule by considering the highest likely event (E1, with a likelihood of X) to occur (for case Cx) and would start the review of databases 126 and updating of databases 142 using this case first, and then progress through the entire set of cases until completing the list of cases, or some other marking point.”)
calculating, for each candidate next docketing activity, a probability that the candidate next docketing activity is the next activity to be docketed based on the at least one previously docketed docketing activity for the matter; and (In ¶0126 – 127: teaches that the “probability model preferably studies events within the target organization to determine their relative temporal relationship” and “Other events could be similarly correlated to determine their relationship, and to generate a table of calculated expected probabilities {P1-Pn} of new events occurring within a time window for each case {C1-Cn} under analysis”. Also, the “present system uses this information to assign a priority for researching and updating databases 142 in accordance with an update schedule.” See ¶0159 wherein “patents can be analyzed with respect to a number of different characteristics, including general technology area, specific classification, specification word content, claim wording/content, inventor pedigree, assignee name, priority date, citations, prior art cited, underlying Examiner, and many other factors known in the art. Using these characteristics the system can compare the target patent against all (or some selected group) of patents which have been subjected to reexamination to determine the probability of success, timing, etc. It should be noted that the outcomes can be specified with different degrees of granularity, so that for example, specific target claims can be examined within the target patent, along with the patent as a whole.”)
updating the probability data in the table as new docketing activities are docketed, such that the probability data for the next most probable docketing activities evolves; (In ¶0128: teaches that the “system preferably is knowledgeable of the current state of internal rules 116 and procedures 118 as part of the probability model estimation evaluation. As these are typically published and available to the public, it is not difficult to incorporate them on a dynamic basis as part of the probability model” and “other organizations may have similar temporal restrictions which can be gleaned and exploited this way to optimize a prioritization of cases in an update schedule”. See ¶0287 – 288 wherein “in the prioritizing search of PAIR (step 1260) this expected change probability data for each item can be used as a factor to initiate accesses to the external database.”)
automatically retrieving, via the network from external patent office databases, updated docketing activity data for the at least one next most probable docketing activity; (In ¶0045; Fig. 1 (126); Fig. 15A (1515): teaches that “In other embodiments the invention could be used to mine and extract information from databases maintained by similar governmental organizations.” See ¶0050. Finally, in ¶0064, at “step 210 the target's prior and current cases are identified from information compiled in databases 142”.)
generating electronic docketing entries; and (In ¶0057: teaches an “example, it may be desirable for the system to maintain a running visible list of most-recent cases submitted to the entity for consideration, which, in the case of reexaminations, would be a specific request identified by a control number. By publishing an ongoing/updated list, users can be kept apprised of the most recent developments at the PTO. The entries in the list can be associated with tags and other metadata tied to the documents within a web page so that the users can select the entries from a conventional browser and see at a glance what the submission looks like. This allows for a one-stop experience for the user who now no longer has to manually traverse screens and guess about control numbers to locate the most recent submissions.”)
transmitting, via the network to a client interface device, data for displaying the modified at least one next most probable docketing activity in a graphical user interface, wherein the displayed data includes interactive elements for managing calculated response due dates and automated workflow rules. (In ¶0205; Fig. 7F: teaches a “representative example of a Personnel Profiling interface 770 is shown in FIG. 7F” wherein “As seen generally here on the left hand side of the interface, the user can elect to see case data for the Examiner, recent actions, community profile data, etc. The user can also see what actions/events are expected next from this individual”. See ¶0205 for more details of alerts being sent to the user regarding an indication “that a Notice of Allowance is expected with 90% certainty within the next 30 days, and so on”, for example.)
Gross teaches having customized docketing workflow templates as the “user may specify his/her customized channels 809, which, in some cases may correspond to a docket of cases that he/she (or their company) is affiliated with or responsible for. At this point it will be understood that the set of cases, as defined/filtered by the user, will be associated with a set of new potential events of interest that are generated as the target organization processes submissions.” (see ¶0200; Gross). However, Gross does not explicitly teach the abilities of creating and storing customized docketing workflow templates comprising jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules, updating the rules with applicable laws per country, automatically modify the one next most probable docketing activity by applying customization rules from the template and calculating response due dates for docketing activities based on this rules, file matter type and filling/prosecution/grant date of the matter. Thus, Lundberg teaches:
creating and storing, in a template database, a customized docketing activity template comprising: jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation rules, and electronic document handling procedures; In ¶0048 – 49; Figs. 6 and 14: teaches “Tasks may be created for matters by manually entering tasks, or in some embodiments of the invention may further be created automatically via templates or other predefined task generation utilities. FIG. 6 illustrates a view of templates available for application to matters in one embodiment of the invention. The template name is shown at 601, and the organization associated with the template is shown at 602. The last modification of the template is reflected at 603 and 604, where the modifying user's identity and the date and time of the last modification are shown. The user has the option to delete existing templates as shown at 606, to create new templates, or to edit existing templates as shown at 605” which can include the specific rules and automatic procedures parameters claimed. Further, “Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements. For example, a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template. Also, creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules.” Refer to ¶0084 and ¶0086 – 87 for more details of the “Work Flow Templates” wherein “Matter Activities” can “allow for customized execution for different activities” such as “plurality of docket items are associated with intellectual property deadlines, and at least some of the docket items are associated with at least one activity data structure. For example, in patent prosecution an activity for an “office action received” can be created in the management system. This activity can hold e-mails, documents, notes, etc. . . . , but it does not need to have any docket dates associated or stored in it. Conversely, a “response to office action” activity has a docket task “respond to office action” in it, with 3, 4, 5 and 6 months due dates. Thus, docket tasks “live” independently of activities but are stored in, or associated with the activity.” See ¶0078 wherein “Trademarks may be managed as matters, and will have information including” data related to the country of original filing.)
automatically modifying, by the one or more processors, the at least one next most probable docketing activity by: applying rules of the customized docketing activity template, (In ¶0049 – 50; Fig. 7: teaches that “Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements. For example, a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template. Also, creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules”. Further, an example is disclosed in “FIG. 7 illustrates the activities that are associated with an amendment and response to a typical United States Patent and Trademark Office issued Office Action. The typical shortened statutory three-month date for response is shown as an activity item at 701, and is followed by subsequent deadlines for taking each allowable extension of time past that date. These items will then automatically be added to the task list of each matter to which the template is applied, creating appropriate task entries for that matter.”)
updating the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries, (In ¶0034: teaches that the “Three-Tier Architecture” of the software application, the “second tier is a Logic level that performs processing in the form of logical/mathematical manipulations (Logical Manipulations) of data inputted, in some embodiments, through the Interface level, and communicates the results of these manipulations with the Interface and/or backend or Storage level. In some embodiments, these Logical Manipulations relate to certain business rules or tasks that govern the application as a whole. In some embodiments, these Logical Manipulations and associated business rules include: the purging of messages in a legal information system, the auto-filing of a result in an IP management system, the obtaining and disseminating of secured on-line data, generating work flow templates, regulating the export control of technical documents, the bulk downloading of documents, billing, creating and managing matter clusters, configuring certain activities, managing independent docket systems, prior art cross citations, and exchange public and private messages, just to name a few.” Further in ¶0049, “creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules” which is directed to updating the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries. Finally, the user can also “create or update notes associated with his matters, check outstanding actions or dates for his matters, generate matter reports, print documents, and browse other information relating to his matters” inside their dockets (see ¶0076).)
calculating response due dates based on the jurisdiction-specific patent office deadline calculation rules, a type of filing of the matter, and at least one of a filing date, a prosecution date, and a grant date of the matter, (In ¶0049: teaches “creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules”. Further, in ¶0044, “each task has associated data that is displayed in the new tasks view, including the task name at 301, the type of task at 302, the title of the matter the task is related to at 303, the status of the task at 304, and a date associated with the task if appropriate at 305” which is already being considered in system calculations.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the abilities of creating and storing customized docketing workflow templates comprising jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules, updating the rules with applicable laws per country, automatically modify the one next most probable docketing activity by applying customization rules from the template and calculating response due dates for docketing activities based on this rules, file matter type and filling/prosecution/grant date of the matter, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Regarding claims 8 and 17:
This independent claim set is represented by claim 8
Gross further teaches:
storing, by one or more processors operatively coupled to a network, a table in a patent management database, wherein the table includes at least one record for each docketing activity and associated docketing activity template information; and entering and continuously updating, by the one or more processors, docketing activity probability data in fields of the at least one record for each docketing activity by: (In ¶0126; Fig. 15A (1515): teaches that “the probability model preferably studies events within the target organization to determine their relative temporal relationship. For example, it may be determined, from analyzing all or at least selected ones of the organizations cases that a first event (E1) 122 generated within target organization 115 by logic 120 (FIG. 1) for a particular case is correlated very highly with a second event (En) 124 within a certain time window T1, which may span a period of N days. Other events could be similarly correlated to determine their relationship, and to generate a table of calculated expected probabilities {P1-Pn} of new events occurring within a time window for each case {C1-Cn} under analysis.” See also ¶0128 wherein “as these are typically published and available to the public, it is not difficult to incorporate them on a dynamic basis as part of the probability model. For example, after filing a reexamination, the USPTO has a certain number of days (90) fixed by regulations, to issue an initial determination. Therefore, there is a strong correlation between such events which is easily identifiable, and if such regulations are varied (to change the time to say 60 days), the system should quickly learn to revise the models based on this dynamic parameter rather than solely prior historical information. Other organizations may have similar temporal restrictions which can be gleaned and exploited this way to optimize a prioritization of cases in an update schedule.” Refer to ¶0159 wherein “patents can be analyzed with respect to a number of different characteristics, including general technology area, specific classification, specification word content, claim wording/content, inventor pedigree, assignee name, priority date, citations, prior art cited, underlying Examiner, and many other factors known in the art. Using these characteristics the system can compare the target patent against all (or some selected group) of patents which have been subjected to reexamination to determine the probability of success, timing, etc. It should be noted that the outcomes can be specified with different degrees of granularity, so that for example, specific target claims can be examined within the target patent, along with the patent as a whole.”)
maintaining probability data based on data available for matters in the patent management system and data available from one or more external patent management systems in the at least one record for each docketing activity; (In ¶0118 – 119; Fig. 15A (1515 and 1525); Fig. 15B (1535 and 1560): teaches that “Records can also be kept at 1520 of the contributions of each browser within an acquisition history table 1525 (since multiple instances can be run) that contributes data and which browsers have been sent which control numbers to scrape” and that “data collection is driven by a data request queue 1565 (FIG. 15B)” wherein “queue 1565 can be with ranges of control numbers 1535 or can be updated at 1545 according to the data that have already been acquired. The updating mode at 1555 and 1560 is used to ensure that the database stays adequately up-to-date while re-checking data from older control numbers at some desired frequency. It will be understood that any number of request queue strategies may be employed depending on the nature of the proceedings involved.” Further, in ¶0127, an example wherein “the system would construct an update schedule by considering the highest likely event (E1, with a likelihood of X) to occur (for case Cx) and would start the review of databases 126 and updating of databases 142 using this case first, and then progress through the entire set of cases until completing the list of cases, or some other marking point.”.)
calculating, for each candidate next docketing activity, a probability that each candidate next docketing activity is the next activity to be docketed based on at least one previously docketed docketing activity for a matter; and (In ¶0126 – 127: teaches that the “probability model preferably studies events within the target organization to determine their relative temporal relationship” and “Other events could be similarly correlated to determine their relationship, and to generate a table of calculated expected probabilities {P1-Pn} of new events occurring within a time window for each case {C1-Cn} under analysis”. Also, the “present system uses this information to assign a priority for researching and updating databases 142 in accordance with an update schedule.” See ¶0159 wherein “patents can be analyzed with respect to a number of different characteristics, including general technology area, specific classification, specification word content, claim wording/content, inventor pedigree, assignee name, priority date, citations, prior art cited, underlying Examiner, and many other factors known in the art. Using these characteristics the system can compare the target patent against all (or some selected group) of patents which have been subjected to reexamination to determine the probability of success, timing, etc. It should be noted that the outcomes can be specified with different degrees of granularity, so that for example, specific target claims can be examined within the target patent, along with the patent as a whole.”)
updating the probability data in the table as new docketing activities are docketed, such that the probability data for each candidate next docketing activity evolves; (In ¶0128: teaches that the “system preferably is knowledgeable of the current state of internal rules 116 and procedures 118 as part of the probability model estimation evaluation. As these are typically published and available to the public, it is not difficult to incorporate them on a dynamic basis as part of the probability model” and “other organizations may have similar temporal restrictions which can be gleaned and exploited this way to optimize a prioritization of cases in an update schedule”. See ¶0287 – 288 wherein “in the prioritizing search of PAIR (step 1260) this expected change probability data for each item can be used as a factor to initiate accesses to the external database.”)
automatically retrieving, via application programming interfaces (APIs), updated patent prosecution data from multiple patent office databases; (In ¶0045; Fig. 1 (126); Fig. 15A (1515): teaches that “In other embodiments the invention could be used to mine and extract information from databases maintained by similar governmental organizations.” See ¶0050. Finally, in ¶0064, at “step 210 the target's prior and current cases are identified from information compiled in databases 142”. Further, the use of APIs is disclosed in ¶0122, wherein “the data retrieval can be done through a conventional web interface 128 in accordance with the target organization's rules for such access, but it will be understood of course that if an API is made available by the target organization this can be used as well. This would allow for the organization analyzer data to be updated more rapidly and with far less overhead.”)
automatically acquiring, by the one or more processors, patent-related data from a plurality of heterogeneous sources, including at least one of PAIR, foreign patent office APIs, and assignment databases the acquiring including scraping a portion of the patent-related data from a patent office website; (In ¶0121 – 122; Fig. 1 (126); Fig. 15A (1515): teaches a “data collector 1500” that can determine how many reexams to scrape, and submit the number at 1535 to the data collection server” and “bootstrapping of the data is thus followed by periodic updates, which are preferably performed on daily basis to ensure that new materials are brought to the attention of the system users as quickly as possible. For example in a reexamination context, the PTO transaction records and/or image files in databases 126 (FIG. 1) are scanned to identify new events/entries” and “the data retrieval can be done through a conventional web interface 128 in accordance with the target organization's rules for such access, but it will be understood of course that if an API is made available by the target organization this can be used as well.”)
parsing, by the one or more processors, the acquired patent-related data using a combination of automatic image recognition and text analysis to extract structured information including at least filing date, issue date, title, abstract, and claims; (In ¶0118; Fig. 1 (126); Fig. 15A (1510 and 1515): teaches that upon collecting “image or data files” with “optical character recognition to enhance data review of the governmental agency database” (see ¶0116), “the data collection server parses the data at 1510, manipulates it as necessary and updates a collection database 1515.” Further, in ¶0244, “the user can scan and review cases using a control number, a filing date, patent number, inventor, assignee, status, etc.” and “the system could use a priority date/filing date to conduct the in depth search” (see ¶0282). Refer to ¶0173 – 174 for data extraction details as well as “text indices are also actively maintained and constructed for each document OCRd by the system to ensure text based and search predicate based querying of the underlying content in the submissions.”)
determining, by the one or more processors, that at least a portion of the extracted structured information is inaccurate; based on the determining, flagging the at least a portion of the extracted structured information; (In ¶0122; Figs.1 and 3: teaches “bootstrapping of the data is thus followed by periodic updates, which are preferably performed on daily basis to ensure that new materials are brought to the attention of the system users as quickly as possible. For example in a reexamination context, the PTO transaction records and/or image files in databases 126 (FIG. 1) are scanned to identify new events/entries. In a preferred embodiment described below the main focus is on reexamination cases, but it will be understood that other cases can be automatically processed and compiled as well, including reissue cases and user-selected cases 307.” Thus, in ¶0132 – 134, “the system identifies a subset of key documents at step 310. Again, the system may decide to filter, ignore, or prioritize the intake of documents to give more importance to some types of documents over others” and “At step 314 the documents are preferably coded in some convenient fashion to make them more easy to be indexed, sorted, queried and/or analyzed” wherein these examples are directed to determining and flagging inaccurate data for manual corrections, in accordance to the example given in ¶0047 from Applicant disclosure. Further, “As is to be expected, in some instances the documents relating to cases handled by the organization may not always be in readily accessible form in a database 126. In such instances it may be necessary to manually inspect, retrieve and scan the documents for a file/case to ensure completeness as seen in step 316” as shown in Fig. 3.)
normalizing, by the one or more processors, the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning, to transform the data into a standardized, format compatible with the patent management database; (In ¶0172; Fig. 1 (126); Fig. 5 (550); Fig. 15A (1510 and 1515): teaches “in some instances it may be desirable to “scrub” database 550 so that obvious errors are removed”, in accordance to example given in ¶0033 from Applicant disclosure. Refer to ¶0300 wherein “the relative number of applications matching the query is represented by a size of the corresponding image block” resulting in a heat map. For example, “the number of applications in class 715 could be perceived to be much larger than the number of applications found in class 700. The sizes of the matching classes could be normalized and scaled to fit within a defined area of a window using any number of conventional techniques.” See ¶0266 for data de-duplication details and ¶0197 for data extraction and organization details.)
creating and storing the normalized in a structured format in the patent management database, (In ¶0136; Fig. 3 (330 and 335): teaches “this data one or more customized case databases 335 and associated indices are constructed at step 330. The customized databases may be in the form of separate files, tables, etc., and may be configured using any number of known techniques”.)
transmitting, via the network to a client interface device, data for displaying probable next docketing activities and calculated due dates in an interactive graphical user interface. (In ¶0205; Fig. 7F: teaches a “representative example of a Personnel Profiling interface 770 is shown in FIG. 7F” wherein “As seen generally here on the left hand side of the interface, the user can elect to see case data for the Examiner, recent actions, community profile data, etc. The user can also see what actions/events are expected next from this individual”. See ¶0205 for more details of alerts being sent to the user regarding an indication “that a Notice of Allowance is expected with 90% certainty within the next 30 days, and so on”, for example.)
Gross teaches having customized docketing workflow templates as the “user may specify his/her customized channels 809, which, in some cases may correspond to a docket of cases that he/she (or their company) is affiliated with or responsible for. At this point it will be understood that the set of cases, as defined/filtered by the user, will be associated with a set of new potential events of interest that are generated as the target organization processes submissions.” (see ¶0200; Gross). However, Gross does not explicitly teach the abilities of having customized docketing workflow templates comprising jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules, updating the rules with applicable laws per country and calculating response due dates for docketing activities based on this rules, file matter type and filling/prosecution/grant date of the matter. Thus, Lundberg teaches:
customized docketing workflow templates comprising: jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules; (In ¶0048 – 49; Figs. 6 and 14: teaches “Tasks may be created for matters by manually entering tasks, or in some embodiments of the invention may further be created automatically via templates or other predefined task generation utilities. FIG. 6 illustrates a view of templates available for application to matters in one embodiment of the invention. The template name is shown at 601, and the organization associated with the template is shown at 602. The last modification of the template is reflected at 603 and 604, where the modifying user's identity and the date and time of the last modification are shown. The user has the option to delete existing templates as shown at 606, to create new templates, or to edit existing templates as shown at 605” which can include the specific rules and automatic procedures parameters claimed. Further, “Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements. For example, a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template. Also, creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules.” Refer to ¶0084 and ¶0086 – 87 for more details of the “Work Flow Templates” wherein “Matter Activities” can “allow for customized execution for different activities” such as “plurality of docket items are associated with intellectual property deadlines, and at least some of the docket items are associated with at least one activity data structure. For example, in patent prosecution an activity for an “office action received” can be created in the management system. This activity can hold e-mails, documents, notes, etc. . . . , but it does not need to have any docket dates associated or stored in it. Conversely, a “response to office action” activity has a docket task “respond to office action” in it, with 3, 4, 5 and 6 months due dates. Thus, docket tasks “live” independently of activities but are stored in, or associated with the activity.” See ¶0078 wherein “Trademarks may be managed as matters, and will have information including” data related to the country of original filing.)
updating, by the one or more processors, the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries; (In ¶0034: teaches that the “Three-Tier Architecture” of the software application, the “second tier is a Logic level that performs processing in the form of logical/mathematical manipulations (Logical Manipulations) of data inputted, in some embodiments, through the Interface level, and communicates the results of these manipulations with the Interface and/or backend or Storage level. In some embodiments, these Logical Manipulations relate to certain business rules or tasks that govern the application as a whole. In some embodiments, these Logical Manipulations and associated business rules include: the purging of messages in a legal information system, the auto-filing of a result in an IP management system, the obtaining and disseminating of secured on-line data, generating work flow templates, regulating the export control of technical documents, the bulk downloading of documents, billing, creating and managing matter clusters, configuring certain activities, managing independent docket systems, prior art cross citations, and exchange public and private messages, just to name a few.” Further in ¶0049, “creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules” which is directed to updating the jurisdiction-specific patent office deadline calculation rules with applicable laws of a plurality of countries. Finally, the user can also “create or update notes associated with his matters, check outstanding actions or dates for his matters, generate matter reports, print documents, and browse other information relating to his matters” inside their dockets (see ¶0076).)
calculating, by the one or more processors, response due dates for docketing activities based on the jurisdiction-specific patent office deadline calculation rules, a type of filing of the matter, and at least one of a filing date, a prosecution date, and a grant date of the matter; and (In ¶0049: teaches “creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules”. Further, in ¶0044, “each task has associated data that is displayed in the new tasks view, including the task name at 301, the type of task at 302, the title of the matter the task is related to at 303, the status of the task at 304, and a date associated with the task if appropriate at 305” which is already being considered in system calculations.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the abilities of having customized docketing workflow templates comprising jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules, updating the rules with applicable laws per country and calculating response due dates for docketing activities based on this rules, file matter type and filling/prosecution/grant date of the matter, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Regarding claims 2 and 13:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 1 and 12, respectively.
Gross does not explicitly teach the ability of having customized docketing workflow templates corresponding to the next most probable docketing activity. However, Lundberg further teaches:
wherein the customized docketing activity template corresponds to the at least one next most probable docketing activity. (In ¶0049 – 50; Fig. 7: teaches that “Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements. For example, a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template. Also, creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules”. Further, an example is disclosed in “FIG. 7 illustrates the activities that are associated with an amendment and response to a typical United States Patent and Trademark Office issued Office Action. The typical shortened statutory three-month date for response is shown as an activity item at 701, and is followed by subsequent deadlines for taking each allowable extension of time past that date. These items will then automatically be added to the task list of each matter to which the template is applied, creating appropriate task entries for that matter.” See ¶0048 also.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow templates corresponding to the next most probable docketing activity, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Regarding claims 3 and 15:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 2 and 13, respectively.
Gross does not explicitly teach the abilities of having customized docketing workflow templates to select docketing activity from the next most probable docketing activity and the template to update it with a date and store one response due date for the selected docketing activity. However, Lundberg further teaches:
further comprising: selecting a docketing activity from the at least one next most probable docketing activity and the customized docketing activity template to docket the docketing information for the matter; updating the customized docketing activity template with at least one date; (In ¶0048 – 49; Figs. 6 – 7: teaches that “Tasks may be created for matters by manually entering tasks, or in some embodiments of the invention may further be created automatically via templates or other predefined task generation utilities. FIG. 6 illustrates a view of templates available for application to matters in one embodiment of the invention. The template name is shown at 601, and the organization associated with the template is shown at 602. The last modification of the template is reflected at 603 and 604, where the modifying user's identity and the date and time of the last modification are shown. The user has the option to delete existing templates as shown at 606, to create new templates, or to edit existing templates as shown at 605.”)
calculating at least one response due date based on the least one date; and storing the at least one response due date for the selected docketing activity for the matter. (In ¶0049: teaches “creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules”. Further, in ¶0044, “each task has associated data that is displayed in the new tasks view, including the task name at 301, the type of task at 302, the title of the matter the task is related to at 303, the status of the task at 304, and a date associated with the task if appropriate at 305” which is already being considered in system calculations. Examiner notes that it is well-known to incorporate, modify and edit and store information pertaining to the actions taken during patent prosecution using templates process the data received such as a date.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the abilities of having customized docketing workflow templates to select docketing activity from the next most probable docketing activity and the template to update it with a date and store one response due date for the selected docketing activity, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Regarding claim 4:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claim 1.
Gross does not explicitly teach the ability of having customized docketing workflow template to access previously docketed docketing activity data for a matter. However, Lundberg further teaches:
wherein accessing the at least one previously docketed docketing activity data for the matter further comprises accessing a last previously docketed docketing activity data for the matter. (In ¶0053; Fig. 10: teaches “FIG. 10 shows a view of tasks or activities associated with a particular matter. The activity is shown at 1001, and is selectable by the user. Selecting the activity by name will open the detail list for that particular activity” wherein “Relevant dates for the activity, which may vary in type depending on the activity status, are shown at 1004. At 1005, the user may edit or delete listed activities. Because the matter shown here is an issued patent, the patent number, issue date, and other information are known and are displayed at 1006 in a matter page header” which is directed to accessing previously docketed docketing activity data that for different activities the data column further shows “date completed”.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow template to access previously docketed docketing activity data for a matter, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Regarding claims 5 and 14:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 4 and 12, respectively.
Gross does not explicitly teach the ability of having customized docketing workflow template to have a previously docketed docketing activity data for a matter that is last. However, Lundberg further teaches:
wherein the at least one previously docketed docketing activity data for the matter is a last previously docketed docketing activity data for the matter. (In ¶0053; Fig. 10: teaches “FIG. 10 shows a view of tasks or activities associated with a particular matter. The activity is shown at 1001, and is selectable by the user. Selecting the activity by name will open the detail list for that particular activity” wherein “Relevant dates for the activity, which may vary in type depending on the activity status, are shown at 1004. At 1005, the user may edit or delete listed activities. Because the matter shown here is an issued patent, the patent number, issue date, and other information are known and are displayed at 1006 in a matter page header” which is directed to accessing previously docketed docketing activity data that for different activities the data column further shows “date completed”.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow template to have a previously docketed docketing activity data for a matter that is last, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Regarding claims 9 and 18:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 8 and 17, respectively.
Gross does not explicitly teach the ability of having customized docketing workflow template to further have a record that includes docketing activity template information. However, Lundberg further teaches:
wherein the at least one record includes docketing activity template information. (In ¶0048; Figs. 6 – 7: teaches “FIG. 6 illustrates a view of templates available for application to matters in one embodiment of the invention. The template name is shown at 601, and the organization associated with the template is shown at 602. The last modification of the template is reflected at 603 and 604, where the modifying user's identity and the date and time of the last modification are shown. The user has the option to delete existing templates as shown at 606, to create new templates, or to edit existing templates as shown at 605”. Further, “FIG. 7 illustrates the activities that are associated with an amendment and response to a typical United States Patent and Trademark Office issued Office Action. The typical shortened statutory three-month date for response is shown as an activity item at 701, and is followed by subsequent deadlines for taking each allowable extension of time past that date.”)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow template to further have a record that includes docketing activity template information, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management (as disclosed by Lundberg) to the known method and system of docketing patent matters in a patent management system where the most probable next docketing activity is displayed to users (as disclosed by Gross) to carefully track prosecution and make sure that important deadlines, actions and data is not overlooked, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management to the known method and system of docketing patent matters in a patent management system where the most probable next docketing activity is displayed to users to carefully track prosecution and make sure that important deadlines, actions and data is not overlooked. See also MPEP § 2143(I)(D).
Regarding claims 10 and 19:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 9 and 18, respectively.
Gross does not explicitly teach the ability of having customized docketing workflow templates corresponding to the next most probable docketing activity. However, Lundberg further teaches:
wherein the docketing activity template information corresponds to at least one next most probable docketing activity of the probable next docketing activities. (In ¶0049 – 50; Fig. 7: teaches that “Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements. For example, a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template. Also, creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules”. Further, an example is disclosed in “FIG. 7 illustrates the activities that are associated with an amendment and response to a typical United States Patent and Trademark Office issued Office Action. The typical shortened statutory three-month date for response is shown as an activity item at 701, and is followed by subsequent deadlines for taking each allowable extension of time past that date. These items will then automatically be added to the task list of each matter to which the template is applied, creating appropriate task entries for that matter.” See ¶0048 also.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow templates corresponding to the next most probable docketing activity, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that important deadlines, actions and data is not overlooked.
Regarding claims 11 and 20:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 8 and 17, respectively.
Gross does not explicitly teach the ability of having customized docketing workflow templates stored in its system databases (i.e. the patent management database) including information being communicated “from the target organizations internal computing system (not shown) to one or more externally accessible databases 126 and websites 128, such as the aforementioned PAIR system” or other outside third-parties that are connected through the network (see ¶0050; Gross). However, Lundberg further teaches:
wherein the patent management database includes a set of docketing activity templates. (In ¶0034: teaches that the “Three-Tier Architecture” of the software application, the “second tier is a Logic level that performs processing in the form of logical/mathematical manipulations (Logical Manipulations) of data inputted, in some embodiments, through the Interface level, and communicates the results of these manipulations with the Interface and/or backend or Storage level. In some embodiments, these Logical Manipulations relate to certain business rules or tasks that govern the application as a whole. In some embodiments, these Logical Manipulations and associated business rules include: the purging of messages in a legal information system, the auto-filing of a result in an IP management system, the obtaining and disseminating of secured on-line data, generating work flow templates, regulating the export control of technical documents, the bulk downloading of documents, billing, creating and managing matter clusters, configuring certain activities, managing independent docket systems, prior art cross citations, and exchange public and private messages, just to name a few.” Further, “the Interface and Logic levels may be consolidated, or the Logic and Storage levels may be consolidated as in the case of an application with an embedded database”.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow templates stored in the patent management database, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management into a patent management database because it would carefully track prosecution and make sure that important deadlines “for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005). Finally, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management (as disclosed by Lundberg) to the known method and system of docketing patent matters in a patent management system where the most probable next docketing activity is displayed to users (as disclosed by Gross) to carefully track prosecution and make sure that important deadlines, actions and data is not overlooked, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management to the known method and system of docketing patent matters in a patent management system where the most probable next docketing activity is displayed to users to carefully track prosecution and make sure that important deadlines, actions and data is not overlooked. See also MPEP § 2143(I)(D).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gross (U.S. Pub No. 20120191757 A1) in view of Lundberg (U.S. Pub No. 20060212331 A1) in further view of Shelton (U.S. Pub No. 20070073625 A1).
Regarding claim 6:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claim 1.
Lundberg teaches identifying next most probable docketing activity by using a “probability model” that “preferably studies events within the target organization to determine their relative temporal relationship” (see ¶0126 and ¶0159; Lundberg). But neither Gross or Lundberg explicitly teach the ability of presenting the modified next most probable docketing activity by specifically displaying a pull-down menu with a list of these next most probable docketing activities. However, Shelton teaches:
wherein presenting the modified at least one next most probable docketing activity further comprises displaying a pull down menu with a list of the at least one next most probable docketing activity. (In ¶0347; Fig. 6F: teaches an “example, double-clicking on explanation 639(b) or status 641(d) will be understood to have resulted in opening drop-down panel 647(a); and similarly double-clicking on explanation 639(d) or status 641(e) will be understood to have opened drop-down panel 647(b). As shown therein, each such lower drop-down panel includes directional indicator 648(a) and 648(b), respectively, which can be used to cause the log entries to be read in chronological order, as shown in display 638, or in reverse chronological order with the most recent event stated at the top of the list”, in accordance to example interface given in ¶0071 from Applicant disclosure.)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross and Lundberg to provide the ability of presenting the modified next most probable docketing activity by specifically displaying a pull-down menu with a list of these next most probable docketing activities, as taught by Shelton in order to provide “an intuitive interface when a drop-down panel is open anytime a user is expected to take the next action for displaying context-appropriate alternatives (649(b) and 649(c) in the hypothetical case illustrated in the figure) based on the pre-determined workflow and system clock” (¶0348; Shelton), see also MPEP 2143.I.G. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of providing of the most probable next event/activity to the user and updated stored data to reflect selections previously made by the user (as disclosed by Shelton) to the known method and system for docketing information regarding patent related matter which provides direction to the user of the next action required in the filing process (as disclosed by the combination of Gross and Lundberg) to provide a prediction of the most likely/probable next event/activity using multiple event-based parameters in order to produce a more effective system, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of providing of the most probable next event/activity to the user and updated stored data to reflect selections previously made by the user to the known method and system for docketing information regarding patent related matter which provides direction to the user of the next action required in the filing process to provide a prediction of the most likely/probable next event/activity using multiple event-based parameters in order to produce a more effective system). See also MPEP § 2143(I)(D).
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Gross (U.S. Pub No. 20120191757 A1) in view of Lundberg (U.S. Pub No. 20060212331 A1) in further view of Lundberg-b (U.S. Pub No. 20060206345 A1).
Regarding claims 7 and 16:
The combination of Gross and Lundberg, as shown in the rejection above, discloses the limitations of claims 1 and 12, respectively.
Gross does not explicitly teach the ability of having customized docketing workflow template to receive input of a new docket activity to select a matter having docketed docketing activities. However, Lundberg further teaches:
further comprising: receiving input of a new docketing activity; receiving docketing information to select a matter having docketed docketing activities; (In ¶0048 – 49; Figs. 6 and 14: teaches “Tasks may be created for matters by manually entering tasks, or in some embodiments of the invention may further be created automatically via templates or other predefined task generation utilities. FIG. 6 illustrates a view of templates available for application to matters in one embodiment of the invention. The template name is shown at 601, and the organization associated with the template is shown at 602. The last modification of the template is reflected at 603 and 604, where the modifying user's identity and the date and time of the last modification are shown. The user has the option to delete existing templates as shown at 606, to create new templates, or to edit existing templates as shown at 605” which can include the specific rules and automatic procedures parameters claimed. Further, “Templates include such items as creating checklists to ensure proper drafting criteria are met, creating tasks with associated dates such as deadlines for responses, and other similar tasks that are common to many applications and have predictable elements. For example, a client may request that a certain checklist of drafting criteria be completed before each filing, and the checklist may be implemented as a task associated with each of the client's matters via use of a template. Also, creation of docket dates and tasks associated with those dates in a system such as the present invention may be automatically calculated and created by a template, ensuring proper application of applicable rules.”)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross to provide the ability of having customized docketing workflow template to receive input of a new docket activity to select a matter having docketed docketing activities, as taught by Lundberg in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0022; Lundberg), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that “important status information such as potential bar dates, deadlines for response to office action amendments and responses, and other data are not overlooked” (see Lundberg: ¶0005).
Gross at least teaches sending and displaying notifications/alerts to users to keep them informed about records and their events such as “user could be informed through SMS, email, etc., of a recently discovered asset that has just gone abandoned (or changed status) since a last iteration through the applicable database(s)” (see ¶0187 and ¶0272; Gross). Also, Lundberg teaches identifying next most probable docketing activity by using a “probability model” that “preferably studies events within the target organization to determine their relative temporal relationship” (see ¶0126 and ¶0159; Lundberg). But neither Gross or Lundberg teaches the abilities of identifying docketing activity discrepancies that indicate non-next most probable docketing activities to and present such discrepancy indications to the user. However, Lundberg-b teaches:
identifying a docketing activity discrepancy in the matter, wherein the docketing activity discrepancy indicates a new docketing activity is not one of the at least one next most probable docketing activities; and presenting, on a client interface device, the docketing activity discrepancy (In ¶0090: teaches that “the management system allows users to enter docket entries relating to a matter activity 1470. These docket entries are editable by authorized users of the system. The data information downloaded from the governmental agency is stored in parallel 1480 to the user created dockets. This data is maintained in a read-only format. If there is a discrepancy between the two parallel data sets an alert is issued by the management system.”)
It would have been obvious to one of ordinary skill in the art before the earliest effective filing date of the claimed invention to modify Gross and Lundberg to provide the abilities of identifying docketing activity discrepancies that indicate non-next most probable docketing activities to and present such discrepancy indications to the user, as taught by Lundberg-b in order to provide “a legal entity or a client or other affiliate of a legal entity access to data management functions to facilitate legal proceedings” and “to track data for a client, such as patent and trademark status, docketing, documentation, and billing.” (¶0024; Lundberg-b), see also MPEP 2143.I.G. Further, one of ordinary skill in the art would have been motivated to apply the known technique of incorporating customized work flow templates regarding actions and tasks pertaining to patent management because it would carefully track prosecution and make sure that “important status information such as potential bar dates, deadlines for response to office action amendments and responses, and other data are not overlooked” (see Lundberg-b; ¶0006). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the known technique of identifying docketing activity discrepancies in the patent matter where the discrepancies indicate docketing activities that are not most probable (as disclosed by Lundberg-b) to the known method and system for managing patent prosecution docketing activities (as disclosed by the combination of Gross and Lundberg) to make sure important status information such as potential bar dates, deadlines for response to office action amendments and responses, and other data are not overlooked, because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of identifying docketing activity discrepancies in the patent matter where the discrepancies indicate docketing activities that are not most probable to the known method and system for managing patent prosecution docketing activities to make sure “important status information such as potential bar dates, deadlines for response to office action amendments and responses, and other data are not overlooked” (see Lundberg-b; ¶0006). See also MPEP § 2143(I)(D).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Albertelli (U.S. Pub No. 20140019371 A1) is pertinent because it “relates to a system and method for assisting lending institutions mortgage servicers, investors, and law firms with the foreclosure process. More specifically, the present disclosure relates to a system and method for tracking, managing and accelerating specific foreclosure litigation cases through the court system.”
Lopez (U.S. Pub No. 20100325171 A1) is pertinent because it “relates to a system and method for gathering and analyzing litigation marketplace intelligence data. More specifically, the invention relates to a to a system and method for gathering and analyzing litigation marketplace intelligence data that facilitates transfer of data from court docket databases to a customer relationship management program using an online, on-demand productivity application.”
Hagedorn (U.S. Pub No. 20060075479 A1) is pertinent because it “provide an improved patent administration system that enables an improved business method for the provision of patent-related services.”
Vanbuskirk (U.S. Patent No. 6308157 B1) is pertinent because it “relates to the field of computer speech recognition and more particularly to an efficient method and system for informing a system user of available voice commands.”
Carothers (U.S. Pub No. 20180285994 A1) is pertinent because it “relate generally to computer applications. More specifically, various embodiments relate to legal analytics systems and methods for discovering meaningful patterns in legal data.”
Lopez (U.S. Pub No. 20110213830 A1) is pertinent because it is “generally related to the field of computers and similar technologies and, in particular, to software utilized in this field. Embodiments are additionally related to SaaS (Software as a Service) and computer networks and cloud computing applications. Embodiments are also related to intellectual property docketing methods and systems, including those that are capable of docketing/tracking patent and trademark matters filed with the U.S. Patent & Trademark Office and other intellectual property agencies, such as, for example, the European Patent Office.”
Lee (U.S. Pub No. 20120323804 A1) is pertinent because it is “directed to computer-related and/or assisted systems, methods and computer readable mediums for analyzing, searching, and accessing information concerning intellectual property. More specifically, it relates to methods and systems for enabling the integration of and/or integration across a variety of intellectual property and/or intellectual property-related systems and/or information.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ivonnemary Rivera Gonzalez whose telephone number is (571)272-6158. The examiner can normally be reached Mon - Fri 9:00AM - 5:30PM.
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/IVONNEMARY RIVERA GONZALEZ/Examiner, Art Unit 3626
/NATHAN C UBER/Supervisory Patent Examiner, Art Unit 3626
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