Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
DETAILED ACTION
The following FINAL Office Action is in response to communication filed on 11/14/2025.
Priority
The Examiner has noted the Applicants claiming Priority from Provisional Application 63/442,439 filed 01/31/2023.
Status of Claims
Claims 1-4, 7, 10, 12-16, 19 are currently pending.
Claims 1-3, 7, 10, 12-13, 19 are currently amended.
Claims 5-6, 8-9, 11, 17-18, 20 are cancelled by Applicant.
Claims 1-4, 7, 10, 12-16, 19 are currently under examination and have been rejected as follows.
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Response to Amendment
The previously pending rejections under 35 USC 101, will be maintained. The 101 rejection is updated in view of the amendments.
New grounds for rejection 35 USC 103 are applied as necessitated by the amendments.
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Response to Arguments
Regarding Applicant’s remarks pertaining to 35 USC 101:
Applicant argues on page 6 of remarks 11/14/2025:
“The Office Action interprets the limitations of claim 1 as falling into the Mental Processes - Concepts Performed in the Human Mind grouping of abstract ideas. Applicant respectfully disagrees although has nonetheless amended the claims to presently recite a system and method that improve the functioning of a computer and therefore integrate any alleged abstract idea into a practical application.
Continued on page 7: “Under Enfish, McRO, Finjan and CardioNet, a claim such as the one above is patent-eligible because it ‘focuses on an improvement to the computer's functionality itself, not on economic or other tasks.’ The presently amended claims recite a specific technological method integrating push reminders with external data collection. This claimed method of integration improves how the computer collects and assembles data for presentation to a user and represents a novel process for displaying and organizing a user-guided selection of relevant data collected from external sources. Therefore, claim 1 transforms any alleged abstract idea into a practical application and is patent-eligible under § 101.”
Examiner respectfully disagrees. Though the solution presented in the claims as amended recites a technological method integrating push reminders with external data collection, insufficient technological detail is provided in the claims for how the functions are accomplished or how the computer technology is improved. For example, among others, the amended limitations “generate a set of metrics related to the annotated information related to the upcoming task”, “weighing the one or more considerations according to the set of metrics generated by the software application”, “generating a prioritized set of recommended actions related to the upcoming task and the associated deadline”, lack specific technical details about the metrics or how they are generated, how the considerations are weighed, or how the recommendations are prioritized, and therefore fall short of demonstrating how the computer technology itslef is improved.
Accordingly, the previously pending rejections under 35 USC 101 will be maintained. The 101 rejection is updated in view of the amendments.
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Regarding Applicant’s remarks pertaining to 35 USC 103:
Applicant submits on page 7 of remarks 11/14/2025:
“The Office Action asserts that Lollichon teaches ‘wherein reminding the user of the upcoming task comprises pushing a reminder to a software application’, citing to paragraph [0115] of Lollichon. Lollichon appears to auto-populate a reporting document in response to a trigger notification sent from system to system. The trigger notification in Lollichon does not induce the operations of generate a link to the guided reminder tool user interface; embed the link to the guided reminder tool user interface within the reminder; collect information related to the upcoming task from a docketing system and apply annotations to the information; generate a set of metrics related to the annotated information related to the upcoming task; simultaneously push the reminder containing the embedded link to the user and transmit the annotated information and the set of metrics related to the annotated information to the guided reminder tool; as the reminder induces the software application to do so in the presently amended independent claims. For at least this reason, Lollichon does not teach or suggest each and every element of presently amended independent claim 1 and 19. Horvitz does not cure this deficiency of Lollichon.”
Examiner fully considers the amended claim limitations but finds them moot based on new grounds of rejection. Examiner presents art reference Lee US 20090307577 A1, hereinafter Lee, as analogous art to intellectual property docketing and reminder systems. Lee teaches the amended limitations “collect information related to the upcoming task from a docketing system and apply annotations to the information” at ¶ [0122]; “simultaneously push the reminder containing the embedded link to the user and transmit the annotated information [..] to the guided reminder tool” at ¶s [0105, 0149]; and “in response to receiving a selection of the link, automatically populating the guided reminder tool user interface with the annotated information related to the upcoming task and displaying the guided reminder tool user interface” at Fig. 20, steps 2024, 2026, and related text. Further support for the amended limitation “generate a set of metrics related to the annotated information related to the upcoming task; [..] transmit the [..] set of metrics related to the annotated information to the guided reminder tool” can be found in previously presented reference Horvitz at ¶ [0067].
Accordingly, new grounds for rejection 35 USC 103 are applied as necessitated by the amendments. Additional details and citations of the art rejections are included in the 103 rejection section below.
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Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4, 7, 10, 12-16, 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-4, 7, 10, 12-16 are directed to a method or process which is a statutory category.
Claim 19 is directed to a system or machine which is a statutory category.
Step 2A Prong One: The claims recite, describe, or set forth a judicial exception of an abstract idea (see MPEP 2106.04(a)). Specifically, the claims recite, describe or set forth concepts performed in the human mind (including observation, evaluation, judgement, and opinion) such as: “providing information for project tasks”, “collect information related to the upcoming task”, and “receiving input from the user related to the one or more considerations” as examples of observation; “producing one or more considerations for the user related to the upcoming task and the associated deadline”, and “weighing the one or more considerations” as examples of evaluation or judgement; “generating a prioritized set of recommended actions related to the upcoming task and the associated deadline” as an example of opinion; and “presenting the prioritized set of recommended actions” as an example of judgement. Organizing tasks, scheduling reminders, evaluating relative importance of the tasks, and making recommendations fall within concepts performed in the human mind (including an observation, evaluation judgement, opinion) under the abstract grouping of Mental Processes (MPEP 2106.04(a)(2) III).
Examiner also points to MPEP2106.04(a)(2) III C finding that computer aided processes such as: 1. Performing a mental process on a generic computer, 2. Performing a mental process in a computer environment, 3. Using a computer as a tool to perform a mental process can still be considered to recite a mental process.
Accordingly, the claims recite an abstract idea.
Step 2A Prong Two: Independent claims 1, 19 recite the following additional elements: “guided reminder tool”, “user interface”, “automated docketing system”, “semi-automated docketing system”, “docketing task reminder tool”. The functions of these additional elements include examples such as “reminding a user”, “providing information”, “producing one or more considerations”, “receiving input”, “weighing the one or more considerations according to predetermined parameters”, “recommending a course of action”, “providing reminders,” and “provide… recommendations”. The additional elements are recited at a high level of generality (i.e. as a generic computer performing functions of performing calculations, organizing, communicating and presenting data, etc.) such that they amount to no more than mere instructions to apply the exception using generic computer components. Therefore, these functions can be viewed as not meaningfully different than a business method or mathematical algorithm being applied on a general-purpose computer as tested per MPEP 2106.05(f)(2)(i). The claims are directed to an abstract idea and the judicial exception does not integrate the abstract idea into a practical application.
Step 2B: According to MPEP 2106.05(f)(1), considering whether the claim recites only the idea of a solution or outcome i.e., the claims fail to recite the technological details of how the actual technological solution to the actual technological problem is accomplished. The recitation of claim limitations that attempt to cover an entrepreneurial and thus abstract solution to an entrepreneurial problem with no technological details on how the technological result is accomplished and no description of the mechanism for accomplishing the result do not provide significantly more than the judicial exception.
Dependent claims 2-4, 7, 10, 12-16 do not appear to provide any further additional computer-based elements, let alone for such additional computer-based elements to integrate the abstract idea into practical application (Step 2A Prong Two) or providing significantly more (Step 2B).
Further, dependent claims 2-4, 7, 10, 12-16 merely incorporate the additional elements recited in claim 1 along with further narrowing of the abstract idea of claim 1 along with their execution of the abstract idea. Specifically, the dependent claims narrow the “guided reminder tool” and “user interface” to capabilities such as associating, providing, receiving, sending, opening, comprising, weighing, and recommending various forms of data such as tasks, matters, prompted questions, reminders, embedded links, information, deadlines, portfolios, considerations, user input, recommendations, etc. which, when evaluated per MPEP 2106.05(f)(2) represent mere invocation of computers to perform existing processes. Therefore, the additional elements recited in the claimed invention individually and in combination fail to integrate a judicial exception into a practical application (Step 2A prong two) and for the same reasons they also fail to provide significantly more (Step 2B). Thus, claims 1-4, 7, 10, 12-16, 19 are reasoned to be patent ineligible.
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REJECTIONS BASED ON PRIOR ART
Examiner Note: Some rejections will contain bracketed comments preceded by an “EN” that will denote an examiner note. This will be placed to further explain a rejection.
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Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 7, 10, 12-16, 19 are rejected under 35 U.S.C. 103 as being unpatentable over:
Lollichon US 20090254393 A1, hereinafter Lollichon in view of
Horvitz US 20080005055 A1, hereinafter Horvitz, in further view of
Lee US 20090307577 A1, hereinafter Lee. As per,
Regarding claim 1: Lollichon teaches:
A method of providing recommendations for project tasks with a guided reminder tool comprising:
pushing a reminder of an upcoming task with an associated deadline to a software application (Lollichon ¶ [0115]: the docketing management system automatically notifies [EN: reminds] the document management system [EN: software application] to open a new reporting communication document for the file. The file is opened, and file information including client address information, file identifier, client file reference number, file title, and inventor name are retrieved from the profile for the file and used to fill in the relevant information for the newly opened file. Docket entry data such as Office Action issue date and initial and inextendible due dates are then used to fill in variable information that depends on the docket entries), wherein the software application is configured to, in response to receiving the reminder, execute the following operations:
generate a link to a guided reminder tool user interface; embed the link to the guided reminder tool user interface within the reminder (Horvitz mid-¶ [0064]: For instance, the reminders can be linked to system tools that can bring back one or more applications [EN: guided reminder tool], screens [EN: user interface], etc. to enable utilizing an overall computing context as part of the reminder);
[..]
producing, on the guided reminder tool user interface, one or more considerations for the user related to the upcoming task and the associated deadline (Lollichon mid-¶ [0083]: The user locates and reviews an open (unanswered) docket entry in the daily docket at step S715. At step S720, the user opens a billing and/or word processing (document) module(s) to obtain information [considerations] which can be used to properly answer the docket program. For example, a word processing (document) module may contain searchable records including images of incoming client instructions and/or filing receipts which indicate that a document was filed with the U.S. Patent and Trademark Office. [Also see at Fig. 4 Word Processing Link embedded on the Daily Docket user interface]);
receiving input from the user related to the one or more considerations (Lollichon end-¶ [0083]: At step S725, the user reviews the information in the billing and/or word processing (document) module, and at step S730 the user enters the answer to the docket entry into the user's docket program graphical user interface).
Although Lollichon teaches reminding users of upcoming tasks and incorporating user input for considerations related to the tasks, Lollichon does not specifically teach generating metrics and annotations related to the tasks or weighing the considerations according to predetermined parameters to recommend an action.
However, Horvitz in analogous art of automated reminder tools teaches or suggests:
generate a set of metrics related to the annotated information related to the upcoming task; [..] transmit the [..] set of metrics related to the annotated information to the guided reminder tool (Horvitz mid-¶ [0067]: The indication component 404 can also include an integrative component 508 that can consider the expected value [EN: metric] of reminding the user. For instance, the integrative component 508 can determine a timing and cost of information to the user, given the cost of interrupting the user now or at different times in the future, and the cost of lost opportunities with delayed relay of the information. Further, the integrative component 508 can consider standing goals of a user such as types of information that the user desires to be reminded about… The indication component 404 can selectively output reminders based upon the evaluations of one or more of the relevance component 502, the knowledge component 504, the valuation component 506, and/or the integration component 508);
weighing the one or more considerations according to the set of metrics generated by the software application; and generating a prioritized set of recommended actions related to the upcoming task and the associated deadline; and presenting the prioritized set of recommended action to the user on the guided reminder tool user interface, wherein recommending the course of action is based on the one or more considerations [EN: the final bolded limitation was previously presented but neither included in Applicant Amendments nor stricken through to indicate removal; Examiner considers this limitation despite ambiguity] (Horvitz ¶ [0007]: The disclosed innovative architecture is a context sensitive reminder and service facilitator [EN: guided reminder tool]. ¶ [0097]: The preferences subcomponent 708 can also include a cost-benefit preferences subcomponent 714 that allows the user (or device) to enter criteria that drives the cost-benefit analysis [EN: consideration] process. For example, the user can assert a ratio hat must be met (e.g., benefit over cost 3:1) for the location or merchant to be presented [EN: recommended] to the user for consideration… the user can override or weight one merchant selection over another via the knowledge preferences subcomponent 716. ¶ [0060]: …the indication component 404 can provide reminders to the entity pertaining to birthdays, … appointments, and the like [EN: upcoming tasks/deadlines]. ¶ [0061]: The indication component 404 can provide reminders based upon considerations of relevance [EN: priority], user knowledge, value of the knowledge, and/or expected value [EN: metric] (e.g., based on timing and cost of informing the user). The indication component 404 can evaluate one or more of these considerations based upon the identified context from the context component 402).
Horvitz and Lollichon are found as analogous art of automated reminder tools. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Lollichon’s docketing management system and method to have included Horvitz’s teachings around weighing upcoming task considerations according to predetermined parameters to recommend an action. The benefit of these additional features would have improved user efficiency and management of the user environment (Horvitz ¶ [0004]) and provided more effective mechanisms for conducting business (Horvitz ¶ [0005]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Lollichon in view of Horvitz (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of automated reminder tools. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Lollichon in view of Horvitz above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
Furthermore, Lee in analogous art of automated reminder tools teaches or suggests:
collect information related to the upcoming task from a docketing system and apply annotations to the information (Lee ¶ [0122]: Another feature of the search function 1002 optionally is the image annotation tool 1006. The annotation tool 1006 enables users to annotate images and text in IP, including patent drawings. Those annotations can be saved and can be categorized. For example, annotated drawings or images can be saved in the context of projects in order that notes and other thoughts of the user can be tied to a project [EN: upcoming task]);
simultaneously push the reminder containing the embedded link to the user and transmit the annotated information [..] to the guided reminder tool (Lee ¶ [0105]: A further feature added to the reporting function may be the automatic reminder 9205…. A user that operates on an IP system with an IP docketing application [EN: guided reminder tool] may be notified through email of an impending docket date. The reminder message may include the substance of the task that must be done. The user may be provided, e.g., through email, with the one or more forms correlating to a task, which may be filled out [EN: annotated] to complete the task. End-¶ [0149]: …the forms generator 1414 may generate, for example, current mailing addresses, hyperlinks, and/or also may facilitate communication via facsimile and/or e-mail through the integrated system Website with correspondents);
in response to receiving a selection of the link, automatically populating the guided reminder tool user interface with the annotated information related to the upcoming task and displaying the guided reminder tool user interface (See Lee Fig. 20 and related text: step 2024: Hyperlink docket action to relevant rule supporting calculation of dates and identification of action -> step 2026: Produce appropriate visualization tool for type of report).
Lee, Horvitz and Lollichon are found as analogous art of automated reminder tools. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Lollichon / Horvitz’ docketing management system and method to have included Lee’s teachings around annotating documents and reminders in intellectual property applications. The benefit of these additional features would have provided streamlined the ability of IP professionals to more easily integrate information across applications (Lee ¶ [0015, 0019]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Lollichon in view of Horvitz and Lee (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of automated reminder tools. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Lollichon in view of Horvitz and Lee above, the to-be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
Regarding claim 2: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein the project is associated with a matter to which the user is assigned (Lollichon mid-¶ [0043]: The different roles assigned to users correspond to different levels of authorization to perform specified activities using the billing, docketing and document management program, including viewing docket entries, creating and applying docketing entries, deleting docket entries, preparing answers for docket entries, signing answers or docket entries, approving signed answers for docket entries, creating docket templates for specified activities).
Regarding claim 3: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein producing, on the guided reminder tool user interface, one or more considerations comprises providing one or more prompted questions for the user on the guided reminder tool user interface (Lollichon mid-¶ [0083]: The user locates and reviews an open (unanswered) docket entry [EN: prompted questions] in the daily docket at step S715. At step S720, the user opens a billing and/or word processing (document) module(s) to obtain information which can be used to properly answer the docket program… at step S730 the user enters the answer to the docket entry into the user's docket program graphical user interface. [Also see at Fig. 4 Word Processing Link embedded on the Daily Docket user interface]).
Regarding claim 4: Lollichon / Horvitz / Lee teaches all the limitations of claim 3 above.
Lollichon further teaches:
wherein receiving input comprises receiving answers to the one or more prompted questions from the user through the guided reminder tool user interface (Lollichon mid-¶ [0083]: The user locates and reviews an open (unanswered) docket entry [EN: prompted questions] in the daily docket at step S715. At step S720, the user opens a billing and/or word processing (document) module(s) to obtain information which can be used to properly answer the docket program… at step S730 the user enters the answer to the docket entry into the user's docket program graphical user interface).
Regarding claim 7: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein pushing the reminder of the upcoming task with the associated deadline to the software application comprises sending a reminder via an electronic communication (Lollichon ¶ [0082]: Numerous actions may be triggered in the billing, docketing and document management system by the creation or handling of new docketing entries for a file. For instance, some actions may trigger automated “urgent' email alerts to one or more employees responsible for the associated file).
Regarding claim 10: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein the information related to the upcoming task comprises data related to the project information (Lollichon ¶ [0049]: The billing, docketing and document management program described herein will apply specific data to templates for bills, dockets and documents in order to create specified bills, dockets [EN: upcoming tasks] and documents. Thus, information specific to clients (e.g., contact person, address) and information specific to files (e.g., title, inventors, filing date, reference numbers [EN: bibliographic information]) may be obtained).
Regarding claim 12: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein the information related to the upcoming task comprises data received by the software application from a docketing system (Lollichon ¶ [0022]: FIGS. 11A-11B are exemplary screenshots [EN: user interface] showing unique system identifiers called mail codes which are associated in the system specified activities [EN: upcoming tasks], and a docket template triggered by specified activity information in a docketing program for billing, docketing and document management, according to an aspect of the present disclosure).
Regarding claim 13: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein producing, on the guided reminder tool user interface, one or more considerations comprises providing one or more prompts on the guided reminder tool user interface for user interaction (Lollichon ¶ 0088]: Additionally, the screen on which docket entries are provided in the daily docket [EN: user interface] may also provide a drop-down selection [EN: prompt] of possible answers in the ‘action’ column in which an answer for the docket entry is to be provided. Mid-¶ [0083]: The user locates and reviews an open (unanswered) docket entry [EN: prompted questions] in the daily docket at step S715. At step S720, the user opens a billing and/or word processing (document) module(s) to obtain information which can be used to properly answer the docket program… at step S730 the user enters the answer to the docket entry into the user's docket program graphical user interface).
Regarding claim 14: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein the upcoming task comprises a foreign filing deadline, a provisional patent conversion deadline, an issue fee deadline, a divisional case filing deadline, a continuation case filing deadline, an office action response deadline, a fee payment deadline, or other deadlines (Lollichon ¶ [0114]: The content of the communication may also be customized for each client by linking the “action’ dates set in the docketing management system to predetermined fields in the document template. For example, where an Office Action is issued on a January 1 and an extendible initial due date for Response is April 1, the communication reporting the Office Action will automatically indicate that the Office Action was issued on January 1' and the extendible initial due date for Response is April 1).
Regarding claim 15: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Lollichon further teaches:
wherein the one or more considerations comprise questions related to fees [..] prosecution history [..] (Lollichon mid-¶ [0127]: A checkbox is also provided in FIG. 15 for the administrator to indicate that the fees for the professional services are fixed, and to enter the fixed fee if appropriate. Mid-¶ [0085]: The exemplary intellectual property law firm may save a history of incoming and outgoing communications, including client instructions, communications to and from the U.S. Patent and Trademark Office, and reporting letters and bills sent to clients. In the example shown in FIG. 12, history information available by clicking on a docket entry shows that a final rejection was received on Mar. 6, 2008. In the parlance of an intellectual property law firm, this information could be used to confirm that a Response to a previous non-final rejection was filed, in that a final rejection could not be issued if a Response to a previous non-final rejection was not filed. The information shown in FIG. 12 is provided on a screen that includes other file information, including the client, the client’s internal reference number for the file, and a summary of all outstanding docket entries for the file).
Although Lollichon teaches considerations comprising questions related to fees and prosecution history, Lollichon does not specifically teach considerations comprising questions related to associated commercial products, business strategic benefit, and costs of action.
However, Horvitz in analogous art of automated reminder tools teaches or suggests:
wherein the one or more considerations comprise questions related to [..] associated commercial products [..] business strategic benefit, costs of action [..] (Horvitz mid-¶ [0100]: At 904, cost-benefit analysis is performed related to satisfaction of the need at likely locations along the user path of travel. At 906, merchants are notified of the user need to purchase available products and/or services).
Horvitz, Lee and Lollichon are found as analogous art of automated reminder tools. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Lollichon’s docketing management system and method to have included Horvitz’s teachings around considerations comprise questions related to associated commercial products, business strategic benefit, and costs of action. The benefit of these additional features would have improved user efficiency and management of the user environment (Horvitz ¶ [0004]) and provided more effective mechanisms for conducting business (Horvitz ¶ [0005]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Lollichon in view of Lee and Horvitz (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of automated reminder tools. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Lollichon in view of Lee and Horvitz above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
Examiner notes that the information of different data in the questions regarding considerations in claim 15 is construed as nonfunctional descriptive material and is given no patentable weight because these items have no functional relationship with a computer in the claim. This is the same as the example in MPEP 2111.05 of a table containing batting averages, where the information only has significance to a user reading the information. Nonetheless, for compact prosecution, art has been applied to the “names” of the data.
Regarding claim 16: Lollichon / Horvitz / Lee teaches all the limitations of claim 1 above.
Although Lollichon teaches reminding users of upcoming tasks and incorporating user input for considerations related to the tasks, Lollichon does not specifically teach weighing user input related to the considerations.
However, Horvitz in analogous art of automated reminder tools teaches or suggests:
wherein weighing the one or more considerations comprises weighing user input related to the one or more considerations (Horvitz ¶ [0097]: The preferences subcomponent 708 can also include a cost-benefit preferences subcomponent 714 that allows the user (or device) to enter criteria that drives the cost-benefit analysis [EN: consideration] process. For example, the user can assert a ratio that must be met (e.g., benefit over cost 3:1) for the location or merchant to be presented [EN: recommended] to the user for consideration… the user can override or weight one merchant selection over another via the knowledge preferences subcomponent 716).
Rationales to have modified / combined Lollichon / Horvitz / Lee are above and reincorporated.
Regarding claim 19: Lollichon teaches:
A docketing system including a guided reminder tool comprising:
an automated or semi-automated docketing system (Lollichon ¶ [0029]: A docket is a list of reminders and deadlines for completing specified actions. An individual docket entry is an individual reminder or deadline for completing specified actions. ¶ [0041]: FIG. 1 shows a communications network architecture for billing, docketing and document management. The communications system shown in FIG. 1 includes an administrator computer 111 by which an administrator can enter, delete, revise and access docketing information for billing, docketing and document management. End-¶ [0056]: The various computers in the system of FIG. 1 may be
updated automatically for each change, or periodically in the event that docket entries are changed often);
a docket task reminder tool in communication with the docketing system, the docketing task reminder tool configured to execute the following operations in response to receiving a reminder of an upcoming task from the guided reminder tool (Lollichon ¶ [0008]: Docketing programs have also been developed that allow an employee to generate sets of docketing entries in a docket for different activities, clients and files. A set of docketing entries may be added to a master docket used to provide reminders and to monitor completion of tasks for the business's activities, clients and files. A set of docketing entries may include docketing entries for activities such as obtaining required information, providing completion deadline reminders, forwarding documents to clients for review, forwarding final versions of bills to clients, and filing documents);
generate a link to a guided reminder tool user interface; embed the link to the guided reminder tool user interface within the reminder (Horvitz mid-¶ [0064]: For instance, the reminders can be linked to system tools that can bring back one or more applications [EN: guided reminder tool], screens [EN: user interface], etc. to enable utilizing an overall computing context as part of the reminder);
[..]
[..].
Although Lollichon teaches reminding users of upcoming tasks and incorporating user input for considerations related to the tasks, Lollichon does not specifically teach generating metrics and annotations related to the tasks or weighing the considerations according to predetermined parameters to recommend an action.
However, Horvitz in analogous art of automated reminder tools teaches or suggests:
generate a set of metrics related to the annotated information related to the upcoming task; [..] transmit the [..] set of metrics related to the annotated information to the guided reminder tool (Horvitz mid-¶ [0067]: The indication component 404 can also include an integrative component 508 that can consider the expected value [EN: metric] of reminding the user. For instance, the integrative component 508 can determine a timing and cost of information to the user, given the cost of interrupting the user now or at different times in the future, and the cost of lost opportunities with delayed relay of the information. Further, the integrative component 508 can consider standing goals of a user such as types of information that the user desires to be reminded about… The indication component 404 can selectively output reminders based upon the evaluations of one or more of the relevance component 502, the knowledge component 504, the valuation component 506, and/or the integration component 508);
Horvitz and Lollichon are found as analogous art of automated reminder tools. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Lollichon’s docketing management system and method to have included Horvitz’s teachings around providing user-interactive recommendations for docket tasks. The benefit of these additional features would have improved user efficiency and management of the user environment (Horvitz ¶ [0004]) and provided more effective mechanisms for conducting business (Horvitz ¶ [0005]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Lollichon in view of Horvitz (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of automated reminder tools. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Lollichon in view of Horvitz above, the to- be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
Furthermore, Lee in analogous art of automated reminder tools teaches or suggests:
collect information related to the upcoming task from a docketing system and apply
annotations to the information (Lee ¶ [0122]: Another feature of the search function 1002 optionally is the image annotation tool 1006. The annotation tool 1006 enables users to annotate images and text in IP, including patent drawings. Those annotations can be saved and can be categorized. For example, annotated drawings or images can be saved in the context of projects in order that notes and other thoughts of the user can be tied to a project [EN: upcoming task]);
simultaneously push the reminder containing the embedded link to the user and transmit the annotated information [..] to the guided reminder tool (Lee ¶ [0105]: A further feature added to the reporting function may be the automatic reminder 9205…. A user that operates on an IP system with an IP docketing application [EN: guided reminder tool] may be notified through email of an impending docket date. The reminder message may include the substance of the task that must be done. The user may be provided, e.g., through email, with the one or more forms correlating to a task, which may be filled out [EN: annotated] to complete the task. End-¶ [0149]: …the forms generator 1414 may generate, for example, current mailing addresses, hyperlinks, and/or also may facilitate communication via facsimile and/or e-mail through the integrated system Website with correspondents);
the guided reminder tool configured to, in response to receiving the annotated information and the set of metrics transmitted by the docket task reminder tool, populate the guided reminder tool user interface with the annotated information related to the upcoming task and display the guided reminder tool user interface for a user (See Lee Fig. 20 and related text: step 2024: Hyperlink docket action to relevant rule supporting calculation of dates and identification of action -> step 2026: Produce appropriate visualization tool for type of report).
Lee, Horvitz and Lollichon are found as analogous art of automated reminder tools. It would have been obvious to one skilled in the art, before the effective filing date of the invention, to have modified Lollichon / Horvitz’ docketing management system and method to have included Lee’s teachings around annotating documents and reminders in intellectual property applications. The benefit of these additional features would have provided streamlined the ability of IP professionals to more easily integrate information across applications (Lee ¶ [0015, 0019]). The predictability of such modifications and/or variations, would have been corroborated by the broad level of skill of one of ordinary skills in the art as articulated by Lollichon in view of Horvitz and Lee (see MPEP 2143 G).
Further, the claimed invention could have also been viewed as a mere combination of old elements in a similar field of automated reminder tools. In such combination each element would have merely performed same organizational and managerial function as it did separately. Thus, one of ordinary skill in the art would have recognized that, given existing technical ability to combine the elements, as evidenced by Lollichon in view of Horvitz and Lee above, the to-be combined elements would have fit together like pieces of a puzzle in a logical, complementary, technologically feasible and/or economically desirable manner. Thus, it would have been reasoned that the results of the combination would have been predictable (see MPEP 2143 A).
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Conclusion
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The following art is made of record and considered pertinent to Applicant’s disclosure:
S. A. Bidarahalli, S. Palani, R. Sadanand and O. N. Sringeri, “Patent services CRM with integrated docket system,” 2012 2nd IEEE International Conference on Parallel, Distributed and Grid Computing, Solan, India, 2012, pp. 205-209, doi: 10.1109/PDGC.2012.6449818.
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Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/REED M. BOND/Examiner, Art Unit 3624 February 4, 2026
/HAMZEH OBAID/Primary Examiner, Art Unit 3624 February 5, 2026
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