Ex Parte Lee et al

Patent Trial and Appeal Board

Jul 1, 2016

12549307 (P.T.A.B. Jul. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/549,307 08/27/2009 G. Roger Lee
26191 7590 07/06/2016
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
11997-0069001 8763
EXAMINER
ASHRAF, WASEEM
ART UNIT PAPER NUMBER
2455
NOTIFICATION DATE DELIVERY MODE
07/06/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte G. ROGER LEE, SON NGUYEN,
BEAU F. MERSEREAU, and JOHN A. DRAGSETH
Appeal2015-001017
Application 12/549,307
Technology Center 2400
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-18, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to an e-mail client interface adapted to
interact with documents pertaining to a document management system, such
1 According to Appellants, the real party in interest is Fish & Richardson
P.C. (App. Br. 1).
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Application 12/549,307
that emails may be saved directly into the document management system
(Spec. 2-3). Claim 1 is illustrative of the invention and reads as follows:
1. A computer-implemented document management
method, comprising:
displaying in a computerized messaging application a
plurality of folders for storing electronic mail messages;
analyzing content in one or more displayed electronic
mail messages to locate identifiers associated with matters in a
document management system, wherein the identifiers are
included in fields of the electronic mail messages that receive
information entered by users who sent the electronic mail
messages;
displaying concurrently with a first of the one or more
displayed messages, at least part of a name of a first of the
matters in the document management system, the first of the
matters identified based on content in the first of the one or
more displayed electronic mail messages in the fields that
receive information entered by users who sent the electronic
mail messages, the name being identified by applying an
identifier from the first of the one or more displayed electronic
mail messages to the document management system so as to
obtain a matter name stored by the document management
system;
generating a user-selectable object that, when selected,
automatically causes the generation of a document management
display for a user of the messaging application, the document
management display to show second information about the first
of the matters, wherein the second information is not included
in the selected electronic mail message and provides additional
information not provided by the first information; and
receiving a user selection of the user-selectable object
and in response, automatically displaying a project mode that
displays the document management display including visual
indicators for documents that correspond to the first of the
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matters and that are selectable to open documents that
correspond to the first of the matters, and that displays the
second information.
Sinha
Nakayama
Patel
Stignani
Tannier
References
US 2002/0178229 Al
US 2005/0049934 Al
US 2006/0069690 Al
US 2008/0082929 Al
US 2009/0235280 Al
The Examiner's Rejections
Nov. 28, 2002
Mar. 3, 2005
Mar. 30, 2006
Apr. 3, 2008
Sept. 17, 2009
Claims 1---6, 8, 9, and 13-16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Sinha, Patel, Nakayama, and
Stignani (Final Act. 3-11 ).
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sinha, Patel, Nakayama, Stignani, and
Tannier (Final Act. 11-12).
Claims 10 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sinha and Stignani (Final Act. 12-15).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sinha, Stignani, and Patel (Final Act. 15-16).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sinha, Stignani, and Tannier (Final Act. 16-17).
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ANALYSIS
We adopt the findings, reasoning, and conclusions, set forth in the
Final Rejection and the Answer to the extent consistent with the analysis
below.
In rejecting claim 1, the Examiner relied on Sinha as disclosing all of
the limitations (Final Act. 4--5), except for displaying in a computerized
messaging application a plurality of folders for storing electronic mail
messages (Final Act. 5), for which the Examiner relied on Patel. The
Examiner further relied on Nakayama for teaching obtaining a matter name
that is stored by the document management system (Final Act. 6; Ans. 4),
and on Stignani for teaching the user-selectable objects and automatically
displaying a project mode in response to the user selection (Final Act. 6;
Ans. 6).
Issue 1 - Did the Examiner err in finding Sinha discloses,
"analyzing content in one or more displayed electronic mail
messages to locate identifiers associated with matters in a
document management system," (hereinafter "limitation [a]''),
and "wherein the identifiers are included in fields of the
electronic mail messages that receive information entered by
users who sent the electronic mail messages, " (hereinafter
"limitation [b] ''), as recited in independent claim 1?
We select claim 1 as representative of the group of claims comprising
claims 1, 2, 4, 6, 7, and 9-18 as Appellants have not argued any of the other
claims in this group with particularity (App. Br. 9). 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that Sinha does not disclose limitations [a] and [b]
because a receiving user enters content into a template to define the
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identifiers in the message rather than a computer automatically analyzing
content to define the identifiers upon receipt of the message sent by the user
(see App. Br. 9--10; Reply Br. 1).
The Examiner finds Sinha teaches both identifiers and matters within
a document management system (Ans. 3 (citing Sinha i-fi-131 and 33)). The
cited paragraphs of Sinha refer to an email that includes metadata identifying
a subject, which may correspond to "identifiers," and metadata that includes
a matter or organization identification, which may correspond to matters of a
document management system. Id. Therefore, we agree with the Examiner
that Sinha teaches limitation [a].
Regarding Appellants' argument (App. Br. 9-10) in relation to
limitation [b] that the identifiers are not included in fields of the electronic
mail messages that receive information entered by senders of the messages,
the Examiner finds that Sinha teaches both the sending and the receiving
side of the process (Ans. 3; Sinha i-fi-123,25, 31, and 35). We note in
particular that Sinha also teaches emails that contain metadata identifying a
subject and a sender (see Sinha i131 ), which meets the claimed "fields
entered by the users who sent the mail messages" in the context of claim 1,
because the users may correspond to whichever entity populated these fields.
In addition, we note that Sinha teaches emails that may contain input areas
for matter identifiers along with forwarding or replying to emails containing
those fields (see Sinha i125), therefore, the electronic messages which are
received from senders who are forwarding or replying may receive
information including identifiers entered by senders. Id. Thus, we agree
with the Examiner that Sinha teaches limitation [b].
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Issue 2 - Did the Examiner err in finding Sinha discloses,
"displaying concurrently with a first of the one or more
displayed messages, at least part of a name of a first of the
matters in the document management system, (hereinafter
"limitation [c] '');the first of the matters identified based on
content in the first of the one or more displayed electronic mail
messages in the fields that receive information entered by users
who sent the electronic mail messages, (hereinafter "limitation
[ d] ''); and the name being identified by applying an identifier
from the first of the one or more displayed electronic mail
messages to the document management system so as to obtain a
matter name stored by the document management system "
(hereinafter "limitation [e] ''), as recited in independent claim
l?
Appellants argue that neither Sinha nor Nakayama discloses
limitations [c], [d] and [e] (App. Br. 10; Reply Br. 1-2). Appellants contend
the identifiers in Sinha and Nakayama are not located from fields entered by
the senders, and the user name/identifier lookup relationship taught by
Nakayama does not correspond to obtaining a stored matter name of a
docket management system (App. Br. 11-12). Appellants further contend
the combination of Sinha and Nakayama would not lead to the
aforementioned disputed limitations.
As discussed supra, the Examiner finds Sinha to teach the "first of the
matters" that is identified based on the content in an email message from
fields entered by the sender (Ans. 3), thus meeting limitation [d]. The
Examiner also finds Sinha teaches that descriptive text or a matter title
related to a matter identification is readily discerned by the system and
viewable to a user, thus meeting limitation [c] (Ans. 4 (citing Sinha i-fi-125
and 53-56); Accord Sinha i122). Therefore, we agree with the Examiner
that Sinha teaches limitations [c] and [d] (Final Act. 4; Ans. 4).
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The Examiner further finds the aforementioned paragraphs of Sinha
and Nakayama teach a matter name stored by the docket management
system (see Nakayama i-f 299; see Final Act. 4 and 6; Ans. 4). Furthermore,
in the Examiner's Answer, the Examiner finds that Sinha teaches locating
identifiers to obtain a matter name (Ans. 4). We specifically note Sinha
teaches that the email system may automatically use the matter identification
(see Sinha i-fi-122-23), resulting from the identifier discerned in a received
email, to link the email to matter areas. A matter area meets the claimed
"matter name stored by the document management system," consistent with
the broadest reasonable interpretation supported by Appellants' disclosure,
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Sinha also teaches
the email system to include matter areas and organization areas which
further indicates storage of matter names, and that the email may be
interfaced with a document management system (see Sinha i-fi-153-55).
Nakayama is cumulative to the teachings of Sinha under the
Examiner's position in the Answer, we see no harmful error in the
Examiner's rejection. Therefore, we agree with the Examiner that the email
system of Sinha having matter areas is part of the docket management
system itself. Accordingly, we agree with the Examiner that Sinha teaches
limitation [ e].
Issue 3 - Did the Examiner err in finding Stignani discloses,
"generating a user-selectable object that, when selected,
automatically causes the generation of a document
management display for a user of the messaging application,
the document management display to show second information
about the first of the matters, wherein the second information is
not included in the selected electronic mail message and
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provides additional information not provided by the first
information" (hereinafter "limitation m ''); and
"receiving a user selection of the user-selectable object and in
response, automatically displaying a project mode that displays
the document management display including visual indicators
for documents that correspond to the first of the matters and
that are selectable to open documents that correspond to the
first of the matters, and that displays the second information, "
(hereinafter "limitation [g] ''), as recited in independent claim
l?
Appellants argue that Stignani does not teach limitations [ fJ and [g]
(App. Br. 13-14; Reply Br. 3--4) because presenting and receiving
information in a window is different than generating additional second
information to first information, where the second information is about a
matter that was related to but not originally present in an analyzed email. Id.
Appellants also argue that the user-selected displayed information of
Stignani may only correspond to portions of a document selected by a user
to be shown in the active window, whereas a project mode for automaticaUy
displaying visual indicators related to the first of the matters is not taught.
Id.
The Examiner finds that Sinha, rather than Stignani, teaches a user-
selectable object and docket management display showing second
information (Ans. 6; Final Act. 4; see Sinha i-fi-124, 35, and 56). We note that
Sinha teaches a page presenting a browser view of an area which includes
docketing information and which may be activated through a link such that
the received email becomes fully integrated within the enterprise system
corresponding to the document management system (see Sinha i124).
Hence, we find that the browser link meets the claimed user-selectable
object. We further note that Sinha (i-f 35) teaches that an email is linked to
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all electronic data associated with the matter, which meets the claimed
second information that is not originally provided with the first of the
matters derived from the email identifiers in the context of claim 1.
Therefore, we concur with the Examiner that Sinha teaches limitation [fJ.
Regarding limitation [g], the Examiner finds Sinha, rather than
Stignani, teaches displaying a project mode (Final Act. 5; Ans. 6-7; see
Sinha i-fi-124, 52 and 55). As discussed supra, Sinha discloses a user-
selectable object consisting of a browser link which if activated may present
docketing information corresponding to a project mode (see Sinha i124),
hence, we agree with the Examiner that Sinha teaches a project mode that
displays a document management display (Ans. 6).
The Examiner also finds Stignani to teach visual indicators for
documents in a displayed project mode corresponding to the first of the
matters that may be selected to display second information (Final Act. 6;
Ans. 7 (citing Stignani i-fi-128-29 and 47)). Specifically, we note that
Stignani teaches displays of current and past content regions that are based
on the current task or project performed (see Stignani i147). Relevant
documents, which meet the claimed second information, are linked to the
current task or work being performed, which meets the claimed first
information. Id. Widgets corresponding to visual indicators are selectable
to access content from a docket management system. Id. Although the
Examiner has found the project mode to be disclosed by Sinha (see above;
Ans. 6-7), we find that the displayed current and past content regions based
on tasks within a workflow of Stignani also meet the claimed displaying of a
project mode. For these reasons, we agree with the Examiner that Stignani
teaches a document management display having the required visual
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indicators (Ans. 7), and therefore, we agree that the combination of Sinha
and Stignani teaches the claimed limitation [g].
In reference to Appellants' contention that "there simply is no cause-
and-effect in Sinha or Stignani equivalent to the change in displays recited in
claim 1, where the change is a result of a user selection of a displayed object
that causes generation of a document management display that shows second
information about a matter" (App. Br. 13), we are not persuaded of
Examiner error in the rejection. The Supreme Court has indicated that:
[It is error to] assum[ e] that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art
designed to solve the same problem .... Common sense teaches
... that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill
will be able to fit the teachings of multiple patents together like
pieces of a puzzle.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation
omitted). The Examiner provides a reasonable justification for combining
Sinha, Patel, Nakayama, and Stignani, "the motivation for doing so being to
allow a user to easily access related information from a single interface"
(Final Act. 7). Thus, we find the Examiner has articulated a valid reasoning
with "some rational underpinning to support the legal conclusion of
obviousness." (See KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).). We
agree with and accordingly adopt the Examiner's findings of fact and
analysis, and reach the same legal conclusions as in the Examiner's Answer.
Ans. 6-7.
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Therefore, we are unpersuaded of Examiner error in finding that the
combination of Sinha, Patel, Nakayama, and Stignani teaches or suggests the
disputed features of claim 1.
Issue 4 - Did the Examiner err in finding Stignani discloses,
"displaying, in response to a user selection of the control, a
second document management display for a second matter from
the list," (hereinafter "limitation [h] ''), as recited in
independent claim 5?
Appellants find Stignani does not teach limitation [h] (App. Br. 17;
Reply Br. 4--5) because the display of "services or documents" is not a list of
matters for an organization such as a law firm, or "matters in a document
management system." Id.
The Examiner finds that Stignani teaches organizational matters
corresponding to titles or folders of a document management system which
are integrated with an email client (Final Act. 9; see Stignani i-fi-141 and 44).
We specifically note that in the Examiner's indicated paragraph 41 of
Stignani, a user may select a document from a list, also shown in the left
pane of figure 3, and thus the list meets the claimed first matters in the
context of claim 4 upon which claim 5 depends. If any of the list items are
chosen, the document processing region will display the relevant second
matter documents associated with those first matters as previously discussed
supra in relation to claim 1, meeting the claimed second document
management display for a second matter from the list.
Therefore, we are unpersuaded of Examiner error in finding that the
combination of Sinha, Patel, Nakayama, and Stignani teaches or suggests
limitation [h] and the disputed features of claim 5.
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Issue 5 - Did the Examiner err in finding Patel discloses,
"displaying, with email folders of the computerized messaging
application, folders directed to matters in the document
management system (hereinafter "limitation [i] ''), and "adding
an email message to a matter in the document management
system that corresponds to a folder, in response to a user
dragging an email to the folder, " hereinafter "limitation [j] ''),
as recited in independent claim 3?
Appellants argue that Patel does not teach a docket management
system but instead a graphic user interface for a file manager including an
email application, such that a user may not drag emails to a folder of a
docket management system where the folder corresponds to the particular
matters (App. Br. 15-16). In addition, Appellants argue that the document
management system of claim 1 and the computerized messaging application
of claim 3 are two different systems (Reply Br. 4).
The Examiner finds that Patel teaches the claimed limitations [i] and
Li] (Final Act. 8; Ans. 8 (citing Patel i-fi-f 40, 87, 89, and 94--95)). We note
that Patel teaches a user able to view a flowchart user interface using an
email client (Patel i1 87), and also teaches that the electronic files shown in
the user interface of figure 12 can be synchronized with document
management programs (Id. i1 40). Hence, we agree with the Examiner that
Patel teaches the claimed limitation [i], and that two separate systems, a
document management system besides an messaging application, are taught
by Patel (Id. i-fi-140 and 87). Further, we note that Patel teaches dragging and
dropping email items into the titled folders of the graphic user interface that
is associated with the document management system (Id. i-fi-189 and 95).
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Thus, we agree with the Examiner that Patel meets limitation [j] for
the reasons cited by the Examiner (Final Act. 8). Therefore, we are
unpersuaded of Examiner error in finding that the combination of Sinha,
Patel, Nakayama and Stignani teaches or suggests the disputed features of
claim 3.
Issue 6 - Did the Examiner err in finding Patel discloses,
"receiving a user selection of a docket control, and in response
to receiving the user selection, displaying a docket for the user
for one or more matters associated with the user or the
selection, " (hereinafter "limitation [k] ''), as recited in
independent claim 8?
Appellants argue in relation to limitation [k] that Patel does not teach
showing a user docket for a particular matter because the folders shown by
Patel (see Fig. 3), are unrelated to a user docket (App. Br. 17-18).
The Examiner finds, and we agree, that Patel teaches an interface to a
docket management system via an email application, as discussed supra in
relation to claim 3, and that the user interface may be considered the user
docket (Final Act. 10; Ans. 10 (citing Patel i-fi-136, 37 and 95)).
Therefore, we are unpersuaded of Examiner error in finding that the
combination of Sinha, Patel, Nakayama, and Stignani teaches or suggests
limitation [k] and the disputed features of claim 8.
We find the weight of the evidence supports the Examiner's ultimate
legal conclusion of obviousness, and, therefore, sustain the Examiner's
rejection of claims 1-18.
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DECISION
The decision of the Examiner to reject claims 1-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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