Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardJul 1, 201612549307 (P.T.A.B. Jul. 1, 2016) Copy Citation 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). Appeal2015-001017 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 2 Appeal2015-001017 Application 12/549,307 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). 3 Appeal2015-001017 Application 12/549,307 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 4 Appeal2015-001017 Application 12/549,307 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]. 5 Appeal2015-001017 Application 12/549,307 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). 6 Appeal2015-001017 Application 12/549,307 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 7 Appeal2015-001017 Application 12/549,307 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 8 Appeal2015-001017 Application 12/549,307 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 9 Appeal2015-001017 Application 12/549,307 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. 10 Appeal2015-001017 Application 12/549,307 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. 11 Appeal2015-001017 Application 12/549,307 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). 12 Appeal2015-001017 Application 12/549,307 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. 13 Appeal2015-001017 Application 12/549,307 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 14 Copy with citationCopy as parenthetical citation