Ex Parte Marin

Patent Trial and Appeal Board

Oct 12, 2016

12825326 (P.T.A.B. Oct. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/825,326 06/28/2010
47069 7590 10/14/2016
KONRAD RA YNES DAVDA & VICTOR, LLP
ATTN: IBM54
350 SOUTH BEVERLY DRIVE, SUITE 360
BEVERLY HILLS, CA 90212
FIRST NAMED INVENTOR
Mike A. Marin
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.
S VL9201000l9US1 1524
EXAMINER
TRAN, ANHTAI V
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
10/14/2016 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):
krvuspto@ipmatters.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE A. MARIN
Appeal2015-002502
Application 12/825,326
Technology Center 2100
Before LARRY J. HUME, MELISSA A. HAAPALA, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-18, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is International Business
Machines Corporation. App. Br. 1.
Appeal2015-002502
Application 12/825,326
STATEMENT OF THE CASE
Introduction
Appellant's application relates to a content management checklist
object that contains a placeholder for another checklist object. Spec. ,-i 1.
Claim 1 is illustrative of the claimed subject matter on appeal and reads as
follows:
1. A computer-implemented method, comprising:
storing a first checklist object that contains placeholders
that each specify a description of how that placeholder is to be
fulfilled, wherein one of the placeholders is for a second
checklist object having placeholders that each specify a
description of how that placeholder is to be fulfilled, wherein the
first checklist object and the second checklist object are stored
by a content management system that stores content objects used
to fulfill the placeholders of the first checklist object and the
placeholders of the second checklist object;
in response to the placeholders of the second checklist
object being fulfilled, marking the second checklist object as
fulfilled; and
marking a placeholder for the second checklist object as
fulfilled in the first checklist object; and
in response to determining that the placeholders of the first
checklist object have been fulfilled, indicating that the first
checklist object is complete.
The Examiner's Rejections
Claims 1, 2, 4, 6-8, 10, 12-14, 16, and 18 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Diamant (US 5,530,861;
June 25, 1996) and Sadhu (US 7,159,206 Bl; Jan. 2, 207). Final Act. 7-15.
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Application 12/825,326
Claims 3, 9, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Diamant, Sadhu, and Bozek (US 7,599,964 Bl;
Oct. 6, 2009). Final Act. 16-18.
Claims 5, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Diamant, Sadhu, and Starkey (US 2008/0270477 Al;
Oct. 30, 2008). Final Act. 18-21.
ANALYSIS
Claim 1
Appellant argues the Examiner erred in rejecting claim 1 for several
reasons. First, Appellant argues Diamant does not teach or suggest "the first
checklist object and the second checklist object are stored by a content
management system that stores content objects used to fulfill the
placeholders of the first checklist object and the placeholders of the second
checklist object." ,,L\ .. pp. Br. 6. Appellant also argues Sadhu does not teach
or suggest the manner in which its CHECKLIST _ITEM object is filled and,
therefore, does not teach "a description of how that placeholder is to be
fulfilled." Id. at 7. Appellant further argues Sadhu does not teach or suggest
the first checklist object "contains" the second checklist object because
Sadhu's CHECKLIST object is linked to a CHECKLIST _ITEM object. Id.
at 7. In addition, Appellant argues Sadhu does not teach or suggest the
database stores content objects used to fulfill CHECKLIST _ITEM objects
when a task is complete. Id. at 8.
We are not persuaded by Appellant's arguments because each
argument is addressed to an individual reference instead of the combination
of references relied upon by the Examiner. One cannot show
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Application 12/825,326
nonobviousness by arguing individual references have deficiencies when the
rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981). The Examiner explained that the combination of
Diamant and Sadhu, not each reference alone, teaches these limitations.
Final Act. 7-9. Indeed, for each of the arguments identified above,
Appellant argues that one of the references in the combination does not
teach a particular limitation, but the Examiner identified teachings in the
other reference in the combination for that limitation. See id. For example,
Appellant argues Diamant does not teach a content management system
(App. Br. 6), but the Examiner relies on Sadhu for this limitation (Final
Act. 8-9). Accordingly, we find these arguments unpersuasive.
Appellant further argues Diamant does not teach or suggest a subtask
that is completed in response to the placeholders of the subtask being
:!:hlfilled. ,,L\ .. pp. Br. 8. \Ve disagree. The Examiner finds, and \Ve agree,
Diamant teaches automatically completing subtasks and updating the status
of the parent task as a result. Ans. 8 (citing Diamant 23:51-24:1).
For these reasons, Appellant has not persuaded us that the Examiner
erred in rejecting claim 1 as unpatentable over Diamant and Sadhu.
Appellant does not provide separate substantive argument for claims 2, 3, 6-
9, 12-15, and 18. See App. Br. 8-9. Accordingly, we sustain the rejections
of claims 1, 2, 3, 6-9, 12-15, and 18.
Claims 4, 10, and 16
Claims 4, 10, and 16 depend from claims 1, 7, and 13, respectively.
Each of these claims incorporates the limitations of its parent claim and
additionally recites "wherein one of the placeholders of the first checklist
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Application 12/825,326
object is conditional and is fulfilled when one of multiple conditions
occurs." Appellant argues these claims as a group. App. Br. 9. In
particular, Appellant states Diamant teaches status of tasks and subtasks,
including "Complete, Ongoing, New, and Abandoned." Id. (citing Diamant
6:54-66, 23:51-24:1). Appellant argues the Examiner erred in rejecting
these claims because "such status values do not teach or suggest that one of
the placeholders of the first checklist object is conditional and is fulfilled
when one of multiple conditions occurs." Id.
Appellant's argument amounts to nothing more than a mere recitation
of Diamant's disclosure and a conclusory assertion that this disclosure does
not teach or suggest the claim language. However, as stated by the Federal
Circuit, Rule 41.37 "require[s] more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art." In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011). ,,L\ .. ccordingly, Appellant has not
persuaded us that the Examiner erred in rejecting claims 4, 10, and 16.
Claims 5, 11, and 17
Claims 5, 11, and 17 depend from claims 1, 7, and 13, respectively.
Each of these claims incorporates the limitations of its parent claim and
additionally recites "wherein one of the placeholders is optional and wherein
the first checklist object is indicated as complete when remaining, non-
optional placeholders have been fulfilled and the optional placeholder has
not been fulfilled." Appellant argues these claims as a group. App. Br.
10-11. In particular, Appellant argues Starkey does not teach or suggest the
limitations of the parent claims from which these claims depend. Id. We
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Application 12/825,326
find this argument unpersuasive because the Examiner does not rely on
Starkey in the rejection of the parent claims. See Final Act. 7-15.
Appellant also argues modifying the combination of Diamant and
Sadhu with the teachings of Starkey related to optional tasks would change
the "basic principles" of Diamant, which teaches that "no task may be
marked Complete unless all its children are Complete." App. Br. 11 (citing
Diamant 6:57-58).
Appellant has not persuaded us of Examiner error. Diamant teaches
parent and child tasks, where the parent task is only marked complete when
its child tasks are complete. Diamant 6:57-58. We are not, however,
persuaded that this is a "basic principle" of Diamant. Appellant has not
identified any teaching in Diamant that indicates that optional tasks are
disfavored or would be incompatible with Diamant' s other teachings.
Accordingly, we are not persuaded of Examiner error and adopt the findings
and conclusions of the Examiner \"1ith respect to claims 5, 11, and 17.
CONCLUSIONS
On the record before us and in view of the analysis above, Appellant
has not persuaded us the Examiner erred in rejecting claim 1. Accordingly,
we sustain the rejection of claim 1 and claims 2, 3, 6-9, 12-15, and 18,
which were not argued separately. See App. Br. 8-9.
On the record before us and in view of the analysis above, Appellant
has not persuaded us that the Examiner erred in rejecting claims 4, 10,
and 16. Accordingly, we sustain the rejection of claims 4, 10, and 16.
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Application 12/825,326
On the record before us and in view of the analysis above, Appellant
has not persuaded us that the Examiner erred in rejecting claims 5, 11,
and 17. Accordingly, we sustain the rejection of claims 5, 11, and 17.
DECISION
We affirm the decision of the Examiner rejecting claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l ). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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