Ex Parte Samsky et al

Board of Patent Appeals and Interferences

May 7, 2012

10941306 (B.P.A.I. May. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRETT M. SAMSKY, STEVE STEWART,
JASON S. WILLIAMS, WAGNER LONGO DE CASTRO,
and, DANIEL LOIS GRECO
____________

Appeal 2011-005217
Application 10/941,306
Technology Center 3600
____________

Before: HUBERT C. LORIN, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005217
Application 10/941,306

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 2, 4, 5, 10-27,
and 32-46. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6 (2002).
The claimed invention is directed to a standardized system and
method for processing Mass Action Litigation (meaning the efficacious
processing by similarly situated plaintiffs of a large volume of legal actions
requiring mass customization and standardization in a narrow legal area
against similarly situated defendants on an unconsolidated case by case
basis) on a jurisdictionally dispersed basis (meaning dispersed across a
plurality of legal divisions, including, but not limited to: (i) states, (ii)
counties, (iii) courts, or (iv) judges), for relatively low value disputes,
through geographically dispersed personnel and automated data systems
(hereinafter referred to as “National Legal System”) (Spec. 2:9-17). Claim
1, reproduced below, is further illustrative of the claimed subject matter.
1. A computer system for processing litigation
on a jurisdictionally dispersed basis using workers
having different types of expertise, the computer
system comprising:
a memory, wherein the memory is encoded
with information related to one or more legal
disputes and a plurality of workflows associated
with the one or more legal disputes; and
processor, wherein said processor is
configured to:
i. select one of a plurality of records
from the memory, wherein each record
corresponds to a legal dispute and the selected
record comprises data representing a plaintiff
associated with the legal dispute, a defendant
associated with the legal dispute, a jurisdiction
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associated with the legal dispute, and a class
associated with the legal dispute;
ii. select one of the plurality of
workflows from the memory, wherein the selected
workflow is associated with the selected record
and comprises at least one or more administrative
tasks and one or more legal tasks associated with
the legal dispute;
iii. select an attorney to perform the
one or more legal tasks from the selected
workflow, wherein the attorney is selected at least
in part based on the class of the legal dispute;
iv. transmit the selected record to the
selected attorney, the selected record including
data representing a selected plaintiff, a selected
defendant and a selected jurisdiction, wherein the
selected attorney initiates litigation on behalf of
the selected plaintiff against the selected defendant
in the selected jurisdiction;
v. select one or more specialized non-
attorney workers to perform the one or more
administrative tasks from the selected workflow,
wherein the one or more specialized non-attorney
workers are selected at least in part based on the
one or more specialized non-attorney workers'
ability to perform the one or more administrative
tasks from the selected workflow;
vi. transmit the administrative tasks
from the selected workflow that do not require
legal representation to the selected one or more
specialized non-attorney workers trained to
perform such tasks, wherein the one or more
specialized non-attorney workers complete the
administrative tasks; and
vii. transmit the one or more legal
tasks from the selected workflow that require legal
representation to the selected attorney, wherein the
selected attorney completes the legal tasks.

Appeal 2011-005217
Application 10/941,306

4
Claims 1, 2, 4, 5, 10-27, 32, and 34-46 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Breil (US 2005/0080821 A1, publ. Apr. 14,
2005) in view of Hillstrom (US 2002/0002469 A1, publ. Jan. 3, 2002); and
claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Breil
in view of Hillstrom and Israel (US 6,766,307 B1, publ. Jul. 20, 2004).
We AFFIRM.

ANALYSIS
Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Breil and Hillstrom renders obvious independent claim 11
(App. Br. 6-11; Reply Br. 2-4). Specifically, we are in agreement with the
Examiner that Appellants’ alleged distinctions are non-functional descriptive
material. Appellants’ main argument is that neither Breil nor Hillstrom are
directed to legal disputes. However, the doctrine of non-functional
descriptive material states that if the claim aspect does not alter the manner
in which the substrate functions, it will not distinguish in terms of
patentability. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). For
independent claim 1, this is relevant because the Examiner has determined
that all legal terminology is non-functional descriptive material. In other
words, if we were to remove the legal terminology from the claim, we are

1 We choose independent claim 1 as representative of claims 1, 2, 4, 5, 10-
23. See 37 C.F.R. § 41.37(c)(1)(vii).
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left with a system that identifies an activity, identifies a plurality of tasks to
be performed to complete that activity, and transmitting each of the plurality
of tasks to the appropriate person for completing that task. Whether the
system is for debt collection (Breil), attorney selection (Hillstrom), or
managing the workflow of a legal dispute (claimed invention) is irrelevant,
as regardless of the field, the system would still work in the same basic
manner as set forth above.
To that end, the Examiner has relied on a combination of Breil and
Hillstrom for disclosing the claimed activity and task completion system,
with the exception that it is not specifically for legal disputes (Exam’r’s Ans.
4-5). However, because “legal disputes” are non-functional descriptive
material, the Examiner’s combination of Breil and Hillstrom sets forth a
prima facie case of obviousness. Accordingly, the burden is now on
Appellants to (1) identify steps in independent claim 1, without reference to
their legal nature, that are not rendered obvious by the combination of Breil
and Hillstrom, or (2) show how adapting the activity and task completion
system of Breil and Hillstrom to legal disputes fundamentally alters the
manner in which the system would operate. See In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“[o]nce a prima facie case of obviousness [is] established
. . ., the burden shift[s] to appellant to rebut it”).
Appellants do set forth one such argument by asserting that the
business rules of Breil are directed to segmentation/sorting, and not task
completion, as recited in independent claim 1 (App. Br. 8). However,
paragraphs [0054]-[0055] of Breil disclose the implementation of various
collection activities/strategies, which would include tasks.

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Independent Claim 24
We are not persuaded the Examiner erred in asserting that a
combination of Breil and Hillstrom renders obvious independent claim 242
(App. Br. 11-13; Reply Br. 4-6). All of our analysis above concerning non-
functional descriptive material is also applicable here. Appellants further
assert that the combination of Breil and Hillstrom does not render obvious
the recited action of “selecting records satisfying [ ] specific qualifications”
(App. Br. 11-12). However, at least paragraph [0008] of Breil discloses
segmentation/sorting of records, which Appellants also admit (App. Br. 8).
The fact that independent claim 24 recites sorting to find “a legal dispute
having an amount in controversy with a value of less than US$15,000, and
said class indicating the selected legal dispute involves a category of law
that has a limited body of related and common substantive and procedural
law and has claims that typically share a common set of material facts,” is
non-functional descriptive material, as the exact nature of the data being
sorted for does not affect the act of sorting itself.

Dependent Claim 33
Appellants argue that dependent claim 33 is patentable due to
deficiencies in the rejection of independent claim 24, from which it depends
(App. Br. 13-14; Reply Br. 6-7). As we are not persuaded of any
deficiencies in the rejection of independent claim 24, however, we will
sustain this rejection.

2 We choose independent claim 24 as representative of claims 24-27, 32, and
34-46. See 37 C.F.R. § 41.37(c)(1)(vii).
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DECISION
The decision of the Examiner to reject claims 1, 2, 4, 5, 10-27, and
32-46 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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