Ex Parte Steger

Board of Patent Appeals and Interferences

Jun 6, 2012

10224309 (B.P.A.I. Jun. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/224,309 08/19/2002 Kevin J. Steger 109880-130181 8445
25943 7590 06/07/2012
Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204
EXAMINER
PHAM, KHANH B
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
06/07/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KEVIN J. STEGER
____________________

Appeal 2009-013260
Application 10/224,309
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, KRISTEN L. DROESCH, and
MICHAEL R. ZECHER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013260
Application 10/224,309

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4-17, 19-32, and 34-47. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claim on Appeal
Claims 1 and 46 on appeal read as follows (emphasis added):
1. In a computing environment, a method of operation
comprising:
receiving by the computing environment, a change or addition
of a person within an organization, the received change or addition
having employee information corresponding to the change or addition
of the person;
storing by the computing environment, the received employee
information corresponding to the change or addition of the person in a
database;
updating by the computing environment, the database with the
received employee information corresponding to the change or
addition of the person;
automatically providing by the computing environment, to the
person, one or more policy materials to which the person is requested
to comply and for which the person is requested to obtain compliance
certification, the automatic providing of the policy materials based at
least in part on relevant parts of said updated employee information,
to facilitate the person's or the organization's or the person's and the
organization's compliance with the one or more policy materials; and
determining by the computing environment if the person has
fully certified compliance with the provided one or more policy
materials, and if the person has not fully certified compliance,
automatically scheduling by the computing environment one or more
reminders and providing said one or more reminders to the person to
certify compliance with the previously requested policy materials.

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46. In a computing environment, a method of operation
comprising:
receiving by the computing environment, a change or addition
of a person within an organization, the received change or addition
having employee information corresponding to the change or addition
of the person;
storing by the computing environment, the received employee
information corresponding to the change or addition of the person in a
database;
updating by the computing environment, the database with the
received employee information corresponding to the change or
addition of the person; and
determining by the computing environment if the person has
fully certified compliance with one or more policy materials for which
the person must certify compliance, and if the person has not fully
certified compliance, automatically electronically scheduling by the
computing environment one or more notifications and providing said
one or more notifications to the person to certify compliance with
the one or more policy materials.

Rejection on Appeal 1
The Examiner rejected claims 1, 2, 4-17, 19-32, and 34-47 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Gullotta
(US 2002/0147801 A1) and Eden (US 2002/0198748 A1). 2

1 The rejection of claims 46 and 47 under 35 U.S.C. § 112, second
paragraph, has been withdrawn. (Off. Communication 06/11/2009).

2 Separate patentability is not argued for claims 2, 4-17, 19-32, 34-45, and
47. Except for our ultimate decision, these claims are not discussed further
herein.
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Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because “Gullotta deals with the provision of hard
resources, such as a telephone, as opposed to policy materials as recited in
claim 1, which include such things as policies, guidelines, assessments/tests,
and trainings, whether related to human resources generally or to regulatory,
insurance, audit, life/safety and/or other organizational compliance
requirements.” (App. Br. 7).
2. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because “Gullotta does not teach obtaining
compliance certification with the policy materials, as such would not make
sense in the context of the reference.” (App. Br. 7-8).
3. Appellant contends that the Examiner erred in rejecting claim 1
because:
Referring to the Supervisor training, Eden indicates that the
“implementation module may also contain electronic files and
documents designed for this periodic function ....” The
substance of those documents is unclear from the reference, but
since the sentence refers to Supervisor training, a reasonable
assumption may be made that the documents being referred to
are training materials or documents. The cited portion of Eden
also notes that the documents may be printable as paycheck
stuffers. Based on that statement, the Office Action asserts that
the documents are the same as the automatic scheduling of
reminders generated within the computing environment of
claim 1, and which remind the person to certify compliance
with the previously requested policy materials. Applicant
disagrees.
The latter portion of claim 1 refers to the automatic
scheduling of reminders, not the provision of documents. In
addition, claim 1 refers to the scheduling of reminders that
remind the person to certify compliance with the previously
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provided policy materials. Thus, in claim 1, policy materials are
provided to the person and, if compliance is not certified in
some time period, a reminder is scheduled regarding the
uncertified compliance. Such a feature operates as a “nag”
function to remind the person of the unfulfilled requirement
(see, for example, the Specification at page 19, lines 16-17).
Such a teaching is not provided in Eden.
(App. Br. 8-9).
4. Appellant contends that the Examiner erred in rejecting claim 1
because:
The cited portion of Eden appears to describe providing
training materials/documents to a Supervisor in need of
Supervisor training, such documents potentially being provided
as a paycheck stuffer. But, such a teaching does not describe the
automatic scheduling of reminders to certify compliance with
previously provided policy materials.
Clearly, the cited portion of Eden is insufficient to teach
or suggest the subject matter of claim 1, in particular, the
automatic scheduling by the computing environment of one or
more reminders and providing the one or more reminders to the
person to certify compliance with the previously provided
policy materials.
(App. Br. 9).
5. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because “there has not been set forth a reasonable
basis for why Gullotta would be modified to include reminder scheduling,
other than by utilizing the benefit of hindisght (sic) and the knowledge of the
benefits of the combination as provided by the present application.” (App.
Br. 9).
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6. Appellant contends that the Examiner erred in rejecting claim 46
because:
Claim 46 differs from claim 1, in that claim 1 provides
for automatic scheduling by the computing environment of one
or more reminders and providing the one or more reminders to
the person to certify compliance with the previously provided
policy materials, whereas claim 46 provides for determining by
the computing environment if the person has fully certified
compliance with one or more policy materials for which the
person must certify compliance, and if the person has not fully
certified compliance, automatically electronically scheduling by
the computing environment one or more notifications and
providing said one or more notifications to the person to certify
compliance with the one or more policy materials. In both
claims, automatic scheduling is utilized (sic). However, in
claim 1 the sceduling (sic) is for reminders to comply with
previously provided policy materials, whereas in claim 46 the
scheduling is for notifications for compliance certification.
Basically, claim 1 provides a “nag” function and claim 46
provides a notification function.
(App. Br. 10).

Issues on Appeal
Did the Examiner err in rejecting claim 1 as being obvious because
the references fail to teach or suggest the claim limitations at issue?
Did the Examiner err in rejecting claim 46 as being obvious because
the references fail to teach or suggest the claim limitations at issue?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
We disagree with Appellant’s conclusions. We agree with (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusions reached by the Examiner.
As to above contention 1, we disagree with Appellant’s argument that
the Examiner erred because Gullotta fails to teach providing “policies,
guidelines, assessments/tests, and trainings” (i.e., soft resources). Our
review finds that Gullotta explicitly states that (a) provisioning soft
resources is known in the art (¶ [0010]) and (b) his invention can be used for
provisioning soft resources (¶ [0139]).
As to above contention 2, we agree with the Examiner’s analysis
(Ans. 12:6-13:4) in response to Appellant’s argument.
As to above contention 3, we agree with the Examiner’s analysis
(Ans. 13:5-13:18) in response to Appellant’s argument.
As to above contention 4, we agree with the Examiner’s analysis
(Ans. 13:19-14:18) in response to Appellant’s argument.
As to above contention 5, we agree with the Examiner’s analysis
(Ans. 14:19-15:15) in response to Appellant’s argument. Separately, we
conclude that Appellant’s own statement of the background of the invention
(Spec. 1-3) argues against hindsight. The desire to ensure policy compliance
was known in the art and was complicated and difficult. (Spec. 2). Further,
as we have already noted, Gullotta explicitly teaches provisioning soft
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resources and Appellant does not dispute that Eden is directed to such soft
resources.
As to above contention 6, Appellant’s argument that reminders and
notifications are different is wholly without merit. Our review finds that
Appellant added claim 46 (directed to notifications) by amendment during
prosecution. We further find that Appellant points to the same portions of
his Specification to support both claim 1 and claim 46 (compare App. Br.
at page 3, first full paragraph, and App. Br. at the paragraph bridging pages
5-6). 3 All these Specification portions use the term “reminder” as opposed
“notification.” Therefore, we find no difference therebetween.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 2, 4-17, 19-32,
and 34-47 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1, 2, 4-17, 19-32, and 34-47 are not patentable.

DECISION
The Examiner’s rejection of claims 1, 2, 4-17, 19-32, and 34-47 is
affirmed.

3 In spite of the typographical error in the first line of the paragraph bridging
pages 5-6 (“claim 1” should read “claim 46”), it is clear from the context
that claim 46 is being discussed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc