Ex Parte Buddenbaum et alDownload PDFPatent Trial and Appeal BoardDec 20, 201614067344 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 14/067,344 10/30/2013 Donald E. Buddenbaum RSW920130030US2 6932 140312 7590 IBM CORP. (WSM) c/o WINSTEAD P.C. P.O. BOX 131851 DALLAS, TX 75313 12/22/2016 EXAMINER ALLEN, NICHOLAS E ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): patdocket@winstead.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD E. BUDDENBAUM, PETER F. HAGGER, HEATHER M. KREGER, ARNAUD J. LE HORS, JOHN V. MEEGAN and KEITH A. WELLS Appeal 2016-001349 Application 14/067,344 Technology Center 2100 Before CARL W. WHITEHEAD JR, JEFFREY S. SMITH, MICHAEL J. ENGLE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WHITEHEAD JR. Opinion Concurring filed by Administrative Patent Judge ENGLE. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants are appealing the Final Rejection of claims 1—7 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Appeal 2016-001349 Application 14/067,344 Introduction The invention is directed to “a method for managing work and personal items comprises receiving information to populate a user profile providing rules to determine a priority for work and personal items to be addressed.” Specification, paragraph 5. Representative Claim (disputed limitations emphasized) 1. A method for managing work and personal items, the method comprising: receiving information to populate a user profde providing rules to determine a priority for work and personal items to be addressed; monitoring work and personal data sources; scanning content in said monitored work and personal data sources; analyzing said scanned content for work and personal items to be addressed; determining a priority for each of said work and personal items to be addressed based on said rules in said user profile', and presenting, by a processor, said work and personal items to be addressed to a user in a prioritized order based on said prioritization. Rejection on Appeal Claims 1—7 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Chaffee (U.S. Patent Application Publication Number 2010/0262653 Al; published October 14, 2010). Final Rejection 2—6. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed May 19, 2015), the Reply Brief (filed November 4, 2015), the Answer (mailed September 22, 2015) and the Final 2 Appeal 2016-001349 Application 14/067,344 Rejection (mailed January 23, 2015) for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Appellants argue throughout the Appeal Brief that there is no language in the passages cited by the Examiner that discloses receiving information to a user profile providing rules to determine a priority for work and personal items to be addressed as required in claim 1. Appeal Brief 4. The Examiner finds Chaffee teaches: receiving information to populate a user profile providing rules to determine a priority for work and personal items to be addressed (user profiles. For example, task 400 is associated with user profiles that are designated as task creator 404, task owner 406, and list of task followers 408. As the name implies, the task creator 404 identifies the profile of the system user who created task 400. The task owner 406 identifies the user profile of the system user who is responsible for the completion of event represented by task 400. In some cases, the task owner 406 identifies a user who is responsible for performing an action associated with task 400, See Paragraph 36 and how the task 400 relates to other tasks, users, and project teams being managed by the system. Exemplary task parameters include due date 410, blocking tasks 412, date created 426, task activity 428, task importance 430, project team importance 432, number of users associated 434, See Paragraph 32). Final Rejection 3. We find Appellants’ argument persuasive. None of the multitude of passages relied upon by the Examiner teaches a method that provides rules to determine a priority for work and personal items as required by claim 1. The Examiner further finds Chaffee teaches the “monitoring work and personal data sources” limitation in Paragraph 39 — “monitoring the progress of a set of project tasks.” Final Rejection 3. However, the Examiner’s finding of “monitoring the progress of a set of project tasks” falls short of 3 Appeal 2016-001349 Application 14/067,344 teaching the “monitoring work and personal data sources” limitation. See Final Rejection 3. Under the legal conclusion of anticipation, “every element of the claimed invention must be identically shown in a single reference.” See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Chaffee teaches, “A hierarchy of project and personal tasks is maintained for users associated with multiple projects.” Abstract. It is evident by Chaffee’s disclosure that Chaffee teaches a method to provide rules for work items or projects; however Paragraph 39 of Chaffee is silent in regard to managing work and personal items in the same manner as required by claim 1. The personal tasks of Paragraph 39 are personal because they are not associated with a project team. However, Paragraph 39 implies that the personal tasks are still associated with work. The Examiner has not persuasively explained how the personal tasks of Paragraph 39 suggest tasks not associated with work. Therefore, we reverse the Examiner’s anticipation rejection of claim 1, as well as, claims 2—7. DECISION The Examiner’s anticipation rejection of claims 1—7 is reversed. REVERSED 4 Appeal 2016-001349 Application 14/067,344 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD E. BUDDENBAUM, PETER F. HAGGER, HEATHER M. KREGER, ARNAUD J. LE HORS, JOHN V. MEEGAN and KEITH A. WELLS Appeal 2016-001349 Application 14/067,344 Technology Center 2100 CONCURRING OPINION ENGLE, Administrative Patent Judge. I concur in the result of reversing the Examiner’s rejection but not in the majority’s reasoning to get there. The majority appears to say Chaffee discloses “work” items but not “personal” items. It is not clear to me that Appellants ever actually raised this “personal” argument, so I would treat it as waived. 37 C.F.R. § 41.37(c)(l)(iv) (“any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”). Yet even if considered, Chaffee expressly discloses “personal tasks.” E.g., Chaffee Abstract, Figs. 2—3,139. In the absence of any definition in the present application’s Specification or sufficient claim construction analysis from the majority, I am not persuaded that Chaffee’s express use of the word “personal” falls outside the broadest reasonable interpretation of the claim term “personal.” For example, even if the majority were right that the claimed “personal” and “work” were 5 Appeal 2016-001349 Application 14/067,344 mutually exclusive such that “personal” items had to be “not associated with work,” Chaffee expressly discloses this (i.e., “work and personal”) in the nearly identical phrase “business and personal task lists.” Chaffee 1 58 (emphasis added). In fact, Appellants admit that “Chaffee disclose[s] that users can . . . maintain a current prioritization for all of the tasks, personal and business.” App. Br. 14 (emphasis added), 12 (same), 13 (“Chaffee discloses maintaining a current prioritization for personal and business tasks.”) (italics added, underlining omitted); Reply Br. 8 (same). This further confirms both that Appellants believe Chaffee discloses the claimed “personal” items and that Appellants waived the argument on which the majority relies. Nevertheless, I would still reverse on a different ground. Claim 1 recites “receiving information to populate a user profile providing rules to determine a priority for work and personal items to be addressed.” Although the Examiner correctly finds that Chaffee discloses prioritizing tasks based on task scores (Ans. 3), the Examiner has not sufficiently shown that those task scores are determined by a user profile providing rules rather than, for example, rules that are the same for all users or rules that are task-specific rather than user-specific. See Chaffee ]Hf 48—57; App. Br. 4—7. I agree with Appellants that the Examiner is relying on Chaffee’s task 400 for providing rules, not a user profile as claimed. App. Br. 4—7. Accordingly, I would reverse on this basis. 6 Copy with citationCopy as parenthetical citation