Ex Parte Buddenbaum et alDownload PDFPatent Trial and Appeal BoardDec 20, 201613766903 (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. 13/766,903 02/14/2013 Donald E. Buddenbaum RSW920130030US1 2044 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 2016-001251 Application 13/766,903 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 8—21 under 35 U.S.C. § 134(a). Appeal Brief 3. We have jurisdiction under 35 U.S.C. § 6(b) (2012). We reverse. Appeal 2016-001251 Application 13/766,903 Introduction The invention is directed to “prioritizing work and personal items (e.g., actions, responses) from various data sources (e.g., e-mails, instant messages, calendar appointments, task lists, social media, text messages) using a user profile.” Specification, paragraph 1. Representative Claim (disputed limitations emphasized) 8. A computer program product embodied in a non-transitory computer readable storage medium for managing work and personal items, the computer program product comprising the programming instructions for: 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 said work and personal items to be addressed to a user m a prioritized order based on said prioritization. Rejection on Appeal Claims 8—21 stand rejected under pre-AIA 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—10. ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed May 21, 2015), the Reply Brief (filed November 4, 2015), the Answers (mailed September 23, 2015 and October 7, 2015), and the Final Rejection (mailed January 28, 2015) for the 2 Appeal 2016-001251 Application 13/766,903 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 teach ‘“receiving information to populate a user profile providing rules to determine a priority for work and personal items to be addressed’ as recited in claim 8 and similarly in claim 15.” Appeal Brief 3^4. The Examiner finds Chaffee teaches determining priority for work and personal items in paragraphs 28, 32, 36, and 39 (“monitoring work and personal data sources”). Final Rejection 3; Answer 3. Appellants further argue: There is no language in Chaffee that such user profiles are populated with rules to determine a priority for work and personal items to be addressed. Instead, as shown in Figure 5 of Chaffee, user profiles include information, such as e-mail address, notification preferences, login password, address, telephone number and other personal information. See, e.g., paragraph [0059]. Such information does not correspond to rules to determine a priority for work and personal items to be addressed. Appeal Brief 5. We find Appellants’ argument persuasive. None of the paragraphs cited by the Examiner teaches programming instructions for receiving information to populate a user profile providing rules to determine a priority for work and personal items to be addressed, as required in independent claims 8 and 15. 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 3 Appeal 2016-001251 Application 13/766,903 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 Chaffee is silent in regard to managing work and personal items in the same manner as required by claims 8 and 15. Therefore, we reverse the Examiner’s anticipation rejection of claims 8 and 15, as well as, dependent claims 9—14 and 16—21. DECISION The Examiner’s anticipation rejection of claims 8—21 is reversed. REVERSED 4 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 2016-001251 Application 13/766,903 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 any 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 believed the claimed phrase “work and personal” meant that Appeal 2016-001251 Application 13/766,903 “personal” must not be related to “work,” Chaffee expressly discloses this 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. 13 (emphasis added), 15 (same), 13—14 (“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 8 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—8. 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. 5. Accordingly, I would reverse on this basis. 2 Copy with citationCopy as parenthetical citation