Ex Parte Marano

Board of Patent Appeals and Interferences

Dec 16, 2009

10007370 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD T. MARANO
___________

Appeal 2008-003067
Application 10/007,370
Technology Center 3600
____________

Decided: December 16, 2009
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Howard T. Marano (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-19. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
“The present invention relates to project management systems in
general, and to providing users of a system such as a project management or
workflow system with one or more "to do" lists or work lists at a specified
event occurrence such as when that user logs in to the system.”
Specification 1:11-14. “There is a need to be able to provide one or more
work lists to each user or entity when a user logs in to a scheduling or
workflow system where the schedule may be tailored to a user, a group or
category of users, or an entire entity.” Specification 1:25-2:2. “The present
inventions comprise a system and method for assigning an identifier to at
least one of a plurality of displayable task schedules associated with a
corresponding plurality of different entities, the identifier representing a task
requiring action by an entity.” Specification 2:4-7.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jun. 19, 2007) and Reply Brief (“Reply Br.,” filed Dec. 7, 2007),
and the Examiner’s Answer (“Answer,” mailed Nov. 30, 2007).

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Claims 1 and 18, reproduced below, are illustrative of the subject
matter on appeal.
1. A method for assigning an identifier to at least
one of a plurality of displayable task schedules,
comprising the activities of:
a. initiating display of at least one interface
menu supporting user entry of decision
information for initiating execution of at least one
executable procedure for automatically selecting a
task from a plurality of different tasks and
assigning an identifier representing a selected task
to a particular task schedule of a plurality of
displayable task schedules associated with a
corresponding plurality of different entities, in
response to received information identifying an
event, said particular task schedule being
associated with a particular entity of said
corresponding plurality of different entities;
b. receiving decision information entered via
said at least one interface menu; and
c. applying the received decision
information and initiating execution of said at least
one executable procedure, in response to received
information identifying an event, to automatically
select a task from a plurality of different tasks and
assign a task representative identifier representing
a selected task to be performed by said particular
entity, to said task schedule associated with said
particular entity.
18. A system for assigning an identifier to at least
one of a plurality of displayable task schedules
comprising:
a. a display processor for initiating display of at
least one interface menu supporting user entry of
decision information for initiating execution of at
least one executable procedure for automatically
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selecting a task from a plurality of different tasks
and assigning an identifier representing a selected
task to a particular task schedule of a plurality of
displayable task schedules associated with a
corresponding plurality of different entities, in
response to received, information identifying an
event, said particular task schedule being
associated with a particular entity of said
corresponding plurality of different entities; and
b. an interface processor for receiving decision
information entered via the at least one interface
menu and for automatically initiating execution of
said at least one executable procedure, in response
to received information identifying occurrence of
an event to automatically select a task from a
plurality of different tasks and automatically assign
a task representative identifier representing a
selected task to be performed by said particular
entity, to said task schedule associated with said
particular entity.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Mayhak, Jr. US 2001/0051888 A1 Dec. 13, 2001
Srimuang US 2003/0061087 A1 Mar. 27, 2003

The following rejections are before us for review:
1. Claims 1-11 and 14-19 are rejected under 35 U.S.C. §102(e) as being
anticipated by Srimuang.
2. Claims 12 and 13 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Srimuang and Mayhak.
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ISSUES
The first issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1-11 and 14-19 under 35 U.S.C. §102(e)
as being anticipated by Srimuang. In particular, the major issues are
whether Srimuang describes an executable procedure for automatically
selecting a task from a plurality of different tasks and/or an executable
procedure for automatically selecting a particular task schedule from a
plurality of task schedules to assign a task identifier to as recited in
independent claims 1, 8, 15, 16, 17, and 18. Another issue is whether
Srimuang describes that the executable procedure removes a task
representative identifier from a task schedule in response to a triggering
event as recited in claim 14.
The second issue before us is whether the Appellant has shown that
the Examiner erred in rejecting claims 12 and 13 under 35 U.S.C. §103(a) as
being unpatentable over Srimuang and Mayhak. In particular, the issue is
whether the combination of Srimuang and Mayhak teaches that the task
allocation and triggering event are conditioned upon the coincidence of a
plurality of occurrences and teaches acquiring data to determine the
coincidence of the plurality of occurrences.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
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Claim construction
1. The Specification does not contain an express definition of “task.”
2. A definition of “task” is “a piece of work assigned or done as part
of one’s duties.” See American Heritage Dictionary 1245 (2nd
College Ed. 1982.)(First entry for “task.”)
3. The Examiner construed “task” to mean a “definite piece of work
assigned to an entity.” Answer 13-14.
The scope and content of the prior art
Srimuang
4. Srimuang describes scheduling and calendaring software.
Srimuang [0002].
5. Srimuang describes a calendar database for storing calendars for
all members. Srimuang [0072].
6. In paragraph [0013], Srimuang states:
As another variation in scheduling appointments,
while the customer may schedule a single service
appointment to occur during some desired time
interval, the scheduling program may specifically
schedule the various people and resources for only
portions of the service time interval where they are
needed. For example, if an appointment for a
medical exam is to last one hour, the appointment
may require: (1) a nurse for the first 10 minutes of
the hour and the last 20 minutes of the hour; (2) an
examination room for the first 20 minutes and last
20 minutes of the hour; (3) an x-ray room for the
middle 20 minutes of the hour; and (4) a doctor for
the final 30 minutes of the hour.
7. Srimuang describes that an administrator defines what combination
of people and resources are need for a service appointment and
“because the customer does not need to know what combination of
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individuals and resources are required for the type of service that
he wants this is taken care of automatically by service data 132
defined by group administrator for the vendor.” Srimuang [0080].
8. Srimuang states that it is a feature of the invention that a request
for service can be used to automatically schedule a combination of
people and resources using a single unitary request. Srimuang
[0109].
9. Srimuang describes an availability-check-software module that
checks the availability of people and resources in order to schedule
a requested service or not. Srimuang [0081] and [0110].
10. Srimuang describes allowing customers to “revise” employee
calendars. Srimuang [0094].
Mayhak
11. Mayhak describes a computer-aided system for scheduling
employees in a clinical environment. Mayhak [0002].
12. Mayhak describes using a patient profile, which includes treatment
information and a patient’s schedule (Mayhak [0054]-[0055]) and
an employee profile, which includes capability data and schedule
information (Mayhak [0058]-[0059]), to schedule treatment for a
patient. Mayhak [0065].
Any differences between the claimed subject matter and the prior art
13. The Examiner admits that Srimuang does not describe “that the
tasks are allocated based upon coincidence of a plurality of
occurrences, that the triggering event is conditioned upon
coincidence of a plurality of occurrences, or acquiring data to
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identify the coincidence of the plurality of occurrences.” Answer
10.
The level of skill in the art
14. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of project management systems.
We will, therefore, consider the cited prior art as representative of
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (Quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
Secondary considerations
15. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
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this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
Section 103 forbids issuance of a patent
when ‘the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
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inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-11 and 14-19 as being anticipated by Srimuang.
Claims 1, 3, 4, 6, 7, and 19
The Appellant argues claims 1, 3, 4, 6, 7, and 19 as a group. App. Br.
21. We select claim 1 as the representative claim for this group, and the
remaining claims 3, 4, 6, 7, and 19, stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009).
The Appellant and the Examiner dispute whether Srimuang describes
a step of initiating, in response to receiving information identifying an event,
an executable procedure, which automatically selects a task from a plurality
of different tasks. App. Br. 17, Reply Br. 3-4 and Answer 13-20.
The Appellant and the Examiner equate the claimed “task” to different
portions of Srimuang. In their argument, the Appellant equates the
appointment or service request entered by the user in Srimuang to the
claimed task (App. Br. 17) and argue that this appointment or service request
is manually selected instead of automatically as claimed. App. Br. 13-20.
In the Answer, the Examiner equates a portion of the service that
appears on an employee’s schedule in Srimuang as the claimed task and the
overall service request entered by the user in Srimuang as the claimed event.
Answer 13-14. The Examiner asserts that the portion of the service
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appearing on an employee’s schedule is automatically selected. Answer 13-
14.
Anticipation is determined by first construing the claims and then
comparing the properly construed claims to the prior art. In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1346 (Fed. Cir. 2002). “The law of
anticipation does not require that the reference “teach” what the subject
patent teaches. Assuming that a reference is properly “prior art,” it is only
necessary that the claims under attack, as construed by the court, “read on”
something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or “fully met” by it.” Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
Claim 1 requires a step of initiating an executable procedure, in
response to received information identifying an event, for automatically
selecting a task from a plurality of different tasks. The Specification does
not contain an express definition of “task.” FF 1. We find that that the
ordinary and customary meaning of task is “a piece of work assigned or
done as part of one’s duties.” FF 2. See also, FF 3. We construe claim 1 to
require a step of initiating an executable procedure for automatically
selecting a piece of work from a plurality of different pieces of work. The
step of initiating performed in response to received information identifying
an event.
Given this construction, we agree with the Examiner that the claimed
task reads on Srimuang’s description of portions of a service for which
appointments are schedule on employees’ schedules. Taking Srimuang’s
example of an appointment for a medical exam in paragraph [0013], the
medical exam is the service that is requested by the user. FF 6. Upon
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receiving the request, the system in Srimuang schedules a nurse for a 10
minute interval and a separate 20 minute interval and a doctor for a 30
minute interval. FF 6. In this example, the nurse and doctor are each
assigned a piece of the service. The portions of the medical exam assigned
to the nurse or doctor is the claimed “task.” This is consistent with our
construction of claim 1 above. We note that nothing in claim 1 restricts
equating the claimed task to the entire service (e.g. “medical exam), as the
Appellant argues, instead of the portion of the service assigned to the nurse
or doctor (e.g. the portion of the exam performed during the first 20
minutes), as the Examiner argues.
Next, we find that Srimuang describes initiating, in response to
received information identifying an event, an executable procedure that
automatically selects the tasks from a plurality of tasks. The Examiner
equates the claimed event to the user’s request for a service and the
information identifying the event equates to the request that is transmitted to
the system in Srimuang. See Answer 13-14. We find nothing in claim 1 that
precludes the Examiner’s interpretation above. Srimuang describes that the
system automatically selects the tasks when the request is received. FF 7-8.
Srimuang states, “. . . because the customer does not need to know what
combination of individuals and resources are required for the type of service
that he wants this is taken care of automatically by service data 132 defined
by group administrator for the vendor.” Srimuang [0080].
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 1, and claims 3, 4, 6, 7, and 19, dependent
thereon, under 35 U.S.C. §102(e) as anticipated by Srimuang.

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Claim 2
For the same reasons as above, the Appellant additionally argues that
Srimuang does not describe automatically selecting a particular task
schedule from a plurality of task schedules as recited in claim 2, but instead
manually selects a particular task schedule. App. Br. 20-22 and Reply Br. 6-
7. However, for the reasons above, we find that Srimuang describes
automatically selecting a task and further describes the scheduling system
automatically selecting a particular task schedule from among a plurality of
task schedules to schedule the task (FF 7-8). Srimuang states, “. . . the
scheduling program may specifically schedule the various people and
resources for only portions of the service time interval where they are
needed.” Srimuang [0109].
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 2 under 35 U.S.C. §102(e) as anticipated
by Srimuang.

Claim 5
For the same reasons argued with respect to claim 1, the Appellant
argues that Srimuang does not describe “at least one executable procedure to
automatically and programmatically without user intervention select
said task and assign said identifier.” Answer 22 (Emphasis original). For
the same reasons as above, we find that Srimuang describes automatically
and programmatically without user intervention selecting the task.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 5 under 35 U.S.C. §102(e) as anticipated
by Srimuang.
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Claims 8-11
The Appellant argues claims 8-11 as a group. App. Br. 29. We select
claim 1 as the representative claim for this group, and the remaining claims
9-11 stand or fall with claim 8. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Claim 8, like claim 2, requires a step of automatically initiating an
executable procedure that selects a task schedule from a plurality of different
task schedules and assigns a task representative identifier to the task
schedule. The Appellant again argues that Srimuang does not describe
automatically selecting a task schedule from a plurality of different task
schedules for the same reasons as argued with respect to claims 1 and 2.
App Br. 23-29 and Reply Br. 6. For the same reasons as above, we find the
Appellant’s argument unpersuasive. Accordingly, we find that the Appellant
has not shown that the Examiner erred in rejecting claim 8, and claims 10-
11, dependent thereon, under 35 U.S.C. §102(e) as anticipated by Srimuang.

Claim 14
Claim 14 depends from claim 8 and further recites that that the
executable procedure removes a task representative identifier from a task
schedule in response to a triggering event. The Appellant argues that
Srimuang does not describe removing a task representative identifier. App.
Br. 29-30 and Reply Br. 8-9. The Examiner asserts that Srimuang describes
revising a task schedule according to priority rules when scheduling
conflicts occur and that claim 14 reads on this description. Answer 16-17.
We agree with the Examiner. Srimuang describes “revising” a
calendar (FF 10), which one of ordinary skill in the art would understand not
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only adding but removing appointments. Accordingly, we find that the
Appellant has not shown that the Examiner erred in rejecting claim 14 under
35 U.S.C. §102(e) as anticipated by Srimuang.

Claim 15
Claim 15, like claim 1, requires a step of automatically and
programmatically initiating an executable procedure that selects a task from
a plurality of different tasks and assigns a task representative identifier to a
particular task schedule. The Appellant again argues that Srimuang does not
describe automatically selecting a task schedule from a plurality of different
task schedules for the same reasons as argued with respect to claims 1. App
Br. 30-37 and Reply Br. 6. For the same reasons as above, we find the
Appellant’s argument unpersuasive. Accordingly, we find that the Appellant
has not shown that the Examiner erred in rejecting claim 15 under 35 U.S.C.
§102(e) as anticipated by Srimuang.

Claim 16
Claim 15, like claims 1 and 2, requires a step of automatically
initiating an executable procedure that selects a task from a plurality of
different tasks and automatically selectively assigns a task representative
identifier to a particular task schedule. The Appellant again argues that
Srimuang does not describe automatically selecting a task schedule form a
plurality of different task schedules for the same reasons as argued with
respect to claims 1 and 2. App Br. 37-40 and Reply Br. 6. For the same
reasons as above, we find the Appellant’s argument unpersuasive.
Accordingly, we find that the Appellant has not shown that the Examiner
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erred in rejecting claim 16 under 35 U.S.C. §102(e) as anticipated by
Srimuang.

Claim 17
Claim 17 requires a step of automatically initiating an executable
procedure to selects a task schedule from a plurality of different task
schedules and to automatically selectively assign a task representative
identifier to a particular task schedule, in response to a triggering event. The
Appellant again argues that Srimuang does not describe automatically
selecting a task schedule from a plurality of different tasks schedules for the
same reasons as argued with respect to claims 1 and 2. App Br. 40-44 and
Reply Br. 6. For the same reasons as above, we find the Appellant’s
argument unpersuasive. Accordingly, we find that the Appellant has not
shown that the Examiner erred in rejecting claim 17 under 35 U.S.C. §102(e)
as anticipated by Srimuang.

Claim 18
Claim 18, unlike claim 1 recites an apparatus. However, like claim 1,
claim 18 recites an executable procedure for automatically selecting a task
from a plurality of different tasks and assigns a task representative identifier
to a particular task schedule. The Appellant again argues that Srimuang
does not describe automatically selecting a task or a task schedule from a
plurality of different tasks and task schedules for the same reasons as argued
with respect to claims 1 and 2. App Br. 30-37 and Reply Br. 6. For the
same reasons as above, we find the Appellant’s argument unpersuasive.
Accordingly, we find that the Appellant has not shown that the Examiner
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erred in rejecting claim 18 under 35 U.S.C. §102(e) as anticipated by
Srimuang.

The rejection of claims 12 and 13 as being unpatentable over Srimuang and
Mayhak.
Claim 12
The Appellant argues that neither Srimuang nor Mayhak teaches each
and every limitation of independent claim 8 and claim 12, dependent
thereon, and, therefore, the Examiner has not established a prim facie
showing of obviousness. App. Br. 48-49 and Reply Br. 10-11.
First, the Appellant argues that neither Srimuang nor Mayhak describe
automatically initiating execution of an executable procedure to select a task
schedule from a plurality of task schedules and assigning a representative
identifier to the selected task schedule. App. Br. 48-49 and Reply Br. 10.
We note that claim 12 depends upon claim 8, which recites this limitation.
As discussed above with respect to claims 1, 2 and 8, we find that Srimuang
describes automatically initiating an executable procedure that selects a task
schedule from a plurality of task schedules.
Next, the Appellant argues that neither Srimuang nor Mayhak
describes that “the executable procedure conditions allocation of the task to
the task schedule associated with the particular entity upon coincidence of a
plurality of occurrences” and a step of “acquiring data to identify the
coincidence of the plurality of occurrences” as recited in claim 12. App. Br.
49-50 and Reply Br. 10-11.
We find that Srimuang teaches that scheduling the task is based upon
acquired data related to the availability of required employees and resources
used in performing the task. FF 9. This description in Srimuang teaches the
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limitations at issue in claim 12. The claimed coincident occurrences are the
available appointments in all required employees’ and resources’ schedules
at the required time. We note that claim 12 does not restrict the occurrences
to be past occurrences or future occurrences and therefore, encompasses
both. Mayhak also teaches scheduling employees to care for patients based
on information in a patient profile and an employee profile. FF 12. A
procedure (i.e. task) is allocated to an employee if the patient’s
requirements, which includes type of procedure and the patients schedule
(i.e. occurrence), coincide with the ability of the employee to care for the
patient (i.e. occurrence). FF 12.
Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Srimuang and Mayhak.

Claim 13
The Appellant argues that neither Srimuang nor Mayhak teaches that
“a. the triggering event is conditioned upon coincidence of a plurality of
occurrences, and b. further inquiring data to identify the coincidence of the
plurality of occurrences” as recited in claim 13 and, therefore, the Examiner
has not established a prim facie showing of obviousness. App. Br. 50-52
and Reply Br. 11-12.
For the same reasons as discussed above with regards to claim 12, we
find that Srimuang and Mayhak teach this limitation. Both teach that a
request for an appointment is conditioned upon the coincidence of the
availability of all required employees and resources. FF 9 and 12.
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Accordingly, we find that the Appellant has not shown that the
Examiner erred in rejecting claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Srimuang and Mayhak.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting:
claims 1-11 and 14-19 under 35 U.S.C. §102(e) as anticipated by
Srimuang, and
claims 12 and 13 under 35 U.S.C. §103(a) as unpatentable over Srimuang
and Mayhak, Jr.

DECISION
The decision of the Examiner to reject claims 1-19 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)(1)(iv) (2007).

AFFIRMED

mev

ELSA KELLER, LEGAL ASSISTANT
INTELLECTUAL PROPERTY DEPARTMENT
SIEMENS CORPORATION
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