Ex Parte Snyder

Board of Patent Appeals and Interferences

Aug 8, 2008

09996341 (B.P.A.I. Aug. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CECILY ANNE SNYDER
____________

Appeal 2008-1228
Application 09/996,341
Technology Center 3600
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Decided: August 8, 2008
____________

Before HUBERT C. LORIN, LINDA E. HORNER, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Cecily Anne Snyder (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-3 and 5-26. Claim 4 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM. 1
THE INVENTION
The Appellant’s invention relates to a method for managing legal
cases and particularly patent applications. Specification [09] and [18]. In
particular, the invention pertains to a docketing method for cases whereby a
message is generated upon receipt of a signal indicative of an occurrence of
an event, such as a deadline in the case, and communicated to a client, e.g., a
client computer. See Specification [19] and Fig. 1. The method comprises
storing data and documents related to the case and, upon receiving the signal
and identifying a rule associated with the event and a first rule related to the
case, generating a message using the first rule, “the message identifying an
action to be performed in response to the event and identifying a date
associated with the action” (Specification [19]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method of
generating a message for a first intellectual property
case, the method comprising:
storing information related to a plurality of
intellectual property cases on a computer-readable

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Dec. 26, 2006) and the Examiner’s Answer (“Answer,” mailed Mar. 9,
2007).
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medium, the plurality of intellectual property cases
including the first intellectual property case, wherein
storing information related to the first intellectual
property case comprises storing the information
related to the first intellectual property case in a case
data unit, wherein the case data unit stores data
related to the first intellectual property case and one
or more documents related to the first intellectual
property case;
receiving a signal indicating occurrence of an
event related to the first intellectual property case;
responsive to receiving the signal, identifying
one or more rules associated with the event;
identifying at least a first rule from the one or
more rules based upon filter criteria information
associated with the one or more rules and based
upon information related to the first intellectual
property case stored on the computer-readable
medium;
generating at least one message using the at
least first rule, the message identifying an action to
be performed in response to the event and
identifying a date associated with the action; and
communicating the at least one message to a
first designated client system.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kamarei
Lee
US 6,859,806 B1
US 7,016,852 B1
Feb. 22, 2005
Mar. 21, 2006
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The following rejections are before us for review:
1. Claims 1, 2, and 5-20 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Kamarei.
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kamarei.
3. Claims 21-26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kamarei and Lee.

ISSUES
The issues before us are whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 2, and 5-20 as anticipated by Kamarei;
claim 3 as unpatentable over Kamarei; and, claims 21-26 as unpatentable
over Kamarei and Lee. These issues turn on whether Kamarei describes the
step in claim 1 of:
storing information related to a plurality of
intellectual property cases on a computer-readable
medium, the plurality of intellectual property cases
including the first intellectual property case, wherein
storing information related to the first intellectual
property case comprises storing the information related to
the first intellectual property case in a case data unit,
wherein the case data unit stores data related to the first
intellectual property case and one or more documents
related to the first intellectual property case.

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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).

Claim construction
1. The storing step of claim 1 reads: “storing information related to a
plurality of intellectual property cases on a computer-readable
medium, the plurality of intellectual property cases including the
first intellectual property case, wherein storing information related
to the first intellectual property case comprises storing the
information related to the first intellectual property case in a case
data unit, wherein the case data unit stores data related to the first
intellectual property case and one or more documents related to the
first intellectual property case.”
2. The storing step of claim 1 describes storing information. The
information is characterized as being related to intellectual
property cases.
3. The information is stored on a computer-readable medium. Since
computer-readable mediums store information in the form of data,
the information is stored on the computer-readable medium as
data.
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4. The Specification does not give the claim phrase “computer-
readable medium” an explicit definition but rather discloses a
range of conventional devices for storing data:
[40] Fig. 1 is a simplified block diagram of a distributed
system 10 that might incorporate an embodiment of the present
invention. …

[47] … As shown in Fig. 1, IP data processing system 100
includes server 101 (e.g., a Web server), a data storage
repository such as database 106, … .

[52] The computer systems depicted in Fig. 1 may be of the
form depicted in Fig. 2. Fig. 2 is a simplified block diagram of
a computer system 200 according to an embodiment of the
present invention. As shown in Fig. 2, computer system 200
includes at least one processor 202 that communicates with a
number of peripheral devices via a bus subsystem 204. These
peripheral devices may include a storage subsystem 206,
comprising a memory subsystem 208 and a file storage
subsystem 210, … .

[57] … File storage subsystem 210 provides persistent (non-
volatile) storage for program and data files, and may include a
hard disk, a floppy disk drive along with associated removable
media, a Compact Disk Read Only Memory (CD-ROM) drive,
an optical drive, removable media cartridges, and other like
storage media. … .
5. Accordingly, the claim phrase “computer-readable medium”
means, for example, a hard drive of a computer.
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6. According to the storing step of claim 1, the data is stored in a
“case data unit.”
7. The Specification defines “case data unit” as follows:
[62] A case data unit stores data and/or a collection of
electronic documents (or references to the electronic
documents) that are related to a particular case, e.g., a patent
application in a particular country. …

[63] The case data unit may be implemented as a data
structure, a file, a database, or any other structure capable of
storing data and/or documents. …

8. Accordingly, the claimed phrase “case data unit” means, for
example, a database.
9. According to claim 1, the case data unit stores data “related to the
first intellectual property case and one or more documents related
to the first intellectual property case.”
10. The Specification defines the type of information and the types of
documents the case data unit can store:
[48] … The information in database 106 may include draft
and completed invention disclosures, draft and completed
patent application documents, draft and completed prosecution
filings (e.g., amendments), information about discussions
pertaining to invention disclosures and patent applications,
patent and patent application status information, prior art
publications, office actions, assignment papers, other forms and
papers filed in or generated by a patent office, etc. … .
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[64] The documents stored in or referred to by a case data unit
may include a variety of documents of different document
types. Specific examples of documents types include an
invention disclosure, a filed patent application, patent drawings,
… forms, image files, … .
11. Accordingly, images are a type of document, related to a first
intellectual property case, the case data unit stores.
12. Thus, claim 1 describes storing information and at least one
document, such as an image, in a “case data unit,” or database, on
a “computer-readable medium,” such as a hard drive.2
The prior art
13. Kamarei is directed to a computer based method and system for
managing dockets for legal cases.
14. Kamarei describes a database which contains information related
to legal cases. (See col. 6, l. 49) (“Case Listing Database”) and
Fig. 1, element 20.
15. Kamarei further describes the database as a means for bringing
about documents. (See col. 11, ll. 40-52):

2 We construe claim 1 as requiring the case data unit to store information
and at least one document. The Examiner suggested that the storing step
could be construed to require the case data unit to store only data related to
at least one document, rather than the document itself. (Answer 15). That
construction is negated by dependent claim 24 (24. The method of claim 1,
further comprising: scanning a paper to produce a scanned document in a
computer readable format; wherein storing one or more documents
comprises storing the scanned document.). Emphasis added.
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Automated Document Generation and Filing
System
In a preferred embodiment, the Host Server
System further comprises of a document
generation step wherein any one or combination of
the following documents are created by the host
server system using information contained in the
Case Listing Database 20; legal documents, action
prompt reports, action prompt due date reports,
client system defined forms, and client system
defined letters. In an embodiment the documents
are prepared automatically as a result of a time
criteria. The time criteria are optionally defined by
the client system in the host server system and
optionally include a set date.
16. Lee relates to a system and method for managing fees associated
with the processing and handling of intellectual property
transactions.

PRINCIPLES OF LAW
Anticipation
Anticipation is a question of fact. In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997). “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., 814 F.2d 628, 631 (Fed. Cir. 1987). There must be no difference
between the claimed invention and the reference disclosure, as viewed by a
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person of ordinary skill in the field of the invention. Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991).
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., 127 S.Ct. 1727,
1734 (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, 127 S.Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the 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.” 383 U.S. at 18-19.

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ANALYSIS
Rejection of claims 1, 2, 5-20 under 35 U.S.C. § 102(b) as being anticipated
by Kamarei
The Appellant argued claims 1, 2, and 5-20 as a group (Br. 7-10). We
select claim 1 as the representative claim for this group, and the remaining
claims 2 and 5-20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2007). Claim 1 is reproduced supra.
The Appellant’s sole argument (Br. 7-10) is that Kamarei does not
describe the claim 1 step of:
storing information related to a plurality of
intellectual property cases on a computer-readable
medium, the plurality of intellectual property cases
including the first intellectual property case, wherein
storing information related to the first intellectual
property case comprises storing the information related to
the first intellectual property case in a case data unit,
wherein the case data unit stores data related to the first
intellectual property case and one or more documents
related to the first intellectual property case.
Based on the broadest reasonable construction of claim 1 in light of
the Specification as it would be interpreted by one of ordinary skill in the art,
the step in question is drawn to storing information and at least one
document in a case data unit, such as a database, on a computer readable
medium, such as a hard drive. (FF 12). Accordingly, the Appellant is
arguing that Kamarei fails to describe storing information and a document
in, for example, a database on a hard drive. (We recognize that the
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information in the claim 1 method relates to intellectual property cases. But
a distinction between information related to intellectual property cases and
information related to another subject is a distinction grounded on
nonfunctional descriptive material. See In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (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).
Accordingly, we agree with the Examiner (Answer 13-14) that the limitation
in claim 1 that relates the information to be stored to intellectual property
cases is not patentably consequential.
There are two aspects to this argument: whether Kamarei describes (a)
a database on a computer readable medium and (b) using that combination to
store information and a document.
The first aspect to the argument is not in dispute. Kamarei describes a
database on a computer readable medium. Kamarei is replete with
disclosures of databases; most notably, Kamarei’s method comprises
operating a “Case Listing Database.” (FF 15). Since databases cannot
operate apart from the computer readable medium that they are on, in
operating a database Kamarei necessarily, and thus inherently, describes a
computer readable medium for holding the database.
On the question of whether the Kamarei uses its database to store both
information and documents, the Examiner directed the Appellant’s attention
to disclosures at col. 5, ll. 19-31; col. 6, l. 49 (“Case Listing Database”); col.
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10, ll. 6-10; Fig. 6; col. 8, l. 45 – col. 9, l. 2; col. 9, l. 32 – col. 10, l. 9; col.
10, ll. 64-67; col. 11, ll. 40-67; and, col. 13, ll. 55-63. Answer 3-4. The
Appellant contends that none of these disclosures describe a database used in
the manner claimed. “Specifically, the final Office action identifies nothing
in Kamerei [sic] that even remotely teaches the storage of such documents,
let alone the storage of such documents in a case data unit that stores data
related to the first intellectual property case and one or more documents
related to that case, as recited by the independent claims.” Br. 9.
We disagree with the Appellant. We have carefully reviewed Kamarei
and the disclosures cited by the Examiner and find that Kamarei discloses
using its database to store both information and documents. We reach this
finding based on the disclosure in Kamarei at col. 11, ll. 40-52. (FF 15).
That passage indicates that Kamarei’s method comprises a document
generation step where “any one or combination of the following documents
are created using information contained in the Case Listing Database 20.”
“[T]he following documents” includes, for example, “legal documents.” One
of ordinary skill would understand Kamarei’s database to operate
conventionally and that would include bringing about documents from
information contained in a database that is in the conventional forms of
either data or documents. One having ordinary skill in the art would
understand the disclosure of Kamarei to expressly disclose bringing about
the particular documents disclosed by getting information in the form of a
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document or data from a database. As such, Kamarei reads on the storing of
documents and information in the claimed case data unit.
Accordingly, we are not persuaded by the Appellant’s argument as to
error in the rejection.

Rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Kamarei
The Appellant argued against the rejection of claim 3 for the same
reasons used to argue against the rejection of claim 1. (Br. 10). Accordingly,
because we found them unpersuasive as to that rejection, we find them
equally unpersuasive as to error in the rejection of claim 3.
The legal standard for determining obviousness set forth in the brief
appears to be an accurate reflection of the law on obviousness at the time the
brief was filed. (Br. 10). However, KSR, which issued after the filing of the
Brief, has since clarified the law on obviousness. The legal standard for
determining obviousness is now more flexible. We direct KSR to the
Appellant’s attention for future reference.

Rejection of claims 21-26 under 35 U.S.C. § 103(a) as unpatentable over
Kamarei and Lee
The Appellant argued against the rejection of claims 21-26 for the
same reasons used to argue against the rejection of claim 1. (Br. 10-11).
Accordingly, because we found them unpersuasive as to that rejection, we
find them equally unpersuasive as to error in the rejection of claims 21-26.
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CONCLUSIONS OF LAW
The Appellants have not shown that the Examiner erred in rejecting
claims 1, 2, and 5-20 under 35 U.S.C. § 102(e) as being anticipated by
Kamarei; claim 3 under 35 U.S.C. § 103(a) as unpatentable over Kamarei;
and, claims 21-26 under 35 U.S.C. § 103(a) as unpatentable over Kamarei
and Lee.

DECISION
The decision of the Examiner to reject claims 1-3 and 5-26 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) (2007).
AFFIRMED

JRG

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