Ex Parte Paknad

Patent Trial and Appeal Board

Aug 29, 2017

11901020 (P.T.A.B. Aug. 29, 2017)

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.
11/901,020 09/14/2007 Deidre Paknad SVL920105404US1/1163-004 4154
51871 7590 08/31/2017
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
pairdocketing @ ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEIDRE PAKNAD
Appeal 2015-005054
Application 11/901,020
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—22. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
Appeal 2015-005054
Application 11/901,020
Claim 1 is illustrative:
1. A method for determining potential evidence issues for employees
having changing status, comprising:
executing instructions stored in memory by a processor to:
determine employee status change;
maintain an enterprise map comprising a structure that
represents people, repositories, organizations, and documents via
relationships;
access information associated with one or more legal matters
having one or more preservation requests for potential evidence, the
information comprising affected people and systems involved in the one or
more legal matters;
determine whether at least one status change employee is
affected by the one or more preservation requests for potential evidence by
cross-checking the employee status change with the accessed information
associated with the one or more legal matters having the one or more
preservation requests for potential evidence by traversing the enterprise map
from at least one root element to derive affected people and systems, the
at least one status change employee comprising an employee having
changing status or potential changing status that is associated with the one or
more legal matters; and
based on the cross-check, generate one or more notifications
associated with the at least one status change employee who is affected by
the one or more preservation requests for potential evidence in the one or
more legal matters.
Appellant appeals the following rejection(s):
1. Claims 1—22 are rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
2. Claims 1-22 are rejected under 35 U.S.C. § 102(b) as anticipated
by PSS, available at www.pss-svstems.com from December 8,
2005.
3. Claims 1—21 are rejected under nonstatutory double patenting over
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Appeal 2015-005054
Application 11/901,020
claims 1—25 ofU. S. Patent No. 7,895,229.
4. Claims 1—21 are rejected under nonstatutory double patenting
over claims 1—30 of copending Application No. 12/147,350.
ISSUE
Did the Examiner err in rejecting the claims under 35U.S.C. § 101
because the claims do not preempt others from using the alleged abstract
idea of determining who is responsible or connected to a preservation
request and because the claims include meaningful limitations that amount
to significantly more than the alleged abstract idea?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 103
because PSS does not determine whether at least one status change
employee is affected by one or more preservation requests by traversing the
enterprise map from at least one root element?
ANALYSIS
Rejection under 35 U.S.C. ft101
The Examiner rejected the claims as being directed to an abstract idea.
The Examiner held that the claims were directed to the abstract idea of
managing legal obligations by determining who is responsible or connected
to a preservation request. The Examiner further found that the claims do not
include additional elements that are significantly more than the abstract idea.
Ans. 7.
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Appeal 2015-005054
Application 11/901,020
We note at the outset that an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
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Application 11/901,020
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Benson, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an “inventive concept”—an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
We are not persuaded of error on the part of the Examiner by
Appellant’s arguments that the claims do not seek to pre-empt others from
using the alleged abstract idea.
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—
63 (Fed. Cir.), cert denied, 136 S. Ct. 701 (2015) (“[TJhat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.”). And, “[wjhere a
patent’s claims are deemed only to disclose patent ineligible subject matter
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Application 11/901,020
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
We are not persuaded of error on the part of the Examiner by
Appellant’s arguments that the claims establish meaningful limitations that
amount to significantly more than the alleged abstract idea. Specifically, the
Appellant argues that claim 1 adds limitations that are more than what is
well-understood, routine, and conventional in the field. Appellant argues
that the claims do more than implement the alleged abstract idea of
determining potential evidence issues for employees having changing status
on a generic computer instead:
the claims clearly establish meaningful limitations on the
alleged abstract idea. With respect to claim 1, for example, the
claim includes at least the meaningful limitations of “maintain
an enterprise map comprising a structure that represents people,
repositories, organizations, and documents via relationships”
and “determine whether at least one status change employee is
affected by the one or more preservation requests for potential
evidence by cross-checking the employee status change with
the accessed information associated with the one or more legal
matters having the one or more preservation requests for
potential evidence by traversing the enterprise map from at least
one root element to derive affected people and systems, the at
least one status change employee comprising an employee
having changing status or potential changing status that is
associated with the one or more legal matters.”
Reply Br. 7.
We do not agree that these recitations relate to more than the
processing of data. Instead, we agree with the Examiner that
claim 1 is directed to the steps of routine data gathering
and data analysis performed by a generic computer. Our reviewing
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court has found similar claims directed to processing and analyzing
data as directed to abstract ideas. See Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A. Ass ’n, 776 F.3d 1343,
1348 (Fed. Cir. 2014) (collecting data, storing data in memory, and
recognizing certain data within the stored data constitutes an abstract
idea); see also Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (collecting information, analyzing it, and
displaying certain results of the collection and analysis found to be an
abstract idea). As such, the recitations of claim 1 do not add
significantly more to the abstract idea but are rather a part of the
abstract idea itself.
In addition, nothing in claim 1 purports to improve computer
functioning or “effect an improvement in any other technology or technical
field.” Alice, 134 S. Ct. at 2359. Nor does claim 1 solve a problem unique
to the Internet. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014). Claim 1 is also not adequately tied to “a particular
machine or apparatus.” Bilski, 561 U.S. at 602. Any generic computer is
capable of receiving and processing the data as recited in the steps of
claim 1. “[S]imply implementing an abstract concept on a computer,
without meaningful limitations to that concept, does not transform a patent-
ineligible claim into a patent-eligible one.” Accenture Global Servs., GmbH
v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013).
In viewT of the foregoing, we will sustain this rejection as it is
directed to claim 1. We will also sustain this rejection as it is directed
to the remaining claims because the Appellant has not argued the
separate patent eligibility of these claims.
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Application 11/901,020
Nonstatutory Double Patenting Rejections
Appellant does not argue the merits of the nonstatutory double
patenting rejections. Therefore the Examiner’s nonstatutory double
patenting rejections are sustained. See Ex parte Frye, 94 USPQ2d 1072,
1076 (BPAI 2010) (precedential) (“[T]he Board will generally not reach the
merits of any issues not contested by an appellant.”). Only those arguments
actually made by the Appellant have been considered in this decision.
Arguments which the Appellant could have made but chose not to make in
the Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37 (c)(l)(vii) (2008). “It i s not the function of [the U.S.
Court of Appeals for the Federal Circuit] to examine the claims in greater
detail than argued by an appellant, looking for nonobvious distinctions over
the prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991). “Similarly, it is not the function of this Board to examine claims in
greater detail than argued by an appellant, looking for distinctions over the
prior art.” Ex Parte Shen, No. 2008-0418, 2008 WL 4105791, at *9 (BPAI
September 4, 2008).
Rejection under 35 U.S.C. §103
We will not sustain the Examiner’s rejection of claims 1—21 as being
anticipated by PSS because we agree with the Appellant that PSS does not
disclose executing instructions to determine whether at least one status
change employee is affected by one or more preservation requests for
potential evidence by traversing the enterprise map from at least one root
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Application 11/901,020
element to derive affected people and systems. Appellant discloses that
knowing the root element associated with a legal matter allows further
people and objects and/or affected people and systems to be derived. Spec.
34.
The Examiner relies on pages 5 and 6 of PSS for teaching this subject
matter. We find that page 5 of PSS describes a system for a systematic and
sustainable approach to issuing and managing legal holds, managing
multiple requests for documents, and collecting information in response to
requests. A key feature is that the system identifies people by department
and organization. It provides a complete and accurate personnel directory
and map of systems and system administration for a company. There is no
disclosure on this page of PSS related to determining whether a status
change employee is affected by a preservation request for potential evidence
by traversing a map from at least a root element. Page 6 of PSS discloses
that the system facilitates collection of information from all sources and
allows the system to manage and monitor that information. There is no
disclosure that a root element is traversed to determine affected people and
systems.
In view of the foregoing, we will not sustain the Examiner’s rejection
as it is directed to claim 1. We will not sustain the rejection as it is directed
to the remaining claims because each of these claims requires similar subject
matter
DECISION
We sustain the Examiner’s § 101 rejection.
We sustain the Examiner’s § 103 double patenting rejection.
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Application 11/901,020
We do not sustain the Examiner’s § 102 rejection.
ORDER
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)(l)(iv).
AFFIRMED
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