DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s Amendments, filed 29-October-2026, have been entered. Claims 1 and 11 have been amended, and claims 1-5, 7-15, and 17-20 are currently pending.
Response to Arguments
Applicant argues that the amendment to the claims 1 and 11 directed to “custodian richness” overcomes the 35 112(b) rejection of the claims (Remarks p. 7). Examiner agrees with this argument. Examiner withdraws the 35 U.S.C. 112(b) rejection of claims 1-5, 7-15, and 17-20.
Applicant argues that consolidating duplicative potential custodian identifiers, as recited in claim 1, is directed to statutory subject matter in view of paragraph [0026] of the Specification overcomes the 35 U.S.C. 101 rejection because it reduces storage operation, requirements, and associated costs (Remarks pp. 7-8).
In response, examiner respectfully submits that the amendments do not overcome the 35 U.S.C. 101 rejections. Amended claim 1 specifies that “custodian richness” is determined and used in consolidating duplicative potential custodian identifiers. Specification [0026] recites that identifying duplicative custodians reduces the amount of data that needs to be stored. However, this seems to invoke the computer merely as a tool to deduplicate certain records rather than improving the way the computer stores and retrieves the data in combination with a specific data structure recited in the claims, such as in Enfish (see MPEP 2106.05(a)(I), including how mere automation of manual processes does not improve computer technology).
Applicant argues that the cited portions of the prior art fail to disclose or suggest the features of amended claim 1, specifically that it does not disclose or suggest determining that a data item associated with a first custodian is unavailable, and in response to determining the data item is unavailable, downgrading a level of relevance of the first custodian (Remarks pp. 8-9). In response, examiner respectfully submits that Kumar et al. (Pub. No. US 2012/0310951 A1, hereinafter “Kumar”) teaches that where a recommendation score (i.e. level of relevance) may be determined for each custodian not in the seed set of custodians. The custodians with the highest score may be a suggested set of custodians provided to a user, and the suggestion process may be iteratively improved. For example, as new custodians are suggested, additional documents (i.e. data items) corresponding to the relevant keywords or queries and associated with the new custodians may cause the custodian-custodian relationship graph to change. Additionally, as more documents are labeled relevant or not relevant (i.e. unavailable), the information used to create the custodian-custodian graph will also change (i.e. downgrading level of relevance) (Kumar [0062-0064]).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 7-15, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites, in the second to last limitation, “determining that a data item associated with the first custodian is unavailable; and in response to determining that the data item is unavailable, downgrading a level of relevance of the first custodian” (emphasis added). Claim 1 recites fourth limitation, “obtain from the data sources a plurality of data items…identify from the obtained plurality of data items…”. It is unclear if the recited “data item” in the second to last limitation refers one of the “obtained” data items, and if so, how said data item can be unavailable after it was obtained. Applicant’s Specification does not refer to unavailable data items, but does recite in Paragraph [0033] that “…the indicator may be downgraded or downloaded…in response to determining that data is not available…”, however it is not clear how or if this data includes a “data item”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5, 7-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more as seen in the explanation below.
Regarding claim 1,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim recites the following limitations directed to an abstract idea:
“build, for each of the identified matters associated with the first custodian, a corresponding matter profile, each respective matter profile including a set of involved custodian identifiers;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge obtaining a plurality of data items associated with a first custodian.
“determine from the obtained plurality of data items one or more matters associated with the first custodian;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge determining from the obtained plurality of data items one or more matters associated with the first custodian.
“determine from the obtained plurality of data items identifiers of potential custodians associated with the identified matters;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge determining from the obtained plurality of data items identifiers of potential custodians associated with the identified matters.
“determine a plurality of levels of custodian richness associated with the matter profiles;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge determining a plurality of level of custodian richness associated with the matter profiles.
“compare, for each of the potential custodians, data items associated with the potential custodian to determine a corresponding level of relevance of the potential custodian to a target matter based on a determined level of custodian richness of the plurality of custodian richness;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or comparing, for each of the potential custodians, data items associated with the potential custodian to determine a corresponding level of relevance of the potential custodian to a target matter based on a determined level of custodian richness.
“consolidate duplicative potential custodian identifiers based on a comparison of the data items associated with the potential custodian;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can consolidate duplicative potential custodian identifiers based on a comparison of the data items associated with the potential custodian.
“select a subset of the potential custodians having corresponding levels of relevance above a configurable threshold;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge selecting a subset of the potential custodians having corresponding levels of relevance above a configurable threshold.
“determining that a data item associated with the first custodian is unavailable;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge determining that a data item associated with the first custodian is unavailable.
“and in response to determining the data item is unavailable, downgrading a level of relevance of the first custodian;”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge selecting a subset of the potential custodians having corresponding levels of relevance above a configurable threshold.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“an electronic discovery server machine” is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“a plurality of data sources coupled by a network to the electronic discovery server machine, each of the data sources storing data of a corresponding data management tool” is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“a plurality of data sources coupled by a network to the electronic discovery server machine, each of the data sources storing data of a corresponding data management tool” is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“receive from an input interface an identifier of a first custodian;”, which is a mere data gathering and output and recited a high level of generality, and thus is insignificant extra-solution activity, see MPEP 2106.05(g), which does not provide integration into a practical application.
“receive from an input interface an identifier of a first custodian” is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“obtain from the data sources a plurality of data items associated with the first custodian;”, which is a mere data gathering and output and recited a high level of generality, and thus is insignificant extra-solution activity, see MPEP 2106.05(g), which does not provide integration into a practical application.
“generate output including the selected subset of the potential custodians and providing the output to an output interface;”, which is a mere data gathering and output and recited a high level of generality, and thus is insignificant extra-solution activity, see MPEP 2106.05(g), which does not provide integration into a practical application.
“generate output including the selected subset of the potential custodians and providing the output to an output interface” is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the receiving, obtaining and generating output steps listed above, these elements are recited at a high level of generality. These elements amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity (see MPEP 2106.05(d) II.).
With respect to the additional elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 2,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“wherein the plurality of data sources store multiple, disparate types of data for the corresponding data management tools in multiple, disparate data structures” is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the additional elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more. Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 3,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“wherein the electronic discovery server machine is further adapted to store the obtained plurality of data items in an original format as obtained from the corresponding data management tools”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“wherein the electronic discovery server machine is further adapted to store the obtained plurality of data items in an original format as obtained from the corresponding data management tools”, which is a mere data gathering and output and recited a high level of generality, and thus is insignificant extra-solution activity, see MPEP 2106.05(g), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the receiving, obtaining and generating output steps listed above, these elements are recited at a high level of generality. These elements amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity (see MPEP 2106.05(d) II.).
With respect to the other elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 4,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1, including, as indicated in the underlined text:
“wherein the electronic discovery server machine is further adapted to build, with the obtained plurality of data items, a first custodian profile for the first custodian”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge building a first custodian profile for the first custodian.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“wherein the electronic discovery server machine is further adapted to build, with the obtained plurality of data items, a first custodian profile for the first custodian”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the other elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 5,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1, including, as indicated in the underlined text:
“wherein the electronic discovery server machine is further adapted to compare the data items associated with the potential custodian to each potential custodian identifier”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge comparing data items associated with the potential custodian to each potential custodian identifier.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“wherein the electronic discovery server machine is further adapted to compare the data items associated with the potential custodian to each potential custodian identifier”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the other elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 7,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1, including, as indicated in the underlined text:
“wherein the level of relevance of each potential custodian is determined by adding relevance contributions of a plurality of data items associated with the potential custodian”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge determining the level of relevance by adding relevance contributions to a plurality of data items.
At Step 2A, Prong Two:
The claim does not recite any additional elements.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more. Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 8,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1, including, as indicated in the underlined text:
“wherein the relevance contribution of each data item is based at least in part on a data type associated with the data item and at least in part on an association of the data item with either the target matter or the one or more identified matters”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge the relevance contribution of each data item.
At Step 2A, Prong Two:
The claim does not recite any additional elements.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more. Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 9,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1, including, as indicated in the underlined text:
“wherein the electronic discovery server machine is further adapted to assign low levels of relevance to potential custodians who were not associated with a target enterprise at a time of a target litigation event”, as drafted this recites a mentally performable process as an evaluation or judgement. One can mentally evaluate or judge assign low levels of relevance to potential custodians.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“wherein the electronic discovery server machine is further adapted to assign low levels of relevance to potential custodians who were not associated with a target enterprise at a time of a target litigation event”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the other elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding claim 10,
At Step 1:
The claim is directed to a "system" and thus directed to a statutory category.
At Step 2A, Prong One:
The claim further recites limitations corresponding to the judicial exception recited in parent claim 1.
At Step 2A, Prong Two:
The claim recites the following additional elements, as underlined:
“wherein the electronic discovery server machine is further adapted to receive from an input interface setting the configurable threshold”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“wherein the electronic discovery server machine is further adapted to receive from an input interface setting the configurable threshold”, which is a high-level recitation of generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
“wherein the electronic discovery server machine is further adapted to receive from an input interface setting the configurable threshold”, which is a mere data gathering and output and recited a high level of generality, and thus is insignificant extra-solution activity, see MPEP 2106.05(g), which does not provide integration into a practical application.
Viewing the additional limitations together and the claim as a whole, nothing provides integration into a practical application.
At Step 2B:
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the receiving, obtaining and generating output steps listed above, these elements are recited at a high level of generality. These elements amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity (see MPEP 2106.05(d) II.).
With respect to the other elements listed above, these elements simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d)), and thus does not provide significantly more.
Looking at the claim as a whole does not change this conclusion and the claim is ineligible.
Regarding independent claim 11, claim 11 is a method claim and thus directed to a statutory category of process, and corresponds to claim 1. Claims 12-15, 17-20 depend from claim 11, and correspond to claims 2-5 and 7-10 respectively. Therefore, claims 2-5, 7-15, and 17-20 are rejected accordingly.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar in view of Richards (EP 2 234 048 A1, hereinafter “Richards”) further in view of Martin (PCT/US2003/039651, hereinafter “Martin”).
Regarding claim 1, Kumar teaches:
an electronic discovery server machine (Kumar – see Fig. 6 Litigation query system 600 [0065-0066].)
a plurality of data sources coupled by a network to the electronic discovery server machine, each of the data sources storing data of a corresponding data management tool (Kumar – in Fig. 1, the devices in system 100 are connected by network 130, the corpus may include documents contained within, e.g. storage devices 110 and/or server 120 [0022-0023, 0071].)
wherein the electronic discovery server machine is adapted to: receive from an input interface an identifier of a first custodian (Kumar – in Fig. 4, 410, a set of known custodians subject to a litigation hold is identified and received. The set of known custodians may be generated by a member of the legal team or may be result of seeding in Fig. 3 [0049].)
obtain from the data sources a plurality of data items associated with the first custodian; identify from the obtained plurality of data items one or more matters associated with the first custodian (Kumar – see Fig. 3, 330, where a set of documents are identified, and these documents are linked to a suggested set of custodians [0046-0047].)
determine from the obtained plurality of data items identifiers of potential custodians associated with the identified matters (Kumar – in 420, a set of documents known to be relevant to the litigation is received. The documents may have been identified as relevant by one or more members of the legal team, or may be known to be relevant in any other manner (i.e. Fig. 3 method). At 430, the set of documents known to be relevant is searched for potential custodian names [0050-0051].)
determine a plurality of levels of custodian richness (Kumar – see [0062], where to determine the recommendation score, the known importance of a given custodian may be used. For example, the known X(c) of a seed set of custodian may be 1, while the known importance of custodians not in the seed set may be zero (i.e. levels of custodian richness). Thus, to suggest custodians not in the seed set (cnew), a score R(cnew) may be determined which takes into account the relationship between each cnew and custodians in the seed set c, as well as the importance of the custodians in the seed set.)
compare, for each of the potential custodians, data items associated with the potential custodian to determine a corresponding level of relevance of the potential custodian to a target matter based on a determined level of custodian richness of the plurality of custodian richness (Kumar – in Fig. 5, 550, a recommendation score (i.e. level of relevance) is determined for each custodian not known to be relevant to the litigation [0057]. A recommendation score may be determined for each custodian not in the seed set of custodians. To determine the recommendation score, the known importance of given custodian may be used. To suggest custodians not in the seed set, Cnew, a score R(Cnew) may be determined which takes into account the relationship between Cnew and custodians in the seed set c, as well as importance of the custodians in the seed set. The custodians with the highest score R(Cnew) may be a suggested set of custodians provided to the user [0062]. Also see [0060-0061], where a custodian-custodian graph measures the strength between two custodians (i.e. comparison) based on keywords or relevant documents (i.e. data items). Examiner interprets that the recited richness refers to the data richness of the custodian profile, see Applicant’s Specification [0032].)
select a subset of the potential custodians having corresponding levels of relevance [above a configurable threshold] (Kumar – The custodians with the highest score may be a suggested set of custodians provided to the user [0063].)
generate output including the selected subset of the potential custodians and providing the output to an output interface (Kumar – litigation query system may also include output unit 650 in Fig. 6, which may be configured to display or otherwise notify a user, client, or other party of the results generated by custodian suggester 640 [0069].)
determining that a data item associated with the first custodian is unavailable; and in response to determining the data item is unavailable, downgrading a level of relevance of the first custodian (Kumar – see [0062-0064], where a recommendation score (i.e. level of relevance) may be determined for each custodian not in the seed set of custodians. The custodians with the highest score may be a suggested set of custodians provided to a user, and the suggestion process may be iteratively improved. For example, as new custodians are suggested, additional documents (i.e. data items) corresponding to the relevant keywords or queries and associated with the new custodians may cause the custodian-custodian relationship graph to change. Additionally, as more documents are labeled relevant or not relevant (i.e. unavailable), the information used to create the custodian-custodian graph will also change (i.e. downgrading level of relevance).)
Kumar does not appear to teach:
build, for each of the identified matters associated with the first custodian, a corresponding matter profile, each respective matter profile including a set of involved custodian identifiers
associated with the matter profiles
consolidate duplicative potential custodian identifiers based on a comparison of the data items associated with the potential custodian
above a configurable threshold
However, Richards teaches:
build, for each of the identified matters associated with the first custodian, a corresponding matter profile, each respective matter profile including a set of involved custodian identifiers (Richards – the case database is configured to house information such that all information relating to a particular matter or case is related within the case database and a user can use the user interface to view a profile of the matter or case including all information [0106]. The electronic discovery management server is configured to use the input information to search the Unified Directory in the database server to determine which custodians are associated with the input information [0107]. Adding a custodian to a case or matter involves linking correlating the custodian profile in the Unified Directory to the case or matter in the Case database [0108]. Upon adding custodians to a matter, the e-discovery manager may select the correct custodian for addition to the case or matter and confirm that all custodians selected may be added to the case or matter. Adding a custodian to a case or matter involves linking correlating the custodian profile to the case or matter in the Case database [0108]. The human resources identifier (i.e. custodian identifier) is always unique for each custodian, in some embodiments, the Unified Directory may be organized around the human resources identifier [0093].)
associated with the matter profiles (Richards – the case database is configured to house information such that all information relating to a particular matter or case is related within the case database and a user can use the user interface to view a profile of the matter or case including all information [0106]. The electronic discovery management server is configured to use the input information to search the Unified Directory in the database server to determine which custodians are associated with the input information [0107]. Adding a custodian to a case or matter involves linking correlating the custodian profile in the Unified Directory to the case or matter in the Case database [0108]. Upon adding custodians to a matter, the e-discovery manager may select the correct custodian for addition to the case or matter and confirm that all custodians selected may be added to the case or matter. Adding a custodian to a case or matter involves linking correlating the custodian profile to the case or matter in the Case database [0108]. The human resources identifier (i.e. custodian identifier) is always unique for each custodian, in some embodiments, the Unified Directory may be organized around the human resources identifier [0093].)
above a configurable threshold (Richards – additionally, determination of the suggested potential custodians may include weighting the predetermined data based on respective relevancy to association. The weighted values of the determined data may be summed to result in a suggested potential custodian score. A threshold score may be set such that a suggested potential custodian is determined if the threshold score is met or exceeded [0081].)
Accordingly, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed, having the teachings of Kumar and Richards before them, to modify the system of Kumar with the teachings of Richards, as indicated above. One would have been motivated to make such a modification to automate the process whereby individuals within an enterprise system can be readily identified as being potentially associated with a case (Richards - [0013]).
Kumar modified by Richards does not appear to teach:
consolidate duplicative potential custodian identifiers based on a comparison of the data items associated with the potential custodian
However, Martin teaches:
consolidate duplicative potential custodian identifiers based on a comparison of the data items associated with the potential custodian (Martin – files of multiple custodians are imported and compared for common authors and/or originators and then tagged and time-stamped. Files that have been identified as possible duplicates are flagged with a pointer to a possible predecessor file. Files tagged as possible duplicates are deduplicated in a manner identical to the vertical de-duplication process S203, including meta-data comparison S401, content comparison process S403, file binary comparison, and secondary file binary comparison and time-stamp comparison. Files completing the horizontal de-duplication process are time-stamped and tagged [0032].)
Accordingly, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed, having the teachings of Kumar, Richards, and Martin before them, to modify the system of Kumar and Richards with the teachings of Martin, as indicated above. One would have been motivated to make such a modification to use a single process and tool set for multiple parties while avoiding data spoliation and/or inappropriate breach of privilege, privacy, or confidentiality (Martin - [0009]).
Claim 11 corresponds to claim 1 and is rejected accordingly.
Regarding claim 2, Kumar teaches:
wherein the plurality of data sources store multiple, disparate types of data for the corresponding data management tools in multiple, disparate data structures (Kumar – in Fig. 1, the devices in system 100 are connected by network 130, the corpus may include documents contained within, e.g. storage devices 110 and/or server 120 [0022-0023, 0071].)
Claim 12 corresponds to claim 2 and is rejected accordingly.
Regarding claim 3, Kumar teaches:
wherein the electronic discovery server machine is further adapted to store the obtained plurality of data items in an original format as obtained from the corresponding data management tools (Kumar – litigation query system 600 includes a receiver 610. Receiver 610 may be configured to receive data such as seed custodian lists, keywords, or queries. Additionally, receiver 610 may be configured to receive data such as a training set of documents [0066].)
Claim 13 corresponds to claim 3 and is rejected accordingly.
Regarding claim 4, Kumar teaches:
wherein the electronic discovery server machine is further adapted to build, with the obtained plurality of data items, a first custodian profile for the first custodian (Kumar – litigation query system 600 includes a receiver 610. Receiver 610 may be configured to received data such as seed custodian lists (i.e. profile), keywords, or queries. Additionally, receiver 610 may be configured to receive data such as a training set of documents [0066].)
Claim 14 corresponds to claim 4 and is rejected accordingly.
Regarding claim 5, Kumar does not appear to teach:
wherein the electronic discovery server machine is further adapted to compare data items associated with each potential custodian identifier and consolidate ones of the potential custodian identifiers that are determined to be associated with a single potential custodian
However, Richards teaches:
wherein the electronic discovery server machine is further adapted to compare the data items associated with the potential custodian to each potential custodian identifier (Richards – the collection server compares paths for the same user/custodian to determine if duplicative entries exist, to avoid multiple collections of the same data [0098].)
Accordingly, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed, having the teachings of Kumar, Richards and Martin before them, to modify the system of Kumar, Richards and Martin with the teachings of Richards, as indicated above. One would have been motivated to make such a modification to automate the process whereby individuals within an enterprise system can be readily identified as being potentially associated with a case (Richards - [0013]).
Claim 15 corresponds to claim 5 and is rejected accordingly.
Regarding claim 7, Kumar teaches:
wherein the level of relevance of each potential custodian is determined by adding relevance contributions of a plurality of data items associated with the potential custodian (Kumar – for a custodian-custodian graph based on relevant documents, such a graph may determine the weight between two custodians based on the number of relevant documents associated with each custodian [0061].)
Claim 17 corresponds to claim 7 and is rejected accordingly.
Regarding claim 8, Kumar teaches:
wherein the relevance contribution of each data item is based at least in part on a data type associated with the data item and at least in part on an association of the data item with either the target matter or the one or more identified matters (Kumar – for a custodian-custodian graph based on relevant documents, such a graph may determine the weight between two custodians based on the number of relevant documents associated with each custodian [0061]. A document may be any type of electronic file, including an email, text message, distribution list, spreadsheet, text file, bit map, or graphics file [0019]. The name or textual content of a document may be compared to a list of keywords that are related to the subject matter of the case [0032-0033].)
Claim 18 corresponds to claim 8 and is rejected accordingly.
Regarding claim 9, Kumar teaches:
wherein the electronic discovery server machine is further adapted to assign low levels of relevance to potential custodians who were not associated with a target enterprise at a time of a target litigation event (Kumar – a recommendation score may be determined for each custodian not in the seed set of custodians. To determine the recommendation score, the known importance of a given custodian may be used [0062].)
Claim 19 corresponds to claim 9 and is rejected accordingly.
Regarding claim 10, Kumar does not appear to teach:
wherein the electronic discovery server machine is further adapted to receive from an input interface setting the configurable threshold
However, Richards teaches:
wherein the electronic discovery server machine is further adapted to receive from an input interface setting the configurable threshold (Richards – additionally, determination of the suggested potential custodians may include weighting the predetermined data based on respective relevancy to association. The weighted values of the determined data may be summed to result in a suggested potential custodian score. A threshold score may be set such that a suggested potential custodian is determined if the threshold score is met or exceeded [0081, 0088].)
Accordingly, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed, having the teachings of Kumar, Richards and Martin before them, to modify the system of Kumar, Richards and Martin with the teachings of Richards, as indicated above. One would have been motivated to make such a modification to automate the process whereby individuals within an enterprise system can be readily identified as being potentially associated with a case (Richards - [0013]).
Claim 20 corresponds to claim 10 and is rejected accordingly.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/RANJIT P DORAISWAMY/Examiner, Art Unit 2166
/SANJIV SHAH/Supervisory Patent Examiner, Art Unit 2166