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 .
Claim Rejections - 35 U.S.C. §101
2. 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 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature , a natural phenomenon or an abstract idea.) without significantly more. The claims are analyzed for subject matter eligibility using a two-part subject matter eligibility analysis (MPEP 2016).
Independent claim 1 recites, “A method comprising: receiving a document:…” and as such falls within one of the statutory categories of patentability.
Step 2a Prong 1
Independent claim 1 is however rejected under 35 U.S.C. 101 because the
claimed invention recites an abstract idea without significantly more. The claim
recites, “determining, based on the metadata, a suitable operation to perform on the document;”
These limitations of an evaluation of metadata and a conclusion drawn for a particular operation are processes that under its broadest reasonable interpretation, covers mental processes. That is, nothing in the claim element precludes the step from practically being performed in the mind. The context of this claim encompasses a user manually calculating hash values for rows.
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674.
Thus the steps of determining, based on the metadata, a suitable operation to perform on the document are operations that can also be mentally made and as such falls within the mental grouping of an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the claim only recites the additional elements of, “receiving a document;”, “obtaining metadata that is associated with the document, wherein the metadata indicates: a first set of access permissions, and an identifier associated with a user profile;” and “sharing the document and an indication of the suitable operation, to enable performance of the suitable operation” are insignificant extra-solution activity of mere data gathering steps.
The courts have held that adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g) have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception. Accordingly, these additional elements does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea
Step 2B
The additional elements of “receiving a document;”, “obtaining metadata that is associated with the document, wherein the metadata indicates: a first set of access permissions, and an identifier associated with a user profile;” and “sharing the document and an indication of the suitable operation, to enable performance of the suitable operation” are insignificant extra-solution activities. The courts have held 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)) do not qualify as "significantly more" when recited in a claim with a judicial exception.
Reference is made to Haijun Wu, “United States Patent Publication Number 20100005144) paragraph [0138], “receiving the GDI document acquired through conversion of the sharing document from the virtual printer module and sending the GDI document to the document receiver; the virtual printer module is used for receiving a sharing document from the document sender, performing virtual printing to convert the sharing document into the GDI document, and outputting the GDI document to the document sender; the restoration module is used for receiving a GDI document from the document sender, performing a restoration operation of the GDI document to restore the same contents as those of the sharing document of the document sender from the GDI document, and outputting the contents to the document receiver; the document receiver is used for receiving a GDI document from the document sender, outputting the GDI document to the restoration module, and receiving the same contents as those of the sharing document of the document sender from the restoration module so as to provide the contents to a user of the receiver for looking over.”
These claim limitations, when considered individually and in combination and under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Thus, the claim is not patent eligible.
Claim 2 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 1 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “further comprising performing the suitable operation based on the sharing.” Sharing a document and performing a subsequent operation are insignificant extra-solution activity and constitute mere data gathering steps. Thus, the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 3 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 1 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “wherein the metadata further indicates a document type of the document.” Observing the type of metadata is an evaluation that can be performed mentally or using a paper and pen therefore such subsequent evaluation is an abstract idea.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 4 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 3 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “, wherein the metadata further indicates an operation type associated with the suitable operation.” Observing an indication of an operation based off on metadata is an evaluation that can be performed mentally or using a paper and pen therefore such subsequent evaluation is an abstract idea.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 1 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “further comprising: determining a plurality of resources associated with the suitable operation; determining a second set of access permissions associated with the plurality of resources; adding the second set of access permissions to the metadata; and sharing the document with the plurality of resources based on the second set of access permissions.” Observing resources and access permissions associated with resources fall within the mental concepts of an abstract idea and can be done mentally or using a paper and pen therefore such subsequent evaluation is an abstract idea. Sharing documents are insignificant extra solution activity of mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 1 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “wherein the suitable operation comprises: determining that the document is to be moved to a location of one or more databases based on the metadata; and automatically moving the document to the location.” Determining a data location and automatically moving such data to such location is an insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 6 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “wherein the suitable operation further comprises: purging the document from the location based on the metadata.” Purging data from a location is a resultant action that results in less data collected in that location and is an insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 8 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 6 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “wherein the suitable operation further comprises: determining whether the document is subject to a purge hold based on the metadata; and purging the document from the one or more databases based on a duration that the document has been stored in the one or more databases exceeding a predefined amount of time and in response to a determination that the document is not subject to the purge hold.” Determining the status of a document is a mental process and purging data from a location is a resultant action that results in less data collected in that location and is an insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 8 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “wherein the suitable operation further comprises: increasing the predefined amount of time in response to a determination that the document is subject to the purge hold such that purging of the document from the one or more databases is postponed.” Determining the status of a document is a mental process and determining a time in which an operation would run is an insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 10 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 1 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “wherein the suitable operation is associated with modifying a user status of the user profile.” Modifying the status of a user is an insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Independent claim 11 corresponds to independent claim 1 but for the recitation of, “A system comprising: one or more databases; and processing circuitry configured to execute computer-executable instructions.” These claim limitations, under their broadest reasonable interpretation, covers mental processes but for the recitation of “A system comprising: one or more databases; and processing circuitry configured to execute computer-executable instructions:.” That is, other than reciting " A system comprising: one or more databases; and processing circuitry configured to execute computer-executable instructions," nothing in the claim element precludes the step from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 12 corresponds to claim 3 and is rejected accordingly
Claim 13 corresponds to claim 4 and is rejected accordingly
Claims 14 corresponds to claim 5 and is rejected accordingly
Claim 15 corresponds to claim 6 and is rejected accordingly
Claim 16 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 11 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “comprising an interface, wherein the actions comprise: receiving a user input via the interface based on the suitable operation, wherein the user input creates, modifies, or interacts with the document.” Receiving input and modifying the document is an insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Independent claim 17 corresponds to independent claim 1 but for the recitation of, “A tangible, non-transitory computer readable storage media storing instructions that, when executed by processing circuitry, cause the processing circuitry to perform actions comprising.” These claim limitations, under their broadest reasonable interpretation, covers mental processes but for the recitation of “A tangible, non-transitory computer readable storage media storing instructions that, when executed by processing circuitry, cause the processing circuitry to perform actions comprising:.” That is, other than reciting " A tangible, non-transitory computer readable storage media storing instructions that, when executed by processing circuitry, cause the processing circuitry to perform actions comprising," nothing in the claim element precludes the step from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 18 corresponds to claim 5 and is rejected accordingly
Claim 19 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 17 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “transmitting the document based on the metadata of the document; receiving an updated version of the document after transmitting the document; and in response to receiving an indication that the suitable operation is completed, updating the user profile to include the updated version of the document based on the metadata.” Transmitting data and updating data are insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is
directed to an abstract idea without significantly more. The claim depends from
independent claim 17 and does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A/2B
The claim recites, “receiving a user input to update the metadata of the document; and updating the metadata based on the user input.” Receiving data and updating data are insignificant extra solution activity in mere data gathering.
An abstract idea upon another abstract idea is still an abstract idea, thus the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").
These claim limitations, under their broadest reasonable interpretation, covers mental processes. If a claim limitation, under its broadest reasonable interpretation, covers mental processes , then it falls within the “Mental Process” grouping of abstract ideas. Accordingly, the claims recites an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim is not patent eligible.
Claim Rejection – 35 U.S.C. 102
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
4. 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 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.
Claims 1 - 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Hobart et al. (United States Patent Publication Number 2014/0351201 ), hereinafter Hobart.
Regarding claim 1 Hobart teaches a method (ABS., method) (Fig. 4, 5, and 11 – 14 method [0033], [0034], [0040] – [0042]) method comprising: receiving (receive [0074]) a document; (files/documents [0110]) obtaining metadata that is associated with (associated with [0078])the document, (metadata associated with the files [0057]) wherein the metadata (metadata [0057]) indicates: a first set of access permissions, (Shared Drives [0093]) and an identifier(one or more custodians' human resources identifier(s) [0099]) associated with (associated with [0078])a user profile; (custodian [0092]) determining, (determining [0080]) based on (based on [0079]) the metadata, (metadata [0057]) a suitable operation (purge process [0078]) to perform on the document; (files/documents [0110]) and sharing (allow browsing [0100], [0117]) the document (files/documents [0110]) and an indication ( purge policies 24 may include, but are not limited to, (I) purge files from cases that have been resolved/closed for a predetermined period of time, (2) purge data in which the data has been stored at an external (i.e., third party) repository for a predetermined period of time, (3) purge work product data (i.e., data replicated during a post-collection processing stage) from a resolved closed case/matter, or the like. [0055]) of the suitable operation, (purge process [0078])) to enable performance (determine purge-qualifying files 26 within an e-discovery file system based on application of one or more identified purge policies [0055]) of the suitable operation (purge process [0078])
Claims 11 and 17 correspond to claim 1 and are rejected accordingly
Regarding claim 2 Hobart teaches the method of claim 1,
Hobart further teaches comprising performing the suitable operation (Fig. 4, Execute, by a Computing Device Processor, the Current Data Purge Processing [0079]) based on (based on [0079])the sharing. (allow browsing [0100], [0117])
Regarding claim 3 Hobart teaches the method of claim 1,
Hobart further teaches wherein the metadata (metadata [0057]) further indicates a document type (case [0134]) of the document. (files/documents [0110])
Claim 12 corresponds to claim 3 and is rejected accordingly
Regarding claim 4 Hobart teaches the method of claim 3,
Hobart further teaches, wherein the metadata (metadata [0057]) further indicates an operation type (Additionally, the purge policies may dictate that specific folders or file types are included or excluded from pending purge process. [0067]) associated with (associated with [0078]) the suitable operation. (purge process [0078])
Claim 13 corresponds to claim 4 and is rejected accordingly
Regarding claim 5 Hobart teaches the method of claim 1,
Hobart further teaches further comprising: determining (determining [0080]) a plurality of resources (includes a multitude of servers, machines, and network storage devices in communication with one another over a communication network. In particular, an electronic discovery management server 110, at least one database server 120, a collections server 130, enterprise personal computers 140, enterprise file servers 150, including at least one personal network storage area and at least one shared
network storage area, enterprise email servers 160, a conversion services server 170, a short-term staging drive 180, and a long-term network storage network 190 [0087]) associated with (associated with [0078]) the suitable operation; (purge process [0078]) determining (determining [0080])a second set of access permissions (HomeSpaces [0093]) associated with (associated with [0078]) the plurality of resources; (includes a multitude of servers, machines, and network storage devices in communication with one another over a communication network. In particular, an electronic discovery management server 110, at least one database server 120, a collections server 130, enterprise personal computers 140, enterprise file servers 150, including at least one personal network storage area and at least one shared network storage area, enterprise email servers 160, a conversion services server 170, a short-term staging drive 180, and a long-term network storage network 190 [0087]) adding the second set of access permissions (HomeSpaces [0093]) to the metadata; (metadata [0057])and sharing the document with the plurality of resources (includes a multitude of servers, machines, and network storage devices in communication with one another over a communication network. In particular, an electronic discovery management server 110, at least one database server 120, a collections server 130, enterprise personal computers 140, enterprise file servers 150, including at least one personal network storage area and at least one shared network storage area, enterprise email servers 160, a conversion services server 170, a short-term staging drive 180, and a long-term network storage network 190 [0087]) based on (based on [0079]) the second set of access permissions. (HomeSpaces [0093])
Claims 14 and 18 correspond to claim 5 and are rejected accordingly
Regarding claim 6 Hobart teaches the method of claim 1,
Hobart further teaches wherein the suitable operation (purge process [0078]) comprises: determining (determining [0080]) that the document (files/documents [0110]) is to be moved to (added to [0101]) a location of one or more databases (the Unified Directory 122 in the database server 120 [0101]) based on (based on [0079])the metadata; (the metadata [0078]) and automatically moving the document to the location (The retrieved paths of the Shared Drives may then be added, either manually or automatically, to the Unified Directory 122 in the database server 120 [0101])
Claim 15 corresponds to claim 6 and is rejected accordingly
Regarding claim 7 Hobart teaches the method of claim 6,
Hobart further teaches wherein the suitable operation (purge process [0078]) further comprises: purging the document from the location ( The data purge application 18 is configured determine the network location 28 of purge-qualifying files 26 by applying the one or more identified purge policies 24 to the purge-eligible cases/matters [0068]) based on (based on [0079]) the metadata (As noted, in specific embodiments, the purge policies 24 are applied to an e-discovery metadata database to determine purge-qualifying files 26 and the network location 28 of such files. For example, if the identified purge policy is the purging of work product, the e-discovery metadata database is able to provide data that identifies the locations in the corporate/entity network where work product is stored (e.g., a network path). [0068])
Regarding claim 8 Hobart teaches the method of claim 6,
Hobart further teaches wherein the suitable operation (purge process [0078]) further comprises: determining (determining [0080])whether the document (files/documents [0110]) is subject to a purge hold (purge criteria/purge exceptions [0067] – [0068]) based on the metadata; (In specific embodiments, the purge criteria 20 is applied to an e-discovery metadata database to determine which cases and/or matters existing in the e-discovery system are eligible for data purge … For example, business rules may dictate that one or more cases that are determined to be purge-eligible be excluded from the current purge process ( e.g., other pending litigation related to case), in which case, a data purge administrator may
configure the data purge application 18 to exclude the one or more identified cases from the pending purge process. [0065]) SEE ALSO “purge exceptions” [0067] – [0068] and purging the document from the one or more databases (purging the data from the file system, [0085]) based on a duration that the document has been stored in the one or more databases (In specific examples the purge policies 24 may include, but are not limited to, (I) purge files from cases that have been resolved/closed for a predetermined period of time, (2) purge data in which the data has been stored at an external (i.e., third party) repository for a predetermined period of time, (3) purge work product data (i.e., data replicated during a post-collection processing stage) from a resolved closed case/matter, or the like. [0055]) exceeding a predefined amount of time (the purge policy 24 may dictate the purging of all folders older than a predetermined date [0069])and in response to a determination (determination [0134]) that the document (files/documents [0110]) is not subject to the purge hold (purge-eligible cases/matters [0065])
Regarding claim 9 Hobart teaches the method of claim 8,
Hobart further teaches wherein the suitable operation (purge process [0078]) further comprises: increasing the predefined amount of time (the purge policy [0069]) in response to a determination (determination [0134]) that the document(files/documents [0110]) is subject to the purge hold (purge criteria/purge exceptions [0067] – [0068]) such that purging of the document from the one or more databases is postponed. (In specific embodiments, the purge criteria 20 is applied to an e-discovery metadata database to determine which cases and/or matters existing in the e-discovery system are eligible for data purge … For example, business rules may dictate that one or more cases that are determined to be purge-eligible be excluded from the current purge process ( e.g., other pending litigation related to case), in which case, a data purge administrator may configure the data purge application 18 to exclude the one or more identified cases from the pending purge process. [0065]) SEE ALSO “purge exceptions” [0067] – [0068]
Regarding claim 10 Hobart teaches the method of claim 1,
Hobart further teaches wherein the suitable operation (purge process [0078]) is associated with (associated with [0078]) modifying a user status of the user profile (an update as to employment status of a particular custodian, [0104])
Regarding claim 16 Hobart teaches the system of claim 11,
Hobart further teaches comprising an interface, (user interface 118 [0106]) wherein the actions comprise: receiving a user input ( a case may be initialized by the
e-discovery manager [0106]) via the interface (user interface 118 [0106]) based on(based on [0079]) the suitable operation, (purge process [0078]) wherein the user input creates, modifies, or interacts with the document (In this regard, thee-discovery manager may enter into the user interface 118 certain information about a particular matter or case, such as a case name and/or number, a short description of the matter/case, a legal identifier, the particular requester (i.e., who asked for the case to be opened), managers or contacts for the matter (i.e., individuals involved in the substance of the matter rather than the process, like the e-discovery manager), custodians, etc [0106])
Regarding claim 19 Hobart teaches the non-transitory computer readable storage media of claim 17,
Hobart further teaches wherein the actions further comprise: transmitting the document based on the metadata of the document; (and transmit the copied data to the collections server 130. The file server collection application 134 may be programmed with preset instructions that allow it to only copy files meeting certain criteria, for example, files that have certain file extensions [0120]) receiving an updated version of the document (reformatted data files [0152])after transmitting the document; (transmitting .. copied files [0120]) and in response to receiving an indication that the suitable operation(purge process [0078]) is completed, (has been completed, [0071])updating the user profile ( One feed of information into the Unified Directory 122 which is particularly relevant to electronic discovery is employment status. According to some embodiments, when the feed of information from the human resources databases to the Unified Directory 122 includes an update as to employment
status of a particular custodian, the electronic discovery management server 110 is configured to recognize the update and possibly perform particular functions in response. [0104])to include the updated version of the document based on the metadata ( The metadata associated with the non-standardized files is retained and remains with the reformatted data files. Source-to-processing file conversions may be required on [0152])
Regarding claim 20 Hobart teaches the non-transitory computer readable storage media of claim 17,
Hobart further teaches wherein the actions further comprise: receiving a user input to update the metadata of the document; ( At Event 96, in response to purging the data from the file system, a purge entry is entered into the file system log for
each file purged. The purge entry is configured to include the file name, the file size, the location of the file, the date/time of the purge, the reason for the purge (i.e., purge policy applied) and, [0085]) and updating the metadata based on the user input (at Event 97, update the metadata database to indicate the occurrence of the purge and that the data is no longer accessible. [0085])
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure.
Kumar et al. (United States Patent Number 10,311,042), hereinafter Kumar teaches “an organic approach to managing primary and secondary storage of a limited-use data object based on an expiry (or expiration) timeframe 25 supplied generally by the data object's creator. Recognizing that the sender of an email message may have the best knowledge of the useful life of the message being created, the present inventor devised a data storage management system that can "organically" recognize that certain data 30 objects such as email messages have a user-supplied expiry timeframe and may accordingly manage data storage for that data object without further intervention from sender, recipients, or system administrators. Col 2 ln 22 - 33”
6. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Kweku Halm whose telephone number is (469) 295-
9144. The examiner can normally be reached on 7:30AM - 5:30PM Mon - Thur. If
attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Sanjiv Shah can be reached on (571) 272-4098. The fax phone
number for the organization where this application or proceeding is assigned is 571-273-
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/KWEKU WILLIAM HALM/Examiner, Art Unit 2166
/SANJIV SHAH/Supervisory Patent Examiner, Art Unit 2166
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