Ex Parte Evanitsky

Patent Trial and Appeal Board

Dec 27, 2018

12976028 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/976,028 12/22/2010
62095 7590 12/27/2018
FAY SHARPE I XEROX - ROCHESTER
1228 EUCLID A VENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Eugene S. Evanitsky
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
20100958USNP-XER2562US01 6658
EXAMINER
EVANS, KIMBERLYL
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
12/27/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE S. EV ANITSKY
Appeal 2017-001811 1
Application 12/976,0282
Technology Center 3600
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-12, 14--16, 18-20, and 22. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
Dec. 28, 2015) and Reply Brief ("Reply Br.," filed Nov. 7, 2016), and the
Examiner's Answer ("Ans.," mailed Sept. 7, 2016) and Final Office Action
("Final Act.," mailed Apr. 23, 2015).
2 Appellant identifies Xerox Corporation as the real party in interest. App.
Br. 1.
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CLAIMED INVENTION
Appellant's claimed invention "relates generally to document
processing," having "particular application in conjunction with identifying
classified documents." Spec. ,r 1.
Claims 1, 15, and 19 are the independent claims on appeal. Claim 15,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
15. A classified document system for maintaining a
classified document labeling policy of an institution, said system
compnsmg:
[(a)] a classification engine that determines document
types for one or more documents;
[ (b)] a rules engine that determines whether the
documents comply with the classified document labeling policy
of the institution using one or more rules, wherein the rules
embody the classified document labeling policy of the institution
in a computer interpretable form and are dependent upon
document type; and
[(c)] a controller that receives the documents and takes
corrective measures for ones of the documents determined to be
non-compliant;
[(d)] wherein the corrective measures include:
[ ( 1)] scanning an information technology (IT)
infrastructure of the institution for copies of the ones of the
documents determined to be non-compliant;
[(2)] denying the sharing of one or more of the ones
of the documents determined to be non-compliant;
[(3)] stripping electronic messages including the
one or more of the ones of the documents determined to
be non-compliant before they are sent; and
[ ( 4)] adding a classified document symbo 1 to print
jobs of the one or more ones of the documents determined
to be non-compliant.
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REJECTIONS
Claims 1-12, 14--16, 18-20, and 22 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1-12 and 18-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schirripa (US 2006/0288015 Al, pub. Dec. 21, 2006) and
Maes (US 2011/0197260 Al, pub. Aug. 11, 2011). 3
Claims 14--16 and 22 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Schirripa, Maes, and Goodman (US 2003/0009672 Al,
pub. Jan. 9, 2003).
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice Corp., 134 S. Ct. at 2355. The first
3 We treat the Examiner's identification of claims 14--16 and 22 among the
claims subject to this rejection as inadvertent error (Final Act. 12), given
their separate rejection (see id. at 32).
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Application 12/976,028
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Id. If the claims are not directed
to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered "individually and 'as an ordered combination'" to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to the abstract idea of
"collecting, storing, organizing/correlating and transmitting information"
and merely links the abstract idea to a technological, business environment.
Final Act. 10; see also id. at 9-10 (the claimed steps "are based on a series
of data collections (accumulation of coded relationships between computer
resources), organizing and correlating data ( confidence level, document
compliance, corrective measures) and transmitting data," which are abstract
ideas). The Examiner also determined that the claims do not include
additional elements that are sufficient to amount to significantly more than
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the judicial exception. Id. at 10-11 (claims do "no more than call on a
'computing device' with basic functionality for comparing stored and input
data and mathematical algorithms/rules to perform generic computer
funcitons that are well-understood, routine and conventional activities
previously known to the industry").
The Specification describes that classified documents "are typically
documents that include confidential and/or business sensitive data, whereby
they are intended to have controlled access and distribution" and a "defined
retention policy." Spec. ,r 2. The Specification further describes that despite
most large institutions having a defined process for labeling classified
documents, the process is typically unwieldy, unfamiliar, and/or not
understood, leading to errors in labeling and not labeling documents as
classified. Id. The claimed invention is intended to address this issue by
providing an improved classified document system for maintaining a
classified document labiling policy of an instiution. For example, claim 15
recites a classified document system for maintaining a classified document
labeling policy of an institution that includes a classification engine for
determining document types for one or more documents; a rules engine that
determines whether the documents comply with the classified document
labeling policy, and a controller for taking corrective measures for
documents determined to be non-compliant. The corrective measures
include scanning an IT infrastructure for copies of documents determined to
be non-compliant, denying the sharing of the documents determined to be
non-compliant, stripping electronic messages including the one or more
documents determined to be non-compliant, and adding a classified
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document signal to print jobs of the documents determined to be non-
compliant
Here, we are persuaded that even if claim 15 is directed to an abstract
idea of collecting, organizing, and transmitting data, the Examiner has not
adequately explained why claim 15 's controller fails to recite limitations that
are "significantly more" than the abstract idea itself. In this regard, we agree
with Appellant that "the Examiner does not address the various components
and devices present in independent claim[] 15, e.g., 'classification engine',
'rules engine', 'controller."' App. Br. 13. Instead, the Examiner
concludes, without adequately explaining, that the claimed invention does
not lie with the improvement of a technology because the claimed invention
is directed to the abstract idea of collecting, organizing, and transmitting
data and merely recites a "controller" at a high-level of generality for
performing "well-understood, routine and conventional activities [that]
amount to no more than implementing the abstract idea with a computerized
system." Ans. 5. We are persuaded that such reasoning is inadequate to
sustain the rejection.
The Examiner has not sufficiently established that claim 15 and its
dependent claims are directed to patent-ineligible subject matter. Claims 1
and 19 recite language similar to claim 15 and are rejected applying the
same analysis. Therefore, we do not sustain the Examiner's rejection of
claims 1-12, 14--16, 18-20, and 22 under 35 U.S.C. § 101.
Obviousness
Independent Claims 1 and 19, and Dependent Claims 2-12, 18, and 20
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1 and 19 under 35 U.S.C. § 103(a) at least
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because Schirripa and Maes fail to disclose or suggest "determining whether
the documents comply with the classified document labeling policy of the
institution ... , wherein the rules are dependent upon document type and are
used to determine if a document contains sensitive data," as recited in claim
1, and similarly recited in claim 19. App. Br. 14--18; see also Reply Br. 8-
10. In the Final Office Action, the Examiner acknowledges that Schirripa
does not disclose the argued limitation, and relies on Maes to cure the
deficiency. Final Act. 12-14 (citing Maes ,r,r 5, 19, 32, 33, 46-48, Fig. 5),
29-30.
Maes discloses methods for enforcing policy-based advertisements.
Maes ,r 19. The policy enforcer intercepts service requests ( e.g., a short
message service (SMS) text request, voice telephone request, or video
request) to check if usage policies have been satisfied. Id. The policy
enforcer self monitors its health and integrity to determine if it has been
compromised, such as whether its coding, associated policy files, and other
files have been modified. Id. ,r 32. If the policy enforcer has been
compromised, then it prohibits access to the device. Id. If it has not been
compromised, then a policy database is accessed and policies are retrieved.
Id. ,r 33. The method includes installing a policy enforcer program on a
device. Id. ,r 46, Fig. 5. The policy enforcer detects and reports any
copying, distributing, and/or recording of software and/or files on the device.
Id. ,r 47, Fig. 5. The policy enforcer checks protection (if any) associated
with the copied, distriputed or recorded software. Id. ,r 48, Fig. 5. If a
protection has been breached, then access to the device is blocked and
service denied until corrective action is taken. Id. If no breach occurs, the
policy enforcer continues to detect and report the activities of the device. Id.
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As set forth above, Maes describes determining whether to allow
access to files and/or software on a device based on stored policies. But the
cited portions of Maes do not teach or suggest "determining whether the
documents comply with the classified document labeling policy for the
institution using one or more rules embodying the classified document
labeling policy of the institution ... , wherein the rules are dependent upon
document type and are used to determine if a document contains sensitive
data," as recited in claim 1. In particular, Maes' policy enforcement
mechanism does not describe a classified document labeling policy, much
less a classified labeling policy having rules that are dependent upon
document type and used to determine if a document contains sensitive data.
In seeming contradiction to the findings set forth in the Final Action
for rejecting claim 1 under 35 U.S.C. § 103, the Examiner finds in the
Answer that Maes' policy enforcement mechanism "does not expressly
disclose one or more rules dependent upon document type." Ans. 10-11.
And the Examiner relies on Schirripa to cure the deficiency. Id. ( citing
Schirripa ,r,r 2, 4, 7, 8, 10, 13, 14, 27, 29-32, 35--42, 74, 80). Yet, we find
nothing in the Examiner's citations to Schirripa that discloses or suggests the
argued limitation.
Schirripa relates to electronic content classification. Schirripa ,r 1.
Schirripa discloses a content classification system that analyzes a displayed
document to determine whether, and to what extent, the document may be
displayed on particular devices, such as a personal digital assistant and
mobile telephone. Id. ,r 26. The system extracts appropriate features or
parameters describing the document and classifies the document for
displayability. Id. ,r 39. Classification rules are applied to extracted features
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to create a score of the document being capable of being displayed on a
particular device. Id. For example, the rules may specify the repeated
existence of specific tags within the document that indicate that the
document contains mobile content that can be displayed on a mobile device
in general or specific brands or models of devices. Id. ,r 74. A content
classifier may track the number of features within the document and use
heuristic rules to make a determination as to type of devices that may display
the document content. Id. Schirripa, thus, describes determining whether a
format of a document is displayable on a particular device, but we fail to see
how, and the Examiner does not adequately explain how, Schirripa discloses
or suggests "determining whether the documents comply with the classified
document labeling policy of the institution ... , wherein the rules are
dependent upon document type and are used to determine if a document
contains sensitive data," as recited in claim 1, and similarly recited in claim
19. For example, a document displayability determination, as described by
Schirripa, does not relate to a compliance with a classified document
labeling policy, nor does Schirripa suggest that the rules are used to
determine if a document contains sensitive data.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 19, and dependent claims 2-12, 18, and 20
under 35 U.S.C. § 103(a).
Independent Claim 15, and Dependent Claims 14, 16, and 22
Independent claim 15 includes language substantially similar to the
language of claim 1, and stands rejected based on the same rationale applied
with respect to claim 1. See Final Act. 34--36 (finding Schirripa does not
disclose a rules engine that determines whether the documents comply with
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the classified document labeling policy, and relying on Maes for teaching
this limitation). Therefore, we do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 15, and dependent claims 14, 16,
and 22 for the same reasons set forth above with respect to claim 1.
DECISION
The Examiner's rejection of claims 1-12, 14--16, 18-20, and 22 under
35 U.S.C. § 101 is reversed.
The Examiner's rejections of claims 1-12, 14--16, 18-20, and 22
under 35 U.S.C. § 103(a) are reversed.
REVERSED
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