Olaf Schmidt

Patent Trials and Appeals Board

Oct 1, 2019

13543254 - (D) (P.T.A.B. Oct. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/543,254 07/06/2012 Olaf Schmidt 13913-0576001 3192
32864 7590 10/01/2019
FISH & RICHARDSON, P.C. (SAP)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
10/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLAF SCHMIDT
____________

Appeal 2018-0034701
Application 13/543,2542
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, 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
rejection of claims 1–14, 19, 21, 23, 25, and 26, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
Aug. 28, 2017) and Reply Brief (“Reply Br.,” filed Feb. 15, 2018), and the
Examiner’s Answer (“Ans.,” mailed Dec. 15, 2017) and Final Office Action
(“Final Act.,” mailed Feb. 23, 2017).
2 Appellant identifies SAP SE as the real party of interest. App. Br. 1.
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Application 13/543,254

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CLAIMED INVENTION
Appellant’s claimed invention relates to systems and techniques for
supporting legal hold operations in a cloud environment. Spec. ¶ 16.
Claims 1, 8, and 25 are the independent claims on appeal. Claim 1 is
representative of the claimed subject matter:
1. A computer-implemented method for managing a legal
hold on cloud documents, the method comprising:
receiving, by one or more processors, legal-hold
information in a legal-hold framework implemented on a cloud
platform, the cloud platform configured to store documents and
to perform services for multiple tenants, the legal-hold
framework comprising a content management system and a
plurality of services that include a legal-hold service, a first
service, and a second service, wherein:
(i) the first and second services are configured to
allow the multiple tenants on the cloud platform to
remotely manage documents stored on the cloud
platform,
(ii) the legal-hold service is configured to parse
new documents that are uploaded to the cloud platform or
that are created on the cloud platform in order to
determine whether the new documents are covered by
any legal hold that has been defined for a corresponding
one of the multiple tenants on the cloud platform who
created or uploaded the new document,
(iii) the content management system is configured
to manage document storage and metadata information in
respective repositories for the multiple tenants on the
cloud platform, the content management system
arranged as a layer between the legal-hold service and
the first service, but not as a layer between the legal-
hold service and the second service, and
(iv) the legal-hold information includes
information that identifies at least:
(a) one or more first documents stored on
the cloud platform that are to be covered by a first
legal hold so as to block the one or more first
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Application 13/543,254

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documents from being modified or deleted on the
cloud platform while the one or more first
documents are covered by the first legal hold,
(b) one or more second documents stored on
a registered computing system outside of the cloud
platform that are to be covered by the first legal
hold so as to block the one or more second
documents from being modified or deleted on the
registered computing system while the one or more
second documents are covered by the first legal
hold, the registered computing system being
operated separately and independently from the
cloud platform, and
( c) a legal action associated with the first
legal hold;
in response to receiving the legal-hold information:
(i) updating a legal-hold index stored on the cloud
platform with respective identifiers for the one or more
first documents and the one or more second documents to
indicate that the one or more first documents and the one
or more second documents are covered by the first legal
hold,
(ii) updating the metadata information with the
information that identifies the legal action associated
with the first legal hold,
(iii) accessing registration information on the cloud
platform for the registered computing system, and
(iv) using the registration information to provide
an alert to the registered computing system that the one
or more second documents stored on the registered
computing system outside of the cloud platform are
covered by the first legal hold; receiving, by the legal-
hold service and from the content management
system, a call to perform a first legal-hold operation,
wherein the content management system submits the
call to perform the first legal-hold operation to the
legal-hold service in response to a request that is to
invoke the first legal-hold operation and that was
submitted by the first service to the content
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management system, wherein the legal-hold service
receives the call to perform the first legal hold
operation from the content management system
rather than from the first service as a result of the
content management system being arranged as the layer
between the legal-hold service and the first service; and
receiving, by the legal-hold service and from the second
service, a call to perform a second legal-hold operation,
wherein the call to perform the second legal-hold operation
bypasses the content management system as a result of the
content management system not being arranged as a layer
between the legal-hold service and the second service.
App. Br. 18–20 (Claims Appendix) (emphasis added).

REJECTIONS
Claims 1–14, 21, 23, 25, and 26 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Schmidt (US 2009/0150866 A1, pub. June 11, 2009)
and Pogodin (US 2009/0164790 A1, pub. June 25, 2009).3
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schmidt, Pogodin, and Manghani, Amit, Key Characteristics of a PAAS
Offering, 2 CLOUDBOOK 5 (2011) (“Manghani”).

3 The Final Office Action rejects claim 23 twice: at item numbers 16 and
17, respectively. Final Act. 20. The rejection at item number 16 tracks the
language of claim 23; whereas, the rejection at item number 17 tracks the
language of claim 26. See id. Therefore, we treat the Examiner’s
identification of claim 23, instead of claim 26, at paragraph 17, as a
typographical error. We also treat the omission of claim 26 from the
rejection heading at page 3 of the Final Office Action as an oversight.
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Application 13/543,254

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ANALYSIS
Independent Claims 1, 8, and 25, and Dependent Claims 1–7, 9–14, 21, and
23
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 8, and 25 under 35 U.S.C. § 103(a) because
Schmidt does not teach “the content management system arranged as a layer
between the legal-hold service and the first service, but not as a layer
between the legal-hold service and the second service,” and
receiving, by the legal-hold service and from the
content management system, a call to perform a first
legal-hold operation, wherein the content management
system submits the call to perform the first legal-hold
operation to the legal-hold service in response to a
request that is to invoke the first legal-hold operation and
that was submitted by the first service to the content
management system, wherein the legal-hold service
receives the call to perform the first legal hold operation
from the content management system rather than from
the first service as a result of the content management
system being arranged as the layer between the legal-
hold service and the first service,
as recited in claim 1, and similarly recited in independent claims 8 and 25.
See Reply Br. 1–3; see also App. Br. 15–16. The Examiner finds that
Schmidt teaches the argued limitations. See Final Act. 5–6 (citing Schmidt
¶¶76–78, Fig. 2), 9–10 (citing Schmidt ¶¶76–78, 90–101, 134 Fig. 2); see
also Ans. 5–7 (citing Schmidt ¶¶ 76–78).
Schmidt relates to creating, facilitating, managing, or otherwise
enforcing legal holds for business objects, documents, and other
transactional data. Schmidt ¶ 1. Schmidt describes that a server includes, in
part, processor 125, business application 132, and case management
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software 134. Id. ¶ 74. Case management software 134 offers an integrated
central entry point for the legal discovery process, identifying relevant
electronic documents in a distributed system landscape. Id. ¶ 22; see also id.
¶ 30 (case manager 134 supports a company-wide legal hold process). Case
manager 134 is integrated with various application program interfaces
(APIs) to other applications/services to determine whether the data object is
subject to a legal hold. Id. ¶¶ 92, 101. Case manager 134 may receive a
request from a module or user, including business application 132, for an
objects hold status. Id. ¶ 134.
Business application 132 is any application or software that executes,
changes, deletes, or manages business information. Id. ¶ 76. Business
application 132 can be a composite application or an application built on
other applications that includes an object access layer (OAL) and a service
layer. Id. The OAL is operable to exchange data with a plurality of
enterprise systems (e.g., customer relationship management (CRM) systems,
human resources management (HRM) systems, project management (PM)
systems, knowledge management (KM) systems). Id.
The Examiner finds that Schmidt’s business application 132 is the
claimed “content management system,” and Schmidt’s case management
system 134 is the claimed “legal hold service.” See Final Act. 5–6. In
particular, the Examiner reasons that business application 132 is arranged
between the case manager 134 and other enterprise services. Id. at 6 (citing
Schmit, Fig. 2).
However, we find no indication in the cited portions of Schmidt
teaching or suggesting that case manager 134 receives from business
application 132 “a call to perform a first legal hold operation” and that
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business application 132 “submits the call to perform the first legal-hold
operation to [case manager 134] in response to a request that is to invoke the
first legal-hold operation and that was submitted by [a] first service,” as
required by claim 1, and similarly required by claims 8 and 25. At best,
paragraph 134 of Schmidt describes determining whether an object is subject
to a hold by business application 132 (or another suitable module, including
the front end of case manager 134, information retention manager 136, and
others) sending a request for an object’s hold status to case manager 134.
But sending a request for a hold status is not a call to perform a legal-hold
operation, much less a request to perform a legal-hold operation that was
submitted by another service to business application 132.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 8, and 25 and dependent claims 2–7, 9–14, 21, 23,
and 26 under 35 U.S.C. § 103(a) as unpatentable over Shmidt and Pogodin.
Dependent Claim 19
The Examiner’s rejection of dependent claim 19 under
35 U.S.C. § 103(a) does not cure the deficiencies in the Examiner’s rejection
of the independent claim 1. Therefore, we do not sustain the rejection of
claim 19 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to independent claim 1.

DECISION
The Examiner’s rejections of claims 1–14, 19, 21, 23, 25, and 26
under 35 U.S.C. § 103(a) are reversed.

REVERSED