Abushwashi, Aeham

Patent Trials and Appeals Board

May 4, 2020

2019000379 (P.T.A.B. May. 4, 2020)

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.
14/138,125 12/23/2013 Aeham Abushwashi 007170.0844U1 4104
135983 7590 05/04/2020
FisherBroyles, LLP - Veritas Technologies
Veritas Technologies, LLC
222 South Main St., 5th Floor
Salt Lake City, UT 84101
EXAMINER
HTAY, LIN LIN M
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
docketing@fisherbroyles.com
vrts-docketing@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AEHAM ABUSHWASHI
Appeal 2019-000379
Application 14/138,125
Technology Center 2100
Before ADAM J. PYONIN, SHARON FENICK, and RUSSELL E. CASS,
Administrative Patent Judges.
CASS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20 under 35 U.S.C. §§ 101 and 103.
Appeal Br. 9, 17.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Veritas
Technologies. Appeal Brief filed July 3, 2018 (“Appeal Br.”) 1.
2 Throughout this Opinion, we refer to the above-noted Appeal Brief, as well
as the following documents for their respective details: the Final Action
mailed March 12, 2018 (“Final Act.”); the Examiner’s Answer mailed
October 12, 2018 (“Ans.”); and the Reply Brief filed October 17, 2018
(“Reply Br.”).
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Application 14/138,125

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BACKGROUND
The present invention relates to a computer-implemented method for
storing data in multiple stages. Spec., Abstr. Appellant’s Specification
explains that regulations may specify requirements for storing and
maintaining records in original and unaltered form for a specified period of
time. Id. ¶ 1. The Specification further explains that, after the required
regulatory storage period has expired, organizations may continue to
preserve the records for business purposes in an unaltered form that satisfies
the regulatory requirements even though such a format is no longer
necessary, resulting in the records occupying more storage space than
necessary. Id. ¶ 2.
To address this issue, the Specification describes a system for storing
data in multiple stages including: (1) establishing an initial storage period for
regulatory compliance and a subsequent storage period for business
reference, (2) storing data during the initial storage period for regulatory
compliance, (3) upon expiration of the initial storage period, stripping rich
content from the data while preserving text content in the data, and (4)
storing the stripped data during the subsequent period for business reference.
Id. ¶ 4.
More specifically, the Specification explains that the data being stored
may be in the form of emails formatted in multipurpose internet mail
extensions (MIME) format, and that the emails formatted in MIME format
may include multiple layers. Id. ¶ 53. For example, a MIME email may
include base content in the form of a plain text layer, as well as
corresponding layers that specify how the base content may be formatted
and/or displayed, including a plain text layer, an enriched text layer, and/or a
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hypertext markup language (HTML) layer. Id. ¶ 54. To reduce storage
space needed for an email, the system may strip rich content from the email
by removing one of the layers from the email. Id. ¶ 56. For example, the
system may strip an HTML layer while preserving a plain text layer. Id.
Claim 1 is illustrative of the claims at issue:
1. A computer-implemented method for storing data in
multiple stages, at least a portion of the method being
performed by a computing device comprising at least one
processor, the method comprising:
establishing an initial storage period for regulatory
compliance and a subsequent storage period for business
reference, the initial storage period expiring at a point defined
at least in part by government regulations;
storing an email formatted in the multipurpose internet
mail extensions format during the initial storage period for
regulatory compliance;
upon expiration of the initial storage period at the point
defined at least in part by government regulations, stripping a
hypertext markup language layer from the email formatted in
the multipurpose internet mail extensions format while
preserving a plain text layer in the email formatted in the
multipurpose internet mail extensions format; [and]
storing the stripped email formatted in the multipurpose
internet mail extensions format during the subsequent storage
period for business reference in place of a previous version of
the email formatted in the multipurpose internet mail extensions
format such that storage space for storing the email is reduced.
Appeal Br. 23 (Claims App.).
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PRINCIPLES OF LAW RELATING TO
PATENT ELIGIBILITY UNDER 35 U.S.C. § 101
I. SECTION 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 (2012).
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
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566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
II. USPTO SECTION 101 GUIDANCE
In January of 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101, which
was updated in October 2019. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”);
October 2019 Update on Patent Subject Matter Eligibility, 84 Fed. Reg.
55942 (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (“October 2019 PEG Update”). Under the 2019
Guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
ANALYSIS
I. THE 101 REJECTION
In the Final Office Action, the Examiner rejects claims 1–20 under
35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 4.
The Examiner determines that the claims are “directed to the abstract idea of
storing data.” Id. at 6. The Examiner further states that the claimed steps
“describe the concept of storing data in multiple stages of establishing an
initial storage period, storing an email, stripping a hypertext markup layer
from the email, and storing the stripped email, which correspond to
concept[s] identified as abstract idea[s] by the courts, such as data
recognition and storage in [Content Extraction & Trans. LLC v. Wells Fargo
Bank, 776 F.3d 1343 (Fed. Cir. 2017)].” Id. at 6–7.
Appellant argues that, unlike Content Extraction, the claims at issue
“do not perform functionality that is ‘analogous to human mental work,’”
because “[t]he human brain does not store emails formatted in the
‘multipurpose internet mail extensions format,’ nor does the human brain
manage or modify ‘layers’ within such emails, including a ‘hypertext
markup language layer’ and a ‘plain text layer.’” Appeal Br. 19. Appellant
further argues that the claims do not “merely automate[] an activity that was
previously performed manually” because “humans have not manually
performed, or even suggested, the specific email storage reduction and
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storage saving methodology of the pending independent claims in this
application.” Id. at 20.
Under Step 2A, Prong 1, of the 2019 Guidance, we must first
determine whether any judicial exception to patent eligibility is recited in the
claim. The 2019 Guidance identifies three judicially excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. 2019 Guidance, 84 Fed. Reg. at 52–53.
Claim 1 does not fall into any of these judicially excepted groupings.
We agree with Appellant that claim 1 does not recite a mental process
because storing emails formatted in MIME format with multiple layers,
stripping an HTML layer from such an email and preserving a plain text
layer, and storing the resulting stripped email in MIME format, are not
actions that can be performed in the human mind or by a human using pen
and paper. See Appeal Br. 19. These steps also do not recite mathematical
concepts in the form of mathematical relationships, formulas, equations, or
calculations. See 2019 Guidance at 52. And, these steps do not involve
methods of organizing human activity, including fundamental economic
principles or practices, commercial or legal interactions, or managing
personal behavior or relationships or interactions between people. See id.
Therefore, claim 1 does not recite one of the judicial exceptions to
patentability set forth in Step 2A, Prong 1, of the 2019 Guidance.
We also agree with Appellant that the present case is distinguishable
from Content Extraction. See Appeal Br. 19. In Content Extraction, our
reviewing court determined that the claims at issue recited “the abstract idea
of 1) collecting data, 2) recognizing certain data within the collected data
set, and 3) storing that recognized data in a memory,” which were functions
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that “humans have always performed.” Id., 776 F.3d at 1347. Claim 1 of
the present application, by contrast, recites limitations that are not functions
performed by humans, including storing emails formatted in MIME format
with multiple layers, stripping an HTML layer from such an email and
preserving a plain text layer, and storing the resulting stripped email in
MIME format. Therefore, we do not agree with the Examiner that the
present case is analogous to Content Extraction.
Because claim 1 does not recite a judicial exception to patentability
under Step 2A, Prong 1, of the 2019 Guidance, it is not directed to a judicial
exception and is therefore patent eligible. See 2019 Guidance at 54 (“If the
claim does not recite a judicial exception [under Step 2A, Prong 1], it is not
directed to a judicial exception (Step2A: NO) and is eligible.”). For the
same reason as claim 1, we also determine that independent claims 12 and
20, which include similar limitations as claim 1, and dependent claims 2–11
and 13–19, which are dependent on claim 1, 12, or 20, are patent eligible as
well.
II. THE 103 REJECTION
In the Final Office Action, the Examiner rejects the claims under
35 U.S.C. § 103 based on the following references:
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Name Reference Date
Zehner Zehner, US 2007/0005564 A1 Jan. 4, 2007
Stokes Stokes, US 2008/0033905 A1 Feb. 7, 2008
Bonev Bonev et al., US 2009/0313299
A1
Dec. 17, 2009
Lovelace Lovelace et al., IBM Enterprise
Content Management and System
Storage Solutions: Working
Together, IBM Technical Support
Organization, First Ed., Sept. 2008
Sept. 2008
Final Act. 13–24.
In the Final Office Action, the Examiner rejects claims 1–9 and 12–20
under § 103 as being unpatentable over Lovelace in view of Stokes and
Zehner. Id. at 13. The Examiner further rejects dependent claims 10 and 11
under § 103 as being unpatentable over Lovelace in view of Stokes, Zehner,
and Bonev. Id. at 22.
The Examiner relies on Lovelace to teach establishing an initial
storage period for regulatory compliance expiring at a point defined by
government regulations, and a subsequent storage period for business
reference. Final Act. 13 (citing Lovelace at 9 (§ 1.3.3)). The Examiner also
relies on Lovelace to teach storing an email format during the initial storage
period for regulatory compliance and, upon expiration of that period, storing
the email during the subsequent storage period for business reference. Id. at
13–14 (citing Lovelace at 9 (§ 1.3.3), 116 (§ 6.2.4)).
The Examiner acknowledges that Lovelace fails to disclose formatting
emails in MIME format and storing an email in MIME format in place of a
previous version in a manner such that storage space for the email is
reduced. Id. at 14–15. The Examiner relies on Stokes to teach formatting an
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email in MIME format and stripping an attachment from the email, thereby
reducing the storage space needed to store the email. Id. at 15 (citing Stokes
¶¶ 34, 40–41). The Examiner acknowledges that Lovelace and Stokes fail to
disclose stripping an HTML layer while preserving a plain text layer and
storing the stripped text, and relies on Zehner for those limitations. Id. at 16
(citing Zehner ¶¶ 60, 145). The Examiner argues that one of ordinary skill
would have been motivated to combine Stokes and Zehner with Lovelace
because they “are directed to analogous art and they are directed to the same
field of endeavor,” and because the “close relation between . . . the
references highly suggests an expectation of success.” Id. at 16, 17.
Appellant argues, inter alia, that none of the references disclose
storing an email in MIME format with multiple layers, or stripping an
HTML layer from such an email but retaining a plain text layer in order to
reduce storage space. Appeal Br. 9–14. Appellant argues, as an initial
matter, that Lovelace does not even disclose reducing the level of detail of
an email over time, but rather refers to reducing the retrieval speed of the
email over time, by moving emails from a “fast disk,” to a “slow disk,” and
finally to “tape.” Id. at 9–10 (citing Lovelace at 9). Appellant argues that
Stokes merely discloses the generic concept of MIME email without
specifics, and discloses reducing storage space by stripping attachments
from an email rather than by stripping an HTML layer, as claimed. Id. at 11
(citing Stokes ¶ 41). Finally, Appellant argues that Zehner is not directed to
email storage at all, much less stripping an HTML layer from an email in
MIME format, but rather discloses a website search engine using a robot that
crawls Internet websites to remove HTML tags from the web pages that are
read. Id. at 11–12 (citing Zehner at 60).
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We agree with Appellant that the Examiner has failed to sufficiently
establish that any of the cited references teach the use of an email in MIME
format with an HTML layer and a plain text layer, and therefore also fail to
teach stripping an HTML layer from such an email while preserving a plain
text layer. The Examiner relies on Stokes and Zehner for these limitations.
However, although the cited portions of Stokes disclose the use of message
protocol, they do not disclose the use of emails in MIME format with layers,
much less HTML and plain text layers. See Stokes ¶¶ 39, 41. As to Zehner,
the cited portions disclose HTML tags in websites, but do not disclose
emails in MIME format with layers, much less stripping HTML layers from
such emails. See Zehner ¶¶ 60, 145. Because all of the pending claims
require the use of an email in MIME format with an HTML layer and a plain
text layer, as well as stripping an HTML layer from such an email while
preserving a plain text layer, the Examiner has thus failed to establish
obviousness of any of the pending claims.
We, therefore, reverse the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 103.
DECISION
We reverse the Examiner’s rejection of claims 1–20.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–9, 12–20 103 Lovelace, Stokes,
Zehner
1–9, 12–20
10–11 103 Lovelace, Stokes,
Zehner, Bonev
10–11
Overall
Outcome
1–20

REVERSED