Ex Parte Bondurant et al

Patent Trial and Appeal Board

Apr 15, 2016

12199366 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/199,366 08/27/2008 Matthew D. Bondurant
25763 7590 04/19/2016
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/16TH FL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
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.
P224628.US.02 5818
EXAMINER
LOONAN, ERIC T
ART UNIT PAPER NUMBER
2131
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
ip.docket@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW D. BONDURANT and S. CHRISTOPHER ALAIMO
Appeal2014-004973
Application 12/199,366
Technology Center 2100
Before JOHN P. PINKERTON, JEFFREY A. STEPHENS,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-15 and 17-22. 1 Claim 16 is cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 In the Appeal Brief, Appellants identify Imation Corporation as the real
party in interest. (App. Br. 3.)
Appeal2014-004973
Application 12/199,366
THE INVENTION
Appellants' invention is directed to an archiving system that allows
the digital shredding of archived data, unless a protection is placed on data
required to be kept because the data is associated with a legal suit.
(Abstract.) Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A method, executable in a computer system, for
establishing a legal hold on one or more information elements
stored as archival data in a network storage system, the network
storage system comprising one or more removable disk drives,
the method comprising:
receiving a request to create the legal hold, whereby the archival
data are associated with a legal suit;
identifying at least one of the one or more information elements
associated with the request for the legal hold;
creating the legal hold, the legal hold being subject to creation or
removal at any time after creation of the archival data; and
associating the legal hold with the at least one identified
information element;
receiving a request to digitally shred one or more of the
information elements stored as the archival data before a
predetermined date;
determining if a subset of one or more of the information
elements associated with the request has the legal hold
applied;
if the subset does not have the legal hold applied, overwriting the
subset to prevent the one or more information elements in
the subset from being retrieved; and
if the subset has the legal hold applied, preventing overwriting of
the subset.
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Appeal2014-004973
Application 12/199,366
REJECTIONS
The Examiner rejected claims 9-14 under 35 U.S.C. § 103(a) as being
unpatentable over Cannon (US 2006/0123232 Al, pub. June 8, 2006) and
Yagawa (US 2006/0010301 Al, pub. Jan. 12, 2006). (Final Act. 3---6.)
The Examiner rejected claims 1-8, 15, and 17-22 under 35 U.S.C.
§ 103(a) as being unpatentable over Basham (US 6,779,080 B2, issued Aug.
17, 2004), Cannon, and Yagawa. (Final Act. 6-18.)
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issues: 2
Issue One: Whether the combination of Cannon and Y agawa teaches
or suggests the independent claim 9 limitations:
"establishing a legal hold .... ", and, generally, the aspects of
the claim pertaining to legal hold;
"the legal hold being subject to creation or removal at any time
after creation of the archival data";
"receiving a request to digitally shred one or more of the
information elements .... "; and
"preventing overwriting .... ";
and whether the combination of Basham, Cannon and Y agawa teaches or
suggests similar limitations recited in independent claims 1 and 15. (App.
Br. 24--33, 38-39, 42--43.)
2 Rather than reiterate the arguments of Appellants and positions of the
Examiner, we refer to the Appeal Brief (filed Sept. 19, 2013); Reply Brief
(filed Mar. 17, 2014); Final Office Action (mailed Mar. 7, 2013); and the
Examiner's Answer (mailed Jan. 16, 2014) for the respective details.
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Application 12/199,366
Issue Two: Whether the combination of Cannon and Yagawa teaches
or suggests the limitations of dependent claims 10-14. (App. Br. 39--42.)
Issue Three: Whether the combination of Basham, Cannon and
Yagawa teaches or suggests the limitations of dependent claims 2-8, and
17-22. (App. Br. 33-38, 43--46.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. Other than with respect to claims 7, 11
and 12, we disagree with Appellants' arguments, and we adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 3-18) and (2) the reasons set forth by
the Examiner in the Examiner's Answer in response to Appellants' Appeal
Brief (Ans. 3-14), and we concur with the conclusions reached by the
Examiner. We emphasize the following.
Issue One
Appellants argue:
Cannon neither teaches nor suggests a legal hold associating
archival data with a legal suit, as described in the claims,
whether in the cited sections, or elsewhere in the reference. In
fact, none of Basham, Y agawa, or Cannon discloses any of the
terms "legal hold " "legal suit " "lawsuit " "case name " "case
' ' ' '
identifier," or "court order," nor do any of the references use
any of the words "legal " "hold " "law " "lawsuit " "suit "
' ' ' ' '
"case," or "court," or any other term such as judge, complaint,
discovery, or other legal phrase that would obviously suggest
the corresponding features of the claims to a person of ordinary
skill in the art.
(App. Br. 25; see also App. Br. 27, 32, 39, 42.)
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Application 12/199,366
The Examiner finds that the policy-based retention manager of
Cannon, together with the similar data retention provisions of Y agawa, teach
or suggest the legal hold limitations of the claims. (Final Act. 3--4; Ans. 3-
4; Cannon Fig. 1, i-fi-12--4, 25; Yagawa Fig. 3, i-fi-13, 30.) As taught in
Y agawa, "in recent times, United States governmental regulations have
increasingly mandated the preservation of records." (Yagawa i13.) We
agree that for the claims at issue, a court requirement for preservation of
records is not patentably distinct from a government requirement for
preservation of records. We agree with the Examiner's finding:
The Patent Office maintains prior art disclosed each and every
claimed function of the 'legal hold' (such as preventing
overwriting of data before a predetermined date). The Patent
Office further maintains a 'legal hold' does not inherently recite
a limitation beyond cited prior art. For example, if an applicant
were to claim a "tax record hold associated with data associated
with tax filings" or a "DVR hold associated with data
associated \'l1ith recorded tv sho\'l1s" instead of the claimed
"legal hold associated with data associated with a legal suit",
the Patent Office would maintain the rejection as presented
since the claims are not expressly further limited with functions
of a particular device that are required to handle the particular
data type.
(Ans. 3.)
An intended use, or statement of purpose, under circumstances such as
presented here, does not distinguish a combination of references that
otherwise renders an invention obvious. Minton v. Nat 'l Ass 'n of Securities
Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)) ("whereby clause in a
method claim is not given weight when it simply expresses the intended
result of a process step positively recited"); In re Sinex, 309 F.2d 488, 492
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Application 12/199,366
( CCP A 19 62) (statement of intended use in an apparatus claim failed to
distinguish over the prior art apparatus); In re Benner, 174 F.2d 938, 942
(CCP A 1949) ("no provision has been made in the patent statutes for
granting a patent upon an old product based solely upon discovery of a new
use for such product").
Appellants also argue the prior art combination does not teach or
suggest "the legal hold being subject to creation or removal at any time after
creation of the archival data." (App. Br. 33, 39, 43.) For this limitation, the
Examiner relies on the teaching in Cannon of "event-driven retention end
dates" that can be extended by an "underlying event." (Final Act. 3, 8, 14--
15; Cannon Fig. 4, i-fi-130, 41.) Appellants argue Cannon fails to teach or
suggest this limitation because "there are explicit time limitations on
Cannon's event-driven file retention dates, based at least on the
corresponding volume reclamation periods." (App. Br. 33.) The Examiner
correctly finds, however:
CANNON defines the "volume reclamation period" as "an
interval of the volume retention period wherein files that have
not expired are removed from a volume prior to its volume
retention end date and stored on a new volume having a later
volume retention end date" (Section [0011 ]). Therefore,
CANNON's teaching at Section [0041] only determines
whether or not a file is copied to a new volume (or 'reclaimed')
based on the file event-driven retention period and the volume
reclamation period. The Patent Office maintains the expiration
of the retention period is analogous to the expiration of
applicant's claimed 'legal hold'.
(Ans. 5.) Thus, Cannon teaches or suggests that an event, such as a lawsuit,
can create or remove a file retention end date, such as a legal hold, at any
time after creation of the data. (Id.)
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Appeal2014-004973
Application 12/199,366
With respect to independent claims 1 and 15, which are rejected over
the combination of Basham together with Cannon and Y agawa, Appellants
argue error in the Examiner's reliance on Y agawa for the digital shredding
limitations of the claims because "Basham teaches that it is a distinct
advantage to protect user data from loss by treating it as read only, after it is
initially stored. . . . Basham thus teaches away from digital shredding, as
taught by Yagawa, because digital shredding makes data irrecoverable."
(App. Br. 32, 42; Basham col. 3, 11. 5-8.)
This argument is unpersuasive. "A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant."
Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir.
2008). Such teachings are not presented here. Basham's disclosure is in no
way inconsistent with the teachings of Cannon and Y agawa - Cannon
teaches that WORM drives can be subject to a "volume retention period"
depending on "the latest file retention end data," and Yagawa teaches that
files on WORM media can be deleted after a "specified retention period."
(Cannon Fig. 3; Yagawa i-f 31.) Basham's teaching of how to protect data
from loss does not discourage one of ordinary skill in the art from modifying
it to digitally shred the data when its retention period has expired and the
data longer needs to be maintained, as taught by Cannon and Y agawa.
Issues Two and Three
Appellants challenge the Examiner's obviousness rejections, over
Cannon and Y agawa, of each of the claims 10-14, dependent from
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Application 12/199,366
independent claim 9. (App. Br. 39--42.) Appellants also challenge the
rejections, over Basham, Cannon and Y agawa, of each of the claims 2-8,
and 17-22, dependent from independent claims 1 and 15. (App. Br. 33-38,
43--46.)
For claim 2, Appellants argue that Basham does not teach digital
shredding, and for claim 5, that Cannon does not so teach. (App. Br. 33,
35.) This argument is unpersuasive. Appellants argue the Basham or Canon
references alone, whereas the Examiner's rejection is based on the
combination of Basham, Cannon and Y agawa, and the Examiner relies on
the disclosure in Yagawa for the digital shredding aspect of the claim. (Ans.
12-13.) In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In
re Keller, 642 F.2d 413, 425 (CCPA 1981).
For claims 3, 4, 18, and 19, Appellants again rely on the argument that
Basham teaches away from the use of digital shredding. (App. Br. 34--35,
44.) This argument is unpersuasive for the reasons discussed above.
For claims 6, 10, 13, 14, 17, and 22, Appellants argue Cannon does
not teach or suggest specific legal hold-related data structures or
functionality required by those claims. (App. Br. 35-36, 40-44, 46.)
Appellants similarly argue Basham does not teach or suggest data structures
required by claims 8, 20, and 21. (App. Br. 37-38, 45--46.) As discussed
above, we are not persuaded that labelling data structures according to the
"legal hold" purpose of the claimed subject matter patentably distinguishes
the prior art. Given that, we find no error in the Examiner's reliance on
Cannon and Basham as teaching or suggesting the additional limitations of
these claims. (Final Act. 5---6, 12, 13, 16-18.)
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Application 12/199,366
For claims 7, 11, and 12, Appellants also argue Cannon does not
disclose the required legal hold-related data structures. (App. Br. 37, 40-
41.) In these instances, the claims require a "legal hold table" containing
information identifying the nature of the legal hold. The Examiner again
relies on Cannon, and also finds, "one of ordinary skill in the art would be
able to include a case name or identifier when naming a computer file."
(Final Act. 12, see also Final Act. 5) We are persuaded the Examiner errs.
Although, as discussed above, the mere labeling of various data structures as
legal hold-related does not distinguish the prior art, this claim includes the
requirement for a table that identifies information about file retention
policies, independent from data structures specifying the retention periods
for particular files pursuant to such policies. While the cited art teaches or
suggests the latter, we are persuaded that the cited portions of the art fail to
teach or suggest the former. Accordingly, on the record before us, we do not
sustain the rejection of claims 7, 11, and 12.
CONCLUSIONS
For the reasons discussed above, we sustain the obviousness rejections
of claims 1---6, 8, 15, and 17-22 over Basham, Cannon, and Yagawa, and of
claims 9, 10, 13, and 14 over Cannon and Yagawa.
Also for the reasons discussed above, we do not sustain the
obviousness rejections of claim 7 over Basham, Cannon, and Yagawa, and
of claims 11 and 12 over Cannon and Y agawa.
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Appeal2014-004973
Application 12/199,366
DECISION
We affirm the Examiner's rejections of claims 1---6, 8-10, 13-15 and
17-22.
We reverse the Examiner's rejections of claims 7, 11, and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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