Ex Parte Kibbe

Patent Trial and Appeal Board

Jul 27, 2017

13528049 (P.T.A.B. Jul. 27, 2017)

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.
13/528,049 06/20/2012 Laura M. Kibbe 206007-0001-00-US.601348 2006
10872 7590 07/31/2017
Riverside Law LLP
Glenhardie Corporate Center, Glenhardie Two
1285 Drummers Lane, Suite 202
Wayne, PA 19087
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
dockets @ riversidelaw.com
dcoccia@riversidelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA M. KIBBE
Appeal 2016-001287
Application 13/528,0491
Technology Center 3600
Before: JEAN R. HOMERE, DAVID J. CUTITTAII, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, 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—20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant’s Brief (“App. Br.”) identifies the real party in interest as EPIQ
EDiscovery Solutions, Inc. App. Br. 3.
Appeal 2016-001287
Application 13/528,049
CLAIMED SUBJECT MATTER
The claims are directed to a system and method of reviewing and
producing documents. Spec., Abstract. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of reviewing documents for a customer,
comprising:
assembling a review team of at least two people;
training the review team via review of a training
documents set;
instructing the review team to review customer provided
documents while the at least two people of the review team are
positioned in a physical review room accessible only by the
review team;
assembling a quality control review team of at least one
person to review at least a portion of the documents reviewed by
the review team; and
tracking review team performance via at least one metric.
App. Br. 20 (Claims Appendix).
REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 2—A.
OPINION
The Examiner’s Rejection
In rejecting the claims, the Examiner finds the independent claims are
directed to the abstract idea of “reviewing documents for a customer.”
Ans. 5. The Examiner further finds “each claim as a whole, does not amount
to more than the abstract idea itself’ because the claims do “not amount to
an improvement to the functioning of a computer” and because “the claim
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Application 13/528,049
does not move beyond a general link of the use of an abstract idea to a
particular technological environment. Ans. 6—7.
Appellant’s Contentions
Appellant offers several arguments opposing the rejection under
Section 101. App. Br. 10—19; Reply Br. 4—6. First, Appellant argues a fair
opportunity to address the action was not provided because the Examiner did
not perform a thorough and complete examination of the claims as required
by MPEP 707 and 37 C.F.R. § 1.104. More specifically, Appellant contends
statements made in the Final Office Action do not pertain to the pending
claims. App. Br. 10. According to Appellant, “the non-final Office Action
and the final Office Action both wash vague remarks over the entire claims
that, and in some cases, the remarks are not relevant to what is being
claimed, and in other cases, the remarks misattribute what is being claimed.”
App. Br. 10-11. Addressing the substance of the rejection, Appellant
contends claim 1 is not directed to any abstract idea, and that even if it were,
it recites elements that amount to significantly more than the abstract idea
itself.2
Appellant argues claim 1 involves “[mjultiple review teams composed
of real people, a specifically designated physical room with specific access
limitations, positioning these real people in the specifically designated
physical room, and restricting access to only those specifically designated
real-people team members are all examples of tangible aspects of [claim 1].”
App. Br. 12. According to Appellant, “these features are still tangible” and
2 We note Appellant’s discussion of a suggestion purportedly made during
an interview by the Examiner with respect to possible claim amendments.
App. Br. 12. As this suggested amendment is not in the record before us, we
do not find this discussion pertinent to the resolution of the issues here.
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“no interpretation of these claim elements [] can make the recited apt
activities abstract.” App. Br. 12. Appellant further disputes the Examiner’s
finding that the claims are directed to a fundamental economic practice and
methods of organizing human activities. App. Br. 12. In particular,
Appellant contends the Examiner has failed to provide any rationale
supporting the finding that the claims are directed to a fundamental
economic practice, and further contends not all claims that involve
organizing human activities are abstract. App. Br. 12. Appellant also relies
on Abstract Ideas Guidance issued by the Office on January 27, 2015,
arguing claim 1 has certain similarities to an example of a claim found not to
be directed to an abstract idea. App. Br. 12—13.
Appellant also contends claim 1 recites numerous elements amounting
to “significantly more” than the abstract idea because they are limitations
“other than what is well-understood, routine and conventional in the field,”
and that they are “unconventional steps that confine the claim to a particular
useful application.” App. Br. 14 (citing Abstract Ideas Guidance).
According to Appellant, claim 1 recites “very specific and unconventional
limitations that cannot be ignored or summarily dismissed by the Examiner.”
App. Br. 14. Appellant identifies several limitations which, according to
Appellant, amount to “significantly more” than the abstract idea. Appellant
first notes claim 1 “recites numerous real-world tangible elements, including
review teams, composed of real people.” App. Br. 14. Appellant further
notes claim 1 includes “the highly unconventional step of specifically
designating a physical room with specific access limitations.” App. Br. 14.
Appellant further maintains the step of “restricting access to only those
specifically designated real-people team members” amounts to significantly
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more as well. According to Appellant “these are very specific and
unconventional limitations in the claims that cannot be ignored or summarily
dismissed by the Examiner.” App. Br. 14.
Analysis
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd., 134 S. Ct.
at 2355. If the initial threshold is met, we then move to a second step and
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 97).
With respect to Appellant’s first argument regarding having a fair
opportunity to respond, we disagree. In the Examiner’s Answer, the
Examiner acknowledged the error present in both previous office actions.
The Examiner corrected the prior misstatements, providing a revised
statement regarding the abstract nature of Appellant’s claims. See Ans. 3^4.
As acknowledged by Appellant in the Reply Brief, the Examiner’s
correction clarified the basis for the rejection, and Appellant responds to the
clarified rejection therein. Reply Br. 4. Therefore, we are not persuaded
Appellant has not received a fair opportunity to dispute the rejection made.
We also disagree with Appellant’s argument that the claims recite
tangible features (such as real people and a specifically designated physical
room with specific access limitations) which preclude a finding that they are
directed to an abstract idea (App. Br. 12.), because the claims are directed to
methods of organizing human activities. Claim 1 involves selecting
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personnel for teams, training and locating them, and evaluating their
performance—which are each ways of organizing human activities.
Appellant contends “not all claims that involve organizing human activities
are abstract.” App Br. 12. But Appellant does not provide a persuasive
explanation for why the method of organizing human activity reflected in
Appellant’s claims is not abstract. Appellant merely argues the tangible and
specific actions do not threaten to preempt or otherwise tie up the general
concept of document review. App. Br. 12. The Federal Circuit has made
clear however, that lack of preemption does not demonstrate patent
eligibility. FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed.
Cir. 2016). That Appellant’s claims might not preempt the entire field of
document review does not mean that they are not abstract. Id. (citing OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
We also find Appellant’s reliance on the Abstract Ideas Guidance to
be misplaced. The particular example referenced by Appellant related to a
complex computer technology system, and the Guidance contrasts that
system with concepts found to be abstract by noting the example claim
involved a concept inextricably tied to computer technology. Appellant’s
claims are readily distinguishable because they are not technological in
nature, but instead focus on non-technological concepts such as assembling
personnel teams and positioning them in certain locations. To the extent
computers may be utilized in Appellant’s claimed invention, if at all, they
are used only in a decidedly conventional manner, i.e., to track review team
performance via at least one metric. Spec. Figs. 7, 8. In sum, Appellant’s
claims in substance are “directed to nothing more than the performance of an
abstract business practice . . . using a conventional computer” and “are not
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patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
We also are unpersuaded by Appellant’s argument that the claims
satisfy the second step of the Alice/Mayo framework. As noted above,
Appellant points to various limitations recited in claim 1 as being
significantly more than the abstract idea. We do not find these limitations to
be similar to those limitations found to be significantly more in prior cases.
Appellant emphasizes the “the highly unconventional step of specifically
designating a physical room with specific access limitations.” App. Br. 14.
We do not agree that restricting physical access to litigation documents is
highly unconventional. It has long been standard practice in document
review to limit access to protected documents by storing those documents in
locked spaces, and it is routine for court-issued protective orders to mandate
such measures. Appellant also cites the step of “restricting access to only
those specifically designated real-people team members.” We do not view
selecting document review teams, and limiting access to those selected to be
amount to significantly more than the abstract idea of managing document
review. The use of document review teams, and limiting document access to
those teams is a conventional practice which is insufficient to transform the
claim into significantly more than the abstract idea.3 In short, we discern
3 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
improvements to another technology or technical field {Alice, 134 S. Ct. at
2359 (citing Diamond v. Diehr, 450 U.S. 175, 177—78 (1981 )); adding a
specific limitation other than what is well-understood, routine and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application {Mayo, 132 S. Ct. at 1299, 1302); or
other meaningful limitations beyond generally linking the use of the judicial
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nothing in the pending claims that is sufficient to transform the abstract idea
into a patent-eligible application. Accordingly, we sustain the rejection of
claim 1 as lacking patent-eligibility under 35 U.S.C. § 101. For the same
reasons, we also sustain the rejection of independent claims 16 and 20, for
which Appellant presents the same arguments.
Remaining Claims
For the most part, Appellant relies on the same arguments presented
for claim 1 in support of reversal of the rejection of the dependent claims.
App. Br. 15—18 (arguing for patentability of claims 8—15 and 17—18). For
the reasons discussed above, we are not persuaded the Examiner has erred in
rejecting these claims. Appellant separately argues for patentability of
claims 2—7 and 19. In each case, Appellant points to physical components
recited in the claim, and assert they are not an abstract idea. For example,
with respect to claim 2, Appellant argues “claim 2 limits one of the real
people review team members to being an attorney. An attorney is not an
abstract idea.” App. Br. 15. This argument is not persuasive, as claim 2,
even with its recitation of “an attorney” remains abstract as a method of
organizing human activities. Specific arguments presented with respect to
claims 3—7 and 19 are not persuasive for the same reasons. Accordingly,
were are not persuaded of Examiner error with respect to dependent claims
2—15 and 17—20, and we sustain their rejection under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—20 is affirmed.
exception to a particular technological environment (Alice, 134 S. Ct. at
2360).
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Application 13/528,049
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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