Ex Parte Kisin et al

Patent Trial and Appeal Board

Apr 19, 2018

14480334 (P.T.A.B. Apr. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/480,334 09/08/2014
51871 7590 04/23/2018
Shumaker & Sieffert, P.A.
1625 Radio Drive, Suite 100
Woodbury, MN 55125
FIRST NAMED INVENTOR
RomanKisin
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.
SVL920105422US2/l 163-022 1003
EXAMINER
CHANNA V AJJALA, SRIRAMA T
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
04/23/2018 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN KISIN and PIERRE RA YNAUD-RICHARD
Appeal2017-008459
Application 14/480,334 1
Technology Center 2100
Before THU A. DANG, JUSTIN BUSCH, and CARLL. SILVERMAN,
Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The invention relates to an electric discovery management system
(EDMS) for electronic discovery (eDiscovery). Abstract, Spec. i-fi-12, 3,
1 The real party in interest is identified as International Business Machines
Corporation. App. Br. 3.
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Application 14/480,334
Figs. 1-3. Claim 1, reproduced below, is exemplary of the subject matter on
appeal (emphases added):
1. A computer implemented method for storing and
accessing collected evidence in an electronic discovery system
(EDMS), comprising:
managing, by an EDMS, electronic discovery
workflow in an enterprise, including issuing and
propagating instructions to a collection agent, and
generating one or more collection plans that specify one or
more custodians that are responsible for data in the
enterprise;
managing, by one or more evidence repositories,
evidence collected by the collection agent from one or
more data sources along with contextual data and
metadata, wherein the one or more evidence repositories
include a transient storage area to which the evidence
collected by the collection agent from the one or more data
sources are deposited, wherein the transient storage area
includes a directory structure created based on the one or
more collection plans, and wherein the directory structure
includes one or more automatically provisioned locations
for depositing the evidence collected by the collection
agent from the one or more data sources for a given
custodian in the one or more custodians; and
performing, by the collection agent, evidence
collection based at least in part on the one or more
collection plans, including depositing the evidence
collected by the collection agent from the one or more
data sources to locations in the directory structure of the
transient storage area based at least in part on the one or
more collection plans.
App. Br. 24 (Claims Appendix).
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Application 14/480,334
THE REJECTION
Claims 1-20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Toomey et al. (U.S. 2010/0250644 Al; pub. Sept. 30,
2010) ("Toomey"), based on provisional application 61/164,276 filed on
Mar. 27, 2009, in view of Fredrickson (U.S. 2009/0171961 Al; pub. July 2,
2009) ("Fredrickson"). Final Act. 9-16.
ANALYSIS
Appellants argue the Examiner errs in finding the combination of
Toomey and Fredrickson teaches the limitations of claim 1. App. Br. 8-14;
Reply Br. 5-10. In particular, Appellants argue the Examiner errs in finding
Toomey teaches all the limitations of claim 1, except for the limitation
"evidence collected by the collection agent from one or more data sources"
and in finding Fredrickson teaches this limitation. App. Br. 8; Reply Br. 5-
10.
Appellants argue the Examiner errs in finding Toomey teaches the
limitation "a transient storage area to which the evidence collected by the
collection agent from the one or more data sources are deposited, wherein
the transient storage area includes a directory structure created based on the
one or more collection plans." App. Br. at 9-14; Reply Br. 5-8. According
to Appellants, the Examiner errs in finding "Toomey's e-discovery fig 2 is
identical to instant specification fig 2 electronic discovery system" because
Figure 2 of the Specification describes a "Staging Area 260" that is not
shown in Figure 2 of Toomey. App. Br. at 9 (citing Final Act. 5).
Appellants argue, regarding Staging Area 260, the Specification explains
"[i]n one embodiment, the EDMS 210 allocates storage and provisions
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directories in the transient storage, also referred to herein as the staging area
260" and "deposit[s] the collected documents to the location of the directory
in the staging area specified in the collection instructions received from
EDMS." Id. (citing Spec. i-fi-f 58, 60).
Appellants argue the Examiner's citation to Toomey's preservation
notices and preserving data on a data storage device does not teach the
disputed limitation. Id. at 10 (citing Final Act. 11; Toomey i-fi-157, 43).
According to Appellants, "a transient storage area to which" data is
"deposited" is the opposite of the action of preserving data as described in
Toomey, because Toomey teaches that "data is not typically preserved if the
data is deleted, manipulated, modified, overwritten, added to, changed,
and/or altered from its original or previous form." Id. Appellants argue
Toomey doesn't teach wherein the transient storage area "includes a
directory structure based on one or more collection plans" because
Toomey's file browsing tool is not "based on the one or more collection
plans." Id. at 11-14.
Appellants further argue Toomey does not teach the "transient storage
area" that includes "wherein the directory structure includes one or more
automatically provisioned locations for depositing the evidence collected by
the collection agent for a given custodian in the one or more custodians." Id.
at 11-1 7. According to Appellants, Toomey's custodians do not have access
to data through enterprise file server 18 and, therefore, the custodian cannot
deposit any data to file server 18. Id. at 11.
Appellants also argue the cited references do not teach "performing,
by the collection agent, evidence collection based at least in part on the one
or more collection plans, including depositing the evidence collected by the
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collection agent from the one or more data sources to locations in the
directory structure of the transient storage area based at least in part on the
one or more collection plans." Id. at 18-20. According to Appellants,
Fredrickson teaches "the various evidence pieces are collected into a
particular evidence ... store 30," but does not teach "locations in the
directory structure" to deposit evidence, where the directory structure is
created based "on the one or more collection plans," as recited by claim 1.
Id. at 19 (citing Fredrickson i-f 37). Appellants argue "Fredrickson merely
teaches that evidence collected may be stored in a raw evidence store." Id.
The Examiner finds Toomey teaches an electronic discovery
management system (EDMS) which manages electronic workflow and
discovery information, including storing data in an enterprise file server.
Final Act. 9 (citing Toomey, Abstract, Fig. 2, i-fi-199, 107, 108). The
Examiner finds Toomey teaches preservation notices and custodian
information stored in the enterprise file server. Id. at 9-10 (citing Toomey
i-fi-153-54, Fig. 2). The Examiner finds Toomey teaches the preservation
notices and/or data in one or more data storages. Id. at 10 (citing Toomey
i-f 57). The Examiner finds Toomey's enterprise file server supports the
browsing tool and supports directories of the file server defining directory
structure and allowing the e-discovery manager to "access, create, and
manipulate information, including custodian access." Id. (citing Toomey
i-f 139, Figs. 2, 5). The Examiner finds Toomey teaches data retrieving plans
created automatically via shared drives and a database server related to the
custodian. Id. (citing Toomey i-fi-1 140, 142).
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The Examiner finds Toomey teaches EDMS from various sources, but
does not teach "evidence collected by the collection agent from one or more
data sources" and refers to Fredrickson. Id. at 10-11 (citing Toomey Fig. 2,
i-f 99). The Examiner finds Fredrickson's workflow server connected to the
investigation computers collects evidence records from the evidence
collector 12 in the overall generating a workflow task and filtering required
evidence. Id. at 11 (citing Fredrickson, Figs. 1, 2, i-fi-1 45, 47--48).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art to incorporate Fredrickson's workflow collaboration
system that supports collection of evidence data from various data sources
into the EDMS of Toomey. Id. at 11.
In the Answer, the Examiner addresses Appellants' contentions set
forth in the Brief. Regarding whether Toomey teaches "a transient storage
area" that "includes a directory structure created based on the one or more
collection plans," the Examiner finds:
Toomey is directed to managing electronic discovery information,
more specifically creating, preserving custodian information in data
storage device( s) accessible to the custodian in an electronic discovery
management environment (Toomey: fig 1-2, Abstract). The prior art of
Toomey strongly supports electronic discovery management system
connected to enterprise file servers element 18, in a network
environment (Toomey: fig 2) i.e, typical "enterprise file server" is
responsible for storage and management of "data files", in this case,
attached to a network and provides shared access of those files to
multiple devices, further supports directories of the file servers defining
directory structure allows eDiscovery manager to access, create and
manipulate information including custodian access plans and like as
detailed in page 16, 0139, page 17,0140 is part of the eDiscovery
workflow management, and potential source of data stored is being
managed via retrieved paths of shared drives to the directory in the
server. The prior art of Toomey's eDiscovery managing folder name,
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and drives in the enterprise server is identical to applicant specification,
directories in the transient storage paragraph 0058, 0066-0068 (brief:
page 3, summary of claimed subject matter)
Ans. 2-3.
Toomey teaches "electronic discovery management", particularly
supports not only "file browsing tool" for accessing files from the
directories, but also managing directories in the file server (Toomey:
fig 5, page 15, 0133-0134), further it is noted that Toomey's
eDiscovery management server (fig 2) interacts with enterprise PC
datastore may be accessed and stored and linked to other electronic
discovery datastore via enterprise network thereby custodian may
interact with data on a data storage (page 3, 0041-0042) is identical to
instant specification EDMS interacts with directories in the storage
(spec: page 7, 0058)
Id. at 5-6.
Regarding whether Toomey teaches "wherein one or more evidence
repositories include a transient storage area to which data is deposited," the
Examiner finds:
Toomey teaches preservation notices and survey information and the
custodian information, more specifically custodian identifier associated
with custodian name, employee number, contact information like
corresponds to metadata, further preservation notices, and surveys
stored in the enterprise file server is part of the overall electronic
discovery management system (Toomey: page 5, 0053-0054- block 3),
further it is noted that the prior art of Toomey teaches "custodian
profile" including other associated information collected is part of the
"collection process" is identical to instant specification individual
custodian[] data collection (spec: page 10, para 0075). As noted above,
the prior art of Toomey described enterprise file server, fig 5 electronic
discovery server typically supports file browsing tool, page 16, 0139,
supports directories of the file servers defining directory structure
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allows e-discovery manager to access, create and manipulate
information including custodian access (fig 2, element 18).
Id. at 3--4.
Regarding whether Toomey teaches "wherein the directory structure
includes one or more automatically provisioned locations for depositing the
evidence collected by the collection agent for a given custodian in the one or
more custodians," the Examiner finds:
Toomey teaches preservation notices and/or data that including
background and/or administrative information stored in one or more
data storages (Toomey page 5, 0057), Toomey's fig 2, element 18 -
described enterprise file server, fig 5 electronic discovery server
typically supports file browsing tool, page 16, 0139, supports
directories of the file servers defining directory structure allows e-
discovery manager to access, create and manipulate information
including custodian access.
Id. at 6-7.
Regarding whether Fredrickson teaches the d:\evidence has directory
structure based on one or more collection plans, the Examiner finds:
Fredrickson is directed to workflow collaboration system particularly
stores various information related to workflow including evidence
data (Abstract, fig 1 ), secondly, Fredrickson teaches directory, file
data structure defining various file folders, including various file
attributes (metadata) in the evidence collection for example as
detailed in fig 2-3A-3B, page 3, 0048-0050 is identical to instant
specification page 8, 0062-0063 collected documents including files
in the evidence repository, therefore, the prior art of Fredrickson
teaches not only collecting evidence data and storing, but also
organized into directory data structure files and folders in supporting
overall workflow.
Id. at 8.
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The Examiner additionally finds the Specification does not describe
how directory structure is created and Fredrickson teaches "directory path
for example 'd:\evidence' is created, therefore," Fredrickson teaches
evidence file is part of the workflow. Id. at 9. The Examiner further finds
"Fredrickson's fig 3A disclosed 'My Document' folder, for example,
element 214 of the evidence file is part of typical directory structure." Id.
Regarding whether Toomey teaches
performing, by the collection agent, evidence collection based
at least in part on the one or more collection plans, including
depositing the evidence collected by the collection agent from
the one or more data sources to locations in the directory
structure of the transient storage area based at least in part on
the one or more collection plans,
the Examiner finds
Toomey is directed to electronic discovery management system
particularly connected to enterprise file server, enterprise PC and other
external devices in a network environment (Abstract, fig 2), the prior
art of Toomey also teaches collection server along with other electronic
discovery man[a]ger server, database server, enterprise PC and other
servers communicating with each other in an network environment as
detailed in fig 4, page 15, 0128, including collection server managing
information related to data from custodian storage locations and other
relevant information (page 15, 0130), also it is noted that the prior art
of Toomey teaches data retrieving plans via shared drives created
including automatically, to the unified directory in the database server,
further database server is configured information including historical
data related to the custodian including directory relevant metadata such
as custodian information, time, date of updates page 17, 0140, 0142.
Id. at 9-10.
In the Reply Brief, Appellants argue the Examiner's statements
regarding Toomey being "identical to applicants' specification" are incorrect
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and Appellants proffer some differences. Reply Br. 6-7. Appellants argue,
contrary to the Examiner's finding, the Specification describes how the
directory structure is created. Reply Br. 10 (citing Ans. 8-9; Spec., Fig. 3,
ii 66).
We are not persuaded by Appellants' arguments and agree, instead,
with the Examiner's findings and conclusions as set forth above. The
Examiner's findings present a reasoned basis for obviousness regarding the
teachings of Toomey and Fredrickson as would be understood by one of
ordinary skill in the art. Final Act 4--16; Ans. 2-11.
The term "transient" is not defined in the Specification and Appellants
present no persuasive arguments that the Examiner's interpretation that
Toomey teaches the limitations including this term are unreasonable or
overbroad. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the Specification, as understood by
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004).
Here, the term "transient" is used to modify the "storage area" and
recited in combination with other limitations. We agree one of ordinary skill
in the art would understand the term "transient" applies to data which is
collected, stored, and processed as found by the Examiner in the teachings of
Toomey and Fredrickson. We further agree with the Examiner's findings
that Toomey teaches or suggests the claim 1 limitations, except for "the
evidence collected by the collection agent from the one or more data
sources" (emphasis added), and Fredrickson teaches this limitation.
Appellants argue the references individually while the rejection is
based on the combination of the teachings of the cited references. In re
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Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." (citations omitted)); In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants argue an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness. The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. Keller, 642 F.2d
at 425.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on:
"[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." ... [H]owever, the
analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of
the inferences and creative steps that a person of ordinary skill in the
art would employ. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)).
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21.
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Based upon the teachings of the references and the fact that each
claimed element was well-known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 415-16.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419-21).
Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and
independent claims 19 and 20 which are argued together with claim 1. We
also sustain the rejections of claims 2-18 which are not argued separately.
See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under 35
U.S.C. § 103(a).
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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