Ex Parte Raas

Patent Trial and Appeal Board

Sep 29, 2016

13579390 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/579,390 10/04/2012 Urs Raas
56436 7590 10/03/2016
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
83093886 1022
EXAMINER
GOFMAN,ALEXN
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
hpe.ip.mail@hpe.com
mkraft@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URS RAAS
Appeal 2015-007363
Application 13/579,390
Technology Center 2100
Before CARLA M. KRIVAK, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge MOORE.
Opinion Concurring filed by Administrative Patent Judge ENGLE.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-007363
Application 13/579,390
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "[a] retention schedule ... assigned to a
record based on classification information associated with the record,
wherein the retention schedule is linked to a plurality of jurisdiction
triggers." (Abstract.) Claim 1, reproduced below, is illustrative:
1. A method, comprising:
determining, using a processor-based device, classification
information associated with a record;
selecting, based on the classification information, a retention
schedule from a plurality of retention schedules stored on a
storage device;
identifying a plurality of jurisdiction triggers linked to the
retention schedule and matching jurisdiction information
associated with the record, wherein the plurality of jurisdiction
triggers are stored on the storage device;
determining a plurality of expiration dates based on the
plurality of jurisdiction triggers linked to the retention schedule
and matching the jurisdiction information associated with the
record; and
selecting, from the plurality of expiration dates, a record
expiration date for the record.
1 Appellant identifies Hewlett-Packard Development Company, LP as the
real party in interest. (See App. Br. 1.)
2
Appeal2015-007363
Application 13/579,390
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Consul et al.
Fridrich
US 2009/0177704 Al
US 8,131,683 B2
THE REJECTIONS
July 9, 2009
Mar. 6, 2012
1. Claims 1-5, 7-14, and 16-19 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Fridrich. (See Final Act. 3-8.)
2. Claims 6, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fridrich and Consul. (See Final Act. 8-9.)
APPELLANT'S CONTENTIONS
Appellant argues that the rejections are in error for the following
reasons:
1. "Fridrich clearly fails to disclose identifying a plurality of
jurisdiction triggers linked to the retention schedule and matching
jurisdiction information associated with the record." (App. Br. 7, emphasis
omitted.)
2. "Fridrich cannot possibly disclose determining a plurality of
expiration dates based on the plurality of jurisdiction triggers linked to the
retention schedule and matching the jurisdiction information associated with
the record" and "cannot disclose selecting from the plurality of expiration
dates, a record expiration date for the record." (App. Br. 7-8, emphasis
omitted.)
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Application 13/579,390
3. With respect to claims 3 and 17, "Fridrich clearly fails to
disclose wherein the record expiration date is determined by calculating
future expiration dates for the identified plurality of jurisdiction triggers and
selecting, from the calculated future expiration dates, the expiration date that
expires at a latest time." (App. Br. 9, emphasis omitted.)
4. With respect to claims 6, 15, and 20, "[a] person of ordinary
skill in the art will appreciate that [Consul's] plurality of policies is clearly
not a plurality of expiration dates, much less a plurality of expiration dates
that is determined based on the plurality of jurisdiction triggers" and "the
provided rationale for the proposed combination of Fridrich and Consul is
lacking." (App. Br. 10-11, emphasis omitted.)
ANALYSIS
Claims 1, 2, 4, 5, 7-14, 16, 18, and 19
Regarding Appellant's first contention, the Examiner finds the
"identifying" limitation taught in Fridrich's "retention schedules":
As to the identifying portion, Fridrich (Col 10 ln 33-41) dis-
closes identifying multiple jurisdiction triggers such as France or
China. Such jurisdiction triggers are linked to the retention
schedule since they are a part of the schedule. Furthermore, Fig-
ure 5A illustrates identifying jurisdiction triggers based at least
on countries such as France, China, etc.
As to the matching portion, once a record is identified to have
a specific jurisdiction trigger such as a specific country, an ap-
propriate jurisdiction trigger is applied to the associated record.
For example, once a record is identified to have France as the
jurisdiction, appropriate jurisdiction information is associated
with the record.
(Ans. 3; see Final Act. 4, citing Fridrich 2:24--33, 10:33--41.)
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Application 13/579,390
Appellant argues that "the language 'a specific jurisdiction trigger'
plainly refers to a single jurisdiction trigger" and that "[a ]s such, it is
abundantly clear that the asserted teaching of Fridrich fails to disclose 'a
plurality of jurisdiction triggers,' as included in claim 1." (Reply Br. 3,
emphasis omitted.) Appellant further argues that the cited parts of the
reference "say nothing whatsoever about the act of 'identifying a plurality of
jurisdiction triggers linked to the retention schedule,' as also included in
claim 1," but "[ r ]ather, at best, the cited material merely describes that
different 'exception rules' may specify different jurisdictions." (Id.)
We agree with the Examiner. Regarding the "plurality of jurisdiction
triggers," Fridrich teaches a global rule, which is the default, as well as
exception rules triggered by individual countries. The "plurality" may be,
for example, the global default and an exception rule for China, both of
which "match[] jurisdiction information associated with the record." We do
not read the claims as requiring that "the plurality of jurisdiction triggers"
are all specific to a single jurisdiction. We also agree with the Examiner that
the 'jurisdiction triggers are linked to the retention schedule since they are a
part of the schedule." (Ans. 3.)
Regarding Appellant's second contention, the Examiner makes the
following findings about Fridrich's disclosure of the "determining" and
"selecting" limitations:
Fridrich (Col 2 ln 24-33) states "Further, the method includes
retaining the data items according to the retention schedule. The
retention schedule includes a plurality of retention rules includ-
ing a global retention rule defining a first duration for retaining
the data items consistent with a set of predetermined require-
ments, and at least one exception rule for retaining at least one
data item for a second duration." That is interpreted as a record
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Application 13/579,390
having with multiple expiration dates based on a global rule,
which is the first expiration date and an exception rule, which is
a second expiration date. An exception rule is based on at least
on a jurisdiction as seen in Figure 5 A. There the top row of the
figure shows a global rule is for example "global rule end of cal-
endar year of X+ 10 ... " and an exception rule for some records,
based on a jurisdiction (such as France adding +30) adds extra
time of retention. As such, at least the global expiration date and
the exception rule expiration date is determined based on a rec-
ords' jurisdiction.
As to element (v), Fridrich (Fig. 5A, Col 2 ln 24-33) discloses
"selecting, from the plurality of expiration dates, a record expi-
ration date for the record." Fridrich, as discussed above, clearly
determines an expiration date for each record and applies (i.e.
selects) the appropriate duration of each record based on a juris-
diction such as a country.
(Ans. 5---6.)
Appellant responds that "Fridrich says nothing whatsoever regarding
the 'global rule' being based on a particular jurisdiction" and that "[r]ather,
Fridrich appears to describe something quite different, namely that the
'global rule' applies to all records regardless of jurisdiction." (Reply Br. 5.)
We find this argument unpersuasive because the claims do not require that a
trigger be "based on a particular jurisdiction." It is sufficient that the trigger
"match[] jurisdiction information associated with the record," which is the
case with the global rule, as all jurisdictions are members of the global set.
We do not agree with the concurrence's assertion that the Examiner
did not find the global rule to be a jurisdiction trigger, as the global rule is
explicitly identified in both portions of the Specification cited in the Final
Office Action for the identifying limitation. (See Final Act. 4, citing Spec.
2:24--33 ("[t]he retention schedule includes a plurality of retention rules
including a global retention rule"), 10:33--41 ("a global rule may be
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Application 13/579,390
designated by X + 10 years, where X is a trigger event which is one of an end
of relevant entity, closure of account, and creation/receipt"); see also Ans. 4
(citing Fridrich 2:24--33 and "interpret[ing it] as a record having with
multiple expiration dates based on a global rule, which is the first
expiration date and an exception rule, which is a second expiration date").)
Our reliance on the global rule, therefore, does not constitute a new ground
of rejection.
Nor do we agree with the concurrence's construction of the
"identifying" limitation, in which "matching" is somehow "independent
from 'identifying a plurality of jurisdiction triggers."' It is not consistent
with the plain language of the claim, it is not consistent with the
Specification, and it is not even consistent with Appellants' own
interpretation of their claims. It is abundantly clear that the claim requires
identifying a plurality of jurisdiction triggers that match jurisdiction
information associated with the record. "Matching" is an adjective
modifying "jurisdiction triggers," not a verb. We see absolutely no reason to
conclude that the identifying limitation lacks clarity.
For these reasons, we sustain the rejection of claim 1, as well as the
rejections of claims 2, 4, 5, 7-14, 16, 18, and 19, for which no additional
arguments are presented.
Claims 3 and 17
Appellant's third contention concerns the requirement of claim 3 that
"selecting one of the expiration dates comprises selecting the expiration date
that expires at a latest time," and an analogous requirement in claim 17. The
Examiner finds that Fridrich "[has] at least two jurisdiction triggers, the
global rule and the exception rule" and that "the exception rule shows a
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Application 13/579,390
future date which expires at a latest time" such that "[ ±lor example, records
which are associated with the jurisdiction of France expire later than the
global rule." (Ans. 6-7.) Appellant responds that "the Answer is erroneous"
because "the 'global rule' of Fridrich fails to disclose a jurisdiction trigger"
(Reply Br. 6), an argument we find unpersuasive for the reasons explained
above. Appellant further argues that "because the 'exception rule' never
provides a date that is earlier than the 'global rule' date, Fridrich clearly
does not teach the act of selecting among these dates." (Id.) We do not
agree with this analysis because the claim does not require that an earlier
date ever be selected. Fridrich's example, in which the longer national date
is used, "select[ s] the expiration date[]" [by] "selecting the expiration date
that expires at a latest time," as claimed.
The rejections of claims 3 and 17 are sustained.
Claims 6, 15, and 20
Appellant's fourth contention asserts that "Consul say[ s] nothing
about applying one or more conflict resolution rules to the plurality of
expiration dates" as, "[ r ]ather, the cited material describes something
different, namely performing conflict resolution between a 'folder-level
policy' and an 'item-level policy' for 'messages."' (App. Br. 10---11.) We
find this argument unavailing because, as explained by the Examiner,
"Fridrich (Col 2 ln 24-33) describes selecting the exception rule instead of
the global rule," which "in itself is a type of conflict resolution, and Consul
was brought in to explicitly show conflict resolution of expiration dates,"
which it teaches in paragraph 56. (Ans. 6-7.) We find the stated
motivation-"because a record cannot have multiple expiration dates and
needs to expire at a particular time based on a policy assigned to it" (Ans.
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Application 13/579,390
8)----sufficient to provide the required rational underpinning for the
conclusion of obviousness. See In re Kahn, 441F.3d977, 988 (Fed. Cir.
2006).
The rejections of claims 6, 15, and 20 are sustained.
DECISION
The rejections of claims 1-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URS RAAS
Appeal2015-007363
Application 13/579,390
Technology Center 2100
Before CARLA M. KRIVAK, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge, concurring.
I agree with the majority's result but would designate it as a new
grounds of rejection. I have seen no evidence in either the Final Rejection or
the Answer of any finding by the Examiner that Fridrich's default rule
constituted a jurisdiction trigger for purposes of the "identifying" step in
claim 1 (or the comparable limitations in the other independent claims). 2
The Examiner never even mentions Fridrich's default rule in the Answer's
extensive discussion of the "identifying" step. Ans. 2-3. Instead, the
2 The Examiner does suggest for certain dependent claims that Fridrich's
default rule might be a jurisdiction trigger. See Final Act. 2-3 (claims 2 &
12); Ans. 6 (claims 3 & 17). However, an Examiner's finding for dependent
claims cannot make up for a lack of analysis addressing the independent
claim. Moreover, even for the dependent claims, the Examiner gives no
explanation of why a default rule would constitute a jurisdiction trigger.
Appeal2015-007363
Application 13/579,390
evidence suggests that for the "identifying" step of the independent claims,
the Examiner relied solely on the "plurality of jurisdiction triggers" being
taught by Fridrich's multiple exception rules (i.e., based on specific
countries), not the default rule: "As to specifically identifying 'jurisdiction
triggers', Fridrich (Col 10 ln 33-41) discloses applying the exception rules at
least based on a specific jurisdiction." Final Act. 2-3 (emphasis added); see
also Ans. 3; Final Act. 4. Appellants similarly understood the Examiner to
be relying exclusively on Fridrich's exception rules as identifying the
plurality of jurisdiction triggers, not Fridrich's default rule. E.g., App. Br. 6
("the Office Action asserted that the plurality of jurisdiction triggers is
disclosed by the 'exception rules' illustrated in Figs. 5A-5C of Fridrich");
Reply Br. 2 (same). Because the majority's opinion is based on a theory for
the independent claims that is not in the Examiner's Answer or Final
Rejection, I believe it must be designated as a new ground so that Appellants
have a full and fair opportunity to rebut this new theory.
This new theory stems from grammatically reading the disputed
limitation in a fundamentally different way than the Examiner. The relevant
limitation in claim 1 recites "identifying a plurality of jurisdiction triggers
linked to the retention schedule and matching jurisdiction information
associated with the record" (emphasis added). Appellant and the majority
interpret "and matching" to be paired with "linked" (i.e., "a plurality of
jurisdiction triggers [(A)] linked ... and [(B)] matching"). E.g., Reply Br. 2.
Under this interpretation, "matching" modifies "a plurality of jurisdiction
triggers" so a plurality must be matched.
However, the Examiner interprets "and matching" to instead be paired
with "identifying" (i.e., "[(A)] identifying a plurality of jurisdiction triggers
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Application 13/579,390
... and [(B)] matching"). Thus, "matching" is independent from
"identifying a plurality of jurisdiction triggers." This is why the Examiner
expressly states, "The argued limitation contains two parts: 'identifying a
plurality of jurisdiction triggers linked to the retention schedule' and
'matching jurisdiction information associated with the record."' Ans. 3.
Because the "matching" is independent from the plurality of jurisdiction
triggers, only a single instance of jurisdiction information need be matched,
not a plurality. This is why the Examiner rejects Appellant's requirement
that multiple exception rules must match a given record (i.e., Appellant
requiring "a plurality of jurisdiction triggers ... matching"), stating that
"such claim limitations do not exist." Ans. 3--4. Even Appellant concedes
Fridrich meets this interpretation. E.g., Reply Br. 2 ("Fridrich merely
describes a single 'exception rule' that matches the jurisdiction information
associated with a single record."). Yet neither Appellant nor the majority
address the Examiner's interpretation and instead simply adopt-without
analysis-the alternate interpretation described above. See App. Br. 6-7;
Reply Br. 2-3.
We need not decide here which interpretation is the correct claim
construction because the claims are invalid even under Appellant's
interpretation, so I think the majority is wrong to reject the Examiner's
interpretation so quickly. 3 "It is the applicants' burden to precisely define
3 For similar reasons, I also disagree with some of the majority's broader
statements about jurisdiction triggers, which I believe are not sufficiently
tied to either a 'jurisdiction" or a "trigger" and are not necessary for the
decision. Supra at 6; see also Spec. i-fi-1 4 (explaining a 'jurisdiction"), 16 ("a
jurisdiction trigger 128 may be defined by ... a jurisdictional code or
identifier to which the trigger 128 should apply") (emphasis added); Reply
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Application 13/579,390
the invention, not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Therefore, in the event of further prosecution, I would encourage
Appellant to amend the claims to clarify what word "matching" should
modify and thereby avoid any similar confusion in the future.
For these reasons, I CONCUR.
Br. 5 (arguing why the majority's broadest interpretation of a "global rule"
would not be a jurisdiction trigger).
4