Jonathan Grier

Patent Trials and Appeals Board

Sep 12, 2019

14059410 - (D) (P.T.A.B. Sep. 12, 2019)

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.
14/059,410 10/21/2013 Jonathan GRIER 983085.P001U1 5537
39564 7590 09/12/2019
FisherBroyles, LLP - MAIN CN
945 East Paces Ferry Road NE
Suite 2000
Atlanta, GA 30326
EXAMINER
HOFFLER, RAHEEM
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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
patent@fisherbroyles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JONATHAN GRIER
____________

Appeal 2018-004217
Application 14/059,410
Technology Center 2100
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection
of claims 1–37, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 Appellant identifies the inventor, Jonathan Grier, as the real party in interest.
App. Br. 2.
2 This Decision refers to the Examiner’s Final Office Action mailed February 10,
2017 (“Final Act.”); Appellant’s Appeal Brief filed August 11, 2017 (“App. Br.”);
the Examiner’s Answer mailed January 12, 2018 (“Ans.”); Appellant’s Reply Brief
filed March 12, 2018 (“Reply Br.”); and the original Specification filed
October 21, 2013 (“Spec.”).
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention “relates generally to copying of electronic files and
more particularly to apparatus and methods for selectively locating and replicating,
in a forensically sound manner, relevant data from a data source.” Spec. ¶ 2.
Specifically, the invention involves “identifying and or locating, accessing and
analyzing metadata and using the metadata to find additional data that is relevant to
[an] investigation, then duplicating and storing the metadata and the relevant
additional data.” Id. ¶ 19.
Claims 1, 10, 21, 29, and 34–37 are independent. Claim 1, reproduced
below, is illustrative of the subject matter on appeal:
1. A method for forensically imaging at least a portion of a data source,
the method comprising:
a device selectively communicating with the data source;
said device identifying data stored on said data source, wherein
said data includes an indication of additional data stored on said data
source;
said device parsing said data prior to copying said indicated
additional data;
said device analyzing said parsed data to obtain said indication
of said additional data; and,
said device copying at least a portion of said additional data to a
storage device associated with said device.
App. Br. 18 (Claims App’x).
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References and Rejections
The Examiner relies on the following references as evidence of
unpatentability:
Spernow et al. US 2014/0181975 A1 Pub. June 26, 2014
(“Spernow”) (Filed Nov. 5, 2013)
Stoakes et al. US 2013/0290275 A1 Pub. Oct. 31, 2013
(“Stoakes”) (Filed Apr. 30, 2012)
Peckover US 2010/0005509 A1 Pub. Jan. 7, 2010
(Filed June 30, 2009)
Avasarala et al. US 2014/0090061 A1 Pub. Mar. 27, 2014
(“Avasarala”) (Filed Sept. 26, 2013)
Claims 1–37 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Ans. 3–9.3
Claims 1–3, 6–29, and 34–37 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Spernow in view of Stoakes. Final Act. 2–21.
Claims 30–33 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Spernow in view of Stoakes and Peckover. Final Act. 21–24.
Claims 4 and 5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Spernow in view of Stoakes and Avasarala. Final Act. 24–25.
ANALYSIS
Rejection Under 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the Supreme Court has long

3 The rejection of claims 1–37 under 35 U.S.C. § 101 was a new ground of
rejection set forth in the Answer.
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interpreted § 101 to “contain[] an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS
Bank Int'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77
(2012) “for distinguishing patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent eligible applications of those
concepts.” Alice, 573 U.S. at 217. The first step in this analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible concepts,”
e.g., to an abstract idea. Id. Concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental economic
practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
(Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined that the claims
are directed to a patent-ineligible concept, the second step of the analysis requires
consideration of the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(quoting Mayo, 566 U.S. at 78, 79). In other words, the claims must contain an
“inventive concept,” or some element or combination of elements “sufficient to
ensure that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The PTO recently published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
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2019) (“Revised Guidance”). Under that guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human activity
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) (9th ed. Rev. 08.2017,
Jan. 2018)).
See Revised 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, and conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determines that claims 1–37 are directed to an abstract idea
and that the claim elements, considered both individually and in combination, do
not include additional elements that are sufficient to amount to significantly more
than the abstract idea. Ans. 3. In particular, the Examiner finds that “forensically
imaging at least a portion of a data source by communicating with the data source,
analyzing parsed data to obtain an indication of additional data, and copying a
portion of the additional data to a storage device” is an abstract idea. Id. The
Examiner determines that the claims recite concepts held to be abstract by our
reviewing court in Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d
1315 (Fed. Cir. 2017) (hereinafter “IV v. Erie”) (concluding that claims reciting
creating an index used to search for and retrieve data in U.S. Patent No. 6,510,434
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(’434 patent) and claims reciting remotely accessing and retrieving user-specified
information in U.S. Patent No. 6,546,002 were directed to abstract concepts));
Content Extraction & Transmission LLC v. Wells Fargo Bank, National
Association, 776 F.3d 1343 (Fed. Cir. 2014) (data recognition and storage); and
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332 (Fed.
Cir. 2017) (collecting, displaying, and manipulating data). Ans. 3–4. According to
the Examiner, the claimed invention is “not meaningfully different from practices
human beings have long performed.” Id. at 4.
Appellant argues that the claims, viewed in light of the Specification, are
“directed to practical, non-abstract improvements to computer technology which
enables forensic duplication devices to keep pace with advancing storage
technology.” Reply Br. 4. For example, Appellant refers to the Specification’s
disclosure that “the invention achieves efficiency over conventional imaging by
attempting to limit the imaging to relevant data stored on the data source.” Id. at 5;
Spec. ¶ 19. According to Appellant, the Specification indicates that “the device
that is performing the duplication may include a forensic duplicator, bridge or
write blocker.” Reply Br. 5 (citing Spec. ¶ 32). Appellant further notes that
independent claims 10, 36, and 37 recite an “apparatus . . . including a connector, a
processor and a storage device.” Id. at 6. Appellant concludes that the claims are
thus like those in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
880 F.3d 1356 (Fed. Cir. 2018)—directed to patent-eligible subject matter under
the first step of the Alice framework such that “the second step need not be
reached.” Reply Br. 4.
Under Step 2A, Prong 1 of the Revised Guidance, we agree with the
Examiner that the claims recite a judicial exception, i.e., an abstract idea. See
Ans. 3. In particular, we determine that the claims recite a mental process.
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For example, claim 1 recites a “device identifying data stored on [a] data
source, wherein said data includes an indication of additional data stored on said
data source,” “said device parsing said data prior to copying said indicated
additional data,” and “said device analyzing said parsed data to obtain said
indication of said additional data.” Under their broadest reasonable interpretation,
these “identifying,” “parsing,” and “analyzing” limitations recite steps that can be
performed in the mind, but for the recitation of generic components. That is, other
than the generic “device” recited in independent claims 1, 21, 29, 34, and 35 (and,
likewise, the “processor” recited in independent claims 10, 36, and 37) as
performing the recited steps, nothing in the claim limitations precludes the steps
from practically being performed in the mind. For example, but for the recitation
of a “device,” the claim encompasses a user mentally identifying data that includes
an indication of additional data, mentally parsing the data prior to a copy of the
indicated additional data being made, and mentally analyzing the parsed data to
obtain the indication of additional data.
Accordingly, these limitations recite a mental process as identified in the
Revised Guidance, and, thus, an abstract idea.
Under Step 2A, Prong 2 of the Revised Guidance, we next look to whether
the claims recite additional elements that integrate the abstract idea into a practical
application. We determine that they do not. For example, claim 1 additionally
recites the “device selectively communicating with the data source” and “said
device copying at least a portion of said additional data to a storage device
associated with said device.” The communicating step performed by the device is
recited at a high level of generality (i.e., as a general means of establishing a
connection between the device and the data source to perform the identifying,
parsing, and analyzing steps) and amounts to insignificant extra-solution activity.
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The copying step performed by the device merely automates the output of the
result obtained in the identifying, parsing, and analyzing steps (i.e., the indication
of additional data to be copied), and is, likewise, insignificant extra-solution
activity. See Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g).
As discussed above, independent claims 1, 21, 29, 34, and 35 recite that a
“device” performs all of the recited steps. The “device” is recited at a high level of
generality, i.e., as a generic component performing generic computer functions of
communicating, processing (i.e., identifying, parsing, and analyzing), and copying
data. We agree with the Examiner that this generic “device” limitation merely
applies the abstract idea using a generic component. See Ans. 4; Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f). The claim limitations do not
include any particular machine that is integral to the claim. See Revised Guidance,
84 Fed. Reg. at 55; MPEP § 2106.05(b). Notwithstanding Appellant’s contention
that the Specification discloses that “the device that is performing the duplication
may include a forensic duplicator, bridge or write blocker” (Reply Br. 5 (citing
Spec. ¶ 32)), we note that such elements are not recited in the claims, and,
accordingly, do not render the recited “device” any less generic. Similarly, the
additional recitation of a “connector” and a “storage device” in claims 10, 36, and
37 does not negate the genericism of the recited “processor.”
We are unpersuaded by Appellant’s argument (Reply Br. 4–5) that the
claims are directed to improvements to computer technology and, thus,
patent-eligible subject matter under Alice step one (i.e., Step 2A of the Revised
Guidance), like those in Core Wireless. The Core Wireless court “ask[ed] whether
the claims [were] directed to a specific improvement in the capabilities of
computing devices, or, instead, ‘a process that qualifies as an “abstract idea” for
which computers are invoked merely as a tool.’” 880 F.3d at 1361–62 (quoting
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Enfish, LLC v. Microsoft Corp., 882 F.3d 1327, 1336 (Fed. Cir. 2016)). In that
case, the claims were directed to an improved user interface for computing devices.
Id. at 1362. The court held that the claims were not directed to an abstract idea
because the “limitations disclose[d] a specific manner of displaying a limited set of
information to the user, rather than using conventional user interface methods to
display a generic index on a computer” and the “claims recite[d] a specific
improvement over prior systems.” Id. at 1363. Here, as noted by the Examiner,
the claim limitations do not reflect an improvement in the functioning of a
computer, or to any other technology or technical field. See Ans. 5; Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a). Rather than reciting
specifically how computer technology is improved, the claims invoke generic
elements (e.g., device) and conventional computer components and functions
(e.g., processor, connector, storage device) to perform an abstract idea. A claim
that is directed to an abstract idea does not become patent-eligible by “merely
requir[ing] generic computer implementation” (Alice, 573 U.S. at 221) or “limiting
the claims to [a] particular technological environment” (Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Furthermore, in Core Wireless
there was “no analog to th[ose] concepts outside the context of [computers and cell
phones].” 880 F.3d at 1360 (internal quotation marks and citation omitted). Here,
identifying, parsing, and analyzing data, as well as selectively making copies of
data, may be performed without computer technology.
In that regard, the instant claims are more similar to the claims of the
’434 patent in IV v. Erie. There, the claims related to the use of an index to locate
desired information in a computer database. 850 F.3d at 1325. Although the
’434 patent, much like the invention in this case, aimed to improve the efficiency
of prior art database searching methods by using an index constructed of tags and
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metadata to return more relevant hits, the court determined that the ’434 patent
claims were directed to an abstract idea. Id. at 1326–27. In particular, the court
likened the ’434 patent claims to “other patent claims [held] ineligible for reciting
similar abstract concepts that merely collect, classify, or otherwise filter data.” Id.
at 1327 (citing In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir.
2016); Content Extraction; and Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Likewise, the claims in this case
are directed to abstract concepts because the recited steps of “identifying data
stored on said data source, wherein said data includes an indication of additional
data stored on said data source,” “parsing said data,” and “analyzing said parsed
data” to ultimately “copy[] at least a portion of said additional data to a storage
device” (see claim 1) merely involve collecting and classifying or filtering data
(i.e., distinguishing the additional data to be copied from that which will not be
copied) and are not integrated into a practical application.
The court in IV v. Erie noted:
This type of activity, i.e., organizing and accessing records through the
creation of an index-searchable database, includes longstanding
conduct that existed well before the advent of computers and the
Internet. For example, a hardcopy-based classification system (such as
library-indexing system) employs a similar concept as the one recited
by the ’434 patent. There, classifiers organize and cross-reference
information and resources (such as books, magazines, or the like) by
certain identifiable tags, e.g., title, author, subject. Here, tags are
similarly used to identify, organize, and locate the desired resource.
850 F.3d at 1327. Similarly, identifying, parsing, and analyzing data to determine
the relevance of additional data and making copies of relevant portions of the
additional data may be done mentally and manually, without computer technology,
as discussed above. The data could be analyzed by examining readily observable
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characteristics of data that signify relevance or irrelevance, and the relevant
additional data could be manually copied, for example.
Furthermore, the IV v. Erie court rejected the argument that claims there at
issue were drawn to a specific search architecture that improves how computer
databases function. Id. at 1328. In particular, the court reasoned that, although
some claims specifically recited building an index using XML tags, “the claims
[were] not focused on how usage of the XML tags alters the database in a way that
leads to an improvement in the technology of computer databases, as in Enfish.”
Id. Moreover, XML tags were previously known in the art. Id. Here, Appellant’s
claims similarly lack specificity as to how computer technology in forensic
duplication devices is improved, as discussed above. The claims merely recite an
abstract idea performed via generic computer implementation.
Thus, even in combination, the additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.
Accordingly, we agree with the Examiner that the claims are directed to an
abstract idea.
Under Step 2B of the Revised Guidance, corresponding to the second step of
the Alice framework, we agree with the Examiner that the additional elements
recited in the claims (e.g., “device,” “processor,” “connector,” “storage device”)
are “common within the database art” and thus do not amount to significantly more
than the abstract idea. Ans. 4; see also Ans. 5–9). As discussed above, these
additional elements amount to no more than mere instructions to apply the abstract
idea using generic computer components. Mere instructions to apply an abstract
idea on a generic computer do not provide an inventive concept. Alice, 573 U.S.
at 223–24. We also agree with the Examiner’s finding that “computing a hash of
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said copied data,” as recited in independent claim 29, does not amount to
significantly more than the abstract idea “due to the common use of computing a
hash of received data in order to preserve the integrity of the data.” Id. at 4–5
(citing Smart Sys. Innovations v. Chi. Transit Auth., 873 F.3d 1364, 1374 n.9 (Fed.
Cir. 2017) (“A hash identifier is a generic and routine concept that does not
transform the claims to a patent eligible application of the abstract idea.”)).
Appellant has not shown that the claims on appeal add any specific limitation
beyond the judicial exception that is not “well-understood, routine, and
conventional” in the field. See MPEP § 2106.05(d)).
Reevaluating the extra-solution activity of the “device selectively
communicating with the data source” and “said device copying at least a portion of
said additional data to a storage device associated with said device” (see Revised
Guidance, 84 Fed. Reg. at 56), we find nothing unconventional in these steps of
selectively communicating and copying data. Appellant provides no evidence of
how the ordered combination is unconventional or amounts to significantly more
than the abstract idea to which the claims are otherwise directed.
Accordingly, considering the claim elements individually and as an ordered
combination, we agree with the Examiner that there are no meaningful claim
limitations that represent sufficiently inventive concepts to transform the nature of
the claims into a patent-eligible application of the abstract idea.
For the foregoing reasons, we sustain the Examiner’s rejection of claims 1–
37 under 35 U.S.C. § 101.
Rejections Under 35 U.S.C. § 103
The instant application has a filing date of October 21, 2013, and claims the
benefit of U.S. Provisional Patent Application No. 61/769,606, filed on
February 26, 2013. See Spec. ¶ 1.
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Spernow is the primary reference in all of the 35 U.S.C. § 103 rejections.
Spernow’s filing date of November 5, 2013, is after Appellant’s October 21, 2013,
filing date. Although Spernow on its face claims priority from a provisional
application filed November 6, 2012, the Examiner has made no findings relating to
the content of that provisional application, and we have no reason to presume that
the earlier date applies. Spernow (60); see Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1382 (Fed. Cir. 2015) (“A provisional application’s
effectiveness as prior art depends on its written description support for the claims
of the issued patent[4] of which it was a provisional.”); see also id. at 1380
(“[B]ecause the PTO does not examine priority claims unless necessary, the Board
has no basis to presume that a reference patent is necessarily entitled to the filing
date of its provisional application.”).
Accordingly, on this record, Spernow has not been shown to qualify as prior
art to the claimed invention, and we do not sustain the Examiner’s rejections of
claims 1–3, 6–29, and 34–37 as unpatentable over the combination of Spernow and
Stoakes; claims 30–33 as unpatentable over the combination of Spernow, Stoakes,
and Peckover; and claims 4 and 5 as unpatentable over the combination of
Spernow, Stoakes, and Avasarala, each of which rejections relies in part on
Spernow.

4 Although Dynamic Drinkware addressed an issued patent’s entitlement to a
provisional filing date, the same also applies to published non-provisional
applications claiming priority to a provisional application, like Spernow. See, e.g.,
Amgen Inc. v. Sanofi, 872 F.3d 1367, 1380 (Fed. Cir. 2017).
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DECISION
Because we have affirmed at least one ground of rejection with respect to
each claim on appeal, the Examiner’s rejection of claims 1–37 is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED