TeraDact Solutions, Inc.

Patent Trials and Appeals Board

Dec 23, 2020

2020004407 (P.T.A.B. Dec. 23, 2020)

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.
14/011,826 08/28/2013 Christopher K. Schrichte 062A.0007.U2(US) 2633
29683 7590 12/23/2020
Harrington & Smith, Attorneys At Law, LLC
4 RESEARCH DRIVE, Suite 202
SHELTON, CT 06484-6212
EXAMINER
FRENEL, VANEL
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
USPTO@HSPATENT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER K. SCHRICHTE
Appeal 2020-004407
Application 14/011,826
Technology Center 3600

Before ADAM J. PYONIN, DAVID J. CUTITTA II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7–23 and 27–29, all the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Teradact Solutions, Inc. Appeal Brief 1.
2 Claims 1–6 and 24–26 are canceled. Appeal Brief 2.
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Application 14/011,826

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CLAIMED SUBJECT MATTER
Invention
Appellant’s invention relates generally to “automatically removing
sensitive information from documents.” Spec. ¶ 3.3 More specifically, a
“redaction engine 30 is adapted to take an electronic version of the
document 12, and remove or redact information in the document using rules
accessed from [a] rule set 32 to produce [a] modified document 14.”
Id. ¶ 76, Figs. 1, 4. The redaction engine selects a redaction rule set from
different redaction rule sets based upon identification of the requester.
Id. ¶ 76. “For example, an employment application document or a document
from a personal department might automatically have a first rules set versus
a document from an intelligence department or an intelligence document
which could automatically have a second rules set.” Id.
Illustrative Claim
Claims 7, 13, 15, and 22 are independent. Independent claim 7,
reproduced below with certain limitations at issue italicized, is illustrative of
the claims on appeal:
7. An apparatus comprising:
a scanner configured to generate an electronic first
document from a scanned document;
a redaction generator configured to receive the first
document from the scanner, where the redaction generator is
configured to generate an electronic redacted second document
from the first document received from the scanner, wherein the

3 We refer to: (1) the originally filed Specification filed August 28, 2013
(“Spec.”); (2) the Non-Final Office Action mailed September 18, 2019
(“Non-Final Act.”); (3) the Appeal Brief filed November 21, 2019 (“Appeal
Br.”); and (4) the Examiner’s Answer mailed March 20, 2020 (“Ans.”).
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redaction generator comprises a computer including a redaction
engine coupled to a source of redaction rules, wherein the
source of redaction rules comprises at least one rule, where the
redaction engine is configured to automatically exclude
information in the first document from the second document
based upon the at least one rule to thereby create the second
document as a redacted version of the first document; and
a document releaser configured to transmit the second
document from the apparatus based upon a request from a
different apparatus for the first document,
where the document releaser is configured to determine
an identity of a requester of the request, and where the
redaction generator is configured to select a redaction rule set
comprising the at least one rule from a plurality of different
redaction rule sets for different requesters based upon the
identification of the requester by the document releaser.
Appeal Br. 98–99 (Claims Appendix).
REFERENCES AND REJECTIONS
The Examiner rejects claims 7–23 and 27–29 under 35 U.S.C. § 101
as being directed to an exception to patent-eligible subject matter without
reciting significantly more. Non-Final Act. 2–11.
The Examiner rejects claims 7–23 and 27–29 under 35 U.S.C.
§ 103(a) as being unpatentable over the teachings of McFarland et al. (US
2006/0184522 A1, published Aug. 17, 2006) (“McFarland”) and Rackman
(US 5,903,646, issued May 11, 1999). Non-Final Act. 11–23.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
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Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

I. Rejection Under 35 U.S.C. § 101
Appellant appeals the Examiner’s rejection of claims 7–23 and 27–29
as being directed to an exception to patent-eligible subject matter under
§ 101. Appeal Br. 6–79. We select independent claim 7 as illustrative of all
claims rejected under § 101 in this appeal. See 37 C.F.R. § 41.37(c)(1)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has held that § 101 includes implicit
exceptions—laws of nature, natural phenomena, and abstract ideas—which
are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In January 2019, the Office issued the 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”),
which addresses the manner in which § 101 case law is to be applied by the
Office. In October 2019, the Office issued an update to explain further the
manner in which the Guidance should be implemented. See October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites
/default/files/documents/peg_oct_2019_update.pdf (“Guidance Update”).
The Board is required to adhere to these guidance documents as a matter of
Office policy. Guidance, 84 Fed. Reg. at 51. The Guidance sets forth a
four-part analysis for determining whether a claim is eligible subject matter
under § 101; the four parts are labeled here as Step 1, Step 2A Prong 1,
Step 2A Prong 2, and Step 2B. Id. at 53–56.
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Guidance Step 1
First, under “Step 1,” we consider whether the claimed subject matter
falls within the four statutory categories set forth in § 101, namely
“[p]rocess, machine, manufacture, or composition of matter.” Guidance, 84
Fed. Reg. at 53–54; see 35 U.S.C. § 101. Appellant’s independent claim 7
recites an apparatus (i.e., a “machine”), and as such is directed to a statutory
class of invention within § 101 and we proceed to the next step.
Guidance Step 2A Prong 1 (Judicial Exceptions)
Second, under “Step 2A Prong 1,” we evaluate “whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S. at 216–17.
The Examiner determines that:
Exemplary independent claim 7 is directed to the abstract idea
of a redaction engine coupled to a source of redaction rules.
This is considered to be abstract because it is a concept related
to “data gathering” which the courts have found to be examples
of abstract ideas because the claims fall under the category of
“certain methods of organizing human activity” which are
patent ineligible.
Final Act. 2.
Appellant argues that “‘a redaction engine coupled to a source of
redaction rules’ is not ‘merely data gathering’.” Appeal Br. 11, 23.
We agree with Appellant. The Examiner has not demonstrated that
the claimed redaction engine is limited only to data gathering. Moreover,
the Examiner does not provide support under the Guidance or case law for
the assertion that a claim “fall[s] under the category of ‘certain methods of
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organizing human activity’” because the claim recites “a concept related to
‘data gathering.’” Final Act. 2.
The Examiner further determines that claim 7 includes elements that:
comprise commercial interactions including marketing, sales
activities, or behaviors, and business relations; managing
personal behavior or interactions between people including
social activities and following rules or instructions. And are
thus, directed towards the abstract grouping of Certain Methods
of Organizing Human Activity in prong one of step 2A of the
Alice/Mayo test (see 2019 Revised Patent Subject Matter
Eligibility Guidance, at 52).
Ans. 28.
Appellant argues that “‘a redaction engine coupled to a source of
redaction rules’ is not fundamental economic principles . . . commercial or
legal interactions . . . marketing or sales activities or behaviors; business
relations” and therefore “is not ‘Certain methods of organizing human
activity’ in accordance with 2019 PEG and October 2019 Update.” Appeal
Br. 10 (citing Guidance and Guidance Update).
We agree with Appellant that the Examiner has not demonstrated that
claim 7 recites “commercial or legal interactions (including . . . marketing or
sales activities or behaviors; business relations); [or] managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following rules or instructions).” Guidance, 84 Fed.
Reg. at 52. We, therefore, find error in the Examiner’s determination that
claim 7 recites a certain method of organizing human activity. Nor does the
Examiner address any other category of abstract idea under the Guidance.
For that reason, we have also not independently considered any of the other
categories of abstract ideas under the Guidance.
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Accordingly, we do not sustain the Examiner’s rejection of claims 7–
23 and 27–29 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.

II. Rejection Under 35 U.S.C. § 103(a)
Independent claim 7 recites, in part:
a document releaser configured to transmit the second
document from the apparatus based upon a request from a
different apparatus for the first document,
where the document releaser is configured to determine
an identity of a requester of the request, and where the redaction
generator is configured to select a redaction rule set comprising
the at least one rule from a plurality of different redaction rule
sets for different requesters based upon the identification of the
requester by the document releaser.
Appeal Br. 98–99. The Examiner notes that McFarland does not teach or
suggest the limitations at issue. Non-Final Act. 12. But, the Examiner finds
Rackman teaches or suggests these limitations. Id. at 12–14 (citing
Rackman 7:5–52, 8:46–67, 7:40–67, and 12:1–67). The Examiner
determines that sufficient motivation existed to combine the teachings of the
references. Id. at 13–14.
Rackman relates to providing access control of litigation documents
by “creating [a] master optical disk and master database for use by the
producing party.” Rackman 8:16–17. In Rackman, the master optical disk
provided by the producing party to the opposing party includes non-
encrypted redacted versions of documents and encrypted versions of the
same documents in non-redacted form. Id. at Fig. 5. Each encrypted
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document includes a unique key and separate keys may be provided to
individually decrypt each of the encrypted documents. Id. at 2:59–3:2.
Appellant separately argues each of the limitations. Appeal Br. 79–
84. Appellant argues Rackman does not teach or suggest a document
releaser configured to transmit the second document because “Rackman only
discloses recording redacted information on an optical disk drive 22; not any
type of document releaser configured to transmit the second document from
the apparatus based upon a request from a different apparatus for the first
document.” Id. at 81. Appellant continues:
Rackman does not disclose a document releaser configured to
determine an identity of a requester of the request; merely a key
is required regardless of the identity of the person who has the
key. Also, contrary to what the examiner has stated, Rackman
does not disclose a redaction generator configured to select a
redaction rule set from a plurality of different redaction rule sets
for different requesters based upon the identification of the
requester by the document releaser.
Id. at 83.
Appellant’s arguments are persuasive. The Examiner cites generally
to three columns of text from Rackman, without further explanation or more
specific findings. Non-Final Act. 12–13. For this reason, the Examiner has
not shown, nor are we are able to confirm, that the cited columns of
Rackman teach or suggest the limitations at issue. Also, the Examiner
responds to Appellant’s arguments with a boilerplate paragraph citing
various case law for the proposition that “obviousness is determined on the
basis of the evidence,” rather than providing a specific rebuttal to
Appellant’s arguments. Ans. 32. Given the record before us, it is unclear
how Rackman teaches or suggests each of the disputed limitations.
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Accordingly, we find persuasive Appellant’s argument that the Examiner
has not demonstrated sufficiently that the combination of McFarland and
Rackman teaches or suggests the disputed limitations, as recited in
independent claim 7.
Because we agree with at least one of the dispositive arguments
advanced by Appellant, we need not reach the merits of Appellant’s other
arguments. Consequently, based on the record before us, we do not sustain
the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 7. We
also do not sustain the rejection of independent claims 13, 15, and 22, which
recite commensurate limitations, and of dependent claims 8–12, 14, 16–21,
23, and 27–29, for similar reasons.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/
Basis
Affirmed Reversed
7–23, 27–29 101 Patent eligibility 7–23, 27–
29
7–23, 27–29 103(a) McFarland,
Rackman
7–23, 27–
29
Overall
Outcome
7–23, 27–
29

REVERSED