Blake Stanton. Sutherland

Patent Trials and Appeals Board

Sep 26, 2019

14266701 - (D) (P.T.A.B. Sep. 26, 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.
14/266,701 04/30/2014 Blake Stanton Sutherland TB-020-US-CON 9792
36630 7590 09/30/2019
IP-MEX Inc.
Unit D2 (Second Floor)
150 Terence Matthews Crescent
KANATA, ONTARIO K2M1X4
CANADA
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
admin@ip-mex.com
vdonnelly@ip-mex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BLAKE STANTON SUTHERLAND1
____________________

Appeal 2018-008517
Application 14/266,701
Technology Center 3600
____________________

Before JEREMY J. CURCURI, ADAM J. PYONIN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Trend Micro Incorporation is listed as the real party in interest. App. Br. 2.
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Application 14/266,701

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STATEMENT OF THE CASE
Introduction
The Application is directed to a “method for determining the
licensing/billing fees for computer security software.” Spec. 17:17–19.
Claims 1–20 are pending; claims 1 and 11 are independent. App. Br. 23–28.
Claim 1 is reproduced below for reference (formatting and emphasis added):
1. A computerized method for determining a billing fee for a
security software, the method comprising: in a computer having
a processor configured for:
determining a vulnerability time gap for an asset during
which the asset has been exposed to a vulnerability attack;
the vulnerability time gap being measured from a time
instance when the vulnerability attack has become known to a
time instance when a security software for protecting against the
vulnerability attack has been released or deployed;
determining a period of time during which the asset has
been protected against the vulnerability attack, measured from a
time instance when the security software has been released to a
time instance when the security software has been deployed;
determining the billing fee for the security software as
being inversely proportional to the vulnerability time gap, and
being proportional to the period of time during which the asset
has been protected against the vulnerability attack; and
storing the billing fee in a memory device.

References and Rejections
Claims 1–20 stand rejected under a judicial exception to 35 U.S.C.
§ 101 as being patent ineligible. Final Act. 4.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
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are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We adopt the
Examiner’s findings and conclusions as our own, and we add the following
primarily for emphasis.
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because “the claimed invention is directed to a judicial
exception (i.e., law of nature, natural phenomenon, or abstract idea) without
significantly more.” Final Act. 4; see also Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014) (Describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.”).
After the docketing of this Appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”). Under Step 2A of the Guidance, the office looks
to whether the claim recites:
(1) Prong One: 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) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look, under Step
2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, conventional in the field (see
MPEP § 2106.05(d)); or
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(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 Memorandum, 84 Fed. Reg. at 56.
We are not persuaded the Examiner’s rejection is in error. We adopt
the Examiner’s findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Guidance.

A. Step 2A, Prong One
Pursuant to the Guidance, we agree with the Examiner that claim 1
recites an abstract concept. See Final Act. 8. The claim, comprising a
“method for determining a billing fee for a security software,” recites a
mental process and a method of organizing human activity such as a
fundamental economic practice. See Final Act. 5; Ans. 4.
Specifically, the claim recites determining time periods in order to
calculate the billing fee: “determining a vulnerability time gap for an asset
during which the asset has been exposed to a vulnerability attack; the
vulnerability time gap being measured from a time instance when the
vulnerability attack has become known to a time instance when a security
software for protecting against the vulnerability attack has been released or
deployed,” and “determining a period of time during which the asset has
been protected against the vulnerability attack, measured from a time
instance when the security software has been released to a time instance
when the security software has been deployed.” These limitations are steps
of “observation, evaluation, judgment, opinion,” and thus are the abstract
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concept of “[m]ental processes” pursuant to the Guidance. Memorandum,
84 Fed. Reg. at 52.
Claim 1 further recites “determining the billing fee for the security
software as being inversely proportional to the vulnerability time gap, and
being proportional to the period of time during which the asset has been
protected against the vulnerability attack.” This billing fee determination is
similarly a step of “observation, evaluation, judgment, opinion,” and recites
the abstract concept of “[m]ental processes” pursuant to the Guidance. Id.
Additionally, the billing fee determination is an example of “legal
obligations; advertising, marketing or sales activities or behaviors; business
relations”, which are “commercial or legal interactions.” Id. Pursuant to the
Guidance, the limitation recites the abstract concept of “[c]ertain methods of
organizing human activity.” Id.
Accordingly, we conclude the claim recites an abstract idea under
Prong One of the Guidance. Memorandum, 84 Fed Reg. at 52, 54.

B. Step 2A, Prong Two
Appellant argues claim 1 “provide[s] a technological advancement”
(App. Br. 9) which is “directed toward a more accurate time determination
for the start/stop of the vulnerability time gap” (App. Br. 12). Appellant
contends the claim thus provides various benefits: “[t]he claims provide an
improvement of computation time” because of extremely long log files; “the
productivity of the billing system” is improved; and the incentives provided
by the unique billing structure result in “keeping the computer system as
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secure as possible, and for dealing with new computer attacks as quickly as
possible.” App. Br. 9–10.
We are not persuaded the Examiner’s rejection is in error, pursuant to
Step 2A, Prong Two of the Guidance. The claimed calculations of time—
used to determine a billing fee—are part of the judicial exception discussed
above. That is, the Guidance provides the recited determining steps are not
“additional elements” that confer patent eligibility to the claims.
Memorandum, 84 Fed. Reg. at 54–55 (Prong Two requires “[i]dentifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s)”). Other than the abstract idea, the claim recites “a
computer having a processor” and “storing the billing fee in a memory
device.” These elements, considered individually and in combination, do
not “use[] the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment.” Memorandum, 84 Fed. Reg. at 55; see Alice,
573 U.S. at 226. For at least this reason, we are not persuaded by
Appellant’s arguments regarding any purported technical benefits.
Further, we determine the disputed claim limitations, even considered
as additional elements, do not provide a “meaningful limit on the judicial
exception.” Memorandum, 84 Fed. Reg. at 54. As correctly determined by
the Examiner, “[p]roviding an incentive based on a billing fee does not
improve the overall performance of a computing system.” App. Br. 6.
Appellant’s asserted improvements are financial (e.g., higher billing fees)
and rely on a computer’s normal functionality. See App. Br. 10; see also
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase
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the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.”).
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the “claim recites a judicial exception and fails to integrate the
exception into a practical application” (id. at 51), “the claim is directed to
the judicial exception” (id. at 54).

C. Step 2B
Appellant argues claim 1 “include[s] a set of conditions, or rules, that
. . . are not merely routine in any computer implementation of an abstract
idea.” App. Br. 12.
We are not persuaded the Examiner’s rejection is in error, pursuant to
Step 2B of the Guidance. Other than the recited judicial exception, claim 1
recites a computer, a processor, and storing the billing fee in a memory
device. These additional elements are all recited at a high level of generality
and are implemented by well-understood, routine, and conventional
components, as shown by the record before us. See Ans. 9–11; see also
Spec. 10:14–11:18; Alice, 573 U.S. at 226 (“Nearly every computer will
include a ‘communications controller’ and ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims”). We agree with the Examiner that the
additional elements, individually and combination, do not provide for an
inventive concept that is significantly more than the recited judicial
exception. See Final Act 5; Memorandum, 84 Fed. Reg. at 56. Accordingly,
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we sustain the Examiner’s patent eligibility rejection of independent claim 1,
as well as independent claim 11 not separately argued. See App. Br. 13.
Appellant argues the dependent claims are patent eligible. See App.
Br. 13–21. These arguments, however, consist of quoting the dependent
claim limitations, and asserting these limitations are “technology-based
improvements” for the same reasons stated for the independent claims. Id.
Such statements are insufficient to show error in the Examiner’s rejection.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Based on the record before us, we conclude the dependent
claims are not meaningfully different from the independent claims for
purposes of the Alice analysis. See Ans. 12–22. Accordingly, we sustain the
Examiner’s patent eligibility rejection of dependent claims 2–10 and 12–20.

DECISION
The Examiner’s decision rejecting claims 1–20 is affirmed.
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