Demandware, Inc.

Patent Trials and Appeals Board

Jun 18, 2020

2019001634 (P.T.A.B. Jun. 18, 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.
14/486,335 09/15/2014 Wayne Whitcomb 110316-18/2066US 1398
145924 7590 06/18/2020
SalesForce/Nutter McClennen & Fish LLP
Nutter McClennen & Fish LLP
SEAPORT WEST
155 SEAPORT BOULEVARD
BOSTON, MA 02210-2604
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
docket@nutter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE WHITCOMB and DAVID C. BOYLE
Appeal 2019-001634
Application 14/486,335
Technology Center 3600
Before JASON V. MORGAN, JOHN F. HORVATH, and
MICHAEL M. BARRY, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–5. 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
salesforce.com, inc. Appeal Br. 1.
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Application 14/486,335
2
CLAIMED SUBJECT MATTER
The invention is directed to “the storage of and access to sensitive
personal information, which may be used to protect the confidentiality of
sensitive data and to control access to the data.” Spec. ¶ 1. “A plurality of
databases or data structures (generally data stores) 300, 310, 320 and 330
store a corresponding plurality of PII [personally identifying information]
fields of different types [e.g., 304, 314, 324, 334] for the same group of
users.” Id. ¶ 29, Fig. 3. For example, data store 300 stores data for PII field
304, e.g., the first names of the users. Id. ¶ 32, Fig. 4. The data is stored as
“a plurality of data pairs whereby a PII information type field for a user
(e.g., PII_01 or first name) is paired with a distinct identifying number or
code (GUID) to make a distinct PII-GUID data pair.” Id. Similarly, data
store 310 can store data for PII field 314 (date of birth) for the plurality of
users as “data pair[s] including the date of birth data itself PII_02 for [each]
user and an associated GUID for that data for that user.” Id. ¶ 33, Fig. 5.
Storing the data in this way allows the content of “data store 31[0]
containing the set of user birth dates 314” to be known without knowing
“which birth dates 314 belong[] to which user names 304.” Id. ¶ 35. To
correlate all of the PII information stored for a particular user in the plurality
of data stores 300–330, “a secure data store containing the GUID codes for
the various users’ PII data fields” is used. Id. ¶ 36. The secure data store
“enable[s] the system to determine which GUID codes from each of the data
stores . . . belong to a same user.” Id. ¶ 36. Data in the secure data store
“associate[s] the correct GUID codes with one another” across the different
data fields and/or stores, allowing an authorized user to “see the PII data for
a given user in [its] entirety.” Id.

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Application 14/486,335
3
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for computer storage and access of personally
identifying information (PII) including a plurality of fields of
PII, comprising:
collecting a plurality of PII data relating to a plurality of
respective fields of PII for each user of a plurality of users;
associating a unique identifying code with each said PII
datum for each said field of PII so as to create unique data pairs,
each data pair comprising said PII datum and its associated
unique identifying code, where each unique identifying code is
a globally unique identification (GUID) that is unique to the
field of PII to which that PII datum belongs and to the user to
which that PII datum relates;
storing said data pairs in one or more computer data
stores without organization from which can be determined
which data pairs comprising PII data for a given user belong to
which other data pairs for that same user;
securing in a further separate computer data store a data
structure that associates with each said user the unique
identifying codes of the data pairs that comprise PII data for
that user;
subjecting the PII data in the one or more computer data
stores to one or more queries;
returning data pairs from the one or more computer data
stores matching the one or more queries, where those returned
data pairs (i) comprise PII data for a plurality of said users, (ii)
are without organization from which can be determined which
data pairs comprising PII data for a given user belong to which
other data pairs for that same user; and
utilizing the further separate computer data store to
identify, from the unique identifying codes in the returned data
pairs, which PII data for a given user in those returned data
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Application 14/486,335
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pairs belongs to which other PII data in those returned data
pairs for that same user.
REJECTIONS
Claims 1–5 stand rejected under 35 U.S.C. § 101 as directed to
unpatentable subject matter. Final Act. 3–5.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). Appellant argues for the patentability of claims 1–4 as
a group and, although purporting to separately argue for the patentability of
claim 5, argues that claim 5 is patentable for the same reasons as claims 1–4.
Compare Appeal Br. 7–22, with id. at 22–23. We select claim 1 as a
representative claim, and review the rejection of claims 1–5 based on our
analysis of the rejection of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Any
arguments not raised by Appellant are waived. Id.
We have reviewed the Examiner’s rejection of claims 1–5 in light of
Appellant’s arguments that the Examiner has erred. Because we agree with
at least one of Appellant’s arguments pertaining to all of the claims, we
reverse the Examiner’s rejection of claims 1–5 as directed to patent
ineligible subject matter. In doing so, we take no position regarding whether
any of the claims are patentable under 35 U.S.C. §§ 102, 103, or 112. We
highlight the following for emphasis.
Rejections under 35 U.S.C. § 101
The Examiner finds claims 1–5 are patent ineligible because they are
“directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more.” Final Act. 3.
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Principles of law
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.”
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within a judicially excluded
category, we are guided by the Supreme Court's two-step framework
described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). Accordingly,
we first determine the concept to which the claim is directed. See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts that have been determined to be patent ineligible abstract
ideas include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Concepts that have been determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
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manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If a claim is “directed to” an abstract idea, we turn to the second step
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent eligible application.”
Alice, 573 U.S. at 221 (internal citation omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The PTO has published guidance on the application of § 101 to
patentability determinations. See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 PEG”). Under
step 1 of that guidance, we first determine whether the claim recites a
statutory class (i.e., a process, machine, manufacture, or composition of
matter). Id. at 53–54. If it does not, it is not patent eligible. If it does, we
next determine whether the claim recites:
Step 2A – 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).
Id. at 52, 54. If the claim does not recite a judicial exception, it is patent
eligible. Id. at 54. If it does, we next determine whether the claim recites:
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Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see Manual of
Patent Examining Procedure (MPEP) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08-2017 (Jan. 2018)).
84 Fed. Reg. at 54–55. If the claim integrates a judicial exception into a
practical application, it is patent eligible. Id. If it does not, we next
determine whether the claim recites:
Step 2B: additional elements beyond the judicial exception that
are more than “well-understood, routine, conventional”
elements in the field (see MPEP § 2106.05(d)).
Id. at 56. If the claim adds more than well-understood, routine, and
convention additional elements, it is patent eligible. Id. If it does not, it is
not patent eligible. Id.
2019 PEG Step 1
Under step 1 of the subject matter eligibility guidance, we first
determine whether the claims recite a statutory class (i.e., a process,
machine, manufacture, or composition of matter). Id. at 53–54. Claims 1–4
recite a process (i.e., a method for computer storage and access) and claim 5
recites a machine (i.e., a computer storage and access system having first,
second, and third data stores). See Appeal Br. 25–27 (Claims App.). Thus,
all of claims 1–5 recite a statutory class.
Accordingly, we next consider whether the claims recite judicial
exceptions under step 2A, prong one.
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2019 PEG Step 2A, prong one
Under step 2A, prong one of the eligibility guidance, we determine
whether a claim recites a judicial exception such as an abstract idea, law of
nature, or natural phenomenon. 84 Fed. Reg. at 54. To do so, we
(1) identify the limitations in the claim (either individually or in
combination) that recite an abstract idea, and (2) determine whether the
identified abstract idea falls within one of the subject matter groupings
consisting of (a) mathematical concepts (relationships, formulas, equations,
or calculations), (b) methods of organizing human activity (fundamental
economic practices, commercial or legal interactions, or managing behavior
or relationships), and (c) mental processes (concepts performed in the mind
such as observation, evaluation, judgment, and opinion). Id. at 52.
Claim 1 recites a method for computer storage and access of PII that
includes a plurality of PII fields. See Appeal Br. 25–26 (Claims App.). The
Examiner finds the claims recite one or more abstract ideas, including
“collecting information, analyzing it, and displaying certain results of the
collection and analysis.” Final Act. 3. Appellant argues the Examiner has
failed to establish a prima facie case of unpatentability, and has instead
provided “a laundry list of purported abstract ideas” without “equat[ing] any
of them with the subject matter of claims 1–4.” Appeal Br. 8. Appellant
further argues the Examiner erred by ignoring significant limitations in the
rejected claims that render them patent eligible, including storing “data pairs
. . . ‘without organization from which can be determined which data pairs
belong with which other data pairs,’” and maintaining a separate computer
store “to identify, from the unique codes in . . . returned data pairs, which PII
data belong with which other PII data for a given user.” Id. at 8–9.
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As discussed above, our analysis under step 2A, prong one asks
whether the claims recite judicially excepted abstract ideas. 84 Fed. Reg. at
54. Notwithstanding Appellant’s arguments to the contrary, we are
persuaded the Examiner has identified limitations in claim 1 that recite
judicially excepted abstract ideas such as “collecting information” (e.g., PII
data) and “using categories to organize, store, and transmit information”
(e.g., associating PII data with unique identifying codes to organize, store,
and transmit information). See Final Act. 3–4 (citing Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Cyberfone Systems,
LLC v. CNN Interactive Group, Inc., 558 Fed. App’x. 988 (Fed. Cir. 2014)).
As the 2019 PEG explains, because these limitations, under their broadest
reasonable interpretation, can be performed by people with only the aid of
pen and paper, they are abstract ideas that fall under the mental processes
category. See 84 Fed. Reg. at 52.
Accordingly, having determined claim 1 recites a plurality of judicial
exceptions in the form of mental processes (e.g., collecting, organizing, and
storing information), we next consider whether claim 1 recites additional
elements that integrate these judicial exceptions into a practical application.
84 Fed. Reg. at 54–55.
2019 PEG Step 2A, prong two
Under step 2A, prong two, a claim that recites a judicial exception is
not “directed to” that judicial exception if the claim as a whole “integrates
the recited judicial exception into a practical application of the exception.”
Id. at 54. This involves (a) identifying whether the claim recites elements in
addition to the judicial exceptions, and (b) determining whether these
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additional elements individually and in combination integrate the judicial
exceptions into a practical application. Id. at 54–55.
Additional elements integrate judicial exceptions into a practical
application when they (i) improve the functioning of a computer or some
other technology, (ii) effect a particular treatment or prophylaxis for a
disease or medical condition, (iii) implement or use the judicial exceptions
in conjunction with particular machines or manufactures that are integral to
the claim, (iv) transform or reduce a particular article to a different state or
thing, or (v) do more than merely link the judicial exceptions to a particular
technological environment. Id. at 55. Additional elements do not integrate
judicial exceptions into a practical application when they (i) merely include
instructions to implement the judicial exceptions on a computer, (ii) add
insignificant pre- or post-solution activity, or (iii) do no more than link the
judicial exceptions to a particular technological environment. Id.
The Examiner finds that although the claims recite additional
limitations, those limitations are not “sufficient to amount to significantly
more than the judicial exception[s] because the additional elements or
combinations of elements . . . amount to no more than a recitation of (A) a
generic computer structure[] that . . . merely links the abstract idea to a
particular technological environment” or (B) “well understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 4.
Appellant argues that claims 1–5 are patentable because they recite
additional elements that “represent improvements in the way computers
operate” and “specific steps providing advances in computer security,”
including “a method of storing and accessing PII data that improve[s]
security” and that is “more than a mere result.” Id. at 18–19 (citing Enfish
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LLC v. Microsoft Corp., 833 F.3d 1327 (Fed. Cir. 2016); quoting Finjan,
Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1305–06 (Fed. Cir. 2018).
We agree with Appellant. In addition to collecting PII, associating the
PII with unique identifiers, and storing the PII as PII-identifier pairs, claim 1
recites the additional limitation of “securing in a further separate computer
data store a data structure that associates with each said user the unique
identifying codes of the data pairs that comprise PII data for that user.”
Appeal Br. 25 (Claims App’x.). Claim 1 further recites receiving, in
response to querying the one or more data stores for PII, matching data pairs
that “comprise PII data for a plurality of users . . . without organization from
which can be determined which data pairs . . . for a given user belong to
which other data pairs for that same user.” Id. To determine the latter,
claim 1 recites utilizing the information stored in “the further separate
computer data store to identify, from the unique identifying codes in the
returned data pairs, which PII data for a given user . . . belongs to which
other PII data . . . for that same user.” Id.
Thus, claim 1 as a whole recites additional limitations that do more
than simply claim a computer security result. Instead, the additional
limitations integrate the recited mental process judicial exceptions (e.g.,
collecting, organizing, and transmitting information) into a practical
application that improves the way a computer can securely store and retrieve
sensitive PII. Because claim 1 integrates a judicial exception into a practical
application, as do claims 2–5, claims 1–5 are patent eligible. See 84 Fed.
Reg. at 54–55.
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CONCLUSION
The Examiner’s rejection of claims 1–5 as directed to unpatentable
subject matter is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References /
Basis
Affirmed Reversed
1–5 101 Eligibility 1–5

REVERSED