Ex Parte CHAPA et al

Patent Trial and Appeal Board

Jan 30, 2019

14481714 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/481,714 09/09/2014
20995 7590 02/01/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Isaac CHAPA
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.
EXP.830Pl 9142
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAAC CHAP A, STEVEN HATLEY, and JOE ROSS
Appeal2017-003691
Application 14/481,714 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify CSIDENTITY CORPORATION as the real party in
interest. Br. 3.
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THE INVENTION
Appellants' claims relate generally to computer processing and to
authentication systems and methods for on-demand products. (Spec. [0002]).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising, by a computer system:
receiving, from a requestor, a request for an on-demand identity
product in relation to an identity of a consumer, the request comprising
personally identifying information (PII) of the consumer;
executing, using the PII, a partial registration of the consumer for the
on-demand identity product, the partial registration omitting satisfaction of
at least one security requirement;
wherein the at least one security requirement comprises a requirement
that the requestor be authenticated as having an asserted identity;
determining whether delayed authentication is enabled for the on-
demand identity product;
responsive to a determination that delayed authentication is enabled
for the on-demand identity product:
conditionally suspending the at least one security requirement;
initiating provision of the on-demand identity product to the
requestor, the provision comprising processing data related to the
identity of the consumer; and
restricting the requestor' s access to determined sensitive data
resulting from the initiated provision at least until the at least one
security requirement is satisfied; and
before the at least one security requirement is satisfied, determining
whether electronic delivery of the on-demand identity product to the
requestor is successful based, at least in part, on an evaluation of one or
more stored product-delivery factors that are specific to a type of the on-
demand identity product;
wherein the determining whether electronic delivery of the on-demand
identity product to the requestor is successful comprises determining
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whether the consumer has been added to receive a service provided by a
computer system;
responsive to a determination that electronic delivery of the on-
demand identity product to the requestor is successful, automatically
electronically billing the requestor; and
responsive to a determination that electronic delivery of the on-demand
identity product to the requestor is not successful, automatically delaying
billing the requestor for the on-demand identity product at least until
successful electronic delivery of the on-demand identity product to the
requestor can be confirmed.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Middeljans
Dupray
Redlich
US 2002/0091544 Al
US 2009/0106846 Al
US 2009/0254572 Al
The following rejections are before us for review.
Claims 1-20 are rejected under 35 U.S.C. § 101.
July 11, 2002
Apr. 23, 2009
Oct. 8, 2009
Claims 1--4, 7-13 2 and 15-20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Dupray and in view of Middeljans.
Claims 5, 6, 14, and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Dupray, in view of Middeljans and in further view of
Redlich.
2 Although the Final Action and Answer do not list claim 13 in the specific
rejection, we note it is still pending and its not being listed in the rejection is
considered an inadvertent mistake.
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FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 2-5 of the
Final Action and on pages 2--4 of the Answer concerning only the rejection
made under 35 U.S.C. § 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1-20 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." 35 U.S.C. § 101.
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. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an 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)). In accordance with that framework,
we first determine what concept the claim is "directed to." 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
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in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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 (quotation marks 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 recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("2019 Memorandum"). 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
interactions such as a fundamental economic practice, or mental processes);
and
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(2) additional elements that integrate the judicial exception into a
practical application, i.e., that "apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." 2019 Memorandum at 18; see also 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, do we then look 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
(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 2019 Memorandum.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
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in relevant technology or on a process that itself qualifies as an "abstract
idea" for which computers are invoked merely as a tool. See id. at 1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim "appl[ies ],
rel[ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." See January
2019 Memorandum.
The Examiner found that the claims are "directed to determining
whether delayed authentication is enabled which is a mental step that merely
comprises the comparison of inputs with rules to make the determination and
an abstract idea." (Final Act. 2). We agree that the claims are directed to a
mental process i.e., responding to a request for an on-demand product by
determining whether delayed authentication is enabled, a concept of
delaying action performed in the human mind. That is, we find the steps:
• determining whether delayed authentication is enabled for the on-
demand identity product;
• conditionally suspending the at least one security requirement;
initiating provision of the on-demand identity product to the requestor,
the provision comprising processing data related to the identity of the
consumer;
• restricting the requestor's access to determined sensitive data resulting
from the initiated provision at least until the at least one security
requirement is satisfied;
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• restricting the requestor's access to determined sensitive data resulting
from the initiated provision at least until the at least one security
requirement is satisfied; and
• determining whether electronic delivery of the on-demand identity
product to the requestor is successful based, at least in part, on an
evaluation of one or more stored product-delivery factors that are
specific to a type of the on-demand identity product;
constitute "analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). In addition, the claims
are directed to a commercial transaction which is more broadly a method of
organizing human activity. Thus, we agree with the Examiner's findings
that the claims recite a judicial exception of at least a mental process;
additionally we find the claims are also directed to a fundamental economic
principle by virtue of the underlying claimed transaction.
Turning to the second prong of the "directed to" test, claim 1 merely
requires a "computer system" and recites it only in the preamble, not even
subsequently incorporated into the body of the claim. We fail to see how
this single recitation of a computer system so integrates the judicial
exception as to "impose a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." 2019 Memorandum at 18.
Thus, we find that the claims recite the judicial exceptions of a mental
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process and a fundamental economic principle.
That the claims do not preempt all forms of the abstraction or may be
limited to an on demand product, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
("And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements that sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs., 566 U.S.
at 72-73).
Concerning this step the Examiner found,
Generic processors/ computing systems routinely
provide data access by displaying the data. These
are well-known, routine and conventional practices
that require no more than a generic computer to
perform generic computer functions. (Please refer
to July 2015 Update: Subject Matter Eligibility;
page 7 for a listing of computer functions found by
the courts to be well-understood, routine and
conventional.)
(Final Act. 3). We agree with the Examiner. "[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
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implement the abstract idea ... on a generic computer." Alice, 134 S. Ct.
at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and affect an
IF /THEN result amounts to electronic data query and retrieval----one of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d 1354; see also In re Katz
Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). In short, each
step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
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2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access and determination under different scenarios.
See, e.g., Spec. ,r,r 13, 14, 22.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea of information access using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
We have reviewed all the arguments (Br. 7-16) Appellants have
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
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Appellants argue, the Examiner "has not established a prima facie
case of the claims being directed to non-statutory subject matter under
35 U.S.C. § 101." (Br. 8).
We disagree with Appellants. To the extent Appellants argue that the
Examiner erred in adequately supporting this determination by not providing
evidence, we are unpersuaded. In this regard, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
Manual of Patent Examining Procedure§ 2106.07(a)(III) (2018) ("The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Thus, the court does not require 'evidence'
that a claimed concept is a judicial exception, and generally decides the legal
conclusion of eligibility without resolving any factual issues." (citations
omitted.))
All that is required of the USPTO to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132; see also In re Jung, 637
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F.3d 1356, 1363 (Fed. Cir. 2011) (declining "to impose a heightened burden
on examiners beyond the notice requirement of§ 132"). Here, as we found
above, the Examiner has made these findings as required by the statute. See
Final Act. 2----4.
Specifically, in rejecting the pending claims under§ 101, the
Examiner notified Appellants that the claims are broadly "directed to
determining whether delayed authentication is enabled" (Final Act. 2), and
that "[t]he claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial exception" (id. at
3). For the reasons identified above, we determine there are no deficiencies
in the Examiner's primafacie case of patent ineligibility of the rejected
claims based on the record before us.
Concerning Appellants' contention that "such nonprecedential
opinions [ as SmartGene] should not be cited, considered, or regarded as
precedent within the U.S. Patent and Trademark Office" (Br. 8),
we note that the November 2, 2016 Memorandum does not expressly
prohibit reliance on non-precedential decisions, but on page 4 only states,
"examiners should avoid" "relying upon or citing" them. See Robert W.
Bahr, Recent Subject Matter Eligibility Decisions, USPTO 1-4 (2016),
https://www. uspto. gov/ sites/ default/files/ documents/Mc Ro-Bascom-
Memo. pdf. Notwithstanding, our Decision above cites to the precedential
decision of Elec. Power Grp. in support of data collection, analysis, and
display being abstract ideas.
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Appellants argue that "[t]he claimed embodiments address a technical
problem specifically arising out of how to automatically bill for on-demand
products, i.e., products that are provided in real-time or in near real-time."
(Br. 9).
We disagree with Appellants that the problem solved is a technical
problem. In fact, the problem addressed is one of avoidance of legal
implications in billing practices involving "consumer protection laws and
regulations." Spec. i-f4. That fact that the product purchased is said to be
deliverable in real time, e.g., in a particular technological environment, does
not make a claim less abstract. See Alice Corp., 134 S. Ct. at 2358.
Appellants further argue, "[t]he present claims address this problem
by leveraging technology to delay authentication and specify and evaluate
stored product-delivery factors, configurable for particular on-demand
products." (Br. 11, 14).
We disagree with Appellants that the claims reflect technology
sufficient to support its contention that the claims leverage technology. As
found above, representative claim 1 at best requires a "computer system"
which is only recited in the preamble, and therefore claim 1 is devoid of any
device which could support an ordered combination of computer
components contention.
Likewise we fail to see the similarities asserted by Appellants (Br. 14--
15) between the claims on appeal here and those adjudicated in DDR
Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). Br.
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16-17. In DDR Holdings, the Court evaluated the eligibility of claims
"address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host's website after
'clicking' on an advertisement and activating a hyperlink." Id. at 1257.
There, the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to
resolve a problem that had no "pre-Internet analog." Id. at 1258.
Claim 1 at best requires a "computer system" which is only recited in the
preamble. Thus, there can be no comparison to the claimed hyperlink
computer feature in DDR and any such claimed feature in claim 1 before us,
because there simply is none.
35 U.S.C. § 103(a) REJECTION
Each of claims 1, 10, and 19 requires in pertinent part,
before the at least one security requirement is satisfied, determining
whether electronic delivery of the on-demand identity product to the
requestor is successful based, at least in part, on an evaluation of one or
more stored product-delivery factors that are specific to a type of the on-
demand identity product.
The Examiner, citing to paragraphs 117 and 118 of Dupray, takes the
position that "claim language appears to define the determining process ( and
thus the evaluation of stored product-delivery factors) as determining
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whether the consumer has been added to receive a service provided by a
computer system." (Answer 4).
Appellants argue,
(Br. 18).
Even if the "on-demand identity product" of claim
1 is assumed, solely for the sake of argument, to be
met by Dupray' s "identity theft detection
services", Dupray does not disclose evaluating
"the predetermined time" as part of a
determination whether electronic delivery of
Dupray's "identity theft detection services" is
successful as required by claim 1. Again, the
Examiner does not identify what "evaluation" with
regard to electronic delivery is believed to
occurred, and Appellant is unable to identify such
an evaluation in the disclosure of Dupray.
We agree with Appellants. Our review of Dupray at paragraphs 117
and 118 reveals that at paragraph 11 7 Dupray at best discloses:
The provisional client may be given notifications
such as whether the present identity theft detention
and mitigation system/ service detects a likelihood
of identity theft, and, e.g., variations in the
provisional client's name, address, etc. found in
publicly available databases.
Dupray ,r 117.
The Specification describes product-delivery factors in terms of "for a
non-credit product, the delayed-billing settings 212 may require, as a
delivery-verification factor, that the consumer has been successfully added
to receive a service such as, for example, an identity-monitoring service,
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coordinated by the fulfillment module 214(1 )." Spec. ,r 55. But, it is not
apparent and the Examiner does not explain how the notification detecting a
likelihood of identity theft, and, e.g., variations in the provisional client's
name, address, etc. found in publicly available databases translates to
meeting the claimed, an evaluation of one or more stored product-delivery
factors that are specific to a type of the on-demand identity product. At
best, Dupray discloses notification which does give a publicly known name
and address, but nothing is disclosed about this data being used as a factor to
evaluate the factor specific to a type of the on-demand identity product.
Therefore we do not sustain the rejection of independent claims 1, 10,
and 19. Since claims 2-9, 11-18, and 20 depend from claims 1, 10, and 19,
and since we cannot sustain the rejection of independent claims 1, 10, and
19, the rejection of the dependent claims 2-9, 11-18, and 20 likewise cannot
be sustained. We note that the additional reference to Redlich fails to cure
the deficiency noted above concerning Dupray as applied to claims 5, 6, 14,
and 15.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-20 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1-20 under 35
U.S.C. § 103.
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DECISION
The decision of the Examiner to reject claims 1-20 is affirmed.
AFFIRMED
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