Ex Parte Ogilvie

Patent Trial and Appeal Board

Oct 11, 2017

11203732 (P.T.A.B. Oct. 11, 2017)

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.
11/203,732 08/15/2005 John W. Ogilvie 1384.2.25A 2193
23484 7590
John Ogilvie
2148 E. 11270 S.
Sandy, UT 84092
EXAMINER
LUBIN, VALERIE
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
10/13/2017 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 ohn @ Ogil vieLawFirm .com
j ohnw ogilvie @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN W. OGILVIE
Appeal 2016-0000991
Application 11/203,7322
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHELLE R. OSINSKI, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 6—11 and 22—35. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
May 21, 2015) and Reply Brief (“Reply Br.,” filed September 11, 2015), and
the Examiner’s Answer (“Ans.,” mailed September 3, 2015) and Final
Office Action (“Final Act.,” mailed March 6, 2015).
2 Appellant identifies the inventor, John W. Ogilvie, as the real party in
interest. App. Br. 1.
Appeal 2016-000099
Application 11/203,732
CLAIMED INVENTION
Appellant’s claimed invention relates to a method for managing
electronically stored confidential information (see Spec. 2,11. 2—6).
Claims 6, 25, and 31 are the independent claims on appeal. Claim 6,
reproduced below, is illustrative of the claimed subject matter:
6. A method, comprising the steps of:
viewing an interface of an electronic repository, the
interface containing prompts for entry of physical characteristic
descriptions and/or containing descriptions of physical
characteristics, the physical characteristics including at least two
of the following: gender, eye color, skin color, apparent race,
apparent ethnicity, age, age range, approximate age, approximate
height, height range, height, approximate weight, weight range,
weight, skin feature, handedness, wherein the electronic
repository is free of data fields that identify a person by name,
telephone number, residential address, employer, credit card
number, insurer-issued identification number, or government-
issued identification number;
entering a code into the interface; and
using a verification procedure based on a physical
characteristic description in a group characteristic description
and also based on the code to at least help in verifying that a
person to whom confidential information contained in the
repository may pertain is indeed the person to which that
confidential information does pertain.
REJECTION
Claims 6—11 and 22—35 are rejected under 35U.S.C. § 101 as directed
to non-statutory subject matter.
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Application 11/203,732
ANALYSIS
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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories., Inc., 132 S. Ct. 1289, 1300 (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 Corp.,
134 S. Ct. at 2355. The first step in that analysis is to determine whether the
claims at issue are directed to a patent-ineligible concept. Id. If the claims
are not directed to a patent-ineligible concept, e.g., an abstract idea, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “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.” Id.
(quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit
has instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1312
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Application 11/203,732
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner finds that independent claims 6, 25, and 31 are directed to
“verifying a person’s identity based on physical characteristics,” i.e., to an
abstract idea; that the claims do not amount to significantly more than the
abstract idea itself “such as not being an improvement to the functioning of a
computer itself’; and that the interface recited in the claims requires no more
than a generic computer to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
industry (Final Act. 2—3).
Appellant asserts that the Examiner’s rejection rests on the “mistaken
view that the only way to improve a computing system’s security is to run
verification software on the system” (App. Br. 6), and explains that the
claimed invention involves technology for using an entered code plus
physical characteristic descriptions to ensure that confidential information is
not disclosed to the wrong person {id. at 7). Appellant observes that the
Examiner has “correctly recognized as being new, useful, and nonobvious”
that this verification is accomplished using a data repository which does not
contain certain personal identifying information (‘PH’)” {id.). Yet to the
extent Appellant maintains that the claims are patent-eligible because the
claimed subject matter is allegedly novel and non-obvious, Appellant
misapprehends the controlling precedent.
Although the second step in the Mayo!Alice framework is termed a
search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for “an element or
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Application 11/203,732
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice Corp., 134 S. Ct. at 2355. A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible.
See Mayo, 132 S. Ct. at 1304. See also Diamond v. Diehr, 450 U.S. 175,
188—89 (1981) (“The ‘novelty’ of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within categories of possibly patentable subject
matter.”); Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (“[Ujnder the Mayo!Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility.”).
We also are not persuaded of Examiner error by Appellant’s argument
that the claimed invention improves the security functioning of the computer
(App. Br. 7; see also Reply Br. 3 4). Appellant asserts that by providing
verification without requiring the storage of PII data, the claimed invention
improves the computer system’s security because PII data, which are not
stored in the computer system’s repository cannot be stolen from that
repository or altered by improper access to the repository (App. Br. 7). Yet,
even accepting Appellant’s claims of enhanced security, there is a
fundamental difference between computer functionality improvements, on
the one hand, and uses of existing computers as tools to perform a particular
task, on the other. Indeed, the Federal Circuit applied this distinction in
Enfish, LLCv. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir. 2016) in rejecting
a § 101 challenge at the step one stage in the Alice analysis because the
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Application 11/203,732
claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not merely on asserted advances in the uses to which existing computer
capabilities could be put. Id. at 1335—36.
We find no parallel here between the pending claims and the claims at
issue in Enfish nor any comparable aspect in the present claims that
represents “an improvement to computer functionality.” The alleged
advantage that Appellant touts does not concern an improvement in
computer capabilities but instead relates to an alleged improvement in
managing electronically-stored confidential information for which a
computer is used as a tool in its ordinary capacity (see, e.g., Spec. 2 (“The
present invention provides tools and techniques which can help manage
electronically stored confidential information”)).
Appellant further asserts that the claims are “much narrower than
the basic concept [i.e., verifying a person’s identity based on physical
characteristics] asserted by the Examiner,” and that there are “many different
ways to verify a person’s identity without infringing Applicant’s claims”
(App. Br. 7—8; see also Reply Br. 5—7). Appellant, thus, ostensibly argues
that the claims are patent-eligible because they do not preempt the use of the
abstract idea. That argument is not persuasive.
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice Corp.,
134 S. Ct. at 2354. But, characterizing pre-emption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
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Application 11/203,732
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed.Cir.2015) (citing Alice Corp., 134 S. Ct.
at 2354). “[Preemption may signal patent ineligible subject matter, [but]
the absence of complete preemption does not demonstrate patent eligibility.”
Id.
We also are not persuaded of Examiner error by Appellant’s further
argument that the Examiner has failed to provide evidentiary support for the
Examiner’s finding that the functions required by the claims are “generic
computer functions” (App. Br. 8). We are aware of no controlling precedent
that requires the Office to provide factual evidence to support such a finding.
Nor, for that matter, does Appellant identify any such precedent.
The Examiner’s finding is, moreover, fully consistent with the
Specification. Far from requiring any specialized computer hardware or
other inventive computer components, the Specification explicitly discloses
that suitable software for providing the claimed functionality “can be readily
provided by those of skill in the pertinent art(s) using the teachings
presented here and programming languages and tools such as C++, C, Java,
Pascal, APIs, SDKs, SQL, SSL, HTTP, assembly, firmware, microcode,
and/or other programming languages and tools” and that “[s]uitable
hardware for running the software can be . . . general purpose hardware that
is configured by suitable software” (Spec. 21).
Appellant maintains that the claims “go well beyond generic
functionality” and that the Examiner ignores most of the claim limitations in
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Application 11/203,732
finding otherwise (Reply Br. 7). But, Appellant presents no persuasive
argument or technical reasoning to support that position. For example,
Appellant does not show how the claims are technically performed such that
they are not routine, conventional functions of a generic computer. And for
all the criticism of a lack of evidentiary support, Appellant puts forward no
rebuttal evidence to demonstrate that the functions required by the claims are
not routine and conventional functions of a generic computer.
Responding to the Examiner’s Answer and referencing the USPTO’s
“July 2015 Update: Subject Matter Eligibility,” Appellant argues that the
rejection under § 101 cannot be sustained because the Examiner failed, in
the Answer, to comply with the USPTO’s “July 2015 Update on Subject
Matter Eligibility” and more particularly, because the Examiner failed to
“cite any court case holding that this[, i.e., verifying a person’s identity
based on physical characteristics,] is an abstract idea, or any case holding
that a similar concept is an abstract idea” (Reply Br. 2—3). Appellant also
argues that the Examiner failed, in non-compliance with the July 2015
Update, to individually identify and analyze the additional claim elements
and explain why they do not amount to significantly more than the judicial
exception, which Appellant asserts is “an additional reason no prima facie
case was made” {id. at 3).3
3 The July 2015 Update instructs examiners to refer to the body of case law
precedent in order to identify abstract ideas by way of comparison to
concepts already found to be abstract {id. at 3), and explains that “[t]his
discussion is meant to . . . ensure that a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea” (id. ). Examiners also are instructed to
clearly articulate “the reason(s) why the claimed invention is not eligible, for
example[,] by providing a reasoned rationale that identifies the judicial
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Application 11/203,732
Putting aside whether Appellant has shown “good cause” under
37 C.F.R. § 41.41(b)(2) to present this new argument, we note that an
Examiner’s failure to follow the Director’s guidance is appealable only to
the extent that the Examiner has failed to follow the statutes or case law. To
the extent the Director’s guidance goes beyond the case law and is more
restrictive on the Examiner than the case law, the failure of the Examiner to
follow those added restrictions is a matter for petition to the Director. We
are aware of no controlling precedent, nor does Appellant identify any
controlling case law, that precludes an examiner from finding a claimed
concept patent-ineligible unless it is similar to a concept that a court has
identified as being patent-ineligible. There also is no requirement, whether
in the controlling case law or, for that matter, in the July 2015 Update, that
additional elements of the claims must be individually identified and
analyzed, as Appellant contends.
We also note here that the Federal Circuit has repeatedly observed
that “the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d.
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The court has, thus, held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
exception recited in the claim and why it is considered an exception, and that
identifies the additional elements in the claim (if any) and explains why they
do not amount to significantly more than the exception” (id. at 6).
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See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Appellant does not
maintain that the Examiner’s rejection under § 101 fails to satisfy the notice
requirements of § 132.
We are not persuaded on the present record that the Examiner erred in
rejecting claims 6—11 and 22—35 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 6—11 and 22—35 under 35 U.S.C.
§ 101 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)(l)(iv).
AFFIRMED
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