Ex Parte Williams et al

Patent Trial and Appeal Board

Jun 18, 2018

13386546 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/386,546 03/30/2012
132265 7590 06/20/2018
Kilpatrick Townsend & Stockton LLP/Equifax, Inc.
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309-4528
Jeffrey B. Williams
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.
096923-0829666 3220
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY B. WILLIAMS and ALLAN CAMAISA 1
Appeal 2016-006657
Application 13/3 86,546
Technology Center 3600
Before ROBERT E. NAPPI, TERRENCE W. McMILLIN, and
ALEX S. YAP, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1 through 19 and 21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Anakam Inc, a
subsidiary of Equifax Inc. App. Br. 1.
Appeal 2016-006657
Application 13/386,546
INVENTION
Appellants' disclosed invention is directed to remotely confirming the
identity of an individual with a high level of confidence. Specification,
0006. Claim 1 is representative of the invention and reproduced below.
1. A method of real-time remote identity proofing a user, the
method comprising:
querying, by a network device, data sets, wherein the
network device queries the data sets using biographic data
received through a web interface from the user located remotely
from the network device;
assembling, based on at least one result receiving in
respond to querying the data sets, government-issued
identification cards associated with the user, financial accounts
associated with the user, and telephone numbers associated with
the user;
generating, by the network device, a list of types of the
government-issued identification cards associated with the user
and a government-issued identification card interface for
receiving a number for a government-issued identification card
that is the same type as the type selected by the user from the list
of the types of the government issued identification cards
associated with the user;
generating, by the network device, a list of types of the
financial accounts associated with the user and a financial
accounts interface for receiving a number for a financial account
that is the same type as the type selected by the user from the list
of the types of the financial accounts associated with the user;
generating, by the network device, a list of partially-
obscured telephone numbers that includes at least one partially-
obscured telephone number corresponding to a telephone
number associated with the user and at least one dummy
partially-obscured telephone number that does not correspond to
any telephone numbers associated with the user; and
responsive to receiving via a network a selection by the
user of the at least one partially-obscured telephone number,
(i) placing, by the network device, a call to the user at the
telephone number associated with the user and corresponding to
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the at least one partially obscured telephone number;
(ii) generating, by the network device, an interface that
includes an identity-proofing transaction number for the user;
and
(iii) transmitting, by the network device, a prompt to the
user to enter the identity-proofing transaction number from the
user via a telephone network.
REJECTIONS AT ISSUE2
The Examiner has rejected claims 1 through 19 and 21 under
35 U.S.C. § 112(b ), as being indefinite. 3 Final Act. 4--5. Answer 2.
The Examiner has rejected claims 1 through 19 and 21 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 5-6. Answer 2.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's rejection under 35 U.S.C. § 112 or under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112(b)
2 Throughout this Decision we refer to the Appeal Brief filed October 21,
2015, Reply Brief filed June 21, 2016, Final Office Action mailed April 2,
2015, Appellants' Specification submitted January 23, 2012, and the
Examiner's Answer mailed April 21, 2016.
3 The Examiner identifies that the rejection in the Final Action inadvertently
included canceled claim 20 and did not include claim 21. Answer 2
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Appellants argue the Examiner's rejection of independent claims 1, 7
and 14 as being ambiguous is in error because, when interpreted in light of
the specification, the claims are clear. Appeal Br. 8-9. Specifically,
Appellants argue that the specification discusses assembling all "available
government issued identify information" and that the skilled artisan would
ascertain that the limitation of "assembling ... government issue
identification cards" involves assembling information from these
government issued identified cards. Appeal Br. 9.
We are not persuaded of error in the Examiner's rejection by
Appellants' argument. The Examiner states:
The claim limitation at issue could reasonably be interpreted in
several different ways and involve a myriad of modalities ...
using a human being to 'assemble' the various ID cards in a
situation where a person applies for authentication services is just
one example of a reasonable interpretation. Rather than
providing a simple fix to clarify the claim and solve the problem
of multiple interpretations, Appellant wants to maintain a broad
limitation capable of multiple interpretations.
Answer 2-3. We concur with the Examiner that the claim limitation is
ambiguous and could be reasonable interpreted in several manners. The
limitation could be interpreted as: merely an assembling of government
issued identification cards; collecting required parts to create the cards;
creating a group of cards; or, as Appellants assert, requiring obtaining
information from the cards. These four interpretations are very different
concepts and not merely narrower or broader versions of the same concept.
They do not all require obtaining information from the cards. "[I]f a claim is
amenable to two or more plausible claims constructions, the USPTO is
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justified in requiring the application to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under
35 U.S.C. § 112 second paragraph." Ex Parte Miyazaki, 89 USPQ2d 1207,
1211 (BPAI 2008) (precedential); see also Ex Parte McAward, 2017 WL
3669566 (PTAB 2017) (precedential). Thus, we disagree with Appellants'
assertion that the multiple interpretations are directed to a breadth issue not
an indefiniteness issue. Reply Brief 2. For these reasons, we affirm this
rejection of all pending claims.
Rejection under 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in§ 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must consider "the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
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application." Id. (citing Mayo, 566 U.S. at 78-80). The claim must contain
elements or a combination of elements that are "'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself."' Id. (citing Mayo, 566 U.S. at 72-73).
The Supreme Court sets forth a two-part "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355.
First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [Mayo, 566 U.S. at
76-77]. If so, we then ask, "[ w ]hat else is there in the claims before
us?" Id., at [77-78]. To answer that question, we consider the elements of
each claim both individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the claim" into a
patent-eligible application. Id., at [77-78]. We have described step two of
this analysis as a search for an "'inventive concept"'-i.e., an element or
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." Id., at [71-73].
Id.
Appellants argue, on pages 11 through 13 and 16 through 20 of the
Appeal Brief and pages 3 through 7, 11 and 12 of the Reply Brief, that the
Examiner has not established the claims are directed to an abstract idea.
Appellants argue that the Examiner has failed to provide an explanation as to
how the claims constitute an abstract idea. App. Br. 12-13, Reply Br. 4--
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12.4 Further, Appellants cite to a recent decision Board decision, and argue
that current claims are similar to claims held to be non-abstract. App. Br.
17-20 ( citing T.Rowe Price Inv. Services, Inc. v. Secure Axcess LLC.,
CBM2015-00027, Paper 9, 20-31 (PTAB June. 22, 2015)).
The Examiner provides a detailed response to Appellants' arguments
on pages 3 through 10 of the Answer, providing a rationale to support the
finding that the claims are directed to an abstract idea. Specifically, the
Examiner finds that the steps of assembling and the three generating steps
are steps of collecting data and compiling data. Answer 5-6. Further, the
Examiner finds the step of querying is also a step of storing and transmitting
information, which is similar to concepts identified by the courts as abstract.
Answer 6 (citing 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014); SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. App'x 950, 954 (Fed. Cir. 2014)
(non-precedential); Cyberfone Sys., LLC v. CNN Interactive Grp., 558 Fed.
Appx. 988 (Fed. Cir. 2014); and Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc. 758 F.3d 1344 (Fed Cir. 2014)).
We concur with the Examiner that these limitations are directed to
steps of collecting, compiling, storing, and transmitting information and are
similar to steps held by the courts to recite abstract ideas. These limitations
4 Appellants' arguments, on pages 4 through 6 of the Reply Brief, asserting
that, because the Examiner's Answer makes new findings, the rejection
should be reversed is not persuasive of error. Whether the Examiner made
new findings, and as such made a new rejection, relates to a petitionable
matter and not an appealable matter. See 37 C.F.R. §4I.40(a). Appellants
failed to timely file such a petition and therefore have waived the argument
that the rejection must be designated as a new ground of rejection. See 37
C.F.R. §41.40(a).
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are also similar to those at considered to be abstract by the court in Electric
Power Group, 830 F.3d at 1354 (holding that claims directed to a process of
gathering and analyzing information of a specific content are directed to an
abstract idea) and Content Extraction and Transmission LLC. v. Wells Fargo
Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that the
claims were "drawn to the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory."). In Electric Power Group, the court stated "we have treated
collecting information including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Id. at 1353. Further, the court stated that "merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as a identifying a particular tool for presentation), is abstract as
an ancillary part of such collection and analysis." Id. at 1354.
The Examiner finds that the limitations directed to: receiving a
selection of a partially obscured telephone number, placing a call to the
selected number, generating a transaction number, and transmitting a prompt
to enter the transaction number are directed to basic and ubiquitous forums
of a typical challenge/response type interaction. Answer 6-7 ( citing
examples of a school verifying a student's absence note). Further, the
Examiner also finds that supplementing the verification and authentication
challenge of a person's identity with other information is a concept that has
been long established in human intercourse. Answer 6-7.
We concur with the Examiner that the limitations to receiving a
selection of a partially obscured telephone number, placing a call to the
selected number, generating an interface that includes an identity-proofing
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transaction number, and transmitting a prompt to enter the transaction
number all represent an abstract idea. These limitations represent activities
of human interaction, which are being facilitated via technology.
Organizing human activities has been considered to be an abstract idea and
use of computer and technology does not amount to significantly more.
"Because they [computers] are the basic tools of modem-day commercial
and social interaction, their use should in general remain "free to all men and
reserved exclusively to none," Ultramercial Inc. v. Hulu 772 F3d 709, 723
(2014) (Meyer concurring) (citing Funk Bros. Seed Co. v. Kala Inoculant
Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948); and Alice, 134
S.Ct. at 2354). That some of the information is redacted (partially obscuring
phone number) or that the password for the challenge/response (identify-
proofing transaction number) is communicated via a different
communication session/modalities (i.e., to user by network from user via
telephone) does not make the interaction any less abstract. Use of passwords
in a challenge/response is the nature of the challenge response concept. To
use different communication session/modalities for the password is also well
known (i.e. inform a user of a password in a communication separate from
the communication they are using it in for authentication) and it would be
pointless to have it in the same communication session modality.
Further, Appellants' arguments comparing the claims on appeal with
those discussed in the Board's decision in T.Rowe Price Inv., on pages 16
through 20 of the Appeal Brief, are not persuasive of error. The decision in
that case is not precedential and as such not binding on this proceeding.
Also there are significant difference between the claims at issue in that case
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and the claims under appeal. Thus, Appellants have not persuaded us the
Examiner erred in concluding the claims are directed to an abstract idea.
Appellants argue on pages 13 through 16 of the Appeal Brief that the
Examiner has not explained why the claims do not amount to significantly
more. Appellants assert on pages 20 through 22 of the Appeal Brief that the
claims do recite significantly more as they are directed to identity proofing a
remote user which is a technical field of authenticating a user that access a
computer network. Appellants assert this is a problem arising from the use
of a data network and as such the claims recite significantly more than an
abstract idea. Appeal Br. 21.
The Examiner provides a comprehensive response to these arguments
on pages 7 through 9 of the Answer. The Examiner finds that the Appellants
have "merely made use of modem communications systems via computer
networks to provide the supplemental information channels commonly used
in identity proofing." Answer 8. As such, the Examiner concludes that the
claims do not recite significantly more than the abstract concept.
We have reviewed the Examiner's response and concur with the
Examiner that representative claim 1 does not recite significantly more than
the abstract idea discussed above. Appellants' arguments that the claims are
directed to identity proofing a remote user which is a technical field of
authenticating a user are not persuasive. The preamble of claim 1 recites,
"remote identity proofing a user." However, the remainder of the claim
recites steps which involve gathering data and do not recite any process by
which the authentication of the user is performed (i.e., there is no step(s)
which recites using the gathered data to prove the identity of the user).
Thus, we do not consider the mere recitation in the preamble of identity
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proofing a user, to be sufficient to demonstrate that the claim is reciting
something more than an abstract idea. 5
Additionally, Appellants argue that the lack of a novelty or
obviousness rejection demonstrates that the claims recite more than an
abstract idea. Appeal Br. 22-24. We are not persuaded of error by these
arguments. The question in step two of the Alice framework is not whether
an additional feature is novel but whether the implementation of the abstract
idea involves "more than [the] performance of 'well-understood, routine,
[and] conventional activities previously known to the industry."' Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). A
finding of novelty or non-obviousness does not necessarily lead to the
conclusion that subject matter is patentable eligible. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S.
Ct. 2107, 2117 (2013). Thus, Appellants' arguments have not persuaded us
of error in the Examiner's rejection of claim 1 as reciting patent patent-
ineligible subject matter. Accordingly we sustain the Examiner's rejection
of claim 1, and claims 2 through 19 grouped with claim 1, under
35 U.S.C. § 101.
Appellants separately argue that claim 21 amounts to significantly
more than an abstract idea as it recites generating a list of partially obscured
telephone numbers for a user to select by a user interface. Appeal Br. 24--
5 Our reviewing court has said "[p ]reamble language that merely states the
purpose or intended use of an invention is generally not treated as limiting
the scope of the claim." Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952
(Fed. Cir. 2006).
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25. Specifically, Appellants argue that that the claim recites the use of an
interface, which is rooted in computer technology and as such the claim
recites significantly more than the abstract concept. Appeal Br. 25.
We are not persuaded of error by this argument. Our reviewing court
has held that the use of a user interface does not transform an abstract idea
into something more. FairWarning IP v. Iatric Sys. Inc., 839 F.3d 1089,
1096 (Fed. Cir. 2016) ("the use of generic computer elements like a
microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter.") (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). Thus, we
sustain the Examiner's rejection of claim 21 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1 through 19 and 21
under 35 U.S.C. § 112(b) and 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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