Igor Bilogrevic et al.

Patent Trials and Appeals Board

Sep 30, 2019

14308639 - (D) (P.T.A.B. Sep. 30, 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.
14/308,639 06/18/2014 Igor Bilogrevic PARC-20131107US01 2851
35699 7590 09/30/2019
PVF -- PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
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):
sy_incoming@parklegal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte IGOR BILOGREVIC, JULIEN F. FREUDIGER,
EMILIANO DE CRISTOFARO, and ERSIN UZUN1
________________

Appeal 2018-007376
Application 14/308,639
Technology Center 3600
________________

Before DEBRA K. STEPHENS, JASON V. MORGAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Palo Alto
Research Center Incorporated. Appeal Br. 1.
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Application 14/308,639

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Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20. This appeal is related to Appeal No. 2018-007377
(App. No. 14/308,629), as evidenced by both applications having the same
inventors, the same Appellant and real party-in-interest, the same Examiner,
the same filing date, the same filing dates for the notice of appeal and the
appeal briefs, the same figures, similar disclosures (with many identical
paragraphs), similar claims, similar rejections, and similar arguments.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Summary of the disclosure
The Specification discloses “a system for privacy-preserving
aggregation of encrypted data.” Abstract.
Representative claim
1. A computer-executable method for access control
using encrypted data, comprising:
obtaining, by a server, data indicating a first probability
distribution associated with a behavior of a user;
receiving, from a device associated with the user, at least
a first encrypted set of numerical values and a second encrypted
set of corresponding square values of the set of numerical
values, wherein the numerical values are associated with
behavior data of the user;

2 Appellant and Appellant’s counsel are reminded of their duty to inform the
Board of related appeals. See 37 C.F.R. 41.37(c)(l)(ii). This duty was not
fulfilled in this appeal. See App. Br. 2 (asserting “Appellant is not aware of
any appeals or interferences that will affect directly, will be affected directly
by, or will otherwise have bearing on the decision in this appeal”); see also
Reply Br. 4.
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computing a mean and a variance of a second probability
distribution based on the encrypted values;
determining that a similarity between the first probability
distribution and the second probability distribution exceeds a
predetermined threshold; and
granting the user access to a resource.
Rejection
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4–17.
ANALYSIS
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014). The Supreme Court has set forth a framework for distinguishing
patents with claims directed to these implicit exceptions “from those that
claim patent-eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
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“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016)).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 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 activity such as a fundamental economic
practice, or mental processes) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Memorandum, 84 Fed. Reg. at 52–55.
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:
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(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 Memorandum, 84 Fed. Reg. at 56.
Memorandum step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that claim 1, in reciting
computing means and variance values and subsequently
computing probability density functions based on those values[,]
is no different than calculating pure binary numbers from binary
coded decimal numbers or alarm limits such as all are simply
mathematical algorithms and any patent granted would be
nothing more than a patent on the algorithm itself.
Final Act. 5 (citing Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v.
Flook, 437 U.S. 584 (1978)). The Examiner’s determination is supported by
the recitations of claim 1 which include obtaining data indicating a first
probability distribution, receiving a first encrypted set of numerical values
and a second encrypted set of corresponding square values of the set of
numerical values, computing a mean and a variance of a second probability
distribution based on the encrypted values, and determining that a similarity
between the first probability distribution and the second probability
distribution exceeds a predetermined threshold. These limitations recite
mathematical concepts—one of the categories of abstract ideas identified in
recent USPTO Guidance. See Memorandum, 84 Fed. Reg. at 52.
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Furthermore, the recitation of granting the user access to a resource
itself is a recitation of a certain method of organizing human activity (e.g.,
enforcing a degree of control over a resource) that represents an abstract
idea. See, e.g., Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014,
1017 (Fed. Cir. 2017) (citing In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)). “Adding one abstract
idea . . . to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLC v. Nintendo Co. Ltd., 855 F.3d 1322, 1327 (Fed. Cir.
2017). Therefore, we agree with the Examiner that claim 1 recites an
abstract idea.
Memorandum step 2A, prong two
Appellant argues the invention of claim 1 “is necessarily rooted in
computer technology and not directed to an abstract idea because the
functions of the access control server, the encryption technology, and the
access control capabilities all require a computer to execute.” Appeal Br. 15
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)). Appellant also argues “without the use of computers[,] humans
cannot interact via a computer network to request access and grant access to
resources.” Id.
The Examiner determines that “[w]ith regard to the granting of access
to a resource in the final limitation of the claim this would appear to be
nothing more than bolting on a generic action to the remainder of the claim
in order to avoid a finding that the claim is directed towards an abstract idea
by adding post-solution activity.” Ans. 5. In response, Appellant argues
claim 1 is “directed to determining users’ behavioral profile from already
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encrypted data. Granting a customer access to that profile is an essential
aspect of the invention.” Reply Br. 14.
Appellant’s arguments are unpersuasive because the key feature on
which Appellant relies, granting the user access to a resource—itself an
abstract idea (see Prism Techs., 696 Fed. App’x at 1017)—is nearly wholly
unconnected with the mathematical concepts embodied in the other
recitations. That is, although there is a nominal connection between the user
who is being granted access to a resource and the mathematical recitations
that operate on data associated with behavior of the user, or data derived
therefrom, the recitations do not evince how performance of the
mathematical operations affects whether the user is granted access to the
resource. This disconnect between the access granting recitation and the
mathematical recitations is in sharp contrast with the patent-eligible method
of Diehr, which plainly connected the opening of a press and the
mathematical operations that triggered the opening. Diamond v. Diehr, 450
U.S. 175, 181 n.5 (1981) (reciting “opening the press automatically when a
said comparison indicates equivalence” (emphasis added)). Therefore, the
rote juxtaposition of mathematical operation recitations with the access
granting recitation fails to integrate the recited abstract ideas into a practical
application. See Memorandum, 84 Fed. Reg. at 55.
Appellant argues claim 1 is patent-eligible because it is directed to
“improvements in computing capabilities, which include[] preserving the
privacy of user data while determining to grant access to a resource.” Appeal
Br. 13 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016); see also Spec. ¶ 38); see also Reply Br. 8–12. These recitations,
however, generally link the underlying abstract idea to a particular
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technological environment rather than integrate it into a practical
application. Memorandum, 84 Fed Reg. at 55.
Appellant also argues “[e]ncryption technologies require computer
processing power that . . . human beings are incapable of providing.” Appeal
Br. 15. No particular encryption technologies, however, are recited in
claim 1. Rather, the claim is broad enough to encompass simple encryption
techniques that, “with the exception of generic computer-implemented steps
. . . [could be] performed by a human, mentally or with pen and paper.”
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011)).
For these reasons, based on Appellant’s arguments and our review of
the record, we determine that claim 1 fails to integrate the underlying
abstract idea into a practical application.
Memorandum step 2B
The Examiner makes further determinations directed to showing that
the additional recitations of claim 1 fail to make the claim significantly more
than the underlying abstract idea. See Ans. 6–7. Appellant contends the
Examiner erred because claim 1 “purposefully arranges components in a
distributed architecture to achieve a technical solution to a technical problem
of determining whether to grant access using encrypted data, which is a
problem specific to computer networks.” Appeal Br. 17; see also Reply Br.
13. Similarly, Appellant argues that “an inventive concept can be found in
the installation of an access control tool at a server, remote from users
operating client computers, with customized access control specific to each
user operating a respective client device.” Appeal Br. 19.
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As noted above, the recitation of granting a user access to a resource
is insufficiently connected to the rest of the claim. As such, Appellant’s
narrow characterization of the purported inventive concept is not supported
by the claim recitations. Therefore, the access granting recitation fails to
evince that claim 1 contains a patent-eligible inventive concept.
Furthermore, the other additional recitations relate to generic
computer technologies, as evidenced by the broad, generic disclosures in the
Specification. See, e.g., Spec. ¶¶ 124–29, Figs. 7–8. Therefore, we agree
with the Examiner that the additional recitations fail to transform the
underlying abstract idea of claim 1 into a patent-eligible subject matter. Ans.
6–7.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and claims 2–4 and 7–18, which Appellant does not timely argue
separately.
Dependent claims
Appellant further argues dependent claims 5 and 6 recite additional
limitations that amount to significantly more than the underlying abstract
idea. Appeal Br. 27; see also Reply Br. 15. These dependent claims,
however, merely provide expressions for mean and variance computations.
We are unable to discern how these expressions make the subject matter of
claims 5 and 6 patent-eligible.
Appellant argues claim 19 recites an application programming
interface, and “[h]umans without the use of computers do not have
application programming interfaces.” Appeal Br. 28; see also Reply Br. 16–
17. Application programming interfaces, however, are merely generic
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computer technologies. Reciting an application programming interface fails
to transform the underlying abstract idea into a patent-eligible invention.
Appellant argues claim 20 includes recitations that “confine the
alleged abstract idea to a particular, practical application” because the
“combination of limitations is not well understood, routine, or conventional
activity.” Appeal Br. 29; see also Reply Br. 17. Claim 20, however, merely
recites steps that include generating a profile based on a plurality of
attribute values, generating an encrypted set based on the plurality of
attribute values with added noise, and sending the encrypted set to a server.
We are unable to discern how collecting data, obfuscating it somewhat with
noise, and communicating the obfuscated data—expressed at the high-levels
of generality found in the recitations of claim 20—suffices to integrate the
abstract idea of independent claim 1 (from which claim 20 depends) into a
practical application or otherwise transforms the abstract idea of independent
claim 1 into patent-eligible subject matter.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 5, 6, and 20.
DECISION
Claims Rejected Basis Affirmed Reversed
1–20 § 101 1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED