Muhtar B. Akbulut et al.

Patent Trials and Appeals Board

Sep 20, 2019

15040208 - (D) (P.T.A.B. Sep. 20, 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.
15/040,208 02/10/2016 Muhtar B. Akbulut AUS920150450US1 4371
106325 7590 09/20/2019
IBM Corp. - Fishkill Drafting Center
11501 Burnet Road
Austin, TX 78758
EXAMINER
OBISESAN, AUGUSTINE KUNLE
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/20/2019 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):
fdciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MUHTAR B. AKBULUT, MARIO A. MALDARI, and
DAVID D. TAIEB
____________________

Appeal 2018-009200
Application 15/040,2081
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants’ Brief (“App. Br.”) identifies Int’l Business Machines Corp. as
the real party in interest. App. Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter generally relates to “electronic data
storage, and more particularly to managing data privacy in data storage
systems.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for providing electronic image security on a
mobile device, comprising:
identifying one or more data elements, in a first electronic
image, having at least one feature, comprising at least one pixel
region of the first electronic image, matching a predefined
exclusion feature;
designating the first electronic image for exclusion from a
backup operation based on the identification;
detecting existing backups of the first electronic image on
a server; and
removing all the existing backups of the first electronic
image from the server based on the designating.
App. Br. 24 (Claims App’x).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Bodlaender et al.
McInerney et al.
Min et al.
WO 2006/011067 A2
US 2008/0307333 A1
US 2014/0181012 A1
Feb. 2, 2006
Dec. 11, 2008
June 26, 2014
Chakra et al. US 2014/0189803 Al July 3, 2014
Yunsi CN20151632686 20150929 Jan. 20, 2016

REJECTIONS
Claims 1–10 and 12–20 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more. Final Act. 4.
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Claims 1–4, 11–15, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Min, Bodlaender and McInerney. Final Act. 5–14.
Claims 5–10, and 16–19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Min, Bodlaender, McInerney and Chakra. Final
Act. 14–18.
Claim 5 also stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Min, Bodlaender, McInerney and Yunsi. Final Act. 18.
ISSUES
(1) Did the Examiner err in concluding that claims 1–10 and 12–20
are directed to a judicial exception, without significantly more, under
35 U.S.C. § 101?
(2) Has the Examiner erred in finding the combination of Min,
Bodlaender and McInerney teaches, suggests, or otherwise renders obvious
each and every limitation recited in the independent claims?
ANALYSIS
FIRST ISSUE: REJECTION UNDER 35 U.S.C. § 101
Legal Standard
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “[f]irst . . . determine whether the claims at issue are directed
to [a] . . . patent-ineligible concept[]” (id. at 217), and, in this case, the
inquiry centers on whether the claims are directed to an abstract idea. If the
initial threshold is met, we then move to the second step, in which we
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step 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.’” Alice, 573 U.S. at 217–18 (quoting
Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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) (Guidance, Step 2A, prong 1); and
(2) 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, 2018))
(Guidance, Step 2A, prong 2).
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
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Guidance (Step 2B).
Examiner’s Findings and Conclusion
The Examiner rejects the claims under § 101 as being directed to a
judicial exception without significantly more. Final Act. 4. The Examiner
determines that the claims recite an “abstract idea identifying one or more
data elements in an electronic image having exclusion feature, designate
electronic image for exclusion from a backup operation.” Final Act. 4. At
Alice step 2, the Examiner determines the claims do not recite an inventive
concept:
The claims does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the generically recited computer elements
included in the claims do not add a meaningful limitation to the
abstract idea because they would be routine in any computer
implementation.
Final Act. 4.
Appellants’ Contentions2
Appellants contend that the claims are not directed to an abstract idea
because the claims “provide electronic image security on a mobile device.

2 Appellants’ arguments are made with respect to claim 1, which Appellants
indicate “is representative of the other independent claims for purposes of
this analysis.” App. Br. 15. We treat claim 1 as representative in our
analysis of the § 101 rejection. 37 C.F.R. § 41.37(c)(iv) (“When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.”).
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Therefore, the claims cannot possibly be abstract [because] the claim
elements determine whether an image contains elements that warrant it
being excluded from a backup (and for existing backups to be removed).”
App. Br. 15. Appellants further argue the Examiner erred in Alice step 2
because the “Examiner’s rationale for stating that the other elements of
Applicant’s claimed invention are routine, well-understood, or conventional
[is unsupported] because [the] Examiner’s one-paragraph rejection provides
zero evidence and zero rationale for its finding that the additional elements
are routine.” App. Br. 11–12.
Revised Guidance, Step 2A, Prong One 3
The Judicial Exception
Applying the guidance set forth in the Memorandum, we are not
persuaded of Examiner error. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. We
focus here on the third grouping—mental processes. See Memorandum.
Claim 1 recites the following limitations: (1) “identifying one or more
data elements, in a first . . . image, having at least one feature, . . . matching
a predefined exclusion feature;” (2) “designating the first . . . image for
exclusion from a backup operation based on the identification,” and (3)

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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“detecting existing backups of the first . . . image on a server.” App. Br. 24
(Claims App’x) (emphasis added).
These limitations, under their broadest reasonable interpretation,
recite mental processes as defined in the guidance. A claim recites a mental
process when the claim encompasses acts people can perform using their
minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim
whose “steps can be performed in the human mind, or by a human using a
pen and paper” is directed to an unpatentable mental process). This is true
even if the claim recites that a generic computer component performs the
acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use
of a computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”); see also
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”).
Limitation (1) recites identifying elements and features in an image;
limitation (2) recites designating to exclude an image; and limitation
(3) recites finding duplicates of the same image. Limitations (1) and (2)
encompass a person looking at a photograph and deciding in their mind not
to keep the photograph because the photo includes, for example, a particular
person’s face. Limitation (3) may be performed by reviewing existing
photographs to determine if a duplicate of the photograph already exists.
These are tasks readily performed in the human mind by observation,
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evaluation, and using judgement. See Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1139, (Fed. Cir. 2016). Accordingly, we conclude
claim 1 recites a judicial exception of a mental process.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that claim 1 recites a judicial exception, our
analysis under the Memorandum turns now to determining whether claim 1
is directed to the recited judicial exception. We do so by determining
whether there are “additional elements that integrate the judicial exception
into a practical application.” See Guidance (Step 2A, prong 2), see also
MPEP § 2106.05(a)–(c), (e)–(h)).
Claim 1 recites the following additional limitations: (a) that the image
is an “electronic image” and the feature “compris[es] at least one pixel
region,” (b) the existing backups are “on a server,” and (c) “removing all of
the existing backups of the first electronic image from the server based on
the designating.” App Br. 24 (Claims App’x). These limitations are
insufficient to integrate the recited mental process into a practical
application. Limitations (a) and (b) merely recite the nominal use of generic
computer technology, which is insufficient to remove the claim from the
mental process category. See Guidance at 52 n. 14 (citing CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011)
(holding that the incidental use of “computer” or “computer readable
medium” does not make a claim otherwise directed to process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible)).
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Limitation (c), which recites removing the existing backups of the
image based on the exclusion feature also is insufficient to integrate the
abstract idea into a practical application. In particular, this additional
limitation merely adds insignificant extra-solution activity to the judicial
exception. MPEP § 2106.05(g) (describing such activity as “activities
incidental to the primary process or product that are merely a nominal or
tangential addition to the claim”). See MPEP § 2106.05(g). See Mayo, 566
U.S. at 77–80; see also Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)
(“insignificant post-solution activity will not transform an unpatentable
principle into a patentable process”). Here, the removal of existing backups
is tangential to the primary process of identifying those images having an
exclusion feature much in the same way that adjusting an alarm limit
according to a mathematical formula was “post-solution activity” and
insufficient to satisfy § 101. Parker v. Flook, 437 U.S. 584, 590, 596–98
(1978). Hence, the backup removal limitation is not sufficient to integrate
the recited abstract ideas into a practical application. Accordingly, we are
not persuaded of error in the Examiner’s determination that claim 1 is
directed to an abstract idea.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance (Step
2B). Our review of the Examiner’s rejection under Step 2B is guided by the
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revised examination procedure published online by the USPTO on April 19,
2018, entitled “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners, as applicable to rejections under § 101.
As noted above, the Examiner determines that “[t]he claims does not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the generically recited computer
elements included in the claims do not add a meaningful limitation to the
abstract idea because they would be routine in any computer
implementation.” Final Act. 4 (italics added).
Appellants contend that the Examiner has failed to provide a sufficient
evidentiary basis for this determination. App. Br. 12 (“Examiner’s one-
paragraph rejection provides zero evidence and zero rationale for its finding
that the additional elements are routine.”). Because the Examiner did not
provide evidence or explanation, Appellants assert the Examiner’s cursory
analysis does not meet the requirements set forth in the Berkheimer
Memorandum. Id. We agree with Appellants.
The Examiner’s determination in Step 2B of the Guidance is
predicated, at least in part, on a determination that the additional elements
recited in the claim are “routine in any computer implementation.” Final
Act 4. However, the Examiner does not provide any evidence or
explanation in support of this determination. In particular, the Examiner has
not provided any evidence that the limitation “removing all of the existing
backups of the first electronic image from the server based on the
designating” was routine. Consequently, we are constrained by the record
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before us to reverse the Examiner’s rejection under 35 U.S.C. § 101 as
lacking the necessary evidentiary basis under the Berkheimer Memorandum.
SECOND ISSUE: REJECTION UNDER 35 U.S.C. § 103
The Examiner rejects claim 1 as obvious over the combined teachings
of Min, Bodlaender, and McInerney. 4 Final Act. 5–7. Relevant here, the
Examiner finds the combination of Min and Bodlaender teaches or suggests
the recited “identifying one or more elements, in a first electronic image,
having at least one feature, comprising at least one pixel region of the first
electronic image, matching a predefined exclusion feature.” Final Act. 5–6
(citing Min ¶¶ 98, 139 and Bodlaender 2, ll. 25–26); Ans. 3–4 (citing Min
¶¶ 62, 84, 87, 134, and 145). The Examiner finds that Min teaches
excluding an image from a backup based on a memo written on the image.
Ans. 3. The Examiner further finds that Min teaches that the memo is
analyzed to determine whether it is in an exclusion list, and if so, the image
is excluded from backup. Ans. 4. The Examiner explains this disclosure in
Min teaches the “identifying” limitation of claim 1 because the memo on the
image is analyzed by extracting pixel information, and the extracted pixel
information is a feature of the image. Ans. 4.
Appellants argue the Examiner has failed to establish obviousness
because the cited references do not teach or suggest “identifying one or more
elements, in a first electronic image, having at least one feature, comprising

4 Appellants present arguments with respect to claim 1, but also indicated
that the arguments pertaining to claim 1 “apply equally to independent
claims 12 and 20” and also that “[t]he arguments apply to the dependent
claims.” App. Br. 18. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(iv).
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at least one pixel region of the first electronic image, matching a predefined
exclusion feature,” as recited in claim 1. App. Br. 18–20; Reply Br. 3–5.
Appellants contend that the text written on Min’s image is merely a
memo that is separate from the image content because the memo is user-
generated and the image is machine-generated. Reply Br. 4. Appellants
further argue that Min’s process requires a user input in order to determine
that the image should be excluded from a backup operation, and that the
claim “requires no such user action.” Reply Br. 4. Appellants further
contend that it is not the pixel pattern of the memo, but instead the
information conveyed by the memo, which determines whether an image is
excluded from a backup operation. Reply Br. 5. We are not persuaded by
Appellants arguments.
Min teaches the use of a content memo to exclude images from
backup. Min ¶ 143 (“FIG. 21 illustrates a UI content memo setting for
backup exception according to another embodiment of the present
invention.”). Figure 21 of Min, which is referenced in the paragraphs cited
by the Examiner, provides an example of an image with a content memo
added:
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The image 2101 depicted in Figure 21 is an “electronic image” within the
meaning of claim 1, and it includes a hand-written memo “2012.12.28
HEAVY SNOW IN GANGHAM.” We agree with the Examiner that this
memo is part of the “image” because it is displayed within the boundaries of
the image on the screen of the mobile device as a collection of pixels. We
further agree with the content memo is a “feature” of the image because it is
an attribute of the image which can be analyzed or processed by the system.
Appellants’ specification states that “[d]ata features refer to any feature,
attribute, or characteristic of the data that can be identified, measured,
analyzed, or otherwise processed.” Spec. ¶ 23. The content memo is located
in a particular pixel region of the image, as illustrated by Figure 21. See also
Min ¶ 145 (“information related to a latest captured picture may be written
in a partial area of the picture”).
Min further teaches that “content including a specific location or a
specific word may be excluded from backup by analyzing a location.” Min
¶ 145. We agree with the Examine that this description teaches “a
predefined exclusion feature.” Appellants’ Specification defines
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“predefined exclusion feature” broadly, stating that “[a] predefined
exclusion feature refers to a[] feature that is defined (for example in a
definitions file) so as to trigger a backup exclusion process.” Spec. ¶ 27.
Thus, Min teaches that the content memo is analyzed to determine if is
matches a “feature that is defined . . . so as to trigger a backup exclusion
process” and it excludes the image from backup on that basis. As such, we
agree with the Examiner that Min teaches or suggests “identifying one or
more elements, in a first electronic image, having at least one feature,
comprising at least one pixel region of the first electronic image, matching a
predefined exclusion feature.”
Appellants’ contentions regarding the cited portions of Min are not
commensurate with the broad scope of the argued limitation. For example,
Appellants argue that the content memo is separate from the image content
because it is user-generated while the image is machine-generated. Reply
Br 4. However, there is no requirement in the claim that the image not
include a user-generated portion. Similarly, Appellants’ contention that the
claim requires no user action is unpersuasive because the language of the
claim does not exclude user action from its scope. Finally, Appellants’
argument that it is only the information conveyed by the pixel pattern of the
memo, and not the pixel pattern itself is also unpersuasive. As we noted
above, the phrase “predefined exclusion feature” is defined broadly as “a
feature that is defined . . . so as to trigger a backup exclusion process.”
Spec. ¶ 27. Thus, there is no requirement in the claim that the pixel pattern
alone be the trigger.
In sum, Appellants have not shown error in the Examiner’s
determination that claim 1 would have been obvious in view of the prior art.
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As such, we sustain the rejection of claim 1 under 35 U.S.C. § 103. Because
we have selected claim 1 as representative, the remaining claims 2–20 fall
with claim 1 for the same reasons. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
We reverse the Examiner’s decision rejecting claims 1–10 and 12–20
under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED