NthGen Software Inc.

Patent Trials and Appeals Board

Oct 29, 2020

14794571 - (R) (P.T.A.B. Oct. 29, 2020)

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.
14/794,571 07/08/2015 Mark Endras 015535-18087A-US 2795
154659 7590 10/29/2020
Lempia Summerfield Katz LLC / KAR Auction Services
KAR Auction Services Inc.
20 S. Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK ENDRAS and HON-WAI CHIA
_____________

Appeal 2020-003441
Application 14/794,571
Technology Center 3600
____________

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

COURTENAY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed
September 28, 2020 (“Decision”). Our Decision affirmed the Examiner’s
decision rejecting claims 1, 2, 6, 8–10, 12–16, and 20–30 as being directed
patent-ineligible subject matter under 35 U.S.C. § 101.
In the Request, Appellant argues that we did not specifically address
dependent claims 29 and 30 in our Decision. See Request 1. Appellant
argues that claims 29 and 30 recite a practical application “of performing

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest
is NthGen Software Inc. See Appeal Br. 2.
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image analysis at the mobile device” (emphasis in original). Id. Appellant
urges that “the integration of the image analysis functionality in the mobile
device as a practical application” is the reason claims 29 and 30 are patent-
eligible claims. Id. at 2 (emphasis omitted).
Appellant notes that claim 29 recites that the app on the mobile
device:
(i) generates the report of the disputed feature;
(ii) takes the image of the disputed feature; and
(iii) performs the image analysis on the image.
Request 2.
Appellant contends:

This is in contrast to the image analysis being performed by a
remote backend server (e.g., transmitting the image to the
backend server for analysis). This is also in contrast to the report
being generated by accessing a remote backend server (e.g.,
filling out a form on a webpage), with the image being uploaded
separately.
Id.
Appellant further urges that “online auctions face similar security
problems akin to virus detection.” Request 2. Appellant cites to the
following case authorities in support: (1) Finjan, Inc. v. Blue Coat Systems,
Inc., 879 F.3d 1299 (Fed. Cir. 2018), and (2) BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, AT&T Corp., 827 F.3d 1341 (Fed. Cir.
2016). Request 2–3.
We have reviewed Appellant’s arguments in the Request, our
Decision, and have again reviewed the Examiner’s rejection, and the
Examiner’s responses to Appellant’s arguments as set forth in the Answer.
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Dependent Claim 29
To the extent that we overlooked Appellant’s arguments regarding
dependent claim 29 (Appeal Br. 10) in rendering our Decision, and
responsive to the Request, we specifically address infra Appellant’s
arguments which pertain to claim 29.
Claim 29 recites:
The method of claim 28, wherein the app on the mobile device
performs the image analysis of the image of the vehicle;
wherein the image analysis is received from the mobile device;
and
wherein communicating the first settlement amount to the buyer
is via the app on the mobile device.
Claim 29 depends from dependent claim 28, which depends from
claim 27, which depends from claim 26, which depends from independent
claim 22. Because claim 29 depends directly from claim 28, the claim 29
language “the app on the mobile device” refers by antecedent basis to “a
mobile device of the buyer,” as recited in claim 28 (emphasis added).
We do not find that (the seller) receiving an image analysis from the
mobile device of the buyer, instead of from a back-end server, integrates the
abstract idea into a practical application, within the meaning of claim 29, as
argued by Appellant (Request 2–3), because such “receiving” is insignificant
extra-solution activity (i.e., data gathering). See buySAFE, Inc. v. Google,
Inc, 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”). See also January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; MPEP § 2106.05(g).
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Furthermore, the introduction of a buyer “using an app on the mobile
device” to generate a report, and obtain an image of the disputed feature,
falls within the scope of dependent claim 28, not dependent claim 29. See
Claim 28: “The method of claim 27, wherein the report is generated by and
received from a mobile device of the buyer using an app on the mobile
device; and wherein the buyer obtains the image of the disputed feature
using the app on the mobile device. In our Decision, we affirmed the
Examiner’s rejection of claim 28; claim 28 is not before us in this Request.
Regarding claim 29, we find the claimed use of an app on the buyer’s
cell phone to perform image analysis and communicate the first settlement
amount does not integrate an abstract idea into a practical application, but
rather is an example of insignificant extra-solution activity. See MPEP
§ 2106.05(g) (9th Ed., Rev. 10.2019, June 2020). A buyer using an app on
the cell phone where the phone is merely used as a tool to perform an
abstract idea is not indicative of integration of an abstract idea into a
practical application. See MPEP § 2106.05(f). Neither is generally linking
the use of the judicial exception to a particular technological environment or
field of use. See MPEP § 2106.05(h).
In support, Appellant additionally cites to Finjan as a case authority.
Request 2. We are not persuaded by Appellant’s attempt to analogize the
subject claim in Finjan to claim 29. See Finjan, 879 F.3d at 1303, Claim 1,
reproduced below:
1. A method comprising:
receiving by an inspector a Downloadable;
generating by the inspector a first Downloadable security
profile that identifies suspicious code in the received Downloadable;
and
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linking by the inspector the first Downloadable security profile
to the Downloadable before a web server makes the Downloadable
available to web clients.
In Finjan, the court found that claims directed to a behavior-based
virus scan constituted an improvement in computer functionality over the
“traditional, ‘code-matching’ virus scans.” Id. at 1304. The court
determined that the claimed method employs a new kind of file, allows
access to be tailored for different users, and allows the system to accumulate
and use newly available, behavior-based information about potential threats.
Id. at 1305. The court ultimately held that the Finjan claims were “directed
to a non-abstract improvement in computer functionality, rather than the
abstract idea of computer security,” and recited “specific steps—generating
a security profile that identifies suspicious code and linking it to a
downloadable—that accomplish the desired result.” Id. (emphasis added).
Unlike the claims of Finjan, Appellant’s claims do not recite a
technological improvement to achieve a desired result—Appellant’s claims
do not employ a newly generated file containing a security profile in a
downloadable, and do not use such generated security profile to enable a
computer security system to improve on or add computer functionality by
reciting specific steps accomplishing the desired security results.
Regarding Appellant’s contention pertaining to certain “security issue
problems” (Request 3), we note that these argued “security issue problems”
are not recited in claim 29, nor described in the Specification, and we see
nothing in claim 29 that provides an improvement in computer functionality
that improves computer security, as was the case in Finjan. See Appeal
Br. 11. We are not persuaded that the seller’s manipulation of photos to be
used in an auction process is a “security problem.” Rather, such
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manipulation of photos is an accurate disclosure issue for the seller and a
due diligence responsibility for the buyer.
Therefore, on this record, we are not persuaded that Appellant’s
dependent claim 29 is sufficiently analogous to the behavior-based virus
scan subject claim considered by the court in Finjan.
To the extent that Appellant has implemented an improved method of
performing an analysis on the app of a cell phone instead of at a remote
server, we note the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’” Trading Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed.
Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017).
Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application, because the “mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223 (2014); see 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 55 n.30 (Jan. 7,
2019) (“2019 Memorandum”). See also 2019 Memorandum, 84 Fed. Reg.
at 55 (“merely includ[ing] instructions to implement an abstract idea on a
computer” is an example of when an abstract idea has not been integrated
into a practical application).
Appellant further cites to BASCOM, arguing “online auctions face
similar security problems akin to . . . filtering.” Request 2.
We note the Federal Circuit held in BASCOM that the claimed
Internet content filtering, which featured an implementation “versatile
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enough that it could be adapted to many different users' preferences while
also installed remotely in a single location,” expressed an inventive concept
in “the non-conventional and non-generic arrangement of known,
conventional pieces.” BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Contrary to Appellant’s argument, “decentralizing the image analysis”
is not “identical” to the recited limitations of claim 29. Request 3. In
BASCOM, the patent owner claimed a method for filtering internet content
by providing customized filters at a remote server. The Court in BASCOM
agreed that the generic computer network, internet components, ISP servers,
network accounts or filtering are inventive, but it held the ordered
combination of installing a filtering tool at a specific location remote from
the end-users, while also providing customizable filtering features specific to
each end-user provided the inventive concept.
Here, Appellant has not persuasively shown an unconventional, non-
generic arrangement of the generic computer component (“mobile device”)
with respect to any other server, or network node entity, within the scope of
method claim 29. See 2019 Memorandum, 84 Fed. Reg. at 52.
Nor does claim 29 recite any limitations which provide the user with
customizable filtering at a remote server. Claim 29 does not recite that the
application is customizable either remotely or locally. Claim 29 recites an
application that the buyer can use on his mobile device to perform an “image
analysis of the image of the vehicle,” and to “communicate the first
settlement amount to the buyer.”
For at least these reasons, we conclude claim 29 does not involve any
improvements to another technology, technical field, or improvements to the
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functioning of the computer or network, as was seen by the court in
BASCOM. Instead, we conclude the “app” recited in claim 29 merely
executes its instructions on the buyer’s mobile device in a manner that does
not integrate an abstract idea into a practical application.

Dependent Claim 30
We reach the conclusion that claim 30 was not timely argued because
it was not separately and substantively argued in Appellant’s Appeal Brief.
See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive to an argument raised
in the examiner’s answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.”). Any untimely argument advanced in the
Reply Brief for claim 30 is likewise untimely in the Request. See 37 C.F.R.
§ 41.52(a)(1).
To the extent that Appellant’s new arguments for claim 30 in the
Reply Brief (5) may be considered timely by our reviewing court, as
applicable to the arguments advanced for claim 30 in the Request (3), we
find the arguments for claim 30 in the Request (3) are not persuasive for the
same reasons set forth above for claim 29, because, as Appellant points out:
“Claim 30 recites limitations identical to claim 29, but is dependent on claim
24.” Reply Br. 5.
CONCLUSION
We have reconsidered our Decision, in light of Appellant’s arguments
in the Request. However, on this record, we are not persuaded that
dependent claim 29 integrates the abstract idea into a practical application.
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We grant Appellant’s Request for Rehearing only to the extent that we
have reconsidered our Decision and have modified it to address Appellant’s
specific argument regarding dependent claim 29, as set forth above.

Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
29, 30 101 Eligibility 29, 30

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6,
8–10,
12–16,
20–30
101 Eligibility 1, 2, 6,
8–10,
12–16,
20–30

Our Decision is “final for purposes of judicial review.” 37 C.F.R.
§ 41.52(a)(1).
DENIED