13775920 - (D) (P.T.A.B. Aug. 2, 2019)

Peter Breuer

Patent Trials and Appeals BoardAug 2, 2019

13775920 - (D) (P.T.A.B. Aug. 2, 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. 13/775,920 02/25/2013 Peter Breuer K74651 1010US.1 6181 26158 7590 08/02/2019 WOMBLE BOND DICKINSON (US) LLP ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER AVERY, JEREMIAH L ART UNIT PAPER NUMBER 2431 NOTIFICATION DATE DELIVERY MODE 08/02/2019 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): BostonPatents@wbd-us.com IPDocketing@wbd-us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER BREUER ____________________ Appeal 2018-008477 Application 13/775,920 Technology Center 2400 ____________________ Before JOHN A. JEFFERY, LINZY T. McCARTNEY, and JOHN P. PINKERTON, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. Opinion Concurring filed by JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–4 and 6–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2018-008477 Application 13/775,920 2 BACKGROUND This patent application generally “relates to encrypted data processing.” Specification 1:3, filed February 25, 2013 (“Spec.”). Claim 15 illustrates the claimed invention: 15. A computer-implemented method of processing encrypted data encoding information, the method comprising: receiving encrypted input data at a processor [the “receiving” limitation]; processing said encrypted input data to generate output encrypted data, said processing comprising applying an encrypted operation to said encrypted input data, said encrypted operation generating said output encrypted data equivalent to encrypting an output generated by applying a corresponding arithmetic or logical operation comprising shifting, logical and, logical or, addition, subtraction, multiplication, or division to said information encoded by said encrypted input data, wherein data remains encrypted throughout said processing [the “processing” limitation]; and using said processor, outputting said generated encrypted data [the “outputting” limitation]. Appeal Brief 29, filed March 12, 2018 (“App. Br.”). REJECTIONS Claims Basis References 1–4 and 6–20 § 101 1–4, 6, 7, 9–16, and 18–20 § 103(a) Hashimoto1 and Graunke2 8 § 103(a) Hashimoto, Graunke, and Hennessy3 1 Hashimoto et al. (US 2001/0018736 A1; Aug. 30, 2001). 2 Graunke (US 7,184,550 B2; Feb.27, 2007). 3 John L. Hennessy & David A. Patterson, Computer Organization and Design: The Hardware/Software Interface, (2d. ed. 1998). Appeal 2018-008477 Application 13/775,920 3 Claims Basis References 17 § 103(a) Hashimoto, Graunke, and Rose4 DISCUSSION We have reviewed the Examiner’s rejections and Appellant’s arguments. For the § 101 rejection, we disagree with Appellant that the Examiner erred. As consistent with the discussion below, we adopt the Examiner’s reasoning, findings, and conclusions for this rejection on pages 2–7 of the Final Office Action mailed August 28, 2017 (“Final Act.”) and pages 3–6 of the Answer mailed June 14, 2018 (“Ans.”). As for the § 103(a) rejections, we agree with Appellant that the Examiner erred. We address the § 101 and § 103(a) rejections in turn. Section 101 Rejection Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of 4 Rose et al. (US 2004/0071289 A1; Apr. 15, 2004). Appeal 2018-008477 Application 13/775,920 4 [the] 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.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claim for an “inventive concept,” “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 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). The Patent Office has revised its guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites subject matter that falls within one of the abstract idea groupings listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we then determine whether the claim has an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. With these principles in mind, we turn to the § 101 rejection. Appellant argues claims 1–4 and 6–20 together for this rejection, so as Appeal 2018-008477 Application 13/775,920 5 permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this rejection based on claim 15. Abstract Idea The Revised Guidance explains that the abstract idea exception includes mental processes, mathematical concepts, and certain methods of organizing human activity. Revised Guidance, 84 Fed. Reg. at 52. The Examiner determined that claim 15 recites subject matter that falls within the mental processes and mathematical concepts abstract idea groupings. See Final Act. 2–3 (citing Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)), 6–7 (determining that claim 15 is “directed to the abstract idea of the receiving and generation of encrypted data” and explaining that “[e]ncryption relies upon and is rooted in mathematical relationships/formulas”); see also July 2015 Update: Subject Matter Eligibility 5, https://www.uspto.gov/sites/default/files/documents/ ieg-july-2015-update.pdf (then-applicable guidance describing Digitech as one of “[s]everal cases [that] have found concepts relating to processes of organizing information that can be performed mentally abstract”). For the reasons discussed below, Appellant has not persuaded us that the Examiner erred. Claim 15 recites the “receiving,” “processing,” and “outputting” limitations reproduced above. Each of these limitations encompasses a mental process. For example, the “receiving” and “outputting” limitations respectively recite “receiving encrypted input data at a processor” and “using said processor, outputting said generated encrypted data.” App. Br. 29. Except for the processor recited in these limitations, nothing in these limitations precludes people from performing the recited steps in their minds Appeal 2018-008477 Application 13/775,920 6 or using pen and paper. People can receive encrypted input data by, for instance, reading the data from a computer screen or a piece of paper. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (determining that a claim step that “requires ‘obtaining information about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction’—can be performed by a human who simply reads records of Internet credit card transactions from a preexisting database”). Similarly, people can output the generated encrypted data by, among other things, writing the data on a piece of paper. Cf. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions.”). Acts such as these that people can perform in their minds or using pen and paper fall within the mental processes category. See CyberSource, 654 F.3d at 1372 (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). Thus, although the “receiving” and “outputting” limitations explicitly require a processor, these limitations encompass mental processes. See 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 Revised 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 Appeal 2018-008477 Application 13/775,920 7 category unless the claim cannot practically be performed in the mind.”). In any event, even if these limitations did not encompass mental processes, the limitations would not make claim 15 patent eligible because they recite insignificant extra-solution activity. See CyberSource, 654 F.3d at 1372 (“Moreover, as discussed above, even if some physical steps are required to obtain information from the database (e.g., entering a query via a keyboard, clicking a mouse), such data-gathering steps cannot alone confer patentability.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with the Board that printing and downloading generated menus are insignificant post-solution activities). As for the “processing” limitation, this limitation recites “processing said encrypted input data to generate output encrypted data . . . wherein data remains encrypted throughout said processing.” App. Br. 29. The recited processing includes “applying an encrypted operation to said encrypted input data, said encrypted operation generating said output encrypted data equivalent to encrypting an output generated by applying” a specified “corresponding arithmetic or logical operation . . . to said information encoded by said encrypted input data.” App. Br. 29. Unlike the “receiving” and “outputting” limitations, the “processing” limitation does not explicitly call for a processor. See App. Br. 29. And while the limitation recites applying an encrypted operation to encrypted input data to generate particular output encrypted data, the limitation does not otherwise limit the type of encryption and data the method uses to reach this result. See App. Br. 29. This limitation is thus so broadly worded that it encompasses acts that people can perform in their minds or using pen and paper. See CyberSource, 654 F.3d at 1373 (determining that a claim step “is Appeal 2018-008477 Application 13/775,920 8 so broadly worded that it encompasses literally any method” for performing the step, including “even logical reasoning that can be performed entirely in the human mind”). In fact, the written description indicates that the “processing” limitation encompasses mathematical operations people can perform in their minds or using pen and paper such as using a matrix to perform matrix multiplication. See Spec. 4:29–5:4. Such mathematical operations fall within the mental processes category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.”). In sum, the “receiving,” “processing,” and “outputting” limitations together recite a process that people can perform in their minds or using pen and paper. People can receive the recited encrypted data by reading the data from a computer screen or a piece of paper, process the encrypted data to generate output encrypted data by performing mathematical operations in their minds or using pen and paper, and output the generated encrypted data by writing the data on a piece of paper. Because people can perform these steps mentally or by hand, the recited method is not meaningfully different from other methods that courts have determined are mental processes. See, e.g., CyberSource, 654 F.3d at 1373. We therefore determine that claim 15 recites mental processes, one of the abstract idea groupings in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at 52. Claim 15 thus recites an abstract idea. Because we determine that claim 15 recites an abstract idea, we next consider whether claim 15 integrates this abstract idea into a practical Appeal 2018-008477 Application 13/775,920 9 application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are any additional elements beyond the abstract idea that, individually or in combination, “integrate the [abstract idea] into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.” Revised Guidance, 84 Fed. Reg. at 54–55. The Examiner determined that the processor recited in claim 15 is an additional element and that the processor is a generic computer component that performs generic functions. See, e.g., Final Act. 7. We agree. The only additional element in claim 15 is the processor, and claim 15 recites that the processor performs two functions: receiving encrypted input data and outputting generated encrypted data. See App. Br. 29. Claim 15 thus “does no more than require a generic computer to perform generic computer functions.” Alice, 573 U.S. at 225; see also id. at 226 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); 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.”). Indeed, the written description notes that conventional processors can receive and output encrypted data. See Spec. 1:34–35 (disclosing that prior art computers “have been provided with processors that receive encrypted data and output encrypted data”). Appellant contends that the Examiner “erred by selecting specific concrete elements as a greatly reduced subset of the additional elements beyond the alleged abstract idea, and focused on this reduced subset to the Appeal 2018-008477 Application 13/775,920 10 exclusion of proper analysis of the claim as a whole.” App. Br. 7. We disagree. The only additional element recited in claim 15 is the processor, see App. Br. 29, and the Examiner explained why the processor does not make claim 15 patent eligible, see Final Act. 7. The other limitations of claim 15 form part of the abstract idea and so cannot integrate the abstract idea into a practical application. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (“The abstract idea itself cannot supply the inventive concept, ‘no matter how groundbreaking the advance.’” (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)). Appellant next argues that claim 15 presents “a specific solution to a specific technological problem, namely, how to have an arithmetic logic unit perform logical operations on encrypted data, without decrypting the data and exposing decrypted data to hacking as a vulnerability.” App. Br. 5 (emphasis omitted). According to Appellant, the claimed invention “keep[s] data encrypted throughout the arithmetic logic unit and thus do not expose decrypted data to hacking as a vulnerability.” App. Br. 6. Appellant contends that the Examiner ignored the parts of the written description that describe the “problems of vulnerability of data when decrypted at a computer and the desirability of improvements thereto,” as well as the solution provided by the invention App. Br. 5–6 (citing Spec. 1:3–2:5, 2:14–16). We disagree. Claim 15 does not explicitly recite the “specific solution to a specific technological problem” identified by Appellant. Although the “processing” limitation recites “applying an encrypted operation to said encrypted input data” and “wherein data remains encrypted throughout said processing,” this limitation does not explicitly recite that an arithmetic logic Appeal 2018-008477 Application 13/775,920 11 unit—or any other computer component—performs this function. See App. Br. 29. This omission stands in stark contrast to the “receiving” and “outputting” limitations, which explicitly require that a processor performs the steps recited in these limitations. App. Br. 29 (claim 15 reciting “receiving encrypted input data at a processor” and “using said processor, outputting said generated encrypted data” (emphases added)). So although claim 15 recites “[a] computer-implemented method,” the claim makes clear that the “receiving” and “outputting” limitations are the only limitations that must be performed by a computer component. Thus, while the written description may disclose “how to have an arithmetic logic unit perform logical operations on encrypted data, without decrypting the data and exposing decrypted data to hacking as a vulnerability,” claim 15 does not. Appellant’s argument that claim 15 presents a specific solution to a specific technological problem therefore does not persuade us that claim 15 is patent eligible. See Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“Regarding Accenture’s argument concerning the complexity of the specification, including the specification’s detailed software implementation guidelines, the important inquiry for a § 101 analysis is to look to the claim.”). Finally, Appellant argues that claim 15 “is sufficiently limited so as not to be an attempt to claim the entirety of the abstract idea.” App. Br. 14. Even if this were true, a lack of total preemption would not establish that claim 15 is patent eligible. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate Appeal 2018-008477 Application 13/775,920 12 patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). For at least the above reasons, we determine that claim 15 does not integrate the recited abstract idea into a practical application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Inventive Concept Finally, we consider whether claim 15 has an inventive concept, that is, whether the recited additional claim element “‘transform[s] the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As discussed above, this requires us to evaluate whether the additional claim element adds “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. The Examiner determined that the processor, the only additional element recited in claim 15, “perform[s] generic computer functions that are well understood and routine.” App. Br. 7. We agree. Claim 15 recites that the processor receives and outputs encrypted data. See App. Br. 29. Processors receiving and outputting data is a well-understood, routine, and conventional activity. See Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions Appeal 2018-008477 Application 13/775,920 13 required by the method claims.”); buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”); see also Spec. 1:34– 35 (disclosing that prior art computers “have been provided with processors that receive encrypted data and output encrypted data”). Appellant argues that the Examiner’s inventive concept analysis lacks adequate factual support and improperly relies on unfounded assertions, conclusory statements, and official notice or common knowledge. See App. Br. 8–14. Appellant contends that the Examiner failed to analyze the claim as a whole and did not show that the recited functions are well understood and routine. See App. Br. 8–9. Appellant argues that Appellant’s response to the Examiner’s § 103(a) rejections establishes that claim 15 has an inventive concept. See App. Br. 14. We see no merit in these arguments. For the reasons discussed above, the Examiner’s determination that the recited processor performs well- understood, routine, and conventional activity has adequate support, and we see no indication that the Examiner improperly relied on official notice or common knowledge to support this determination. As for Appellant’s argument that the Examiner failed to analyze the claim as a whole, this argument assumes that part of the abstract idea can provide an inventive concept. See, e.g., App. Br. 10 (arguing that the processing recited in the claims provides an inventive concept). But as noted above, an abstract idea cannot provide an inventive concept. See Trading Techs., 921 F.3d at 1093; see also Revised Guidance, 84 Fed. Reg. at 56 (“Therefore, if a claim has been determined to be directed to a judicial exception . . . examiners should then evaluate the additional elements individually and in combination . . . to Appeal 2018-008477 Application 13/775,920 14 determine whether they provide an inventive concept . . . .” (emphasis added)). For similar reasons, Appellant’s argument that the prior art does not suggest aspects of the abstract idea is also unpersuasive. A nonobvious abstract idea is still an abstract idea. See SAP Am., 898 F.3d at 1163 (“We may assume that the techniques claimed are ‘[g]roundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103.” (citations omitted)). In sum, the additional element recited in claim 15 “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. We therefore determine that claim 15 does not recite an inventive concept. Conclusion For the reasons discussed above, claim 15 is directed to an abstract idea and does not have an inventive concept. We therefore sustain the Examiner’s rejection of claim 15 under § 101. Section 103 Rejection Claim 15’s “processing” limitation recites in relevant part “said encrypted operation generating said output encrypted data equivalent to encrypting an output generated by applying a corresponding arithmetic or logical operation comprising shifting, logical and, logical or, addition, subtraction, multiplication, or division to said information encoded by said Appeal 2018-008477 Application 13/775,920 15 encrypted input data, wherein data remains encrypted throughout said processing.” App. Br. 29. Appellant contends that the Examiner has not shown that Graunke teaches or suggests this aspect of the “processing” limitation. App. Br. 17– 22. According to Appellant, the Examiner did not identify which elements of Graunke correspond to the recited “encrypted output data” and “information encoded by said encrypted input data.” See App. Br. 19. Appellant also argues that the cited parts of Graunke do not teach or suggest generating output encrypted data. See App. Br. 19–22. We agree with Appellant. The Examiner found that Graunke “pertains” to the “processing” limitation but did not adequately explain why Graunke teaches or suggests generating output encrypted data that is equivalent to “encrypting an output generated by applying a corresponding arithmetic or logical operation . . . to said information encoded by said encrypted input data.” See Ans. 7; Final Act. 10, 14–15. On this record, we thus do not sustain the Examiner’s § 103(a) rejection of claim 15 and its dependent claims. Because the Examiner’s 103(a) rejections of independent claims 1 and 18 and their respective dependent claims suffer from similar flaws, we also do not sustain these rejections. Appeal 2018-008477 Application 13/775,920 16 DECISION Claims Rejected Basis References Affirmed Reversed 1–4 and 6– 20 § 101 1–4 and 6– 20 1–4, 6, 7, 9– 16, and 18– 20 § 103(a) Hashimoto and Graunke 1–4, 6, 7, 9– 16, and 18– 20 8 § 103(a) Hashimoto, Graunke, and Hennessy 8 17 § 103(a) Hashimoto, Graunke, and Rose 17 Outcome 1–4 and 6–20 Because we affirm at least one ground of rejection for each claim on appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1). No period for taking any 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 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PETER BREUER ____________ Appeal 2018-008477 Application 13/775,920 Technology Center 2400 ____________ Before JOHN A. JEFFERY, LINZY T. McCARTNEY, and JOHN P. PINKERTON, Administrative Patent Judges. JEFFERY, Administrative Patent Judge, Concurring. I join the majority’s cogent and well-reasoned opinion. I write separately to emphasize, however, the sheer scope and breadth of independent claim 15 whose high level of generality renders the claim ineligible under § 101. I also find a similar high level of generality for the other independent claims, including the arithmetic logic unit (ALU) functionality recited in claim 1. Although we must interpret these claims in light of the Specification, the claims still do not specify how the recited functions are implemented, let alone in the manner indicated in the Specification, but rather just state, quite broadly, that the recited functions are implemented via either a processor or its ALU to achieve the desired result. That claim 15 does not even require a processor to process the encrypted input data as the majority indicates (Maj. Op. 11) only underscores the sheer scope and breadth of the claim. Nevertheless, I would reach a similar conclusion even assuming, without Appeal 2018-008477 Application 13/775,920 2 deciding, that claim 15 required a processor to process encrypted input data—which it does not. In claim 15, for example, apart from the terms “computer- implemented” and “processor,” the claim merely recites: (1) receiving encrypted input data; (2) processing the encrypted input data by applying an encrypted operation to the encrypted input data that generates output encrypted data equivalent to encrypting an output by applying the recited arithmetic or logic operation, where the data remains encrypted throughout processing; and (3) outputting the generated encrypted data. As the majority indicates, steps (1) and (3) can not only be performed entirely mentally apart from the recited processor and computer implementation, but they are also insignificant extra-solution activity. Maj. Op. 7. I also find that step (2) falls into either the mental processes or mathematical concepts categories of the USPTO’s patent eligibility guidelines, particularly given the claim’s lacking any details as to the nature of the encryption. In other words, nothing in the claim precludes simple forms of encryption, such as merely mapping one number to another number. For example, numbers could be “encrypted” by merely changing their sign; the number “1” could be mapped to “–1,” the number “2” mapped to Appeal 2018-008477 Application 13/775,920 3 “–2,” etc. This simple encryption would be along the lines of the encryption scheme noted in the definition of “encryption” in Barron’s Dictionary of Computer and Internet Terms that, on page 168, gives a simple example of encrypting letters of the alphabet by merely replacing a letter with one that is 10 places later in the alphabet so that “A” is replaced with “K,” “B” is replaced with “L,” etc. See Douglas Downing et al, BARRONS’ DICTIONARY OF COMPUTER & INTERNET TERMS 167–70 (10th ed. 2009). In the numerical encryption example above, suppose two items of encrypted input data were received, say, “–1” and “–1,” with a corresponding instruction to add these numbers together. One way to do that, consistent with the acknowledged conventional approach, would be to (1) decrypt the data; (2) perform the arithmetic operation on the decrypted data; and then (3) encrypt the result. So, in this example, both pieces of received encrypted data, “–1” would be first decrypted to “1.” Then, the two decrypted numbers (“1”) would be added together resulting in “2.” This result would then be encrypted to “–2” by changing its sign. Using the approach in the claimed invention, however, the received encrypted input data “–1” and “–1” would be simply added together to yield a result of “–2.” This generated encrypted data could then be outputted to the encrypting entity (e.g., another computer) for decryption by that computer by changing its sign to “+2.” This is just one of many examples of simple encrypted data processing functions encompassed by the claimed invention given the sheer scope and breadth of the claim language. Ordinarily skilled artisans could surely envision many more examples involving other numbers, in addition to other arithmetic operations, such as multiplication and division as well. Appeal 2018-008477 Application 13/775,920 4 Not only does the processing step in claim 15 recite an abstract idea as falling within either the mental processes or mathematical concepts categories, the additional elements, namely the fact that the recited method is “computer-implemented” and a processor is used to perform at least some of the recited steps, do not integrate the abstract idea into a practical application or add significantly more to the abstract idea, particularly given their high level of generality in the claim. Rather, reciting these components to implement the abstract idea as claimed strikes me as equivalent to merely saying “apply it” with a computer. That is, notwithstanding the associated functionality described in the Specification, I still do not see why generic computer components, such as a processor or its ALU, could not be used to implement the recited arithmetic or logical operations, at least for simple encryption schemes such as those noted above. Rather, these components are merely generic computer components whose generic computer functions are well-understood, routine, and conventional. See, e.g., Fair Warning IP, LLV v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (noting that using generic computing components, including a microprocessor, does not transform an abstract idea into eligible subject matter); see also Steven M. Kaplan, WILEY ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 605 (2004) (defining “processor” as consisting of a control unit and ALU, usually contained in a single chip). Appellants’ arguments in this regard strike me as going well beyond the Examiner’s limited findings in this regard, namely that the processor is the additional element whose generic computing functionality is well- Appeal 2018-008477 Application 13/775,920 5 understood, routine, and conventional—not the other limitations that recite an abstract idea. On page 13 of the Appeal Brief, Appellants argue that the entire function of the ALU in claim 1 is not commonly known or well understood, and that the Examiner did not provide evidence to show that these additional limitations are well-understood, routine, and conventional. But these limitations are not additional elements under the USPTO’s patent eligibility guidelines (and the USPTO’s Berkheimer memorandum5 for that matter), but rather are part of the abstract idea. That is, the functions that Appellants argue as lacking evidentiary support recite an abstract idea as mental processes or mathematical concepts. It is only the processor and its associated components (including the bus, interface, and ALU in claim 1) that are the additional elements, and perhaps also the receiving and outputting steps in claim 15 as insignificant extra-solution activity. I, therefore, join the majority in affirming the Examiner’s ineligibility rejection not only for the reasons indicated by the majority, but also those noted above. I also join the majority in reversing the Examiner’s obviousness rejections for the reasons indicated by the majority. 5 See Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), USPTO, Apr. 19, 2018 (noting that the Berkheimer decision clarifies the inquiry whether an additional element (or combination of additional elements) represents well-understood, routine, and conventional activity).