Yakov Faitelson et al.

Patent Trials and Appeals Board

Sep 26, 2019

14456373 - (D) (P.T.A.B. Sep. 26, 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.
14/456,373 08/11/2014 Yakov FAITELSON CU-71490 BSE 3453
26530 7590 09/26/2019
LADAS & PARRY LLP
224 SOUTH MICHIGAN AVENUE
SUITE 1600
CHICAGO, IL 60604
EXAMINER
PYO, MONICA M
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
ChicagoUSPTO@ladas.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAKOV FAITELSON, OHAD KORKUS, and
OPHIR KRETZER-KATZIR
Appeal 2018-006985
Application 14/456,373
Technology Center 2100
Before JAMES R. HUGHES, MICHAEL R. ZECHER, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Varonis Systems, Inc.,
appeals from the Examiner’s decision to reject claims 1–17 and 27–35.
Final Act. 1. Claims 18–26 were cancelled. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Varonis
Systems, Inc. Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to an automatic resource ownership
assignment system. Spec. ¶ 6. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An automatic resource ownership assignment system, said
system comprising at least one processor and a non-transitory
tangible computer-readable medium in which computer program
instructions are stored, which instructions, when read by a
computer, cause the computer to provide the following
functionalities:
resource ownership indicators definition functionality
operative to allow an operator of said system to define resource
ownership indicators;
automatic resource ownership recommendation
functionality operative to provide, to at least one user of said
system, which said at least one user has frequently actually
accessed at least one resource, a recommendation to assign
ownership of said at least one resource to a potential owner,
based on said resource ownership indicators; and
automatic resource ownership assignment functionality
which, responsive to predetermined at least partial approval of
said at least one recommendation by said at least one user and
approval of said at least one recommendation by said potential
owner, is operative to automatically assign ownership of said at
least one resource to said potential owner.
REJECTIONS
Claims 1–17 and 27–35 are rejected under pre–AIA 35 U.S.C. § 101.
Final Act. 2–4.
Claims 1–17 and 27–35 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over U.S. 2007 /0143859 A1; published June
21, 2007 (Ogi), U.S. 2005/0086268 A1; published Apr. 21, 2005 (Rogers),
and U.S. 2007/0244899 A1; published Oct. 18, 2007 (Faitelson). Final Act.
6–12.
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In the Answer, the Examiner withdrew a rejection of claims 1–17 and
27–35 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre–AIA). Ans. 2.

OPINION
SECTION 101 REJECTION
Appellant argues the §101 rejection based on the claims as a group.
Br. 9–11. As permitted by 37 C.F.R. § 41.37, we decide the § 101 rejection
based on claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2016).
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
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.” 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 claims 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
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concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility 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.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
Abstract idea
Turning to Step 2A, Prong 1, the claim is for an automatic resource
ownership assignment system. Claim 1 includes, with emphasis in italics,
resource ownership indicators definition functionality
operative to allow an operator of said system to define resource
ownership indicators;
automatic resource ownership recommendation
functionality operative to provide, to at least one user of said
system, which said at least one user has frequently actually
accessed at least one resource, a recommendation to assign
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ownership of said at least one resource to a potential owner,
based on said resource ownership indicators; and
automatic resource ownership assignment functionality
which, responsive to predetermined at least partial approval of
said at least one recommendation by said at least one user and
approval of said at least one recommendation by said potential
owner, is operative to automatically assign ownership of said at
least one resource to said potential owner.

Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See 2019 Eligibility Guidance, 84 Fed. Reg.
at 52, 53 (listing “[m]ental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
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.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “‘anonymous loan
shopping’” was an abstract idea because it could be “‘performed by humans
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without a computer’”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14.
The method recited in claim 1 executes steps that people can perform
in their minds or using pen and paper. A person can perform the italicized
steps of claim 1 by using his or her mind (or pen and paper) in the claimed
manner. For example, a person can “define resource ownership indicators,”
using his or her mind or pen and paper. A person can provide “a
recommendation to assign ownership of said at least one resource to a
potential owner, based on said resource ownership indicators” using his or
her mind or pen and paper. A person can, using his or her mind or pen and
paper, “assign ownership of said at least one resource to said potential
owner” “responsive to predetermined at least partial approval of said at least
one recommendation by said at least one user and approval of said at least
one recommendation by said potential owner.” Accordingly, claim 1 recites
a mental process and thus an abstract idea.
Turning to Step 2A, Prong 2, the remaining elements recited in claim
1 do not integrate the abstract idea into a practical application. In addition to
the steps discussed above, claim 1 recites “at least one processor,” “a non-
transitory tangible computer-readable medium in which computer program
instructions are stored” and “a computer.”
The written description discloses that the recited system encompasses
generic and known computer components. See, e.g., Spec. ¶ 34 (listing
simply “an enterprise computer network including multiple disparate clients,
data storage elements, computer hardware resources and computer software
resources”). Simply programming a general-purpose computer to perform
abstract ideas does not integrate those ideas into a practical application. See
2019 Eligibility Guidance, 84 Fed. Reg. at 55 (identifying “merely
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includ[ing] instructions to implement an abstract idea on a computer” as an
example of when an abstract idea has not been integrated into a practical
application).
Moreover, despite Appellant’s argument to the contrary (Br. 11), we
are not persuaded that the claimed invention improves the computer or its
components’ functionality or efficiency, or otherwise changes the way those
devices function, at least in the sense contemplated by the U.S. Court of
Appeals for the Federal Circuit in Amdocs (Israel) Ud. v. Openet Telecom,
Inc., 841 F.3d 1288 (Fed. Cir. 2016). In Amdocs, the Federal Circuit
determined the “claim entails an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).”
Amdocs, 841 F.3d at 1300. To the extent Appellant contends that the
claimed invention improves a computer’s functionality or efficiency, or
otherwise changes the way a computer functions, there is no persuasive
evidence on this record to substantiate such a contention.
Thus, the claims do not integrate the judicial exception into a practical
application because the claims (1) do not improve the functioning of a
computer or other technology, (2) are not applied with any particular
machine (except for a generic computer), (3) do not effect a transformation
of a particular article to a different state or thing, and (4) are not applied in
any meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim, as a
whole, is more than a drafting effort designed to monopolize the
exception. See Manual of Patent Examination Procedure §§ 2106.05(a)–(c),
(e)–(h).
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Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” The Examiner
determined claim 1 does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
the abstract idea itself. See Final Act. 3–4.
We agree. The additional elements recited in the claim include the “at
least one processor,” “a non-transitory tangible computer-readable medium
in which computer program instructions are stored” and “a computer.” The
claim recites these elements at a high level of generality, and the written
description indicates that the system is made up of generic computer
components. See, e.g., Spec. ¶ 34. Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept.
See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.”). Thus, these elements, taken individually or together, do not
amount to “significantly more” than the abstract idea itself.
To the extent Appellant contends various elements recited in the claim
provide the necessary “inventive concept,” these elements form part of the
recited abstract idea and thus are not “additional elements” that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 78); see also 2019 Eligibility Guidance, 84
Fed. Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’
to refer to claim features, limitations, and/or steps that are recited in the
claim beyond the identified judicial exception.” (Emphasis added)).
Rather, the recited system includes additional recited element whose
generic computing functionality is well-understood, routine, and
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conventional. See Intellectual Ventures, 792 F.3d at 1368 (noting that a
recited user profile (i.e., a profile keyed to a user identity), database, and
communication medium are generic computer elements); Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir.
2016) (noting that components such an “interface,” “network,” and
“database” are generic computer components that do not satisfy the
inventive concept requirement); 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.”). Accord Final Act. 13 (citing Spec. ¶¶ 57–58).
Appellant’s arguments does not persuade us claim 1 is “directed to” a
patent-eligible concept.
Moreover, even assuming, without deciding, that the claimed
invention can assign resource ownership in a system faster than doing so
manually (e.g., due to the recited “automatic” “functionality”), any speed
increase comes from the capabilities of the generic computer components—
not the recited process itself. See FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Servs, LLC v. Sun Life
Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed subject
matter.”)); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F.
App’x 1012, 1017 (Fed. Cir. 2017) (unpublished) (alteration in original)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer
‘do[ ] not materially alter the patent eligibility of the claimed subject
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matter.’”). Like the claims in FairWarning, the focus of claim 1 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted).
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claims 1–17 and 27–35
under 35 U.S.C. § 101.
SECTION 103(a) REJECTION
Appellant generally argues the combination of Ogi, Rogers, and
Faitelson fails to teach or suggest,
automatic resource ownership recommendation functionality
operative to provide, to at least one user of said system, which
said at least one user has frequently actually accessed at least
one resource, a recommendation to assign ownership of said at
least one resource to a potential owner, based on said resource
ownership indicators, as recited in claim 1.
Br. 14 (emphasis added).
The Examiner relies on the combined teachings of Ogi and Faitelson
to account for the aforementioned limitation. Final Act. 6–7. That is, the
Examiner finds Ogi teaches utilizing an access control list that indicates the
access right of a user or group to access an object (i.e., resource ownership
indicators). Ans. 7 (citing Ogi ¶¶ 16, 22–24). Ogi also teaches reassigning
access rights to a user or a newly created group, which teaches “automatic
resource ownership recommendation functionality operative to provide, to at
least one user of said system” a recommendation to assign ownership. Id.
The Examiner finds that Faitelson teaches accessing history information for
the folder, which we agree would permit a person of ordinary skill in the art
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to determine “at least one user [who] has frequently actually accessed at
least one resource,” as recited in claim 1. Id. at 8; Final Act. 7; Faitelson ¶
38.
In the absence of sufficient evidence or any line of technical reasoning
to the contrary, we agree with the Examiner’s findings for the reasons in the
Final Rejection and Answer, and we find no reversible error. Accordingly,
we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103. We
also sustain the Examiner’s obviousness rejection of claims 2–17 and 27–35
because Appellant has not presented separate patentability arguments or has
reiterated substantially the same patentability arguments as those discussed
for of claim 1.
DECISION
The Examiner’s rejections are affirmed.
More specifically, we affirm the Examiner’s rejection of claims 1–17
and 27–35 are rejected under 35 U.S.C. § 101. We also affirm the
Examiner’s rejection of claims 1–17 and 27–35 under pre–AIA 35 U.S.C.
§ 103(a).
DECISION SUMMARY
Claims
Rejected
Basis  Affirmed Reversed
#1–17 and
27–35
§ 101  #1–17 and
27–35

#1–17 and
27–35
§ 103(a)  #1–17 and
27–35

Overall
Outcome
#1–17 and
27–35

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FINALITY AND RESPONSE
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.
§ 1.136(a)(1)(iv).
AFFIRMED