AirWatch LLC

Patent Trials and Appeals Board

Apr 6, 2020

14584097 - (D) (P.T.A.B. Apr. 6, 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.
14/584,097 12/29/2014 Kar Fai Tse W096 (500102-1260) 2638
152577 7590 04/06/2020
Thomas | Horstemeyer, LLP (VMW)
3200 Windy Hill Road, SE
Suite 1600E
Atlanta, GA 30339
EXAMINER
SEREBOFF, NEAL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/06/2020 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):
docketing@thomashorstemeyer.com
ipadmin@vmware.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAR FAI TSE, CHAOTING XUAN, and CHEN LU
Appeal 2019-001299
Application 14/584,097
Technology Center 3600
Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–3, 5–10, 12–14, and 21–28, which constitute all
claims pending in the application. 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 AirWatch, LLC.
Appeal Br. 2.
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BACKGROUND
The Claimed Invention
Appellant’s claimed invention relates to securely storing and
transmitting health information. Spec. ¶ 1. Claims 1, 8, and 21 are
independent. Claim 1 is illustrative of the invention and the subject matter
of the appeal, and reads as follows:
1. A system, comprising:
at least one computing device;
program code stored in memory and executable by the at least
one computing device that, when executed by the at least one
computing device, causes the at least one computing device to at least:
enroll a client device with a management service configured to
oversee operation of the client device;
in response to an enrollment of the client device with the
management service, determine that at least one compliance rule is
satisfied based at least in part on a state of the client device;
in response to the at least one compliance rule being satisfied,
provide a first cryptographic key to a client application executable on
the client device, wherein the client application is configured to
encrypt health information using the first cryptographic key;
receive a request from a requesting service for a transmission of
the health information generated by the client device or a wearable
peripheral device in communication with the client device;
determine that consent for the transmission of the health
information generated by the client device or the wearable peripheral
device to the requesting service has been provided on the client
device, wherein the consent comprises a user input to the client device
indicating that consent to the transmission of the health information
generated by the client device or the wearable peripheral device
associated with the client device to the requesting service;
in response to a determination that the at least one compliance
rule is satisfied and that the consent has been provided on the client
device, encrypt the health information, as encrypted using the first
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cryptographic key, using a second cryptographic key, wherein the
second cryptographic key is specific to the requesting service; and
send the health information as encrypted using the first
cryptographic key and the second cryptographic key to the requesting
service.
Appeal Br. 25–26 (Claims Appendix) (emphases added).
The Rejection on Appeal
Claims 1–3, 5–10, 12–14, and 21–28 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–4;
Ans. 3–10.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error. To the extent consistent with our discussion below, we adopt as our
own the findings and reasons set forth in the rejection from which the appeal
is taken and in the Examiner’s Answer. We also provide the following for
highlighting and emphasis.
Rejection Under 35 U.S.C. § 101
The Examiner determined that claim 1 is directed to “securely storing
and transmitting medical- or health-related information,” which the
Examiner determined is an abstract idea. Final Act. 2–3; Ans. 3–7; Alice
Corp. v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”). Further, the Examiner found that claim 1
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does not recite additional limitations beyond a generic computing device,
and therefore does not amount to significantly more than the abstract idea.
Ans. 7–8. Accordingly, the Examiner concluded that the claims constitute
ineligible subject matter.
Appellant argues that claim 1 is not an abstract idea because it “deals
with device compliance using a management service” and enables “double-
encryption of health information.” Reply Br. 3–4; see also Appeal Br. 11–
16. Specifically, Appellant argues that claim 1 is directed to “performing an
analysis of a device to determine whether a state of the device is in
compliance and, if so, directing performance of a double-encryption scheme
to encrypt data prior to transmission over a network.” Reply Br. 10.
Appellant further argues that computer elements recited in claim 1 were not
well-understood, routine, or conventional. Id. 11–12.
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a 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)
(“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (“Step 2A,
Prong Two”).
See 84 Fed. Reg. at 54–55.
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Only if a claim recites a judicial exception and 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
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See id. 56 (collectively “Step 2B”).
We begin our review with Step 2A, Prong One of the Guidance, as
applied to Appellant’s claim 1.2
Claim 1 recites a system comprising a “computing device”
programmed to do the following: (1) “enroll” a client device with a service
configured to “oversee” its operation; (2) “determine” satisfaction of a
compliance rule; (3) “provide” a cryptographic key for encrypting health
information; (4) “receive a request” for a transmission of the health
information; (5) “determine” consent for transmission, based on “user
input;” (6) “encrypt” the health information using a second key; and (7)
“send” the encrypted health information using both cryptographic keys.
Appeal Br. 25–26 (Claims Appendix). Upon review of claim 1, we agree
with the Examiner’s determination that the foregoing claimed programming
steps constitute a method of organizing human activity, namely, a private

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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communication between people (or person and business) of health
information, following certain rules.
Specifically, the foregoing “enroll” step identifies a device by which
the health information may be communicated, and the “determine” steps
constitute processing to decide (pursuant to rules not recited, and user input)
whether the device will communicate such information. The “receive” and
“send” steps constitute communication of the information. The “provide”
and “encrypt” steps constitute maintaining privacy of the information to be
communicated. Taken together, the elements simply comprise a private
communication of health information, i.e., an interaction that is one of the
certain methods of organizing human activity deemed abstract under the
Guidance. See, e.g., In re Salwan, 681 Fed. Appx. 938, 941 (Fed. Cir. 2018)
(holding that communication of health care bill is method of organizing
human activity, and specific calculation steps are fundamental economic
practice). Appellant argues that claim 1 could be directed to the receipt and
processing of any data, not just health information. Reply Br. 5–6. Data
receipt and processing, however, does not make the claim any less abstract.
See Electric Power Group, LLC, v. Alstom S.A., 830 F.3d 1350, 1353–54
(Fed. Cir. 2016) (“[W]e have treated collected information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.”).
Accordingly, we agree with the Examiner’s determination that claim 1
recites an abstract idea.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellant argues that the use of
cryptographic keys, i.e., encryption, in claim 1 integrates the idea into a
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practical application. Appeal Br. 16–17; Reply Br. 5–6; see also DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Section III; see also DDR, 773
F.3d 1245; Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016). Appellant, however, does not explain, and we
do not discern, any improvement in technology from the claimed invention.
Compare DDR, 773 F.3d at 1258 (Fed. Cir. 2014) (“the claims at issue here
specify how interactions with the Internet are manipulated to yield a desired
result––a result that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.”) (emphasis added);
see also Bascom, 827 F.3d at 1350 (“harness[ing a] technical feature of
network technology in a filtering system” to customize content filtering).
The claims in DDR, for example, were “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” see, e.g., DDR, 773 F.3d at 1257, but Appellant’s
claim 1 recites applying encryption, generally (without any details of the
cryptography being recited), on generic computing equipment. See, e.g.,
Spec. ¶¶ 20, 97, 100–101 (describing generic hardware components); see
also id. ¶ 17 (describing existing encryption methodologies, such as use of a
PIN or password). Appellant does not argue, and the record does not
indicate, that claim 1 is directed to an improved encryption method.
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites encrypting and transmitting health information.
Appeal Br. 25–26 (Claims Appendix). Reciting a result-oriented solution
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that lacks any details as to how the computer performed the modifications is
the equivalent of the words “apply it.” Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015) (citing
Elec. Power Grp., LLC, v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir.
2016) (cautioning against claims “so result focused, so functional, as to
effectively cover any solution to an identified problem”)); see also
CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(mere data gathering does not make a claim patent-eligible). The data
processing-related elements in claim 1, including applying cryptographic
keys (without more), do not add meaningfully to the recited method of
organizing human activity. See supra.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” “The question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites programming steps to ensure private communication
of health data. See supra. We agree with the Examiner’s finding that
simply using standard, generic computer elements (as described in the
Specification, see supra) to implement encryption of private information is
well understood, routine, and conventional, and is not a meaningful
limitation that amounts to significantly more than an abstract idea. Ans. 7–
8; see supra. Appellant asserts that claim 1 recites “analysis” rather than
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mere information gathering and display. Reply Br. 10. No particular
“analysis” is recited in claim 1, however. Moreover, as discussed above,
Appellant’s Specification describes only the use of generic computing
equipment and known encryption techniques, to implement the claimed
steps. Spec. ¶¶ 17, 20, 97, 100–101. Further, Appellant provides no
evidence or persuasive argument to rebut any of the Examiner’s findings.
Id.
Accordingly, we agree with the Examiner’s determination that claim 1
merely uses computer elements in the implementation of an abstract idea,
which does not equate to providing a technical solution to a technical
problem. Id. 10.
For the foregoing reasons, we are not persuaded of error. We sustain
the rejection of claim 1 as constituting patent-ineligible subject matter.
Appellant does not argue the subject matter ineligibility rejection of the
remaining claims separately from claim 1. Accordingly, we also sustain the
rejection of those claims.
SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–10,
12–14, 21–
28
101 Eligibility 1–3, 5–10,
12–14, 21–
28

DECISION
We affirm the Examiner’s decision rejecting claims 1–3, 5–10, 12–14,
and 21–28.
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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