Aissi, Selim

Patent Trials and Appeals Board

Jan 10, 2020

14012597 - (D) (P.T.A.B. Jan. 10, 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.
14/012,597 08/28/2013 Selim Aissi 79900-883554-029000USNP 6464
66945 7590 01/10/2020
KILPATRICK TOWNSEND & STOCKTON LLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
BEHESHTI SHIRAZI, SAYED ARESH
ART UNIT PAPER NUMBER
2435
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SELIM AISSI
____________________

Appeal 2019-000224
Application 14/012,597
Technology Center 2400
____________________

Before JENNIFER S. BISK, SCOTT E. BAIN, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

DIRBA, Administrative Patent Judge.

DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the
Examiner’s rejection of claims 1, 3–7, 9, 10, and 12–20, which are all claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision uses the following abbreviations: “Spec.” for the original
Specification, filed Aug. 28, 2013, claiming the benefit of a provisional
application; “Final Act.” for the Final Office Action, mailed Feb. 8, 2018;
“Appeal Br.” for Appellant’s Appeal Brief, filed July 3, 2018; “Ans.” for
Examiner’s Answer, mailed Aug. 7, 2018; and “Reply Br.” for Appellant’s
Reply Brief, filed Oct. 5, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is Visa
International Service Association. Appeal Br. 2.
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BACKGROUND
Appellant’s disclosed embodiments and claimed invention relate to
“protecting data on a device based on the awareness of the environment
associated with the data.” Spec. ¶ 7. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for protecting data assets on a computing
device, the method comprising:
prior to receiving a user input,
[(1)] searching, by a data protection module run by a
processor, for a plurality of different data assets residing at
different memory locations on the computing device;
[(2)] identifying, by the data protection module run by the
processor, the plurality of different data assets based on
attributes of the plurality of different data assets;
[(3)] classifying the plurality of different data assets
based on the attributes and data types of the plurality of
different data assets, the different memory locations on the
computing device for the plurality of different data assets, and a
state of the plurality of different data assets, the state of the
plurality of different data assets including one or more of an at-
rest state, an in-use state corresponding to currently being
utilized by an application, or an in-transit state corresponding to
moving between entities, the data types selected from the group
consisting of a numeric value, a string of text, an image, and an
audio file;
[(4)] ranking a particular data asset of the plurality of
different data assets based at least in part on a classification of
the plurality of different data assets, the ranking indicating
sensitive data associated with the particular data asset in
comparison to other ranks of other data assets of the plurality of
different data assets;
[(5)] updating the ranking of the particular data asset of
the plurality of different data assets based at least in part on the
user input;
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[(6)] generating a map using the classification of the
plurality of different data assets, wherein the map associates the
particular data asset of the plurality of different data assets with
a location in the computing device, policies for protecting the
particular data asset, an updated ranking of the particular data
asset, and protection mechanisms used to protect the particular
data asset; and
[(7)] protecting the plurality of different data assets
according to their associated protection mechanisms.
Appeal Br. 22–23 (Claims App.) (emphasis and numbering added).
REJECTION
Claims 1, 3–7, 9, 10, and 12–20 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 6–7.
ANALYSIS
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Patent Eligibility Rejection of Claims 1–26
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
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useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized implicit exceptions 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 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 regarding this framework.
See USPTO, 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 falling within an
abstract idea grouping 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. If the claim is “directed to” an abstract idea,
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as noted above, we then determine whether the claim recites 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.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
Appellant argues claims 1, 3, 4, 6, 7, 9, 10, 12, 13, and 15–20 as a group and
separately addresses dependent claims 5 and 14 as a group.3 See Appeal Br.
10–20. Therefore, consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), we limit our discussion to independent claim 1 and
dependent claim 5.
The Judicial Exception—Abstract Idea
The Examiner determined the claims are directed to the abstract idea
of “searching for a plurality of different data assets, identifying the plurality
of different data assets, classifying the plurality of different data assets,
ranking a particular data asset of the plurality of different data assets, and
generating a map using the classification of the plurality of different data

3 Appellant states that “[d]ependent claims 3–5 and 12–14 are also
separately argued” (Appeal Br. 10), but Appellant does not present a
separate argument regarding dependent claims 3, 4, 12, or 13 (see id. at 20).
Rather, Appellant includes a section contending that claims 5 and 14 are
patent eligible, and in that section, Appellant notes that these claims depend
from claims 3, 4, 12, and/or 13. Id. Accordingly, dependent claims 3, 4, 12,
and 13 are not separately argued, and they stand or fall with their respective
independent claim.
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assets, and protecting the plurality of different data assets.” Final Act. 6–7
(quotation marks, commas, and ellipses omitted for clarity). The Examiner
determined the claim as a whole merely recites “collecting information,
analyzing it and displaying certain result[s] of [the] collection and analysis.”
Id. at 3, 7 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)).
For the reasons explained below, we agree with the Examiner that the
claims recite an abstract idea.
Under the broadest reasonable interpretation, the limitations of
claim 1 recite a mental process. Specifically, claim 1 recites “searching” for
data assets (limitation (1)), “identifying” those assets based on their
attributes (limitation (2)), “classifying” those assets based on their attributes,
their data types, the location in memory where they reside, and their state
(limitation (3)), “ranking” a particular asset based on the classification
(limitation (4)), “updating” that ranking based on user input (limitation (5)),
and “generating a map” associating the assets with locations, policies,
rankings, and protection mechanisms (limitation (6)). Appeal Br. 22–23
(Claims App.).
These limitations, under their broadest reasonable interpretation,
recite steps that, but for the recitation of a “processor” running a “data
protection module” and a “computing device” storing data in “memory
locations,” could be performed in the mind or with pencil and paper. For
example, a person can search for information, identify and classify the
information, rank (and update the ranking for) a particular piece of
information, and generate a table that associates different categories of
information with mechanisms for protecting the information (e.g.,
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encrypting the information or deleting it). See, e.g., Spec. ¶¶ 37 (defining
the claimed “policy” to broadly include “a set of rules”), 39 (defining the
claimed “map” to broadly include “an association of one or more data assets
on a computing device with one or more other aspects of the data or
computing device,” which may be implemented as a table), 91 (defining
“protection mechanisms” to broadly include “encryption, tokenization,
masking, de-contexting, hashing, deletion, scrubbing, or any protection
mechanism suitable for protecting security sensitive data”), 101 (noting that
the tables in Figures 6A and 6B are examples of the claimed “map”).
Accordingly, these limitations recite a mental process.
When claimed in a manner similar to the claims here, identifying,
classifying, ranking, and associating information has been determined to be
an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372, 1376 (Fed. Cir. 2011) (holding that a method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under 35 U.S.C. § 101); see also Intellectual Ventures I LLC
v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (finding
claims were “directed to the abstract idea of collecting, displaying, and
manipulating data”); 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.”).
Accordingly, we conclude the claims recite a mental process, and
thus, an abstract idea. Revised Guidance, 84 Fed. Reg. at 52–53 (listing
“[m]ental processes—concepts performed in the human mind (including an
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observation, evaluation, judgment, opinion)” as one of the “enumerated
groupings of abstract ideas”).
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites a “processor” running “a data protection
module” (limitations (1) and (2)) and a “computing device” storing data in
“memory locations” (limitations (1), (3), and (6)). Appeal Br. 22–23
(Claims App.). Considering claim 1 as a whole, these additional elements
do not apply or use the abstract idea in a meaningful way because they are
simply generic computer limitations. See Alice, 573 U.S. at 223 (“Stating an
abstract idea while adding the words ‘apply it with a computer’” is not
sufficient to confer patent eligibility.); DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain
no doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.”). The Specification demonstrates
that the “computing device” and “memory locations” are generic
components. E.g., Spec. ¶¶ 30 (“A ‘computing device’ may comprise any
electronic device that may be operated by a user, which may also provide
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remote communication capabilities to a network. . . . Examples of
computing devices include mobile devices (e.g. cellular phones), personal
computers, PDAs, tablet computers, net books, laptop computers, personal
music players, hand-held specialized readers, etc.”), 45 (“[M]emory on the
computing device 100 may be implemented in any suitable manner and may
include a combination of different types of memory storage.”). The claimed
“processor” is not described in any detail in the Specification, which
confirms that it is also a generic component. See, e.g., Spec. ¶¶ 61 (“In one
embodiment, the processor 302 may be configured for processing the
functions of a phone.”), 117 (noting that the steps may be implemented by
execution of instructions “by a suitably-programmed computing device,
microprocessor, data processor, or the like”). And, finally, the
Specification’s description of the claimed “data protection module” indicates
it is simply a generic software component. See, e.g., Spec. ¶¶ 69–71 (data
protection module 400 may be part of a downloaded application, a
“standalone module,” or “a module in the operating system kernel”), 119
(software may be implemented with conventional techniques).
In addition, claim 1 recites the additional element of “protecting” the
assets according to the associated “protection mechanisms” (limitation (7)).
Considering claim 1 as a whole, this additional element (alone and when
considered in combination with other additional elements) does not apply or
use the abstract idea in a sufficiently meaningful way. The Supreme Court
guides that the “prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.”’ Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (quoting
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Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). The Specification makes
clear that “protecting” assets according to “protection mechanisms” is a
generic computer-based activity. E.g., Spec. ¶¶ 91–97 (providing high-level
description of protection mechanisms, which include “encryption,”
“hashing,” and “deletion”). Accordingly, we conclude that claim 1 does not
integrate the abstract idea into a practical application. See Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) (holding that claims reciting modifying data in an “XML document”
were not patent eligible because, “at best, this limits the invention to a
technological environment for which to apply the underlying abstract
concept”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) (holding that claims directed to applying rules and
automatically delivering email messages were not patent eligible);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(holding claims that included limitations restricting access were not patent
eligible).
Appellant’s arguments have not persuaded us that claim 1 is directed
to a patent-eligible concept. For example, we are not persuaded by
Appellant’s arguments that the Examiner failed to establish a prima facie
case. Appeal Br. 11–13. The Federal Circuit has explained that “the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We
determine that the Examiner established a prima facie case by setting forth
the rejection in a sufficiently articulate and informative manner. See In re
Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining to “impose additional
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prima facie procedural requirements” beyond the notice required by statute).
Appellant does not allege a failure to understand the rejection, and indeed,
Appellant identifies and responds to the Examiner’s analysis. See, e.g.,
Appeal Br. 11–12 (identifying abstract idea and alleging the case cited by
the Examiner is distinguishable).
Moreover, Appellant submits “[t]he instant claims share substantial
similarities to the claims of DDR Holdings,” which were found to be patent
eligible because “they were necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
technology.” Appeal Br. 14 (citing DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)). According to Appellant, limitations (6)
and (7) demonstrate that the claims recite a technical solution to a technical
problem by allowing “the data protection module . . . to proactively store
and securely maintain a data asset based on the awareness of the
environment.” Id.
Although an abstract idea can be integrated into a practical application
by improving the functioning of a computer, we are not persuaded that
claim 1 does this. As discussed above, claim 1 recites locating data assets
(limitations (1)–(2)), classifying and ranking the data assets (limitations (3)–
(5)), generating a map associating the data assets with protection
mechanisms (limitation (6)), and protecting the assets according to the
protection mechanisms (limitation (7)). Appeal Br. 22–23 (Claims App.).
Even if we were to agree that this addresses a technical problem, the claim
fails to provide a technical solution. At best, claim 1 recites an idea (i.e.,
protecting different categories of data with different protection
mechanisms)—it lacks technical details for implementing its idea, and
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instead broadly recites generating a map (e.g., a table specifying the
protection mechanism for a particular type of data) and protecting the data as
specified. The Specification, likewise, lacks technical details to implement
the idea and fails to include a technical solution. See, e.g., Spec. ¶¶ 28
(identifying technical problems which may cause data to be unprotected, but
purporting to “solve this problem by searching for and identifying such data
and providing [an] appropriate” protection mechanism), 24–25 (generally
stating that invention uses “awareness of the environment associated with
the data” where existing solutions use “reactive measures”); see also Ans. 8–
9 (“[T]he instant claims do[] not disclose[] a solution to a problem
necessarily rooted in the computer technology and the recited limitations are
steps previously performed by human processor.”). As a result, we are not
persuaded that claim 1 recites a technical solution to a technical problem,
and consequently, we are not persuaded that claim 1 is analogous to the
claims in DDR Holdings.
Accordingly, even in combination with all the other recited elements,
the addition of these additional elements do not integrate the abstract idea
into a practical application because it does not impose any meaningful limits
on practicing the abstract idea. For these reasons, we determine that claim 1
does not integrate the recited abstract idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
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append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 56. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. at n.36 (citing MPEP § 2106.05(d), as modified
by the Berkheimer Memorandum4). Whether additional elements are
WURC activity is a question of fact. See Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018) (“Whether something is well-understood,
routine, and conventional to a skilled artisan . . . is a factual
determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). The Examiner found that the claim’s limitations recite
“routine, conventional activity.” Final Act. 7. Appellant argues that the
claim, when considered in its entirety, is not conventional and argues the
Examiner erred by not presenting evidence that claim 1, as a whole, is
conventional. Appeal Br. 19–20; see Reply Br. 4–5. Appellant’s argument
is not persuasive because the novelty of a claim “is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting
Diehr, 450 U.S. at 188–89).

4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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Appellant does not point to any particular claim element or
combination of elements that does not qualify as WURC, and as explained
supra, Appellant’s Specification demonstrates the WURC nature of the
additional elements by indicating that they can be implemented with generic
devices. E.g., Spec. ¶¶ 30, 37, 39, 45, 61, 69–71, 91–97, 101, 117, 119.
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept. Therefore, we sustain the Examiner’s
§ 101 rejection of independent claim 1. Grouped independent claims 10 and
18 and dependent claims 3, 4, 6, 7, 9, 12, 13, 15–17, 19, and 20 fall with
claim 1, and we also sustain the Examiner’s § 101 rejection of these claims.
Dependent Claim 5
Appellant further argues that dependent claim 5 is patent eligible
because it “specifically mentions different protection schemes that can be
used to protect different data assets.” Appeal Br. 20. In particular, claim 5
specifies: the searching, identifying, and classifying steps are based on “a
policy”; and a data asset is protected according to the policy, where the
protecting includes “encryption, de-contexting, tokenization, masking,
hashing, or deletion.” Appeal Br. 23 (Claims App.).
We are not persuaded that claim 5 recites eligible subject matter. For
the reasons explained above with respect to claim 1, the additional
limitations recited by claim 5 neither integrate the abstract idea into a
practical solution nor recite elements (individually or in combination) that
do not qualify as WURC. Using policies to perform a mental process is yet
another mental process, and thus an abstract idea. And the recited protection
schemes do not integrate the abstract idea into a practical application and are
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not an inventive concept (either individually or considered with other
additional elements), as the Specification confirms that they are
conventional activity. E.g., Spec. ¶ 92 (“Encryption of the data may include
encoding the data based on any known encryption algorithm . . . .” (emphasis
added)); see also id. ¶¶ 91–97 (providing high-level description of protection
mechanisms).
Accordingly, we conclude that claim 5 does not recite patent eligible
subject matter, and consequently, we sustain the Examiner’s § 101 rejection
of claim 5 and grouped claim 14.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 9,
10, 12–20
101 Eligibility 1, 3–7, 9,
10, 12–20

TIME PERIOD FOR 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