Amnon Perlmutter et al.

Patent Trials and Appeals Board

Dec 16, 2019

13928464 - (D) (P.T.A.B. Dec. 16, 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.
13/928,464 06/27/2013 Amnon Perlmutter 1893/181 2477
44696 7590 12/16/2019
Dr. Mark M. Friedman
Moshe Aviv Tower, 54th floor
7 Jabotinsky St.
Ramat Gan, 5252007
ISRAEL
EXAMINER
DESROSIERS, EVANS
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
friedpat.uspto@gmail.com
patents@friedpat.com
rivka_f@friedpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMNON PERLMUTTER and LIOR DRIHEM
Appeal 2018-000294
Application 13/928,464
Technology Center 2400
Before THU A. DANG, ERIC S. FRAHM, and MATTHEW J. McNEILL,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 26–52. Claims 1–25 were previously
canceled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellants” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellants identify the real party in interest as Check Point
Software Technologies Ltd. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
According to Appellants, the claimed invention “relates to enterprise
data security and, more particularly, to a method of enabling, for an
employee of an enterprise, secure and convenient use of enterprise
applications on a personal device of the employee.” Spec. 1:11–13.
Claim 26, reproduced below, is illustrative of the claimed subject
matter:
26. A method of providing security, comprising the steps of:
(a) providing a long secret with associated identification information;
(b) providing a short secret;
(c) providing a key;
(d) initiating generating of an encrypted key by encrypting said key
using said long secret; and
(e) initiating storing of:
(i) said key;
(ii) said identification information; and
(iii) said short secret,
wherein said storing of said key is in association with said
identification information and said short secret.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Verma
Rouse
US 2012/0114118 A1
US 2010/0266127 A1
May 10, 2012
Oct. 21, 2010

REJECTIONS
Claims 26–52 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea); and not directed to significantly more than the abstract idea
itself.
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Claims 26–52 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Verma and Rouse. App. Br. 5
ANALYSIS
Except where indicated, we adopt the Examiner’s findings in the
Answer and Final Office Action and we add the following primarily for
emphasis. We note that if Appellants failed to present arguments on a
particular rejection, we decline to review unilaterally those uncontested
aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir.
2008) (the Board may treat arguments Appellant failed to make for a given
ground of rejection as waived).
Rejection of claims 26–52 under 35 U.S.C. § 101
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216–218 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
75–77 (2012)). In accordance with that framework, we first determine what
concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their
face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk.”); see also
Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”). Concepts determined to be abstract ideas, and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
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at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are 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 Revised Guidance, 84 Fed. Reg. 56.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. Independent claim 26 recites a “method of providing
security.” Independent claim 44 recites a “user device” comprising a
“processing system.” Appellants do not argue the Examiner erred in
concluding claims 26 and 44 fall within the four statutory categories of
patentable subject matter. We agree with the Examiner’s conclusion
because claim 26 falls within the process category and claim 44 falls within
the machine category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
The Examiner concludes “[t]he claim(s) is/are directed to the abstract
idea of itself of ‘Data recognition and storage.’” Final Act. 4; Ans. 9
(emphasis omitted). However, Appellants contend that the claims are not
“an abstract idea,” because the claims are “not directed to data recognition,
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but rather, to providing and generating cyber security elements.” App.
Br. 10.
Independent claim 26 recites, in relevant part, (1) “providing a long
secret with associated identification information;” (2) “providing a short
secret;” (3) “providing a key;” (4) “initiating generating of an encrypted key
. . . using said long secret;” and (5) “initiating storing” of the key,
information and short secret, wherein the storing is “in association” with the
identification information. Independent claim 44 recites a “user device”
comprising a “processing system” being configured to perform steps similar
to those in claim 26. That is, claims 26 and 44 merely recite the steps (or a
processing system performing the steps) of providing data, initiating the
generating of data based on the provided data, and then initiating the storing
of the generated data in association with the provided data.
We agree with the Examiner that these limitations, under their
broadest reasonable interpretation, recite “Data recognition and storage.”
That is, these limitations merely comprise steps of “providing,” “generating
. . . using,” and at least one step of “storing . . . in association with” various
recognized data, constituting an evaluation or judgment, identified as an
exemplary mental process in the Revised Guidance. See Revised Guidance,
84 Fed. Reg. at 52. As the Examiner explains, “[t]he claims, as a whole, . . .
can be performed entirely by a human . . . as a person can use a pen and a
piece of paper to write down random numbers.” Ans. 9.
In particular, these steps of storing and recognizing data constitute
mental steps because they involve merely making a mental observation of
data and evaluating/judging the data, which can be carried out either in the
human mind (e.g., in the form of noting an observation) or with the aid of
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pencil and paper. See 2019 Guidance 52 n.14; see also Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“[W]e have
treated collecting information, including when limited to particular content
(which does not change its character as information), as within the realm of
abstract ideas.”). Acts that can be performed in the human mind fall within
the abstract idea exception subgrouping of mental processes.
Thus, under the broadest reasonable interpretation, we conclude
claims 26 and 44 recite an evaluation or judgment, which falls within the
mental processes category of abstract ideas identified in the Revised
Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Appellants contend that “[t]he claimed invention is directed to
providing several elements . . ., then these provided elements are used to
generate an additional element (an encrypted key) with an innovative
combination of elements stored in associated with each other.” App. Br. 10.
Thus, according to Appellants, “the claimed invention is not directed to data
recognition, but rather, to providing and generating cyber security
elements.” Id. We are not persuaded by Appellants’ arguments.
Notably, Appellants have not persuasively explained how claim 26
and/or claim 44 recites improvements to any technology or technical field
(see MPEP § 2106.05(a)), improves a particular machine (see MPEP
§ 2106.05(b)), transforms or reduces a particular article to a different state or
thing (see MPEP § 2106.05(c)), or describes a process or product that
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applies the exception in a meaningful way, such that it is more than a
drafting effort designed to monopolize the exception (see MPEP
§ 2106.05(e)). See App. Br. 10‒12. Instead, as Appellants concede, the
claimed invention is merely directed to providing several elements, i.e., data,
wherein then these provided elements/data are used to generate an additional
element, i.e., additional data. App. Br. 10. As the Examiner explains, “key
generation does not necessarily require a machine as a person can use a pen
and a piece of paper to write down random numbers.” Ans. 9.
Because these claimed steps of claim 26 set forth an abstract idea, we
do not identify any other additional element(s) sufficient to integrate the
abstract idea into a patent-eligible practical application. Similarly, we do not
identify any other additional element(s) in claim 44, reciting a “processing
system” being configured to perform steps similar to those in claim 26,
sufficient to integrate the abstract idea into a patent-eligible practical
application.
Accordingly, we conclude claims 26 and 44 do not integrate the
judicial exception into a practical application because claims 26 and 44
recite a method that could be performed mentally without integrating that
mental process into a particular application.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the elements in the claims both individually and “as an ordered
combination” recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
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2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (quoting Mayo, 566 U.S. at 73).
Here, the Examiner concludes the claims “as a whole, require generic
computer implementation or can be performed entirely by a human.”
Ans. 9. That is, “providing security using and storing different types of keys
. . . does not [even] require machine implementation.” Id.
In response, Appellants contend “[s]ecrets and keys [as claimed] are
elements of cyber security, directed to the way computers operate, as they
improve the functioning of computers and computer networks.” App.
Br. 10. According to Appellants, the claim’s “method of providing security
thus does recite an improvement to the functioning of the computer itself,
qualifies as ‘significantly more’, and is proper under U.S.C. §101.” Id.
at 11. However, we are not persuaded by Appellants’ argument.
To the extent Appellants contend that the recited limitations add
significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo (see Appeal Br. 10), generating keys/data is not an
additional element beyond the abstract idea, but rather is part of the abstract
idea itself. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) (explaining that the Supreme Court in Alice “only assessed
whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well understood, routine and
conventional”).
We briefly look to whether any additional limitations in claim 26 and
44 include an inventive concept. Here, limitations of “providing” secrets
and keys, “initiating generating” of keys, and “initiating storing” of keys,
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information and secrets, as set forth in claims 26 and 44, individually or as
an ordered combination, do not define ways of providing, generating, or
storing data that is different than any of the myriad conventional ways in
which a computer can provide, generate, or store data, and thus do not
provide an inventive concept. See, e.g., 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.”). The focus of claims 26 and 44 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use conventional computing components as tools. See
FairWarning IP, LLC v. IA, 839 F.3d 1089, 1095 (Fed. Cir. 2016). As with
the ineligible claimed invention in BSG, the claimed invention does not
improve a computer’s functionality or that of its associated components, but
rather the benefits flow from performing the abstract idea in conjunction
with those conventional computer components. See BSG, 899 F.3d at 1288
(“While the presentation of summary comparison usage information to users
improves the quality of the information added to the database, an
improvement [in] . . . the information stored by a database is not equivalent
to an improvement in the database’s functionality.”).
Therefore, claims 26 and 44 do not recite an inventive concept.
Accordingly, we agree with the Examiner that independent claims 26 and
44, and claims depending respectively therefrom and not specifically argued
separately, are directed to patent-ineligible subject matter.
Rejection of claims 26–52 under 35 U.S.C. § 103(a) as being unpatentable
over Verma and Rouse.
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Appellants contend that “Verma teaches in paragraph [0010] (cited by
the Examiner) that the long-term key identifier is used for locating a long-
term key, and the long-term key is used for encrypting a short-term key,”
whereas “the current claims recite encrypting a ‘key’ using a ‘long secret.’”
Appeal Br. 13. According to Appellants, “Verma has no need for a ‘key’ in
addition to the ‘short term key’, as Verma encrypts the short-term key.” Id.
at 14.
Similarly, Appellants contend that “Rouse teaches in paragraph
[0009]-[0010] (cited by the Examiner) that the encrypted Long Term Key is
used on the Originator with the Session Key,” whereas “the current claims
store the key in association with the identification information and the short
secret.” Id. That is, “Rouse has no need for a short secret, as the Session
Key is associated directly with an encrypted Long Term Key.” Id.
We have considered all of Appellants’ arguments and evidence
presented. We agree with Appellants that the preponderance of evidence on
this record does not support the Examiner’s legal conclusion that claims 26
and 52 would have been obvious over Verma and Rouse.
As Appellants argue, Verma discloses a “memory component” that
stores a “long-term key identifier for locating a long-term key used for
encrypting a short-term key.” See Verma ¶ 10. In particular, Verma
discloses providing a long-term key with associated identification
information, providing a short-term key, and encrypting the short-term key
using the long-term key. Id. Thus, Verma does not disclose both a “short
secret” as well as a “key,” wherein the “key” is encrypted and then stored
“in association with” the “short secret.” See claim 26. Instead, Verma only
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discloses a single “short-term key” that is encrypted by the long-term key
but is not stored in association with any short secret. Verma ¶ 10.
Further, Rouse discloses “encrypt[ing] the Session Key using a Long
Term Key” (Rouse ¶ 10), wherein the Long Term Keys “are stored in a
Long Term Key File and each is associated with a Long Term Key version
number.” Rouse ¶ 36. In particular Rouse discloses providing a Long-Term
Key with associated identification information, providing a Session Key, and
encrypting the Session Key using the Long Term Key. Id. at ¶¶ 10, 36.
Thus, like Verma, Rouse does not disclose both a “short secret” as well as a
“key,” wherein the “key” is encrypted and then stored “in association with”
the “short secret.” See claim 26. Instead, Verma only discloses a single
“Session Key” that is encrypted by the Long Term Key but is not stored in
association with any short secret. Rouse ¶¶ 10, 36.
Thus, contrary to the Examiner’s findings (Ans. 11–19), neither
Verma nor Rouse, alone or in combination, teaches or suggests both a “short
secret” as well as a “key,” wherein the “key” is encrypted by a “long secret”
and then stored “in association with” the “short secret.” Claim 26.
In such case, we would have to engage in some degree of speculation
regarding the Examiner’s finding and conclusion that the references teaches
and suggests these recited limitations. Ans. 11–19. We decline to engage in
speculation.
Accordingly, we are persuaded by Appellants’ contentions that Verma
and Rouse fail to teach or suggest the contested limitations recited in
independent claim 26, and similarly recited in independent claim 44.
Because we find at least these errors with respect to the Examiner’s
rejections, we need not and do not make any findings with respect to the
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other contested limitations. Rather, we confine our findings to these argued
features, which are dispositive of this appeal.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding the combination of Verma and Rouse teaches
or suggests Appellants’ claims 26 and 44. We also do not sustain the
Examiner’s obviousness rejection of dependent claims 27–43, and 45–52
depending respectively from claims 26 and 44 but not separately argued,
over Verma and Rouse.
CONCLUSION
The Examiner’s rejection of claims 26–52 under 35 U.S.C. § 101 as
being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea); and not directed to significantly more than
the abstract idea itself is affirmed.
However, the Examiner’s rejection of claims 26–52 under 35 U.S.C.
§ 103(a) as being unpatentable over Verma and Rouse is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
26–52 101 Eligibility 26–52
26–52 103(a) Verman, Rouse 26–52
Overall Outcome: 26–52

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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