Brad Handler

Patent Trials and Appeals Board

Sep 11, 2020

2020002322 (P.T.A.B. Sep. 11, 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.
12/856,025 08/13/2010 Brad Handler 2759.003US2 1210
21186 7590 09/11/2020
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/11/2020 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):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRAD HANDLER
____________

Appeal 2020-002322
Application 12/856,025
Technology Center 3600
____________

Before MICHAEL W. KIM, and JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13, 16, 18, 19, and 21–24. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
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 is Bradley Handler.
(Appeal Br. 3).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a method and system for
authenticating a credit applicant and credit user to protect against identity
fraud (Spec., para 2). Claim 24, reproduced below with the italics added, is
representative of the subject matter on appeal.

24. A method performed by a computer system, the method
comprising:
performing operations, within an authentication
architecture, to authorize a credit transaction based on renewed
authentication information for a user, the operations
comprising:
receiving, via a computer network comprising the
Internet from one or more user devices, data within the
authentication architecture comprising information to establish
a user authentication account, user authentication information,
and a set of renewal rules established by the user, the set of
renewal rules comprising a plurality of conditions under which
the user authentication information is transformed into renewed
user authentication information, wherein the set of renewal
rules are established by the user via a graphical user interface in
a user access layer;
determining occurrence of one or more of the plurality of
conditions in response to detecting one or more transactions
over the computer network comprising the Internet that are
associated with the user authentication information being used a
certain number of times or exceed a specified monetary limit;
and
transforming the user authentication information into the
renewed user authentication information in response to
determining the occurrence of the one or more of the plurality
of conditions by:
notifying, via the computer network, the user via the
graphical user interface to renew the user authentication
information; and
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receiving, via the computer network, input from the user
that renews the authentication information, wherein a user
services layer is coupled to one or more memories of the one or
more user devices and to at least one of one or more computer
processors of the one or more user devices to implement the
performing of the operations within the authentication
architecture.

THE REJECTION
The following rejection is before us for review:
Claims 1–13, 16, 18, 19, and 21–24 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 24 is improper
because the claim is not directed to an abstract idea (Appeal Br. 6; Reply Br.
3–5). The Appellant also argues that the claim recites a “practical
application” (Appeal Br. 10, 11). The Appellant argues further that the
claim “transforms” the alleged abstract idea (Appeal Br. 11–16). The
Appellant also argues that elements of the claim have not been shown to be
well-understood, routine, or conventional (Appeal Br. 16, 17).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–9; Ans. 3–6).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
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. Id. at 217–18 (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. 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)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
In January 2019, the published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
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that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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:
(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 Guidance.
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 (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. (alterations in original) (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 Specification at paragraph 2 states that the invention generally
relates to a method and system for authenticating a credit applicant and
credit user to protect against identity fraud. Here, the Examiner has
determined that the claim sets forth “authenticating a credit applicant and
credit user to protect against identity fraud by establish[ing] a user
authentication account and a set of rules under which a user authentication
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information is renewed” and is a method of organizing human activity and
an abstract concept (Final Action 3). We substantially agree with the
Examiner. We determine that the claim sets forth the subject matter in
italics above which describes the concept of: [1] “performing operations . . .
to authorize a credit transaction based on renewed authentication
information for a user”; [2] “receiving . . . data within the authentication
architecture comprising information to establish a user authentication
account, user authentication information, and a set of renewal rule . . .
established by the user”; [3] “determining occurrence of one or more of the
plurality of conditions in response to detecting one or more transactions”; [4]
“transforming the user authentication information into the renewed user
authentication information”; [5] “notifying . . . the user via the graphical user
interface to renew the user authentication information”; [6] “receiving . . .
input from the user that renews the authentication information” which is a
drawn to a method of authorizing a credit transaction based on renewed
authentication information for a user by receiving rules established by the
user and determining if those rules are met and notifying the user to then
renew the authentication information which is a method of organizing
human activity and fundamental economic practice, i.e. a judicial exception.
The Appellant at page 9 of the Appeal Brief has cited to SRI International,
Inc. v. Cisco Systems, 930 F.3d 1295 (Fed. Cir. 2019) but the claims in that
case differ from the claim at issue here. Here, the claimed method uses a set
of renewal rules to notify a user to renew authentication information and is
drawn to the abstract concept identified above.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
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Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
The Appellant has argued at page 11 of the Appeal Brief that the
claim addresses an improved approach to computer security that represents a
practical application. We disagree with this contention. Here, the claims do
not improve computer functionality, improve another field of technology,
utilize a particular machine, or effect a particular physical transformation.
Rather, we determine that nothing in the claims imposes a meaningful limit
on the judicial exception, such that the claims are more than a drafting effort
to monopolize the judicial exception.
For example, in the claim, the additional elements beyond the abstract
idea are the recited “computer network,” “computer processors” and
associated “user devices,” and “computer memories.” These are described
in the Specification as generic computer components (Spec., paras. 35. 36)
The claimed limitations of “performing”, “receiving”, “determining”,
“transforming the . . . information”; and “notifying” here “do not purport to
improve the functioning of the computer itself,” do not improve the
technology of the technical field, and do not require a “particular machine.”
Rather, they are performed using generic computer components. Further,
the claim as a whole fails to effect any particular transformation of an article
to a different state. The recited steps in the claim fail to provide meaningful
limitations to limit the judicial exception. In this case, the claim merely uses
the claimed computer elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
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each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The Appellant cites to DDR Holdings, LLC v. Hotels, L.P., 773 F. 3d
1245 (Fed. Cir. 2014) and argues that the claim is “rooted in computer
technology” (App. Br. 11). We disagree as the Appellant has not shown
how the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
routine, conventional, and generic manner. The Appellant at page 13 of the
Appeal Brief has also cited to Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) to show that the claim is not abstract, but the claims in
that case were not similar in scope to those here and were in contrast
directed to a self-referential data table.
Considering the claim both individually and as an ordered
combination fails to add subject matter beyond the judicial exception that is
not well-understood, routine, and conventional in the field. Rather the claim
uses well-understood, routine, and conventional activities previously known
in the art and they are recited at a high level of generality. The Specification
at paragraphs 35 and 36, for example, describes using conventional
computer components such as a desktop computer and handheld computing
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devices in a conventional manner. The claim specifically includes
recitations for computers to implement the method but these computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. Here, the claimed generic computer components
which are used to implement the claimed method are well understood,
routine, or conventional in the field. The Specification at paragraphs 35 and
36 for instance describe using general purpose computer components which
are known to perform the claimed functions in a well-understood manner.
Here, the claim has not been shown to be “significantly more” than the
abstract idea.
We further disagree with the Appellant that the asserted claims are
akin to the claims found patent eligible in Finjan, Inc. v. Blue Coat
Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), because in Finjan, the court
held that claims to a “behavior-based virus scan” were a specific
improvement in computer functionality and hence not directed to an abstract
idea. Finjan, 879 F.3d at 1304. (Appeal Br. 15–16). The claimed technique
of scanning enabled “more flexible and nuanced virus filtering” and
detection of potentially dangerous code. Id. This was done by “scanning a
downloadable and attaching the results of that scan to the downloadable
itself in the form of a ‘security profile.’” Id. at 1303. The security profile
included the information about potentially hostile operations produced by a
“behavior-based” virus scan, as distinguished from traditional, “code-
matching” virus scans that are limited to recognizing the presence of
previously-identified viruses, typically by comparing the code in a
downloadable to a database of known suspicious code. Id. at 1304. This
behavior-based scan resulted in a new type of file that when attached to a
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downloadable file, and allowed the computer to do more to protect itself
than in the past.
In contrast, the instant claims present no such new type of processing
to create a security profile using virus filtering. Instead, the claims use
conventional data processing to apply a set of renewal rules to notify a user
to renew authentication information. This may improve fraud prevention
efforts, but this is not an improvement to the computer.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”)).
For these above reasons the rejection of claim 24 is sustained. The
remaining claims are directed to similar subject matter for which the same
arguments have been presented and the rejection of these claims is sustained
as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–13, 16, 18, 19, and 21–24 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 16,
18, 19, and
21–24
101 Eligibility 1–13, 16,
18, 19, and
21–24

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