Ex Parte 6,460,050 B1 et al

Patent Trial and Appeal Board

Sep 13, 2017

95002202 (P.T.A.B. Sep. 13, 2017)

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.
95/002,202 09/12/2012 6,460,050 B1 098888-7899 9878
23524 7590 09/14/2017
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

SYMANTEC CORPORATION
Requester

v.

INTELLECTUAL VENTURES I, LLC
Patent Owner
____________________

Appeal 2017-007100
Reexamination Control No. 95/002,202
Patent No. US 6,460,050 B1
Technology Center 3900
____________________

Before JAMES T. MOORE, MARC S. HOFF, and STEPHEN C. SIU,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Patent Owner (Intellectual Ventures, LLC) appeals under 35 U.S.C.
§§ 134(b) and 315(a) (2002) from the rejection of claims 1, 2, 4–6, 8–10,
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12–17, and 21–241 as set forth in the Right of Appeal Notice (“RAN”)
mailed October 1, 2014. Patent Owner filed a brief (“PO App. Br.”) on June
12, 2015. Requester (Symantec Corporation) filed a respondent brief (“Req.
Br.”) on July 13, 2015. Patent Owner filed a rebuttal brief (“PO Reb. Br.”)
on November 16, 2015. The Examiner mailed an Examiner’s Answer
(“Ans.”) on October 16, 2015, which incorporated the RAN by reference.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm the rejection of the appealed claims on new grounds, in
view of the Federal Circuit’s decision in Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), which concluded that
certain claims of the ’050 Patent are directed to patent-ineligible subject
matter under 35 U.S.C. § 101.
The ’050 Patent was issued to Pace on October 1, 2002. The ’050
Patent concerns a file content classification system, intended to determine
whether a piece of e-mail is to be classified as SPAM, or copyrighted
material, or as containing a virus. See ’050 Patent, Abstract; col. 3, ll. 16–
20. In one aspect of the invention, the system includes a digital ID generator
and an ID database coupled to receive IDs from the ID generator. The
system further includes a characteristic comparison routine identifying the
file as having a characteristic based on ID appearance in the appearance
database. ’050 Patent, col. 2, ll. 24–29.

1 Patent Owner does not appeal rejected claims 3, 7, 11, 18, 19, 26, 28–39,
and 42–59. Claims 20, 25, 27, 40, and 41 stand confirmed or patentable.
RAN 2.
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Claim 1, which is illustrative of the appealed subject matter, reads as
follows:
1. A file content classification system comprising:
a plurality of agents, each agent including a file content
ID generator creating file content IDs using a mathematical
algorithm, at least one agent provided on one of a plurality of
clients;
an ID appearance database, provided on a server, coupled
to receive file content IDs from the agents; and
a characteristic comparison routine on the server,
identifying a characteristic of the file content based on the
appearance of the file content ID in the appearance database
and transmitting the characteristic to the client agents.

The appealed claims stand rejected as follows:
Claims 1, 2, 4–6, 8–10, 12–17, and 21–24 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Townshend. RAN 8.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCormick and Townshend. RAN 14.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Townshend and Norton AntiVirus for Internet Email
Gateways (1998) (“NAV”). RAN 16.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Townshend and Applicant’s Admitted Prior Art
(“AAPA”). RAN 16.

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ISSUES
The following issues are presented in light of Intellectual Ventures I:
1. Is the claimed invention directed to an abstract idea?
2. Do the claims nevertheless recite an inventive concept, i.e., 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
abstract idea itself?

ANALYSIS
NEW GROUND OF REJECTION UNDER 35 U.S.C. § 101
The Federal Circuit concluded that claims 9, 13, 16, 22, and 24 of the
’050 Patent, asserted in litigation by Patent Owner Intellectual Ventures
against Third Party Requester Symantec Corp., are directed to patent-
ineligible subject matter under 35 U.S.C. § 101. Intellectual Ventures I, 838
F.3d at 1311. That decision became final as of January 19, 2017, the date of
issuance of the mandate to the United States District Court for the District of
Delaware. We, therefore, consider proceedings terminated as to claims 9,
13, 16, 22, and 24 of the ’050 Patent.
Claims 1, 2, 4–6, 8, 10, 12–15, 17, 21, and 232 are newly rejected
under 35 U.S.C. § 101 as being directed to nonstatutory subject matter.
Claims 1 and 21 are independent. Each of these independent claims
recites subject matter analogous to that of claim 9, selected as representative

2 In the event of further proceedings, the Examiner may also wish to
consider the applicability of the Federal Circuit’s conclusion, that asserted
claims 9, 13, 16, 22, and 24 constitute patent-ineligible subject matter, to the
remaining, un-appealed claims of the ’050 Patent.
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by the Federal Circuit and determined to be directed to patent-ineligible
subject matter. See Intellectual Ventures I, 838 F.3d at 1313. This chart
shows the parallel claim limitations:

Claim 9 Claim 1 Claim 21
A method for
identifying
characteristics of data
files, comprising:
A file content
classification system
comprising:
A file content
classification system
for a first computer and
a second computer
coupled by a network,
comprising:
Receiving, on a
processing system, file
content identifiers for
data files from a
plurality of file content
identifier generator
agents, each agent
provided on a source
system and creating
file content IDs using a
mathematical
algorithm, via a
network;
A plurality of agents,
each agent including a
file content ID
generator creating file
content IDs using a
mathematical
algorithm, at least one
agent provided on one
of a plurality of clients;
a client agent file
content identifier
generator on the first
computer, the file
content identifier
comprising a computed
value of at least two
non-contiguous
sections of data in a
file; and
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Determining, on the
processing system,
whether each received
content identifier
matches a
characteristic of other
identifiers; and
a characteristic
comparison routine on
the server, identifying a
characteristic of the file
content based on the
appearance of the file
content ID in the
appearance database
and
A server comparison
agent and data-
structure on the second
computer receiving
identifiers from the
client agent,
determining if the file
comprises at least one
of SPAM or a virus
based on the
identifiers, and
Outputting, to at least
one of the source
systems responsive to a
request from said
source system, an
indication of the
characteristic of the
data file based on said
step of determining.
Transmitting the
characteristic to the
client agents.
Providing replies to the
client agent, wherein
the replies comprise an
indication that the file
comprises at least one
of SPAM or a virus;
wherein the client
agent processes the file
based on replies from
the server comparison
agent.

The Federal Circuit analyzed the asserted claims under the test set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
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1289 (2012) and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347
(2014). At step one of the analysis, a court must “determine whether the
claims at issue are directed to one of those patent-ineligible concepts [i.e.,
laws of nature, natural phenomena, or abstract ideas].” Alice, 134 S. Ct. at
2355. If a claim is directed to a patent-ineligible concept, the court must
proceed to Mayo/Alice step two and ask, “‘[w]hat else is there in the claims
before us?’” Alice, 134 S. Ct. at 2355. The second step is “a search for an
‘inventive concept’ —i.e., 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, 134 S. Ct. at 2355.
The Federal Circuit found that the content of claims 9, 13, 16, 22, and
24, i.e., “receiving e-mail (and other data file) identifiers, characterizing e-
mail based on the identifiers, and communicating the characterization—in
other words, filtering files/e-mail—is an abstract idea.” Intellectual
Ventures I, 838 F.3d at 1313. Proceeding to step two of the Mayo/Alice
analysis, the court found no element or combination of elements sufficient to
ensure that the patent would amount to significantly more than a patent upon
the ineligible concept. “The steps of the asserted claims of the ’050 patent
do not ‘improve the functioning of the computer itself.’” Intellectual
Ventures I, 838 F.3d at 1315 (quoting Alice, 134 S. Ct. at 2359). “[T]hese
claims use generic computers to perform generic computer functions.”
Intellectual Ventures I, 838 F.3d at 1315. Further, the court found that
“[t]here is not, in the ’050 patent, any ‘specific or limiting recitation of . . .
improved computer technology.’” Intellectual Ventures I, 838 F.3d at 1316
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(quoting CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed.
Cir. 2013) (en banc)).
We find that claims 1 and 21 recite an invention analogous to that
recited in claim 9. Like claim 9, we find that claims 1 and 21 are directed to
the abstract idea of receiving e-mail (and other data file) identifiers,
characterizing e-mail based on the identifiers, and communicating the
characterization. Like claim 9, we further find that claims 1 and 21 do not
recite an element or elements sufficient to ensure that the patent would
amount to significantly more than a patent upon the abstract idea. The steps
of claims 1 and 21 do not improve the functioning of the computer itself, or
contain any specific or limiting recitation of improved computer technology.
We conclude that independent claims 1 and 21, like independent
claim 9 (and independent claims 16 and 24), are directed to an abstract idea
and lack an inventive concept sufficient to transform the claimed abstract
idea into a patent eligible application. Therefore, we conclude that
independent claims 1 and 21 are directed to patent-ineligible subject matter
under § 101.
Claims 2, 4–6, and 8 depend from independent claim 1. The
dependent claim limitations do not alter the independent claim’s recitation of
the abstract idea of receiving e-mail (and other data file) identifiers,
characterizing e-mail based on the identifiers, and communicating the
characterization. The dependent claim limitations also fail to recite an
inventive concept that is sufficient to transform the claimed abstract idea
into a patent-eligible application. As a result, we conclude that claims 2, 4–
6, and 8 are directed to patent-ineligible subject matter under § 101.
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Claims 10 and 12–15 depend from independent claim 9. The
dependent claim limitations do not alter the independent claim’s recitation of
the abstract idea of receiving e-mail (and other data file) identifiers,
characterizing e-mail based on the identifiers, and communicating the
characterization. The dependent claim limitations also fail to recite an
inventive concept that is sufficient to transform the claimed abstract idea
into a patent-eligible application. As a result, we conclude that claims 10
and 12–15 are directed to patent-ineligible subject matter under § 101.
Claim 17 depends from independent claim 16. The dependent claim
limitations do not alter the independent claim’s recitation of the abstract idea
of receiving e-mail (and other data file) identifiers, characterizing e-mail
based on the identifiers, and communicating the characterization. The
dependent claim limitations also fail to recite an inventive concept that is
sufficient to transform the claimed abstract idea into a patent-eligible
application. As a result, we conclude that claim 17 is directed to patent-
ineligible subject matter under § 101.
Claim 23 depends from independent claim 22. The dependent claim
limitations do not alter the independent claim’s recitation of the abstract idea
of receiving e-mail (and other data file) identifiers, characterizing e-mail
based on the identifiers, and communicating the characterization. The
dependent claim limitations also fail to recite an inventive concept that is
sufficient to transform the claimed abstract idea into a patent-eligible
application. As a result, we conclude that claim 23 is directed to patent-
ineligible subject matter under § 101.

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OTHER REJECTIONS
Because our decision to enter a new ground of rejection under § 101 is
dispositive regarding the unpatentability of all appealed claims, we need not
reach the merits of the Examiner’s decision to reject the appealed claims on
other grounds. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed.
Cir. 1984) (approving ITC’s determination based on a single dispositive
issue, and not reaching other issues not decided by the lower tribunal).

CONCLUSIONS
1. The claimed invention is directed to an abstract idea.
2. The claims do not recite 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 abstract idea itself.

DECISION
37 CFR § 41.77(b) provides that “a new ground of rejection . . . shall
not be considered final for judicial review.” That section also provides that
Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal proceeding as
to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.
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(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering
the new ground of rejection and also state all other grounds
upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of
. . . [t]he original decision of the Board under § 41.77(a).” A request for
rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in
opposition to the request and additional requests for rehearing must be in
accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this section,
and for submitting comments under paragraph (b) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002, may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81.
See also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this Decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED
37 C.F.R. § 41.77(b)

Third Party Requester:
WILMERHALE/SYMANTEC CORPORATION
WILMER CUTLER PICKERING HALE AND DORR LLP
1875 PENNSYLVANIA AVENUE, NW
WASHINGTON, DC 20006

Patent Owner:
FOLEY & LARDNER LLP
3000 K STREET N.W., SUITE 600
WASHINGTON, DC 20007-5109