Ex Parte Baptist et al

Patent Trials and Appeals Board

Apr 26, 2019

15281317 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/281,317 09/30/2016
89322 7590 04/30/2019
Garlick & Markison (IBM)
100 Congress A venue, Suite 2000
Austin, TX 78701
FIRST NAMED INVENTOR
Andrew D. Baptist
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CSO l l 48/END920165723US 18 1746
EXAMINER
GANDHI, DIPAKKUMAR B
ART UNIT PAPER NUMBER
2111
NOTIFICATION DATE DELIVERY MODE
04/30/2019 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):
MMURDOCK@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW D. BAPTIST, GREG R. DHUSE,
WESLEY B. LEGGETTE, and JASON K. RESCH
Appeal2018-006441
Application 15/281,317
Technology Center 2100
Before JOHNNY A. KUMAR, LARRY J. HUME, and STEVEN M.
AMUNDSON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-18, which constitute all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
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Application 15/2 81,317
STATEMENT OF THE CASE
Embodiments of Appellants' invention relate to: "computer networks
and more particularly to dispersing error encoded data." Spec. ,r 5.
Exemplary Claim
1. A method for execution by one or more processing
modules of one or more computing devices, the method
compnses:
receiving at least a decode threshold number of encoded
data slices of a set of encoded data slices;
decoding the at least a decode threshold number of
encoded data slices to reproduce a secure data segment;
de-combining the secure data segment to reproduce
encrypted data and a masked key;
performing a deterministic function on the encrypted data
to produce transformed data;
de-masking the masked key based on the transformed
data to produce a master key;
de-aggregating the encrypted data to reproduce a decode
threshold number of encrypted data sub-segments;
for each of at least a decode threshold number of
encrypted data sub-segments, generating a sub-key based on the
master key;
outputting a decode threshold number of sub-keys to a
corresponding decode threshold number of distributed storage
and task execution units;
for each encrypted data sub-segment, decrypting the
encrypted data sub-segment utilizing a corresponding sub-key;
and
de-partitioning the decode threshold number of data sub-
segments to reproduce a data segment.
App. Br. 20 (Claims Appendix).
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REJECTION AT ISSUE
Claims 1-18 are rejected under 35 U.S.C. § 101 as being directed to a
judicial exception without significantly more. Final Act. 11-13.
Independent claims 1 and 10 recite analogous limitations. Appellants
present a unitary argument directed to all claims together. App. Br. 13.
Accordingly, we select claim 1 for discussion as representative of the
rejected claims. We refer to the rejected independent claims collectively
herein as "claim 1." See, 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d
1324, 1325 (Fed. Cir. 1986).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Principles of Law
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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'!, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
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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. Kappas, 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 of rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
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
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attempting to limit the use of the formula to a particular technological
environment." Id. ( 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.").
If the claim is "directed to" an abstract idea, we tum 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 (quotation marks 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.
Patent Subject Matter Eligibility 2019 Revised Guidance
The United States Patent and Trademark Office recently published
revised policy guidance on the application of§ 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter "2019 Revised Guidance") (https://www.govinfo.gov/content/
pkg/FR-2019-01-07/pdf/2018-28282.pdf). This new guidance is applied in
this opinion. Under the 2019 Revised Guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity, such as a
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fundamental economic practice or managing personal behavior
or relationships or interactions between people); 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)). 2
2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner 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. 2019 Revised
Guidance. 84 Fed. Reg. at 54. When the judicial exception is so integrated,
then the claim is not directed to a judicial exception and is patent eligible
under§ 101. Id.
Only if a claim: (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 2019 Revised Guidance,
84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we 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, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 56.
2 All references to the MPEP are to the 9th ed., rev. 08-2017 (Jan. 2018).
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Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
According to the 2019 Revised Guidance, "claims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, the claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible if "the claim as a whole integrates
the recited judicial exception into a practical application of that exception."
2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, additional limitations that are indicative of "integration
into a practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field-see MPEP § 2106.05(a);
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2. Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing - see MPEP § 2106. 05 ( c ); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception - see MPEP
§ 2106.05(e).
In contrast, additional limitations that are not indicative of
"integration into a practical application" include:
1. Adding the words "apply it" (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP § 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
The Examiner's Rejection Under 35 US.C. § 101
The Examiner concludes claims 1-18 recite the abstract ideas of
mathematical relationships, mathematical equations and mathematical
calculations which are mathematical concepts, i.e., "a mathematical
algorithm" for "encoding and decoding ... data" and "manipulating
information through mathematical correlations." Final Act. 12; Ans. 2-3.
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The Examiner determines the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the "processing modules" and "computing devices" are
"merely generic computer elements performing generic computer
functions." Final Act. 12; Ans. 2-3.
The Examiner notes that Appellants' Specification fails to recite that
the claimed invention solves a technical problem. Ans. 8. The Examiner
explains because the additional elements are merely generic computer
elements performing generic computer functions, "the claimed invention
does not amount to significantly more than the abstract idea." Final Act. 12.
For the aforementioned reasons, the Examiner concludes that
claims 1-18 are not patent eligible under 35 U.S.C. § 101.
The Judicial Exception
Under the 2019 Revised Guidance, we consider whether the claims
are directed to any judicial exceptions, including certain groupings of
abstract ideas, in particular: (a) mathematical concepts, (b) mental steps,
and ( c) certain methods of organizing human activities.
Claim 1 recites the following limitations: (1) "receiving at least a
decode threshold number of encoded data slices of a set of encoded data
slices"; (2) "decoding the at least a decode threshold number of encoded
data slices to reproduce a secure data segment"; (3) "de-combining the
secure data segment to reproduce encrypted data and a masked key";
( 4) "performing a deterministic function on the encrypted data to produce
transformed data"; (5) "de-masking the masked key based on the
transformed data to produce a master key"; ( 6) "de-aggregating the
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encrypted data to reproduce a decode threshold number of encrypted data
sub-segments"; (7) "for each of at least a decode threshold number of
encrypted data sub-segments, generating a sub-key based on the master
key"; (8) "outputting a decode threshold number of sub-keys to a
corresponding decode threshold number of distributed storage and task
execution units"; (9) "for each encrypted data sub-segment, decrypting the
encrypted data subsegment utilizing a corresponding sub-key"; and (10) "de-
partitioning the decode threshold number of data sub-segments to reproduce
a data segment."
We conclude each of limitations (2}-(7) and (9}-10), under its
broadest reasonable interpretation, recite mathematical relationships,
mathematical equations, and mathematical calculations which are
mathematical concepts - a specific subject matter group that is identified as
an abstract idea under the 2019 Revised Guidance.
Limitations (2}-(7) and (9}-(10) provide interrelated mathematical
relationships to convert received data ("a number of encoded data slices")
into another form of data, namely, a "data segment." In considering
Appellants' independent claim 1 as a whole, we note Appellants' invention
decodes received data by converting input data to output data using an
interrelated set of mathematical relationships.
The appropriate authority for this case is Gottschalk v. Benson, 409
U.S. 63, 72 (1972) where the Supreme Court held Benson's process claim of
converting signals from binary coded decimal "BCD" form into binary, via a
series of mathematical calculations to be an "abstract idea" under 35 U.S.C.
§ 101. MPEP § 2106.04(a)(2), IV "Mathematical relationships/Formulas,"
specifically identifies the conversion of "binary-coded decimal numerals
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into pure binary form" through a series of steps recited in the claims at issue
in Benson as an algorithm, further categorized as a type of mathematical
relationship. Id. ("The phrase 'mathematical relationships/ formulas' is
used to describe mathematical concepts such as mathematical algorithms,
mathematical relationships, mathematical formulas, and calculations").
For example, Benson's claim recited a "method of converting signals
from binary coded decimal form into binary which comprises the steps of':
( 1) storing the binary coded decimal signals in a reentrant
shift register,
(2) shifting the signals to the right by at least three places,
until there is a binary "1" in the second position of said register,
(3) masking out said binary "1" in said second position of
said register,
( 4) adding a binary" 1" to the first position of said register,
( 5) shifting the signals to the left by two positions,
( 6) adding a "1" to said first position, and
(7) shifting the signals to the right by at least three
positions in preparation for a succeeding binary "1" in the second
position of said register.
Benson, 409 U.S. at 73-74.
As shown in Benson's claim, the process of converting BCD numerals
into pure binary numerals is an algorithm or series of interrelated
mathematical relationships between a first form of data (input) and a second
form data (output). The Supreme Court decided that Benson's process claim
was directed to "a method ... to convert signals from binary-coded decimal
form into pure binary form" and constituted an "algorithm" to solve the
mathematical problem of "converting one form of numerical representation
to another." Benson, 409 U.S. at 65. The Court held that the claimed
algorithm was "so abstract and sweeping as to cover both known and
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unknown use" of the BCD to pure binary conversion and that the claims
were an unpatentable idea since "the patent would wholly pre-empt the
mathematical formula and in practical effect would be a patent on the
algorithm itself." Id. at 68, 71-72.
Similarly in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014), our reviewing court
held method claims shown below constitute the recitation of an ineligible
abstract process of using "mathematical algorithms to manipulate existing
information to generate additional information" and that "without additional
limitations" outside of the recitation of the algorithm, the claim is an
ineligible abstract idea. See Digitech, at 1350-1351.
generating first data for describing a device dependent
transformation of color information content of the image to a
device independent color space through use of measured
chromatic stimuli and device response characteristic functions;
generating second data for describing a device dependent
transformation of spatial information content of the image in said
device independent color space through use of spatial stimuli and
device response characteristic functions; and
combining said first and second data into the device
profile.
Id. ( emphasis added).
Furthermore, as stated in MPEP § 2106.04(a)(2)(IV)(B), the
above claims in Digitech "were directed to an abstract idea because
they described a process of organizing information through
mathematical correlations." "It is of no moment that the algorithm is
not expressed in terms of a mathematical formula. Words used in a
claim operating on data to solve a problem can serve the same purpose
as a formula." See In re Grams, 888 F.2d 835, 837 (Fed. Cir. 1989);
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see also In re Richman, 563 F .2d 1026, 1027 (CCP A 1977) ("deletion
from the claims of the mathematical formula involved and substitution
of words which mean the same thing would not transform the claimed
method into statutory subject matter'); In re Warmerdam, 33 F.3d
1354, 1360 (Fed. Cir. 1994) ("The body of claim 1 recites the steps of
'locating' a medial axis, and 'creating' a bubble hierarchy. These
steps describe nothing more than the manipulation of basic
mathematical constructs, the paradigmatic 'abstract idea.'").
In view of Benson and the guidance on recitation of mathematical
concepts found in Digitech, Richman, Warmerdam, and Grams, Appellants'
claim 1 recites an abstract idea of, i.e., using a mathematical algorithm to
convert (1) "encoded data slices" into (10) "a data segment," wherein each
of steps (2}-(7), (9), and (10) recite a mathematical relationship or
calculation to transform data analogous to the steps in Benson and Digitech
including: (2) "decoding ... encoded data slices," (3) "de-combining the
secure data segment," ( 4) "performing a deterministic function," ( 5) "de-
masking the masked key based on the transformed data to produce a master
key," (6) "de-aggregating the encrypted," (7) "generating a sub-key based on
the master key," (9) "decrypting the encrypted data," and (10) "de-
partitioning the ... data sub-segments." Each of steps (2}-(7), (9), and (10)
at least recite the transformation of an input data into a different output data
using a mathematical relationship or calculation, analogous to the recited
transformation of data determined to be recited in the claims at issue in
Digitech. Similarly, the total mathematical algorithm recited in Appellants
claim 1 itself transforms (1) "encoded data slices" into (10) "a data segment"
and constitutes an abstract idea in the form of a mathematical concept.
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Appellants argue the Examiner fails to identify an abstract idea to
which the claim 1 is directed in violation of Alice step 1. App. Br. 8-9.
However, the Examiner concluded that claim 1 was directed to "encoding
and decoding ... data" and "manipulating information through mathematical
correlations" which is an abstract idea in the form of mathematical concepts
under the 2019 Revised Guidance. Final Act. 12; Ans. 2-3. The Examiner
further concluded the claims are directed to the abstract idea of "decoding
encoded data slices" that "are substantially similar to the abstract idea found
in encoding and decoding image data" in RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322 (Fed. Cir. 2017), and to "organizing and manipulating
information through mathematical correlations" in Digitech. Ans. 3. For the
reasons provided above, we agree with Examiner.
Thus, after applying the 2019 Revised Guidance, and considering the
claims as a whole, we conclude Appellants' claims 1-18 fall into the
category of mathematical concepts.
Integration of the Judicial Exception into a Practical Application
Regarding the 2019 Revised Guidance, and for the reasons which
follow, we conclude that Appellants' claims 1-18 do not integrate the
judicial exception into a practical application. See MPEP §§ 2106.05(a}-
( c) and ( e }-(h). Applying the 2019 Revised Guidance, we address these
"practical application" MPEP sections seriatim.
MPEP § 2106.05(a) Improvements to the Functioning of a Computer
or to Any Other Technology or Technical Field [R-08.2017]
This section of the MPEP guides: "In determining patent eligibility,
examiners should consider whether the claim 'purport( s) to improve the
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functioning of the computer itself or 'any other technology or technical
field.' ... While improvements were evaluated in Alice Corp as relevant to
the search for an inventive concept (Step 2B), several decisions of the
Federal Circuit have also evaluated this consideration when determining
whether a claim was directed to an abstract idea (Step 2A)."
The MPEP instructs: "Thus, an examiner may evaluate whether a
claim contains an improvement to the functioning of a computer or to any
other technology or technical field at Step 2A or Step 2B, as well as when
considering whether the claim has such self-evident eligibility that it
qualifies for the streamlined analysis." MPEP § 2106.05(a) (emphasis
added).
Here, we consider the question of whether the claims are directed to a
specific improvement in the capabilities of the computing devices, or,
instead, "a process that qualifies as an 'abstract idea' for which computers
are invoked merely as a tool." Enfzsh, 822 F.3d at 1336.
Appellants contend the claims improve a computer-related technology
by providing "additional functionality" for "currently available decryption
mechanisms for dispersed error encoded data slices in distributed storage
networks." App. Br. 10; Reply Br. 3-5. Applicants argue, "[f]or example,
when encoded data slices representing a data segment are dispersed ( using
multi-key processes) across a distributed storage network some of the slices
may not be available when needed to reproduce a data segment. Data
segments can be reproduced, even though multi-key processes were used in
the encoding and the full set of slices are not available. Id. Appellants
reason that this improvement is analogous to the claims in DDR Holdings
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) found to be
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"necessarily rooted in computer technology in order to overcome a problem
specifically arising the realm of computer networks." App. Br. 10, 12-13.
Appellants' arguments are not persuasive. At the outset, we note
Appellants acknowledge that "decryption mechanisms for dispersed error
encoded data slices in distributed storage networks" already exist in
currently available technology such that the "specific improvement" is the
"additional functionality" that "data segments can be reproduced, even
though multi-key processes were used in the encoding and the full set of
slices are not available." App. Br. 10; Reply Br. 4. However, claim 1 does
not recite this additional functionality. For example, although claim 1 is
directed to receiving and decoding data, claim 1 fails to recite a "multi-key
processes ... used in the encoding" or any other encoding step.
Furthermore, the asserted additional functionality that "data segments can be
reproduced, even though ... the full set of slices are not available" is also
not reflected in the claim.
For example, claim 1 recites "receiving at least a decode threshold
number of encoded data slices of a set of encoded data slices" ( emphasis
added). Nothing in the claim requires the problem of "the full set of slices
are not available" or specifically recites how the claimed invention would
overcome that problem.
As described in the Specification, T represents the set of encoded data
slices and D is a "threshold number of encoded data slices that are needed to
recover the data segment." Spec. ,r 36. The values for T and D can be a
number assigned according to "the dispersed storage error encoding
parameters." Id. ,r,r 36, 73. The decoding process of claim 1 fails to recite
any limitations for assigning "dispersed storage error parameters" such that
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it recites how to reproduce a data segment when "the full set of slices are not
available." In addition, the claim recites "receiving at least a decode
threshold number of encoded data slices ... to reproduce a data segment"
( emphasis added) and so does not limit the claimed invention to reproducing
the data segment "even though ... the full set of slices are not available" as
asserted by Appellants. When a claim directed to an abstract idea contains
no restriction on how an asserted improvement is accomplished and the
asserted improvement is not described in the claim, then the claim is not
patent eligible. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
In addition, Appellants argue that unlike the claims in RecogniCorp or
Digitech, claim 1 is more similar to the limitations BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016),
and DDR, because it recites "a particular technique for decoding data slices"
wherein "when encoded data slices representing a data segment are
dispersed (using multi-key processes) across a distributed storage network
some of the slices may not be available when needed to reproduce a data
segment. Data segments can be reproduced, even though multi-key
processes were used in the encoding and the full set of slices are not
available." App. Br. 11. However, as noted above, claim 1 does not recite
the inventive concept of encoding data slices, dispersing the data slices
across a distributed storage network wherein some of the slices may not be
available, or how the data segments are reproduced under a condition that
less than all data slices are available.
For the same reason, we find that Appellants' assertion that the claims
are similar to BASCOM because the "inventive concept ... can be found in
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the non-conventional arrangement of individual claim elements" to be
unavailing. App. Br. 12-13. In BASCOM, the inventive concept was
embodied in the claims, which included "a local client computer,"
"controlled access network accounts," "at least one filtering scheme," "a
remote ISP server coupled to said client computer," and an "Internet
computer network," and were claimed to work in conjunction with one
another to detail how a problem was solved ("ISP server associating each
said network account to at least one filtering scheme and at least one set of
filtering elements, said ISP server further receiving said network access
requests from said client computer and executing said associated filtering
scheme utilizing said associated set of logical filtering elements"). See
BASCOM, 827 F.3d at 1345. As noted above, claim 1 only relates to a
single instance of receiving encoded data related to a single data segment
and decoding said data segment with a mathematical algorithm. None of the
encoding process, distribution of data, or overall distributed storage network,
noted by Appellants as inventive, are recited in claim 1 such that it is much
more analogous to Appellants' characterization of the claims in
RecogniCorp ("a process that starts with data, adds an algorithm and ends up
with a new form of data," (App. Br. 11; Reply Br. 3) than the claims in
BASCOM.
Therefore, we find Appellants' claimed invention does not provide a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," such as
considered by the court in DDR.
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MPEP § 2106.05(b) Particular Machine [R-08.2017] and
MPEP § 2106.05(c) Particular Transformation [R-08.2017]
Section 2106.05(c) of the MPEP guides: "Another consideration
when determining whether a claim recites significantly more is whether the
claim effects a transformation or reduction of a particular article to a
different state or thing." "[T]ransformation and reduction of an article 'to a
different state or thing' is the clue to patentability of a process claim that
does not include particular machines." Bilski v. Kappas, 561 U.S. 593, 658
(2010) (quoting Gottschalk v. Benson, 409 U.S. 63, 70, (1972)). If such a
transformation exists, the claims are likely to be significantly more than any
recited judicial exception. Bilski emphasizes that although the
transformation of an article is an important clue, it is not a stand-alone test
for eligibility. MPEP § 2106.05(c).
We note Appellants advance no arguments in the Briefs that are
directed to the Bilski machine-or-transformation test.
To the extent Appellants may contend that claim 1 transforms the
received encoded data through (2) "decoding ... encoded data slices,"
(3) "de-combining the secure data segment," ( 4) "performing a deterministic
function," (5) "de-masking the masked key based on the transformed data to
produce a master key," (6) "de-aggregating the encrypted," (7) "generating a
sub-key based on the master key," (9) "decrypting the encrypted data," and
(10) "de-partitioning the ... data sub-segments," our reviewing court guides
that, if not appropriately limiting, "[ t ]he mere manipulation or reorganization
of data, however, does not satisfy the transformation prong." CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
( emphasis added). Therefore, we conclude method claim 1 fails to satisfy
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the transformation prong of the Bilski machine-or-transformation test. See
MPEP § 2106.05(c) "Particular Transformation." Nor do Appellants argue
that the method claims on appeal are tied to a particular machine. See MPEP
§ 2106.05(b) "Particular Machine." Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(e) Other Meaningful Limitations [R-08.2017]
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment. 450
U.S. 175, 209 USPQ 1 (1981). In Diehr, the claim was directed
to the use of the Arrhenius equation ( an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78, 209 USPQ at 4. The Court evaluated
additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in
the mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184, 187,
209 USPQ at 7, 8. In contrast, the claims in Alice Corp. v. CLS
Bank International did not meaningfully limit the abstract idea
of mitigating settlement risk. 573 U.S._, 134 S. Ct. 2347, 110
USPQ2d 1976 (2014). In particular, the Court concluded that the
additional elements such as the data processing system and
communications controllers recited in the system claims did not
meaningfully limit the abstract idea because they merely linked
the use of the abstract idea to a particular technological
environment (i.e., "implementation via computers") or were
well-understood, routine, conventional activity.
MPEP § 2106.05(e).
Applying this reasoning here, we conclude Appellants' claims do not
add meaningful limitations beyond generally linking the use of the judicial
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exception to a particular technological environment. Appellants admit that
"elements of the appellant's claims individually may recite generic computer
components." App Br. 12. Indeed, the Specification supports Appellants'
admission of the generic nature of claim 1 limitations by providing non-
limiting and exemplary descriptions of generic computer components. Spec.
,r,r 88-95.
MPEP § 2106.05(!) Mere Instructions to Apply an Exception [R-08.2017]
For the reasons discussed above, in applying the 2019 Revised
Guidance, we conclude Appellants' claims invoke generic computer
components merely as a tool in which the computer instructions apply the
judicial exception, which covers mathematical concepts, in particular an
algorithm for converting encoded data slices into a data segment.
MPEP § 2106.05(g) Insignificant Extra-Solution Activity [R-08.2017]
Appellants advance no specific arguments in the Briefs contending the
claims do not recite insignificant extra-solution activity. We note the first
limitation (1) "receiving at least a decode threshold number of encoded data
slices of a set of encoded data slices" and the eighth limitation
(8) "outputting a decode threshold number of sub-keys to a corresponding
decode threshold number of distributed storage and task execution units"
recited in claim 1 are examples of insignificant extra-solution activity
because the claim limitations amount to necessary data gathering and
outputting of data. Specifically, any decoding process would necessarily
need a complementary encoded input to be used and at least one data output.
See Mayo, 566 U.S. at 79; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
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13 59, 13 63 (Fed. Cir. 2015) (presenting offers and gathering statistics
amounted to mere data gathering).
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, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
Therefore, on this record, we are of the view that Appellants' claims
do not operate the recited generic computer components in a manner to
achieve an improvement in computer functionality.
MPEP § 2106.05(h) Field of Use and Technological Environment
[R-08.2017]
The Supreme Court has stated that, "[a] mathematical formula as such
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. Similarly, insignificant postsolution activity will
not transform an unpatentable principle into a patentable process." Diehr,
450 U.S. at 191-192 (citations omitted). Here, Appellants advance no other
specific arguments in the Appeal Brief contending the claims describe a field
of use that limits the abstract idea to a particular technological environment,
such that there is purportedly no preemption.
Our reviewing court provides applicable guidance: "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
Ultramercial, 722 F.3d at 1346.
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For the reasons discussed above, we conclude Appellants' claims do
not include additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a}-(c), (e}-(h), as discussed
above).
The Inventive Concept
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
On the record before us, Appellants have 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)). We find the Specification supports the Examiner's finding
that additionally recited elements are merely generic computer elements
performing generic computer functions, by providing non-limiting and
exemplary descriptions of generic computer components. Spec. ,r,r 88-95.
In light of the foregoing, we conclude that each of Appellants'
claims 1-18, considered as a whole, is directed to a patent-ineligible abstract
idea that is not integrated into a practical application, and does not include
an inventive concept.
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Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-18.3
CONCLUSION
The Examiner did not err in rejecting claims 1-18 under U.S.C. § 101
as being directed to a judicial exception without significantly more.
DECISION
We affirm the Examiner's decision rejecting claims 1-18 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
3 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
24