Ex Parte Bhola et al

Patent Trial and Appeal Board

Aug 30, 2018

13783377 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/783,377 03/03/2013
57101 7590 09/04/2018
IBM CORPORATION - SVL (JVL)
C/0 LESLIE A. VAN LEEUWEN
6123 PEBBLE GARDEN CT.
AUSTIN, TX 78739
FIRST NAMED INVENTOR
Saurabh Bhola
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.
AUS920110239US2 3331
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
LESLIE@VL-PATENTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
EX PARTE SAURABH BHOLA, MARK CROSBIE,
GARY DENNER, DANIEL C. GURNEY, and ROHIT JAIN
Appeal2017-006679
Application 13/783,377 1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-9, 11, and 12, which are all the claims pending in the
application. Appellants have canceled claim 10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 2.
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Application 13/783,377
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relates to
an approach that provides [ access to] a user's computer security risks due to
the user's social networking contacts." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of assessing risk to a user of an information
handling system due to a link to a social network contact, the
method comprising:
receiving, at the information handling system, a set of risky
action values corresponding to the social network contact of the
user;
performing, by the information handling system, a preventative
security action based upon a risk level calculated from a
selected risky action value included in the set of risky action
values; and
sending a risk feedback message to the social network contact
that identifies the preventative security action taken by the
information handling system;
wherein the preventative security action includes at least one of
the following sets of actions:
set (i):
assembling an electronic communication indicating a risk
associated with the link to the social network contact, and
sending, over a communication network, the electronic
communication to a computer operated by an additional user;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 4, 2017); Reply Brief ("Reply Br.," filed March 24, 2017); Examiner's
Answer ("Ans.," mailed Feb. 9, 2017); Final Office Action ("Final Act.,"
mailed Aug. 5, 2016); and the original Specification ("Spec.," filed
Mar. 3, 2013).
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set (ii):
generating machine executable disassociative code that
disassociates the user with the social network contact, and
responsive to an attempt by the social network contact to access
the user's data via the social network, executing the
disassociative code to prevent the attempted access;
set (iii):
assembling an electronic communication indicating a risk
associated with the link to the social network contact, and
sending, over a communication network, the electronic
communication to the information handling system of the user;
set (iv):
assembling an electronic communication indicating a risk
associated with the link to the social network contact, and
sending, over a communication network, the electronic
communication to a computer operated by the social network
contact;
set (v):
accessing social media code associated with the social network
and corresponding to the user, and removing the link to the
social network contact from the social media code.
Rejections on Appeal
RI. Claims 1-9, 11, and 12 stand rejected on the ground of
obviousness-type double patenting (OTDP) as being unpatentable over
claims 1-7 of issued US Patent No. 8,706,648. Final Act. 3.
R2. Claims 1-9, 11, and 12 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3.
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CLAIM GROUPING
Based on Appellants' arguments (App. Br. 7-11 ), we decide the
appeal of patent-ineligible subject matter Rejection R2 of claims 1-9, 11,
and 12 on the basis of representative claim 1. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 4I.37(c)(l)(iv).
1. OTDP Rejection RI of Claims 1-9, 11, and 12
The Examiner finds the claims at issue are not identical, but they are
also "not patentably distinct from each other because the claims merely
differ as to being directed to a method in the instant claims, whereas the
patented claims are directed to an information handling system that performs
the method as currently claimed." Final Act. 3. Appellants do not challenge
this rejection in the Appeal Brief. Arguments not made are waived. See
Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) ("When the appellant
fails to contest a ground of rejection to the Board, section 1.192( c )(7) [ (now
section 4I.37(c)(l)(vii))] imposes no burden on the Board to consider the
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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merits of that ground of rejection ... [T]he Board may treat any argument
with respect to that ground of rejection as waived.").
Accordingly, Appellants have not persuaded us of error in the
Examiner's ODTP rejection of claims 1-9, 11, and 12. Therefore, on this
record, we proforma affirm the Examiner's rejection RI of claims 1-9, 11
and 12. 4
2. § 101 Rejection R2 of Claims 1-9, 11, and 12
We disagree with Appellants' arguments with respect to claims 1-9,
11, and 12 and, unless otherwise noted, we incorporate by reference herein
and adopt as our own: ( 1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken, and (2) the reasons and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Issue
Appellants argue (App. Br. 7-11; Reply Br. 2-5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
4 We leave it to the Examiner to consider whether rejection RI should be
withdrawn in light of Appellants' filing of a Terminal Disclaimer on
March 24, 2017.
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Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Alice, at 2355. If so, we "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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). While the two
steps of the Alice framework are related, the "Supreme Court's formulation
makes clear that the first-stage filter is a meaningful one, sometimes ending
the§ 101 inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). We note the Supreme Court "has not established a
definitive rule to determine what constitutes an 'abstract idea"' for the
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purposes of step one. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
(Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct.
at 2355-57. Under this guidance, we must therefore ensure at step one that
we articulate what the claims are directed to with enough specificity to
ensure the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully
in construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
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of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step 1 -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellants generally contend, "claims 1-9, 11, and 12 are directed to
patent eligible subject matter because the fact that the claims can be
performed on a 'generic computer' does not automatically mean that the
claims are patent-ineligible." App. Br. 8.
Id.
Along these lines, Appellants further argue:
Appellant's claims are directed to "a specific asserted
improvement in computer capabilities," i.e. mitigating the
security risk to a computer system, due to the social networking
contacts of a user.
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In addition, Appellants contend:
Appellant's claimed improvements to a social network are every
bit as much an improvement to a computer system as Enfish's
improvements to database tables were an improvement to a
computer system.
Reply Br. 3.
Appellants further argue, "[b ]y improving the risk detection and risk
prevention of such a social network computer system, the computer system
becomes safer and more robust, and results in an improved user experience."
Reply Br. 4. Regarding the Examiner's reference to Cybersource and
Intellectual Ventures, Appellants argue their "claims cannot be performed
in a person's head." Reply Br. 4-5.
In the Final Action, the Examiner concluded:
Claim(s) 1 and 12 is/are directed to calculating a risk level from
a selected risky action value included in the set of risky action
values which compares data to determine a risk level and is an
abstract idea. The step of performing a security action based
upon the risk level and the step in claim 8 of identifying risky
action values that correspond to a detected potentially risky
action are also abstract ideas where new and stored data is
compared and rules are used to identify options (i.e., which
preventative action is determined and performed based on the
comparison to the risky levels and which risky action value
compares to the potentially risky action).
Final Act. 3-4.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
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Turning to the claimed invention, claim 1 recites: "A method of
assessing risk to a user of an information handling system due to a link to a
social network contact." Claim 1 (preamble).
Method claim 1 also recites the steps of:
(a) "receiving ... a set of risky action values";
(b) "performing, by the information handling system, a
preventive security action ... ;"
( c) "sending a risk feedback message .... "
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1 and 8 are directed to an abstract
idea, i.e., receiving data, applying rules to the data, and sending a message,
which we also conclude is data obtained and used to make determinations.
See Ans. 3.
As the Specification describes: "[r]isky action values are identified
that correspond to the detected potentially risky actions. The risky action
values are then transmitted to the user's social network contacts over a
computer network." Abst. We find this type of activity, i.e., comparing new
and stored information to determine a risk value, for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 5
5 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146--47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014 ). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Further, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is abstract. Digitech Image
Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014). Also, more recently, our reviewing court has also concluded that
acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkeimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
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Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 6 This is similar to other
concepts that have been found by the courts to be abstract in nature such as
comparing data to determine a risk level as in Perkin-Elmer. 7
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
6 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
7 PerkinElmer, Inc. v. Intema Ltd., 496 Fed. Appx. 65 (Fed. Cir. 2012) (non-
precedential) (A calculation to determine the risk of Down's syndrome was
held to be a patent-ineligible abstract idea. "Because the asserted claims
recite an ineligible mental step and natural law, and no aspect of the method
converts these ineligible concepts into patentable applications of those
concepts, the claims cannot stand. Accordingly, we find the claims ineligible
under section 101."
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patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that Appellants' invention does not expand or
improve the capabilities of the claimed "information handling system" or
computer itself. See Ans. 2.
The Examiner further concludes:
[T]the improvement is not to the computer itself, but rather to
the abstract idea [ ofJ risk detection and prevention in a social
network. In Enfzsh, the invention of the database was explicitly
disclosed as providing faster search times and smaller memory
requirements while not requiring a programmer to preconfigure
a structure to which a user must adapt data entry. In contrast,
Appellant's invention does not expand or improve the
capabilities of the computer itself.
Ans. 2.
The Examiner also determined:
The step of calculating a risk level from a selected risky action
value included in the set of risky action values compares data to
determine a risk level and is an abstract idea similar to [that]
identified in CyberSource and Intellectual Ventures v. Symantec
where information was obtained and used to make
determinations. In CyberSource, information was organized and
rules [were] applied to the information to make decisions. In
Intellectual Ventures v. Symantec, information (i.e., emails)
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were received and rules where used to determine delivery. The
limitations of receiving a set of values and detecting risky
actions are data gathering; the steps of transmitting risky action
values and sending/receiving a risk feedback message that
identifies a preventative security action taken are mere data
transmission. These are well-known, routine and conventional
practices that require no more than a generic computer to
perform generic computer functions.
Ans. 3.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368.
The Examiner finds:
Claim 1 is amended to recite preventative security actions. The
action of assembling an electronic communication indicating a
risk and sending it to either an additional user, the user or the
social network contact is understood as merely sending a
notification. This is a well-known, routine and conventional
function of information handling systems as it merely requires
the transmission of information ... Receiving, processing and
storing data are well-understood, routine and conventional
functions.
Final Act. 4 ( emphasis added). See also Final Act. 5 ("Receiving,
processing and storing data are well-understood, routine and conventional
functions." - claim 12).
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of an "information handling system" using
a "computer" and "electronic communication" or "communication network"
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( claim 1) is simply not enough to transform the patent-ineligible abstract
idea here into a patent-eligible invention. See Alice, 134 S. Ct. at 2357
("[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention."). 8
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claims 1 and 8, and grouped
claims 2-7, 9, 11, and 12, not argued separately, and which fall therewith.
See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSIONS
( 1) Appellants have not shown the Examiner erred with respect to
OTDP Rejection RI of claims 1-9, 11 and 12, and we proforma sustain the
rejection.
8 As evidence of the conventional nature of the recited information handling
system and claim elements, we note Appellants' Figure 2, and paragraphs 10
through 13 and16, which only describe conventional components, arranged
in a known manner.
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(2) The Examiner did not err with respect to patent-ineligible
subject matter Rejection R2 of claims 1-9, 11, and 12 under 35 U.S.C.
§ 101, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-9, 11, and 12.
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
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