Ex Parte Byrd et al

Patent Trial and Appeal Board

Feb 7, 2018

11849210 (P.T.A.B. Feb. 7, 2018)

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.
11/849,210 08/31/2007 Gregory T. Byrd RSW920070131US1 (304) 5210
46320 7590
CRGO LAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
02/09/2018 EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY T. BYRD, MICHAEL G. McINTOSH,
NATARAJ NAGARATNAM, and ANTHONY J. NADALIN
Appeal 2016-0066521
Application 11/849,2102
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5-9, 11-13, and 17-20. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our Decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Dec. 27, 2015) and Reply Brief (“Reply Br.,” filed June 21, 2016), and the
Examiner’s Final Office Action (“Final Act.,” mailed Aug. 5, 2015) and
Answer (“Ans.,” mailed Apr. 21, 2016).
2 According to Appellants, the real party in interest is International Business
Machines Corporation (Appeal Br. 3).
Appeal 2016-006652
Application 11/849,210
Introduction
Appellants’ application relates to “the field of data privacy and
identity management in a computer communications network, and more
p articularly [sic] to data parsimony in pseudonymous e-commerce
transactions.” Spec. 1.
Claims 1, 9, and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A method for trusted statement verification for data
privacy within a voucher service data processing system
communicatively coupled to one or more end users computing
devices and one or more voucher consumers computing devices,
the method comprising:
deducing, by a processor of a computer in the voucher
service data processing system, a claim according to a rule in a
rule base from an attribute of personal data received from an end
user from an end user computing device;
receiving, by the processor of the computer, a request from
a voucher consumer computing device issued via an exposed
application programming interface over a computer
communications network to vouch for an assertion based upon
the attribute;
comparing the assertion to the claim to determine whether
the claim supports the assertion; and,
providing a voucher for the assertion to the voucher
consumer computing device on behalf of the end user upon
determining that the claim supports the assertion without
revealing the attribute to the voucher consumer computing
device, wherein providing the voucher comprises providing the
voucher in the form of a secure token over the computer
communications network to the voucher consumer computing
device, where the secure token does not include the attribute.
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(Appeal Br. 17, Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1, 5-9, 11-13, and 17-20 stand rejected under 35
U.S.C. § 101 as being directed to an abstract idea.
II. Claims 1, 5-9, 11-13, and 17-20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Korosec (US
2003/0056113 Al, pub. Mar. 20, 2003), Sweeney (US
2002/0169793 Al, pub. Nov. 14, 2002), and
Prafullchandra (US 2007/0261116 Al, pub. Nov. 8,
2007).
ANALYSIS
Rejection I (Unpatentable Subject Matter)
Claims 1, 5—9, 11—13, and 17—20
The Court in Alice emphasized the use of a two-step framework for
analysis of patentability under 35 U.S.C. § 101:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
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Application 11/849,210
The Examiner determines that claims 1, 5-9, 11-13, and 17-20 are
directed to deducing a claim according to a rule in a rule base from an
attribute of data, which is comparing new and stored information and using
rules to identify options. Final Act. 2-3. The Examiner determines that this
is an abstract idea. Id.
The Examiner further determines that the limitations of receiving a
request via an API and providing a voucher in the form of a secure token are
well-known, routine and conventional practices that require no more than a
generic computer to perform generic computer functions. Id. at 3. The
Examiner determines that the claims do not include additional elements that
are sufficient to amount to significantly more than the judicial exception
because the claims do not recite an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. Id.
Appellants contend that the Examiner has engaged in too high a level
of abstraction, untethered from the claim language, in characterizing the
claimed invention. Reply Br. 5 (citing Robert W. Bahr, Memorandum —
Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp.
and TLI Communications LLC v. A. V. Automotive, LLC), p. 1 (USPTO May
19, 2016) (hereinafter, “Memorandum on Enfish”). Specifically, Appellants
argue that the claimed invention is not directed to comparing new and stored
information and using rules to identify options, but rather using rules in a
computer communications network to deduce (or generate) a claim from an
attribute. Appeal Br. 8-10. Appellants assert that independent claim 1
requires the specific performance of the following steps in a process:
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Application 11/849,210
First, a processor of a computer in the voucher service data
processing system deduces a claim according to a rule in a rule
base from an attribute of personal data received from an end user
from an end user computing device.
Second, the processor of the computer receives a request
from a voucher consumer computing device issued via an
exposed application programming interface over a computer
communications network to vouch for an assertion based upon
the attribute.
Third, the assertion is compared to the claim to determine
whether the claim supports the assertion.
Fourth, a voucher for the assertion is provided to the
voucher consumer computing device on behalf of the end user
upon determining that the claim supports the assertion without
revealing the attribute to the voucher consumer computing
device.
Reply Br. 6-7.
We agree with Appellants that the Examiner may have stated the
invention too broadly. We determine that the claimed invention is directed
to using an intermediary to vouch for a consumer’s qualifications, upon
request, without divulging a consumer’s actual information. We determine
that this idea embodies a fundamental economic principle, as described, for
example, in the Specification, i.e., a bank may vouch that a consumer has a
bank account value above a threshold. See Spec. ^ 20 (discussing prior art
sought to be improved). Such a claimed invention resembles others that
have been found to be fundamental economic principles. See, e.g., Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017)
(claims directed to abstract idea of processing an application for financing a
purchase held unpatentable) (“We see no meaningful distinction between
this type of financial industry practice and ‘the concept of intermediated
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settlement’ held to be abstract in Alice, 134 S.Ct. at 2356, or the ‘basic
concept of hedging’ held to be abstract in Bilski v. Kappos, 561 U.S. 593
. .
The claimed invention is also abstract because it relates to the
processing of information using generic computer technology. See, e.g.,
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (“gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions”); see also Two-Way Media, Ltd. v. Comcast
Cable Communications, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017)
(agreeing with district court that claim was directed to abstract idea of
sending information, directing sent information, monitoring the receipt of
the sent information, and accumulating records about receipt of the sent
information); Smart Systems Innovations, LLC v. Chicago Transit Authority,
873 F.3d 1364, 1372 (Fed. Cir. 2017) (claims directed to formation of
financial transactions in a particular field (i.e., mass transmit) and data
collection related to such transactions, which is an abstract idea).
According to Appellants, the claimed invention is directed to “an
improvement. . . [in] computer functionality versus being directed to an
abstract idea.” Reply Br. 3 (internal citation omitted); see also id. at 2-
7. Appellants argue that the Examiner erred by “automatically doom[ing]” a
claim simply because of the ability of an invention to “run on a general
purpose computer.” Reply Br. 5 (citing Memorandum on Enfish at
1). However, we agree with the Examiner that the claimed invention does
not require anything more than conventional components. See Final Act.
4. The claims do not recite, and the Specification does not disclose, any
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particular structures other than referring to an “application programming
interface,” which the Examiner correctly finds to be a generic structure. A
review of the Specification reveals that the Specification does not provide
any detailed approach for the claimed method and system of vouching. As
such, the claimed invention does not resemble that at issue in Enfish, where
there was an improvement in computer capabilities, i.e., based on a self-
referential table for a computer database. See Enfish, 822 F.3d at 1336; see
also Memorandum on Enfish, at 1-2 (“a claim directed to an improvement to
computer-related technology (e.g., computer functionality) is likely not
similar to claims that have previously been identified as abstract by the
courts”).
Appellants argue that the claimed invention cannot be performed
using mental steps and that the claimed invention is not an idea in itself, as
described in the USPTO 2014 Interim Guidance of Patent Subject Matter
Eligibility (December 16, 2014) and July 2015 Update: Subject Matter
Eligibility) (hereinafter, “Update”). Appeal Br. 8-9. According to the
Update, “[t]he phrase ‘an idea ‘of itself,” is used to describe an idea
standing alone such as an uninstantiated concept, plan or scheme, as well as
a mental process (thinking) that ‘can be performed in the human mind, or by
a human using a pen and paper.’” Update, at 5 (internal citation
omitted). Even under Appellants’ argument that the claimed invention
requires the use of a computer, mere application of an abstract idea on a
computer system does not make a claimed invention patentable. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) (no particular assertedly inventive technology for performing
functions). At most, the claims (and Specification) refer to the use of three
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computers on a network without providing specific instructions for
implementation, and without more than reciting generic processes. See
claim 1 and Spec. 17-21.
Appellants argue that deducing a claim from an attribute constitutes a
transformation. Appeal Br. 10. The Supreme Court has rejected the
“machine-or-transformation” test as the sole test for patentable subject
matter. Bilski v. Kappos, 561 U.S. 593, 603-04 (2010). Nevertheless, the
Federal Circuit has explained that the presence of a machine or
transformation may be considered as a “useful clue” as part of the second
step of the Alice framework. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) (internal quotation marks and citation omitted). In this
case, the transformation is from one idea into another, e.g., transforming an
attribute into a claim and then into a voucher based on a comparison with an
assertion. As such, the transformation relates to abstract ideas and is itself
abstract. See also Smart Sys. Innovations, LLC v. Chicago Trust Authority,
873 F.3d 1368, 1371-72 (the Asserted Claims of the '003 and '617 patents
involve verifying validity of bankcard, which are part of an abstract idea);
Prism Techs. LLCv. T-Mobile USA, Inc., Case No. 2016-2031, -2049, 696
F. App’x 1014, 1017 (Fed. Cir. June 23, 2017) (non-precedential) (claim
directed to abstract idea of providing restricted access to resources);
EasyWeb Innovations, LLC v. Twitter, Inc., Case No. 2016-2066, 689 F.
App’x 969, 971 (Fed. Cir. May 12, 2017) (non-precedential) (claim directed
to abstract idea of receiving, authenticating, and publishing data).
For the above reasons, we agree with the Examiner that the claimed
invention is directed to an abstract idea of a fundamental economic
principle, even if a computer is required for its performance, as argued. We
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have reviewed the additional limitations of “deducing,” “receiving,”
“comparing,” “providing,” and conclude that they are directed to the same
abstract idea of vouching and, therefore, do not add significantly more, taken
individually or as a whole, to remove the invention from the realm of the
abstract. Accordingly, we sustain the Examiner’s rejection under § 101 of
independent claim 1.
With respect to the remaining claims, we have reviewed the additional
limitations, e.g., of “retrieving a policy,” “filtering the claim,” “augmenting
the claim,” “wherein the assertion is a required bank account balance,” and
“wherein the assertion is a required age,” and conclude that they are also
directed to the same abstract idea of vouching and, therefore, do not add
significantly more, taken individually or as a whole, to remove the invention
from the realm of the abstract.
We have reviewed the additional limitations of claims 5-9, 11-13,
and 17-20, e.g., “retrieving,” “filtering,” “augmenting,” and various
“wherein” clauses relating to the type of information being processed. We
determine that these additional limitations, taken individually or as a whole,
are directed to the same abstract idea of vouching and do not add
significantly more to remove the claimed invention from the realm of the
abstract. Thus, for similar reasons as independent claim 1, we sustain the
Examiner’s rejection under § 101 of independent claims 9 and 13 and
dependent claims 5-8, 11, 12, and 17-20.
Rejection II (Obviousness)
We are persuaded by Appellants’ argument that Korosec fails to
disclose a “voucher consumer computing device,” as recited in independent
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claim 1, i.e., “receiving, by the processor of the computer, a request from a
voucher consumer computing device issued via an exposed application
programming interface over a computer communications network to vouch
for an assertion based upon the attribute.” See Appeal Br. 12
n.4. Appellants contend that Korosec’s input device and output device
facilitate identification of an entity or communication to a user, but do not
request that a processor vouch for an attribute, as recited. See id. (citing
Korosec 30, 41, Fig. 3; Final Act. 5).
The Specification indicates a desire to improve on problems in the art
when a third-party intermediary vouches for a consumer, on behalf of
consumer, in an interaction with a bank. Spec. 6-7. Independent claim 1
recites a method performed by at least three computing structures: (1) at
least one end user computing device; (2) a processor; and (3) at least one
voucher consumer computing device. One step recites that the processor
receives a request to vouch for a claim from a voucher consumer computing
device. A further step recites that a component provides a security voucher
back to the voucher consumer computing device based on attribute
information received from at least one end user computing device. In other
words, the claims require that the same device that receives the voucher also
makes a prior request for the voucher.
The Examiner relies on Korosec’s input component 130 and output
device 250 for providing a request for a voucher. Final Act. 5 (citing
Korosec 30, 41); Ans. 4. Although the processor communicates a
voucher to the output device for a claim based on an attribute, Korosec does
not disclose that the output device provides a request to a processor for the
voucher. See Korosec 30, 41, Fig. 5. The Examiner does not rely on
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Sweeney or Prafullchandra to remedy the argued deficiency. We, therefore,
do not sustain the Examiner’s rejection under § 103(a) of independent claim
1 and claims 5-8, which depend therefrom.
Independent claims 9 and 13 contain similar language and
requirements as independent claim 1. For similar reasons as for independent
claim 1, we do not sustain the Examiner’s rejection under § 103(a) of
independent claims 9 and 13 and claims 11, 12, and 17-20, which depend
therefrom.
DECISION
The Examiner’s decision to reject claims 1, 5-9, 11-13, and 17-20
under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 1, 5-9, 11-13, and 17-20
under 35 U.S.C. § 103(a) is reversed.
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)(l)(iv).
AFFIRMED
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