Ex Parte Chua

Patent Trial and Appeal Board

Jul 31, 2018

10893651 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/893,651 07/16/2004 Bryan S. M. Chua
47713 7590 08/01/2018
IMPERIUM PATENT WORKS
P.O. BOX607
Pleasanton, CA 94566
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.
CH-003 2517
EXAMINER
FU,HAO
ART UNIT PAPER NUMBER
3697
MAIL DATE DELIVERY MODE
08/01/2018 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
Ex parte BRYAN S. M. CHUA
Appeal 2016-007 549
Application 10/893, 651
Technology Center 3600
Before THU A. DANG, JOHN A. EV ANS, and SCOTT E. BAIN,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-8, 17-24, and 27-35. Reply. Br. 1.
Claims 9-16, 25, and 26 are canceled. Id. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE. 2
1 The Appeal Brief names the inventor, Bryan S. M. Chua, as the real party
in interest. App. Br. 1.
2 Rather than reiterate the arguments of the Appellant and the Examiner, we
refer to the Appeal Brief (filed November 16, 2015, "App. Br."), the Reply
Brief (filed August 1, 2016, "Reply Br."), the Examiner's Answer (mailed
June 11, 2016, "Ans."), the Final Action (mailed April 14, 2015, "Final
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Application 10/893, 651
STATEMENT OF THE CASE
The claims relate to a means of authenticating an individual to a
server. See Abstract.
INVENTION
Claims 1, 17, 18, 24, and 34 are independent. An understanding of
the invention can be derived from a reading of illustrative claim 1, which is
reproduced below with some formatting added:
1. A method of granting a user access to a service, wherein
a first computer system is a computer system of a service
provider, wherein a second computer system is a computer
system of an authentication provider, the method comprising:
(a) receiving from the user and storing onto the first
computer system a first usemame, a first password, and a
second password, wherein the first usemame and the first
password form a first identity credential;
(b) retrieving a second usemame, wherein the second
usemame and the second password form a second identity
credential, the service provider verifying the first identity
credential but not the second identity credential;
( c) forwarding the second identity credential from the
first computer system across a network to the second computer
system without forwarding the first usemame or the first
password received in (a);
( d) receiving onto the first computer system verification
of the second identity credential, wherein the verification is
received across the network from the second computer system
of the authentication provider, wherein the second computer
system of the authentication provider does not store any user
Act."), and the Specification (filed July 16, 2004, "Spec.") for their
respective details.
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identity information, and wherein the verification received in
( d) is a result of the authentication provider having verified the
second identity credential without having received the first
usemame from the service provider; and
( e) granting the user access to the service if the service
provider verifies the first identity credential received in (a) and
if the service provider receives verification of the second
identity credential from the authentication provider in ( d),
wherein the granting of ( e) is performed by the service
provider.
Rejections
Claims 1-8, 17-24, and 27-35 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter. Ans. 2. The rejections under 35
U.S.C. § 103 have been withdrawn. Id.
ANALYSIS
We have reviewed the rejections of claims 1-8, 17-24, and 27-35 in
light of Appellant's arguments that the Examiner erred.
We consider Appellant's arguments, presented in the Appeal Brief,
in an order more suited to the two-step analytical framework set forth in
Alice. The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. 2347, 2355.
Claims 1-8, 17-24, and 27-35: NON-STATUTORY SUBJECT MATTER
Appellant argues all claims as a group. App. Br. 8-15. Therefore, we
decide the appeal of the § 101 rejection on the basis of illustrative claim 1,
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and refer to the rejected claims collectively herein as "the claims." See 37
C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
35 u.s.c. § 101.
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 3 5 U.S. C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "laws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354
(2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294-97 (2012); Diamond v. Diehr,
450 U.S. 175, 185 (1981).
Preemption.
Appellant argues the "claimed inventions do not attempt to preempt
the entire field of multifactor authentication." Reply. Br. 16.
Although preemption may denote patent ineligibility, its absence does
not demonstrate patent eligibility. See Fair Warning, IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). We are not persuaded by
Appellant's preemption argument because for claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
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such an analysis under the Mayo/Alice framework below.
Mayo-Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id.
1. Whether the Examiner's finding that the claims are "directed
towards granting user access to a service" is supported with evidence.
The Examiner finds "the claims are directed towards granting user
access to a service" which "is a fundamental economic practice and thus, the
claims include an abstract idea." Final Act. 4. The Examiner explains
"[f]undamental economic practices have been found as abstract concepts by
the [C]ourt." Id., 5 ( citing, generally, to Alice).
Appellant contends the Examiner has not provided any evidence for
his finding that the claims are directed towards "granting user access to a
service" and thus, has failed to establish a prima facie case. App. Br. 9.
Appellant argues that in Alice, "there were various references cited on the
record that related to the concept of intermediated settlement." Id.
The Federal Circuit observes that there is no single test or definition to
distinguish a patent-eligible claim from a claim directed to an abstract idea.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 12943 (Fed.
Cir. 2016). Instead of a definition or test, the decisional mechanism applied
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by the Federal Circuit is a comparison of the accused claims to those of prior
cases to determine how similar or parallel claims were decided. Id.; see
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016).
The Alice Court analyzed the claims at issue as "involv[ing] a method
of exchanging financial obligations between two parties using a third-party
intermediary to mitigate settlement risk" such that an "intermediary issues
irrevocable instructions to the exchange institutions to carry out the
permitted transactions." Alice, 134 S. Ct. 2356 (citing Bilski v. Kappas, 561
U.S. 593, 130 S. Ct. 3218 (2010)).
For purposes of Step 1 of the Mayol Alice analysis we agree with the
Examiner that "the claims are directed towards granting user access to a
service" which "is a fundamental economic practice and thus, the claims
include an abstract idea." Final Act. 4.
As explained by Appellant, "[i]t is becoming common for users to
make financial transactions across networks." Spec., ,r 2. To the
transaction between the user and the service provider, Appellant's claims
adds a trusted "authentication provider" that authenticates the user. See
Spec. ,r 9. We find the trusted "authentication provider" is equivalent to "a
third-party intermediary" that issues "instructions to the exchange
institutions to carry out the permitted transactions." See Alice, 134 S. Ct.
2356. We disagree with Appellant and find the Examiner has provided
sufficient evidence to support the finding. 3
3 The Examiner provides further evidentiary support by finding Brennan (US
2003/0046551, cited in connection with the withdrawn rejections under
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Thus, we agree with the Examiner that, under Step 1 of the
Mayo/Alice framework, the claims are "directed to" an abstract idea.
Therefore, we conclude all claims on appeal are directed to a patent-
ineligible abstract idea, i.e., a fundamental economic practice, as found by
the Examiner. Final Act. 4.
Mayo/ Alice Step 2.
Where, as here, the claims are found to be "directed to" a patent-
ineligible concept, we then "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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298).
This analysis has been characterized as the search for an "inventive
concept"- something sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. ( quoting Mayo,
132 S. Ct. at 1294).
With respect to Mayo-Alice step 2, the Examiner characterizes
Appellant as arguing that "receiving usemames and passwords are not
fundamental economic practices." Ans. 5. The Examiner finds such to be a
"well-understood, routine, and conventional practice in the field of online
§ 103) discloses a two-layer authentication scheme similar to the present
invention, where a first computer ( analogous to the claimed "service
provider") performs a first authentication and forwards credential data to a
second computer, and the second computer ( analogous to the claimed
"authentication provider") performs a second authentication to grant user
access. Ans. 4.
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services." Id. And further finds "receiving or transmitting data over a
network" is a "basic computer function." Id.
Well-understood, Routine, and Conventional Computer Functions.
The Examiner finds the claimed limitations are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry. Final Act. 5. The Examiner finds "receiving, processing, and
storing data" and "receiving or transmitting data over a network" are well-
understood, routine, and conventional computer functions. Therefore, the
recited limitations in independent claims do not amount to significantly
more than the abstract idea itself. Ans. 10 (citing July 2015 Update: Subject
Matter Eligibility).
However, the Examiner describes the claims at such a high level of
abstraction and untethered from the language of the claims which all but
ensures that the exceptions to§ 101 swallow the rule. See Alice, 134 S. Ct.
at 2354 (noting that "we tread carefully in construing this exclusionary
principle [ of laws of nature, natural phenomena, and abstract ideas] lest it
swallow all of patent law"); cf Diamond v. Diehr, 450 U.S. 175, 189 n. 12,
(1981) ( cautioning that overgeneralizing claims, "if carried to its extreme,
make[ s] all inventions unpatentable because all inventions can be reduced to
underlying principles of nature which, once known, make their
implementation obvious").
Whether a claim element or combination of elements would have been
well-understood, routine, and conventional to a skilled artisan in the relevant
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field at a particular point in time may require "weigh[ing] evidence,"
"mak[ing] credibility judgments," and addressing "narrow facts that utterly
resist generalization." Berkheimer v. HP Inc., Order 2017-1437, slip op. 2
(Fed. Cir. May 31, 2018) ( quoting U.S. Bank Nat 'l Ass 'n ex rel. CW Capital
Asset Mgmt. LLC v. The Village at Lakeridge, LLC, 138 S. Ct. 960, 967
(2018) (quoting Pierce v. Underwood, 487 U.S. 552, 561---62 (1988)). The
Supreme Court in Alice asked whether the claimed activities were
"previously known to the industry," and in Mayo asked whether they were
"previously engaged in by researchers in the field." Berkheimer, Id.
(quoting Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2359 (2014);
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)". Indeed, the Court recognized that "in evaluating the significance of
additional steps, the§ 101 patent-eligibility inquiry and, say, the§ 102
novelty inquiry might sometimes overlap." Berkheimer, Id. (quoting Mayo,
566 U.S. at 90). The Federal Circuit acknowledged that ultimately, the
question of patent eligibility is one of law but, in fact, every other type of
validity challenge is either entirely factual ( e.g., anticipation, written
description, utility), a question of law with underlying facts ( e.g.,
obviousness, enablement), or a question of law that may contain underlying
facts (e.g., indefiniteness). Id., 2-3.
"[W]hether claim limitations recite activities that were well-
understood, routine, and conventional in the relevant field at a particular
point in time ... is a question of historical fact, not a legal question of claim
scope." Id., 4, n. 3. Because the patent challenger bears the burden of
demonstrating that the claims lack patent eligibility, there must be evidence
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supporting a finding that the additional elements were well-understood,
routine, and conventional. Id., 3.
We agree with Appellant that the Examiner has not provided evidence
of Record which demonstrates that the specific claim recitations are well-
understood, routine, and conventional.
DECISION
The rejection of claims 1-8, 17-24, and 27-35 under 35 U.S.C. § 101
is REVERSED.
REVERSED
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