Ex Parte Cihula

Patent Trial and Appeal Board

Mar 26, 2018

10746077 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/746,077
45512 7590
Compass IP Law PC
Lawrence M. Cho
FILING DATE
12/24/2003
03/28/2018
4804 NW Bethany Blvd
Ste I-2 #237
Portland, OR 97229
FIRST NAMED INVENTOR
Joseph F. Cihula
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.
INT.POlO 2207
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
eofficeaction@appcoll.com
admin@compassiplaw.com
lawrence@compassiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH F. CIHULA 1
Appeal2016-008155
Application 10/746,077
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 34, 35, 43-52 and 60-75. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellant identifies the Real Party in Interest as Intel Corp. App. Br. 3.
Appeal 2016-008155
Application 10/746,077
BACKGROUND
Appellant's invention is directed to a method and apparatus for
establishing trust in smart card readers. Spec. 1
Claim 34 is illustrative:
34. A smart card, comprising:
an attestation verifier unit that performs a test on a smart
card reader by comparing a measurement value of a component
of the smart card reader with a measurement value stored on the
smart card; and
an indicator, on the smart card, that outputs an indication
to a smart card user of whether the smart card reader passed the
test.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Kawana
Deo
Allen
us 4,746,788
us 5,721,781
US 6,776,332 B2
Appellant appeals the following rejections:
May 24, 1988
Feb.24, 1998
Aug. 17, 2004
Claims 34, 35, 43-52, and 60-75 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Claims 34, 35, 43-52, and 60-67 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kawana and Allen.
Claims 68-75 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deo, Kawana, and Allen.
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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. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
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The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"); see also In re TL! Comms. LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
ANALYSIS
Rejection under 35 US.C. § 101
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The Examiner holds that the claims are directed to the abstract idea of
comparing a test result and providing an indicator of the test result. Final
Act. 3. The Examiner further holds that the steps describe the concept of
comparing new and stored information and using rules to identify options
which corresponds to the concepts identified as abstract ideas by the courts.
Ans. 3.
In regard to the second part of the Alice analysis, the Examiner finds
that the additional elements do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself. Final Act. 3--4. Specifically, the Examiner finds that the additional
limitations amount to conventional computer functions that do not add
meaningful limits to practice the abstract idea. Ans. 2-3.
We are not persuaded of error on the part of the Examiner in rejecting
claim 34 by Appellant's argument that the Examiner failed to establish a
prima facie case of patent ineligibility because the Examiner failed to show
that claim 34 is directed to a fundamental truth or a fundamental principle
which would preempt the use of basic tools of scientific and technological
work.
The Examiner holds that the claims are directed to analyzing data by
comparing measurement values to stored measurement values and outputting
data indicating the results of the measurement. As such, the Examiner holds
that the claims are directed to the collection, analysis and transmission of
data and as such relate to an abstract idea. The Examiner does not base the
rejection on a holding that claim 34 is directed to a fundamental truth or a
fundamental principle.
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In regard to preemption, we note that 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); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701, (2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not n:iake them any less abstract."). And, "[ w ]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
lvlayo framework, as they are in this case, preemption concen1s are fully
addressed and made moot" Ariosa, 788 F.3d at 1379.
We do not agree with the Appellant that claim 34 includes additional
elements that amount to significantly more than the abstract idea because the
claims recite comparing a measurement value of a component of a smart
card reader with measurement value stored on a smart card and having a
smart card output a sound/vibrate/change its temperature. These recitations
also relate to comparing a test result and providing an indicator of the test
result and therefore are part of the abstract idea itself. We also agree with
the Examiner that the function of the indicator is a computer function that is
well understood, routine and conventional.
We are also not persuaded of error on the part of the Examiner by
Appellant's arguments that claim 34 recites an invention that is an
improvement in the technical field of establishing trust in the smart card
reader because prior approaches do not include comparing a measurement
value of a component of a smart card reader with the measurement value
stored on a smart card. This argument appears to be directed to the novelty
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of the present invention. To the extent Appellant maintains that the
lirnitations of claim 34 necessarily amount to "significantly more" than an
abstract idea because the claimed apparatus is allegedly patentable over the
prior art, Appellant misapprehends the controlling precedent. Although the
second step in the Alice/Jvf ayo framework is described as a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 34. We will also sustain this rejection as it is directed to independent
claims 35, 43, 68, 71, and 74 because the Appellant has not argued the
separate eligibility of these claims.
Appellant argues that the Examiner erred in rejecting dependent
claims 44-52, 60-67, 69, 70, 72, 73 and 75 because the Examiner has failed
to evaluate the features of the dependent claims. We note that the Appellant
has not addressed specifically what recitations in these claims are not
directed to an abstract idea or which recitations amount to significantly more
than an abstract idea. Our review of the recitations in claims 48-52, which
depend from independent claims 34, 35 and 43, for example, indicates that
the additional claim limitations in these claims further define the abstract
idea of the analysis and transmission of data. For example, claims 48-51
further define the test data and claim 52 which depends from claim 35
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recites providing an indicator on the smart card which is also recited in
independent claim 34. As such, these dependent claims, like claim 34, recite
comparing a test result and providing an indicator thereof and are covered by
the Examiner's analysis in the rejection. Therefore, we will sustain the
rejection as it is directed to the dependent claims as well.
Rejections under 35 US.C. § 103
Claims 34, 35, 43-52 and 60-67
We will not sustain this rejection because we agree with the Appellant
that the prior art does not disclose comparing a measurement value of a
component of the smart card reader with a measurement value stored on the
smart card. The Examiner finds in the Final Action that Kawana discloses
this subject matter at column 4, lines 39-46 and depicts this subject matter in
Figure 1. Final Act. 4.
Appellant's Specification discloses that the measurement values
represent attributes of components of the smart card reader or states of the
smart card reader that are output by a measurement agent. Spec. 6. The
measurement values may include a value indicating whether the smart card
reader has been tampered with, data associated with a version of software
running on the smart card or other measurement values that may be
generated dynamically. Spec. 8.
We find that the portion of Kawana relied on by the Examiner
discloses that decrypted personal account data latched in a data latch unit is
compared to personal account data from memory. There is no disclosure
that this data is measurement data i.e., there is no disclosure that the personal
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account data represents attributes of components of the smart card reader or
states of the smart card reader.
In the Answer, the Examiner apparently recognizing that Kawana
does not disclose this subject matter argues that the value does not have to
be a "measurement" value since there is no language or limitation in the
claims which requires a measurement. Ans. 4.
We do not agree. Claim 34, for example, clearly recites that it is the
measurement value of a component that is compared to the measurement
value stored on the smart card. While there is no measuring recited in claim
34, the value that is compared is a measurement value and therefore the
measurement value must be considered when determining patentability.
In view of the foregoing, we will not sustain the rejection as it is
directed to claim 34 and claims 50, 51, 60-63 dependent therefrom. We also
do not sustain the rejection as it is directed to the remaining claims subject to
this rejection because these claims also require comparing a measurement
values.
Claims 68-7 5
We will not sustain this rejection because we agree with the Appellant
that the Examiner has not established that the prior art discloses or suggests
having a smart card output a sound, vibrating a card or changing the
temperature of the smart card to indicate to a smart card user the result of the
test.
The Examiner states that the claimed feature of "output and sound ..
. " is old and well known in the field of the art and is no more than the simple
substitution of one known element for another. Final Act. 7.
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We will also not sustain this rejection of claim 68 and claims 69 and
70 dependent therefrom because the Examiner has not provided evidence
that is known in the art for a smart card to provide a sound indication.
Rejections based on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior
art. The Examiner may not because of doubt that the invention is
~ ,
patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
DECISION
We affirm the Examiner's§ 101 rejection.
We do not affirm the Examiner's§ 103 rejections.
TIME PERIOD
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 )(2009).
AFFIRMED
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