Ex Parte Colgrave

Patent Trial and Appeal Board

Jun 29, 2018

10561260 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/561,260
141836 7590
IBM Poughkeepsie
C/0: Fabian VanCott
215 South State Street
Suite 1200
10/16/2006
07/03/2018
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
John Colgrave
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.
GB920030007US 1 5696
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/03/2018 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN COLGRA VE
Appeal2016-004678
Application 10/561,260 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING and
NINA L. MEDLOCK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Colgrave (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Final Rejection of claims 17-20 and 27-32. We have jurisdiction
under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal 2016-004678
Application 10/561,260
THE INVENTION
Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A method for a registry of business entity definitions to
handle user requests to access business entity definitions, the
method comprising:
receiving a request in a processor associated with said
registry from a user to access a business entity definition
comprising a plurality of information elements, each of said
information elements having permission details associated
therewith;
obtaining the identity of the user from data associated
with the request with said processor;
determining with said processor, for each of said
information elements, whether the user has permission to access
that said information element based on the permission details
associated with that said information element and said identity
of the user; and
with said processor, denying the user access to those
information elements for which it is determined that the user
does not have permission.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Nykanen
Keen et al.
US 2002/0174117 Al
WO 01/22299 Al
The following rejections are before us for review:
Nov. 21, 2002
Mar. 29, 2001
1. Claims 17-20 and 27-32 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
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2. Claims 17-20 and 27-32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nykanen and Keene.
3. Claims 17-20 and 27-32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keene and Nykanen.
ISSUES
Did the Examiner err in rejecting claims 17-20 and 27-32 under
35 U.S.C. §101 as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 17-20 and 27-32 under
35 U.S.C. § 103(a) as being unpatentable over Nykanen and Keene?
Did the Examiner err in rejecting claims 17-20 and 27-32 under
35 U.S.C. § 103(a) as being unpatentable over Keene and Nykanen?
ANALYSIS
The rejection of claims 17-20 and 27-32 under 35 US.C. §101 as being
directed to judicially-excepted subject matter.
The Appellant argued these claims as a group. We select claim 17 as
the representative claim for this group, and the remaining claims 18-20 and
27-32 stand or fall with claim 17. 37 C.F.R. § 4I.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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In that regard, the Examiner determined "[ t ]he claims are directed to
the abstract idea of controlling access to business entity definitions." Final
Rej. 2.
The Appellant agrees that claim 17 is directed to, more generally, the
concept of controlling access to data. "[I]t would seem that the 'abstract
idea' at issue is controlling access to data." App. Br. 11.
The Appellant then argues that "the claimed subject matter is
significantly more than the abstract idea of 'controlling access to data"' (id.
at 12) because:
"[C]ontrolling access to business entity definitions" is a specific
application of the larger idea of "controlling access to data"[ ]
[and] Appellant's claims are a specific method of controlling
access to business entity definitions including all of the
following: requiring that a business entity definition be divided
into a plurality of information elements, each of which has
separate permission details associated therewith, and requiring
that it is the identity of the user, and not some other
characteristic or classification, that determines, on an element-
by-element basis, whether access will be granted.
Id. at 11-12 (emphasis added).
This is an unpersuasive argument.
Focusing on "business entity definitions" as the type of data to which
access is controlled does not render the abstract idea "controlling access to
data" any less abstract. Limiting "data" to which access is controlled to
"business entity definitions" simply limits the "controlling access to data"
abstract idea to a particular environment; that is, to business entity
definitions. Cf Return Mail, Inc. v. United States Postal Service, 868 F .3d
1350, 1368 (Fed. Cir. 2017) ("'[L]imit[ing] the abstract idea to a particular
environment," here a mail processing system with generic computing
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technology, "does not make the claims any less abstract for the step 1
analysis."') (quoting In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,
613 (Fed. Cir. 2016)). See also Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting information, including
when limited to particular content ( which does not change its character as
information), [is] within the realm of abstract ideas."). It still is an abstract
idea but one described at a lower level of abstraction. Cf Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea
can generally be described at different levels of abstraction. As the Board
has done, the claimed abstract idea could be described as generating menus
on a computer, or generating a second menu from a first menu and sending
the second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.")
Step two is "a search for an 'inventive concept'-i.e., 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 Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that
[ t ]he additional elements or combination of elements in the
claims other than the abstract idea per se amount to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
elements do not provide meaningful limitations to transform the
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abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the
abstract idea itself. For example, claim 17 recites a "processor"
performing well-understood, routine, and conventional
activities such as denying a user access to data if they do not
have permission to the data. Also, for example, claim 31
recites a "server computer ... wherein the server is programmed
for," which is merely a generically recited computer structure
with software for performing routing operations, such as
"receiving a request .... "
Final Rej. 2-3.
The Appellant argues that claim 17 presents something novel. "[I]t
cannot be reasonably argued at this point that Appellant's claims are to an
abstract idea because they present nothing novel, nothing that is not well-
known and conventional." App. Br. 12.
"[N]ovelty in implementation of the idea is a factor to be considered
only in the second step of the Alice analysis." Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). [N]ovelty is a factor to be
considered when determining "whether the claims contain an 'inventive
concept' to 'transform' the claimed abstract idea into patent-eligible subject
matter." Id. However, a finding of novelty or nonobviousness does not
necessarily lead to the conclusion that subject matter is patentable eligible.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). The question in step two of the
Alice framework is not whether an additional feature is novel but whether
the implementation of the abstract idea involves "more than the performance
of 'well-understood, routine, [and] conventional activities previously known
to the industry."' Content Extraction and Transmission LLC v. Wells Fargo
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Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (quoting Alice, 134 S. Ct.
at 2359).
In that regard, the Appellant has not shown the novel features
transform the abstract idea into patent-eligible subject matter. The method
claimed involves the use of a "processor" which the Specification suggests
covers generic processors (see Spec. 5:24--27 ("any such client/server ...
has a processor"). As claimed, the processor performs certain information
processing steps such as "receiving," "obtaining," determining," and
"denying" that generic processors are known to perform.
The Appellant further argues pre-emption. "It should be clear that
Appellant's claims do not monopolize the idea of controlling access to data."
App. Br. 13.
Id.
Appellant's claims apply only if the use of business entity
definitions that comprising multiple elements each of which has
separate permission details associated therewith for controlling
access. Appellant's claims apply only if the identity of the
requestor, and not some other characteristic or classification, is
considered against the permission details on an element-by-
element basis for granting or denying access to a specific
element of the business entity definition.
A difficulty with this argument is that it appears to confuses the pre-
emption concern with the level of abstraction describing the abstract idea.
With respect to the pre-emption concern, "[ w ]hat matters is whether a claim
threatens to subsume the full scope of a fundamental concept, and when
those concerns arise, we must look for meaningful limitations that prevent
the claim as a whole from covering the concept's every practical
application." CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
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1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, said relied-on claim
limitation simply narrows the abstract idea so that it is described at a lower
level of abstraction. It does not render the abstract idea to which the claim is
directed to any less an abstract idea. Pre-emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add "significantly more" to the basic
principle, with the result that the claim covers significantly less. See
Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id.; see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
Finally, Appellant relies on DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) to argue that "the present claims are
necessarily rooted in computer technology and describe subject matter to
address issues specifically arising in the realm of computer networks." App.
Br. 14.
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However, there is no mention of computer networks in claim 17 and
the computer technology that claim 17 does mention is a "processor" which
the Specification suggests covers any generic processor. Cf Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) ("Simply adding a
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render the claim patent eligible."). "[T]he claims at
issue [in DDR] specif[ied] how interactions with the Internet are
manipulated to yield a desired result-a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink." DDR, 773 F.3d at 1257. In contrast, here, claim 17 covers a
generic processor performing information processing steps such as
"receiving," "obtaining," "determining," and "denying" that generic
processors are known to perform, albeit involving specific types of
information which as such do not add significantly more to the controlling
access data abstract idea claim 17 is directed to. See Bancorp Services,
L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) ("[T]he use of a computer in an otherwise patent-ineligible
process for no more than its most basic function-making calculations or
computations-fails to circumvent the prohibition against patenting abstract
ideas and mental processes.").
The Appellant separately argues that "claim 31 recites a machine,
which is an expressly permitted category of patentable subject matter under
35 U.S.C. § 101." App. Br. 15. But the question is not whether claim 31 is
statutory. It is. The question is whether it is judicially-excepted from
patent-eligibility for being directed to an abstract idea without adding
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significantly more to transform it into an inventive concept. In that regard,
claim 31 tracks claim 1 and therefore the Examiner's position that claim 1 is
patent-ineligible applies to claim 31 as well.
We have considered all of the Appellant's remaining arguments and
have found them unpersuasive. Accordingly, because representative
claim 17, and claims 18-20 and 27-32 which stand or fall with claim 17, are
directed to an abstract idea and do not present an "inventive concept," we
sustain the Examiner's determination that they are directed to ineligible
subject matter under 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc.,
656 F. App'x. 991, 997 (Fed. Cir. 2016) ("We have considered all of
Lending Tree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an "inventive concept," we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.").
The rejection of claims 17-20 and 27-32 under 35 USC§ 103(a) as
being unpatentable over Nykanen and Keene.
but
The Examiner's position is that Nykanen discloses all that is claimed
does not directly disclose: each of said information elements
having permission details associated therewith; determining
with said processor, for each of said information elements,
whether the user has permission to access that said information
element based on the permission details associated with that
said information element and said identity of the user; and with
said processor, denying the user access to those information
elements for which it is determined that the user does not have
perm1ss10n.
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Final Rej. 4. Keene is relied on as disclosing said missing disclosure. Final
Rej. 4--5. The Examiner argues, inter alia, that "it would have been obvious
to one of ordinary skill in the art, at the time the invention was made, to
modify the process ofNykanen to include having permission details
associated with each element, as taught by Keene, and to modify the process
ofNykanen to include determining whether the user has permission to
access each element, also taught by Keene." Final Rej. 5.
The difficulty with the Examiner's position is that it does explain how
the combination ofNykanen and Keene would lead one of ordinary skill in
the art, first, to include "a plurality of information elements, each of said
information elements having permission details associated therewith" in a
business entity definition, and then, second, to determine for each of said
information elements, whether the user has permission to access that said
information element based on the permission details associated with that
said information element and said identity of the user; and deny the user
access to those information elements for which it is determined that the user
does not have permission, as claimed. We agree with the Appellant that
Keene is merely describing that groups of data or objects may
have access codes associated therewith and that an authorized
user is granted access to that group or object. Keene does not
teach or suggest different access privileges for different
information elements within a business entity definition as
claimed. None of the cited references teach or suggest this
idea.
App. Br. 17. We agree that "[n]either reference, nor any combination of the
two, teaches or suggests that a particular user may have access [to] some
elements within the business entity definition and not to others: 'determining
with said processor,/or each of said information elements, whether the user
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has permission to access that said information element based on the
permission details associated with that said information element and said
identity of the user.' (Claim 17) (emphasis added)." App. Br. 18.
The rejection is not sustained.
The rejection of claims 17-20 and 27-32 under 35 US.C. § 103(a) as being
unpatentable over Keene and Nykanen.
The Examiner's position is that Keene discloses all that is claimed but
for "that the record is a business entity definition," for which Nykanen is
relied on. Final Rej. 9. "[I]t would have been obvious to one of ordinary
skill in the art, at the time the invention was made, to modify the records of
Keene to include business entity definitions, as taught by Nykanen." Final
Rej. 10.
But this has a similar difficulty. The claims do not simply call for
information elements having permission details as Keene is said to disclose
and a business entity definition as Nykanen is said to disclose. Rather, the
claims call for "a business entity definition comprising a plurality of
information elements, each of said information elements having permission
details associated therewith." How one of ordinary skill in the art given
Keene's information elements having permission details and Nykanen's
business entity definition would be led first, to include "a plurality of
information elements, each of said information elements having permission
details associated therewith" in a business entity definition, and then,
second, to determine for each of said information elements, whether the user
has permission to access that said information element based on the
permission details associated with that said information element and said
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identity of the user; and deny the user access to those information elements
for which it is determined that the user does not have permission, as claimed,
is not adequately explained.
The rejection is not sustained.
CONCLUSIONS
The rejection of claims 17-20 and 27-32 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed.
The rejection of claims 17-20 and 27-32 under 35 U.S.C. § 103(a) as
being unpatentable over Nykanen and Keene is reversed.
The rejection of claims 17-20 and 27-32 under 35 U.S.C. § 103(a) as
being unpatentable over Keene and Nykanen is reversed.
DECISION
The decision of the Examiner to reject claims 17-20 and 27-32 is
affirmed.
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).
AFFIRMED
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