Ex Parte Hamilton, et al

Patent Trial and Appeal Board

Mar 20, 2018

12039215 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/039,215 02/28/2008 Rick A. Hamilton, II
45092 7590 03/22/2018
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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.
END920070043US 1 7073
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMIL TON II, BRIAN M. O'CONNELL,
CLIFFORD A. PICKOVER, and KEITH R. WALKER
Appeal2017-000142
Application 12/039,215 1
Technology Center 3600
Before HUNG H. BUI, AMBER L. HAGY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to "preventing fraudulent phishing activity in a
virtual universe." Spec. i-f 1.
1 According to Appellants, the real party in interest is International Business
Machines Corp. App. Br. 1.
Appeal2017-000142
Application 12/039,215
Illustrative Claim
Claim 1 is illustrative and reproduced below:
1. A method for tagging a virtual entity in a virtual universe,
compnsmg:
providing a first command on a user interface of the virtual
universe for any user of the virtual universe to generate a first
report in response to a phishing activity by the virtual entity,
wherein the virtual universe is a computer simulated three-
dimensional environment, the virtual entity is an interactive
virtual representation in the virtual universe, and the phishing
activity includes the virtual entity fraudulently emulating another
entity;
providing a second command on the user interface of the
virtual universe for any user of the virtual universe to generate a
second report questioning the first report;
receiving the first report from the user of the virtual
um verse,
wherein the receiving includes filtering the first report to
determine if the first report is of interest to be further processed,
the filtering being based on a plurality of contents of the first
report, wherein the contents include an indication of the virtual
entity fraudulently emulating another avatar, another virtual
store, or another non-virtual store;
processing the first report from the user of the virtual
universe to determine a response to the first report,
wherein the processing includes:
determining whether the first report reliably
represents the virtual entity and, in response to the second
report being generated, determining whether the second
report refutes the first report; and
tagging the virtual entity based on the first report in a
public manner in the virtual universe such that the tagging
remains with the virtual entity as the virtual entity traverses
between regions in the virtual universe,
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wherein the tagging notifies other users in the virtual
universe about the reported phishing activity of the virtual entity
via at least one of an audio alert attached to the virtual entity in
the virtual universe and a visual alert attached to the virtual entity
in the virtual universe, the tagging being modifiable by other
users in the virtual universe.
Examiner's Rejections
(1) Claims 1-25 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 16.
(2) Claims 1--4, 6-12, 14--20, and 22-25 stand rejected under 35
U.S.C. § 103(a) as obvious over the combination of Hong (US
2009/0182872 Al; July 16, 2009), Bower et al. (US 2002/0198940 Al; Dec.
26, 2002), Abhyanker (US 2008/0319778 Al; Dec. 25, 2008), and Kohanim
et al. (US 2009/0187442 Al; July 23, 2009). Final Act. 19.
(3) Claims 5, 13, and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Hong, Bower, Abhyanker, Kohanim, and
Bohannon (US 2008/0275916 Al; Nov. 6, 2008). Final Act. 40.
ISSUES
1. Did the Examiner err in concluding claim 1 was directed to
patent-ineligible subject matter under§ 101?
2. Did the Examiner err in finding Appellants had not
demonstrated reasonable diligence in order to antedate Hong and Kohanim?
ANALYSIS
§ 101: Patent-Eligible Subject Matter
Section 101 defines patentable subject matter: "Whoever 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 therefor, subject to the conditions and requirements of this
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title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "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), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Therefore, "the claims are considered in their entirety to ascertain whether
their character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, 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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "described step two of this analysis as a search for
an 'inventive concept'-i.e., an element or combination of elements that is
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sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself." Id. (quotation omitted).
For computer-related technology, the Federal Circuit has held that a claim
may pass the second step if "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]." DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., "a challenge particular to
the Internet").
Appellants argue "claim 1 ... recites specific limitations other than
what is well-understood, routine and conventional" because "Hong and
Kohanim do not qualify as prior art." App. Br. 8. In addition to disagreeing
with Appellants regarding whether Hong and Kohanim qualify as prior art
(as discussed below), we also agree with the Examiner that "this is a
rejection under 35 USC 101 and not a rejection under 35 USC 102/103."
Ans. 12. The Federal Circuit has explained that "under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellants also argue "[ t ]he abstract idea that the Office has asserted
- 'reporting phishing activity in a virtual world' [-] is not similar to any of'
"(1) Fundamental Economic Practices; (2) An Idea 'Of Itself; (3) Certain
Methods of Organizing Human Activity; and ( 4) Mathematical
Relationships/Formulas." App. Br. 12. We agree with the Examiner,
however, that "[ t ]he claimed invention has done nothing more than take the
abstract idea and simply apply[] it to a different environment, in this case in
an online environment[,] and us[ e] software interfaces in order to carry out
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the manual processes that are known in the art of reporting fraudulent
activity." Ans. 21. Thus, "instead of performing the entire process
manually the invention is simply using electronic forms/interfaces" and
"there is no improvement upon the technology." Id. at 21-22.
We find several recent cases-all issued after briefing in this case-to
be instructive. One non-precedential decision involved the technology of
detecting undesirable files according to pre-set criteria. Intellectual
Ventures I LLC v. Erie Indem. Co., 711 F. App'x 1012, 1014 (Fed. Cir. Nov.
3, 2017) (unpublished). The Federal Circuit determined "the claims are
directed to the identification of unwanted files in a particular field (i.e., a
computer network)" and "[ w ]e have found the idea of performing a search to
ferret out sources with unwanted material 'based on characteristics' of the
source to be directed to an abstract idea." Id. at 1015-16 (quoting
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1314 (Fed.
Cir. 2016) ). "IV has not argued that the claimed processes of selecting
errant files apply rules of selection in a manner different from those which
humans used ... before the invention was claimed." Id. at 1016. The same
is true where, as here, the claims are directed to the identification of
unwanted activities in a particular field (i.e., a virtual universe), but the
process of providing a report, providing a counter-report, assessing the
reports, and tagging the entity could all be done manually. "The Supreme
Court and this court have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract." Affinity Labs of
Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016); Alice,
134 S. Ct. at 2358. Indeed, unlike the claims in Erie Indemnity, which at
least specify certain pre-set criteria, the claims here do not specify-let
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alone provide a technological improvement for-how the reports are
provided or how to determine whether the reports "reliably represent" or
"refute" allegations of phishing.
The precedential case of Symantec also is instructive and involved
"filtering e-mails that have unwanted content." 838 F.3d at 1313. The
Federal Circuit agreed with the district court that "receiving e-mail (and
other data file) identifiers, characterizing e-mail based on the identifiers, and
communicating the characterization-in other words, filtering files/e-mail-
is an abstract idea." Id. The court analogized the claims to receiving paper
mail and discarding letters based on, for example, the sender listed on the
envelope, an entirely manual process. Id. at 1314. Thus, the court
concluded "[t]he patent merely applies a well-known idea using generic
computers to the particular technological environment of the Internet." Id.
(quotation omitted). The same is true here for the filtering of reports "in a
virtual universe."
This case can also be analogized to another precedential decision in
that "the claims here are directed to collecting and analyzing information to
detect misuse and notifying a user when misuse is detected," which the
Federal Circuit has held is just "a combination of these abstract-idea
categories." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-
94 (Fed. Cir. 2016). Thus, just as in Erie Indemnity, Symantec, and
FairWarning, we conclude the claims here are directed to an abstract idea.
Appellants further argue "[t]he recited method of tagging a virtual
entity in a virtual universe as defined in claim 1 ... includes meaningful
limitations that add more than a general linking of the use of an abstract
idea." App. Br. 13 (quotation omitted). We agree with the Examiner,
however, that "merely copying and pasting the claim language and stating
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that these limitations ... recit[ e] more than a mere abstract idea is ...
insufficient." Ans. 8. For example, other than being in a different field of
use, it is unclear how tagging "a virtual entity in a virtual universe" is
significantly more than, for example, Nathaniel Hawthorne's 1850 novel The
Scarlet Letter tagging the protagonist with a scarlet "A" on her dress.
Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available
information in a particular field, stating those functions in
general terms, without limiting them to technical means for
performing the functions that are arguably an advance over
conventional computer and network technology.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016); FairWarning, 839 F.3d at 1097-98; Ans. 13-14. Thus, Appellants
have not shown the Examiner erred in determining the claims do not recite
significantly more than the abstract idea.
Accordingly, we sustain the Examiner's rejection under§ 101 of
claim 1, and claims 2-25, which Appellants argue are patentable for similar
reasons. See App. Br. 14; 37 C.F.R. § 41.37(c)(l)(iv).
§ 103: Antedating Hong and Kohanim
The Examiner finds all claims obvious based on combinations that
include Hong and Kohanim. Final Act. 19, 40. Hong claims priority to a
provisional application filed on January 16, 2008. App. Br. 14. Kohanim
was filed on January 23, 2008. Id. The present application was filed on
February 28, 2008. Appellants therefore attempt to swear behind Hong and
Kohanim. In particular, Appellants submit an invention disclosure form
("Exhibit A") as well as declarations from the inventors and an attorney at
Appellants' law firm. See Decls. of Rook, Hamilton, Pickover, Walker, and
O'Connell (Apr. 22, 2015); Ex. A, Disclosure END8-2007-0053.
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Application 12/039,215
The Examiner determines "[ t ]he evidence submitted is insufficient to
establish diligence" and "insufficient to establish a conception of the
invention prior to the effective date" of Hong and Kohanim. Ans. 28. In
particular, the Examiner finds the declarations insufficient because "the
inventors simply state that prior to January 16, 2008 the invention was
conceived" without providing any explanation or proof, and "Mr. Rook has
failed to provide reasons or evidence to explain for the gaps of inactivity that
occurred between January 16, 2008 and February 28, 2008." Id. at 40-41
(emphasis omitted). Similarly, the Examiner finds "Exhibit A is nothing
more than a high level overview" that does not tie the disclosures of Exhibit
A to the claim language and in fact is directed towards a different concept
(e.g., tagging a parcel of land rather than an avatar). Id. (emphasis omitted).
"Pre-AIA section 102(g) allows a patent owner to antedate a
reference by proving earlier conception and reasonable diligence in reducing
to practice." Peifect Surgical Techniques, Inc. v. Olympus Am., Inc., 841
F.3d 1004, 1007 (Fed. Cir. 2016). "Reasonable diligence must be shown
throughout the entire critical period, which begins just prior to the
competing reference's effective date and ends on the date of the invention's
reduction to practice." Id.
"Diligence turns on the factual record." In re Steed, 802 F.3d 1311,
1317 (Fed. Cir. 2015); see also 37 C.F.R. § 1.131(b).
A patent owner need not prove the inventor continuously
exercised reasonable diligence throughout the critical period; it
must show there was reasonably continuous diligence. Under
this standard, an inventor is not required to work on reducing his
invention to practice every day during the critical period. And
periods of inactivity within the critical period do not
automatically vanquish a patent owner's claim of reasonable
diligence.
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Perfect Surgical, 841 F.3d at 1009 (citations omitted). Nevertheless, "[a]n
inventor's testimony regarding his reasonable diligence must be
corroborated by evidence." Id. at 1007.
Here, the inventors all make the same conclusory assertion regarding
diligence: "That, subsequent to the conception of the invention, and up until
the patent application filing date of 02-28-2008, we diligently and actively
assisted the IBM Corporation Patent Department in the planning,
preparation, review, and filing of the above-identified patent application."
Hamilton Deel. i-f 7; Pickover Deel. i-f 7; Walker Deel. i-f 7; O'Connell Deel.
i-f 7. The only evidence supporting the inventors' assertion of diligence is a
declaration from an attorney at Appellants' prosecuting law firm, which
states that "[t]he following statements are based upon my review of the
business records kept with Hoffman Warnick LLC":
That prior to 01-16-2008, Hoffman Warnick LLC received a
request to prepare a patent application and file the same with the
[USPTO].
The ... patent application was filed ... on 02-28-2008.
Accordingly, prior to 01-16-2008, and up until the patent
application filing date of 02-28-2008, Hoffman Warnick LLC
diligently and actively assisted the Applicant and inventors in the
preparation, review, and filing of the above-identified patent
application.
Rook Deel. i-fi-12-5 (numbering and spacing omitted). No date is given for
when Hoffman Warnick received the request to prepare an application, and
no further evidence is provided for when Hoffman Warnick was or was not
actively working on the application, nor for what work had already been
completed prior to January 16, 2008.
"An attorney's work in preparing a patent application is evidence of
an inventor's diligence." Perfect Surgical, 841 F.3d at 1010. Thus, we are
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"required to weigh this evidence [of activity of preparing and filing the
application] by application of a rule of reason over the course of the entire
critical period." Id. at 1010-11. Nevertheless, we are not persuaded that a
rule of reason demonstrates diligence here.
The Federal Circuit's predecessor dealt with a similar scenario in
considering diligence of attorneys between October 29 and December 5,
1955:
[A] rule of reason should be followed in cases of this kind and
. . . courts should be somewhat liberal in determination of
diligence of attorneys and of their clerical and stenographic
staffs, since the law cannot presume that such people can
immediately begin and expeditiously perform their duties as
soon as work appears on their desks. Nevertheless we think that
appellant is attempting to use those principles as substitutes for
record evidence, of which there is very little.
D'Amico v. Koike, 347 F.2d 867, 871(CCPA1965). InD'Amico, similar to
here, conclusory testimony was submitted that work would normally have
been done in the intervening time period, but no substantive evidence was
submitted to prove that. Id. at 869.
There is no end to the inferences which might be drawn from the
scanty record before us and we prefer not to indulge in them, but
we cannot overlook the fact that Koike' s priority date falls nearly
midway in this two-month period and it is certainly possible that
all of D 'Amico' s activity took place during the period prior to
October 29, whereupon the application lay idle for nearly one
month awaiting execution by the inventor. Be that as it may, that
month is the critical month and the record contains no evidence,
even of the weakest sort, whether in it anything occurred.
D 'Amico, 34 7 F .2d at 871; see also Bey v. Kollonitsch, 806 F .2d 1024, 1028
(Fed. Cir. 1986) ("[The prosecuting attorney's] records did not show the
exact days when activity specific to this application occurred. Thus, we
cannot say that the board clearly erred in finding that the documented
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activities with regard to the present application are insufficient by
themselves to prove diligence.") (quotation omitted).
The Federal Circuit has "declined to excuse the patent owner's
complete lack of evidence" even when "the critical period spanned just two
days." Perfect Surgical, 841 F.3d at 1009 (discussing In re Mulder, 716
F.2d 1542, 1542--46 (Fed. Cir. 1983)). The same logic applies here where
Appellants provided only conclusory declarations without any further facts
or evidence to support such assertions.
Accordingly, we sustain the Examiner's rejections under§ 103 of
claim 1, and claims 2-25, which Appellants argue are patentable for similar
reasons. See App. Br. 16; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-2 5.
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.
§ 41.50(±).
AFFIRMED
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