Ex Parte Karame et al

Patent Trial and Appeal Board

Feb 25, 2019

14402176 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/402,176 11/19/2014
95683 7590 02/27/2019
Ley dig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Ghassan Karame
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.
814706 4462
EXAMINER
NAGHDALI, KHALIL
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GHASSAN KARAME, JENS-MATTHIAS BOHLI,
and SEBSTIAN GAJEK
Appeal2017-005221
Application 14/402, 176
Technology Center 2400
Before JUSTIN BUSCH, JAMES W. DEJMEK, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-11. Oral arguments were heard on February 13,
2019. A transcript of the hearing will be placed in the record in due course.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-005221
Application 14/402, 176
STATEMENT OF THE CASE
Appellants' invention is directed to a method for storing data in a
relational database and a relational database server for storing data. Spec. 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for storing data in a relational database, comprising:
a plurality of tables, wherein the data is stored in these tables,
wherein each row of each table is provided with an original primary
key for identification, and wherein foreign keys are provided for
cross-referencing different tables of the relational database,
wherein the primary keys are encrypted, that the foreign keys
are encrypted based on the encrypted primary keys and that for each
table where a primary key is referenced as a foreign key an encrypted
pointer is stored to link the corresponding encrypted foreign key to the
encrypted primary key.
App. Br. 11 (Claims Appendix).
REJECTIONS
Claims 1, 2, 10, and 11 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e. an abstract idea)
without significantly more. Final Act. 11.
Claims 1-11 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Chrysler et al. (US 2010/0142710 Al;
published June 10, 2010) ("Chrysler"), Browning (US 8,504,844 B2; issued
Aug. 6, 2013), and Banks et al. (US 7,797,342 B2; issued Sept. 14, 2010)
("Banks"). Final Act. 13-25.
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ANALYSIS
35 US.C. § 101 Rejections
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also 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.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). However,
claims "directed to a specific improvement to the way computers operate"
have been found to be patent eligible. See Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336-39 (Fed. Cir. 2016) (claims "specifically directed to a
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Application 14/402, 176
self-referential table for a computer database" were not directed to an
abstract idea.)
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
With respect to the first step in the Alice/Mayo framework, the
Examiner determines claims 1, 2, 10, and 11 are directed to organizing data
by assigning keys and encryption, which is an abstract idea. Final Act. 4--5,
11-12; Ans. 3. The Examiner determines the claims are not similar to those
in Enfzsh because they are "not claiming any efficiency rather securing data
with no reference to how this method of the security is noble [sic]." Ans. 2.
Appellants argue the claims are similar to the claims in Enfzsh in that
they "describe a specific improvement in computer capabilities, namely a
specific method for storing data in a relational database." App. Br. 5.
According to Appellants, "the claimed invention provides a method for
storing data in a relational database and a relational database server which
[is] efficient and at the same time secure to prevent an adversary from
gaining any meaningful information of the data of the relational database."
Id. at 6 (citing Spec. 2, lines 14--20). Appellants argue "the use of the
encrypted pointer provides a backward link from the foreign keys to the
primary keys, which creates efficiencies for any querier of the relational
database with respect to the search and decryption." Reply Br. 2.
\Ve are persuaded by Appellants' arguments and do not agree with the
Examiner's determination that the claims are directed to the abstract idea of
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Application 14/402, 176
"organizing data by assigning keys and encryption" (see Final Act. 4----5, l l----
12; Ans. 3). Rather, we conclude the character of the claims as a whole is
directed to an improved method for storing data in a relational database, and
thus not directed to an abstract idea. See E'1?/lsh, 822 F.3d at 1335-36;
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016) (patent eligible rnethod claims directed to an irnprovement
in computer animation, not an abstract idea that merely invokes generic
processes and machinery).
Our conclusion is supported by Appellants' claims and Specification.
In particular, Appellants extensively discuss the various improvements
allegedly provided by the claimed invention. s~ee Spec. 2-4, 7-8. For
example, Appellants describe "an objective of the present invention [is] to
provide a method for storing data in a relational database and a relational
database server which are efficient and at the same time secure to prevent an
adversary from gaining any meaningful information of the data of the
relational database." Id. at 2. Appellants further discuss various efficiencies
provided by the claimed invention, such as "efficient query linking between
primary keys and all corresponding foreign keys between tables" and
"efficient query linking between each foreign key and its corresponding
primary key." Id. at 3. Appellants also state "foreign keys are encrypted
differently from the remaining entries of the relational database" which
"enables the use of lightweight encryption techniques to encrypt these
entries while fully supporting existing functionality of the relational
database." Id. at 8. According to Appellants, this "provides significantly a
boost in the performance of the encrypted relational databases without
compromising a security against passive adversaries." Id.
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On this record, the Examiner has not sufficiently explained why the
claims are not directed to an improvement in computer functionality, like the
claims in Enfzsh. Because we find the claims are directed to eligible subject
matter, we need not reach step two oftheAlice/Afayo test. Enjzsh, 822 F.3d
at 1339. Therefore, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claims 1, 2, 10, and 11.
35 US.C. § 103 Rejections
Dispositive Issue: Did the Examiner err in finding the combination of
Chrysler, Browning, and Banks teaches or suggests "the foreign keys are
encrypted based on the encrypted primary keys," as recited in independent
claim 1 and commensurately recited in independent claim 1 O?
The Examiner relies on Chrysler to teach or suggest the disputed
limitation. Final Act. 14 ( citing Chrysler ,r,r 5, 6). Specifically, the
Examiner finds Chrysler's first plurality of key field entries teaches or
suggests the primary key and Chrysler's second plurality of key field entries
teaches or suggests the foreign key. Id.; Ans. 6. The Examiner finds
"Chrysler discloses encrypting primary and foreign keys by encoding the
first and second adjusted key fields." Ans. 6.
Appellants argue "the encryption of Chrysler is based on one or more
index keys." App. Br. 8. Appellants argue "[n]owhere does Chrysler teach
or suggest that its index keys are based on either the first or second plurality
of adjusted key field entries." Id. at 8; see also Reply Br. 4. Appellants
further argue "[t]he table encrypter 205 does not show any encryption of a
key field based on another encrypted key field." App. Br. 8-9.
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We are persuaded by Appellants' arguments. Chrysler is generally
directed to enhancing relational database security. Chrysler ,r 1. Chrysler
describes "encoding the first and the second plurality of adjusted key field
entries based on one or more index keys to generate an encrypted database."
Id. ,r,r 4, 5 (emphasis added). We do not see, and the Examiner has not
explained, how this disclosure teaches or suggests that "the foreign keys are
encrypted based on the encrypted primary keys," as claimed. Rather,
Chrysler discloses that both the first and second plurality of key field entries
( the primary and foreign keys) are encoded based on one or more index
keys.
Accordingly, we are persuaded the Examiner erred. Because we agree
with at least one of the arguments advanced by Appellants, we need not
reach the merits of Appellants' other arguments. We, therefore, do not
sustain the Examiner's 35 U.S.C. § 103(a) rejection of independent claims 1
and 10. For the same reasons, we do not sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of dependent claims 2-9 and 11.
DECISION
We reverse the Examiner's 35 U.S.C. § 101 rejection of claims 1, 2,
10, and 11.
We reverse the Examiner's 35 U.S.C. § 103(a) rejection of claims 1-
11.
REVERSED
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