Ex Parte Kirkwood

Patent Trial and Appeal Board

Oct 3, 2018

11750178 (P.T.A.B. Oct. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/750, 178 05/17/2007
26588 7590 10/05/2018
LIU &LIU
350 S. FIGUEROA STREET SUITE 975
LOS ANGELES, CA 90071
FIRST NAMED INVENTOR
Carter Kirkwood
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.
1233/205 9627
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/05/2018 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):
wliu@liulaw.com
julien@liulaw.com
docket@liulaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARTER KIRKWOOD
Appeal2017-006665
Application 11/750, 178 1
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as "DOCUTHENTIC, LLC."
App. Br. 4.
Appeal2017-006665
Application 11/750, 178
THE INVENTION
The present invention "is related to information access and
distribution and in particular to techniques for the access and distribution of
authenticated sensitive private data such as personal financial and medical
information." Spec. ,r 2. Claim 1 is reproduced below.
1. A method of providing documents over a network,
compnsmg:
electronically obtaining over the network an encrypted
document related to a services user from a device of a source of
services;
electronically forwarding, to an escrow key server over the
network, one or more encryption keys for decrypting the
encrypted document;
electronically facilitating transferring of the encrypted
document over the network to a document user device as
authorized by the services user;
obtaining by the escrow key server authorization from the
services user to transfer the one or more encryption keys to the
device of the document user device over the network; and
electronically transferring a copy of the one or more
encryption keys from the escrow key server over the network to
the device the document user device as authorized by the services
user so that the document user device can decrypt the encrypted
document as an authenticated document unchanged from when it
was obtained from the device of the source of services.
Amended App. Br. 3. 2
2 The Amended Appeal Brief, submitted October 13, 2016, "includes only a
corrected Claims Appendix." Amended App. Br. 1. All further references
2
Appeal2017-006665
Application 11/750, 178
REJECTIONS
Claims 1-7 are rejected under 35 U.S.C. § 101 as directed to
judicial-exceptions of statutory subject matter. Final Act. 2--4.
PRINCIPLES OF LAW
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)). The
"abstract ideas" category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice, 134 S.Ct. at 2354--55 ( quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. There is no definitive rule to
determine what constitutes an "abstract idea." Rather, the Federal Circuit
has explained that "both [it] and the Supreme Court have found it sufficient
to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet
and citations to an Appeal Brief, herein, correspond to the defective Appeal
Brief submitted July 27, 2016.
3
Appeal2017-006665
Application 11/750, 178
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-eligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided."). The Federal Circuit also noted that
"examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts." Amdocs, 841 F.3d at 1294 n.2 (internal citation omitted).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination' to determine whether [there are] additional
elements [that] 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S.Ct. at 2355 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the
second step is to "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."' Id. ( quoting Mayo, 566 U.S. at 73). Mere use of
computers, even in conjunction with other hardware, does not alone
transform an abstract idea to significantly more. See e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (patent-ineligible claims requiring a computer and scanner);
CLS Bankint'l v. Alice Corp. Pty., 717 F.3d 1269, 1286 (Fed. Cir. 2013)
("[S]imply appending generic computer functionality to lend speed or
4
Appeal2017-006665
Application 11/750, 178
efficiency ... does not meaningfully limit claim scope for purposes of patent
eligibility."), ajf'd by Alice.
ANALYSIS
Claim 1 is representative. See 37 C.F.R. 4I.37(c)(l)(iv)
(representative claims). We are not persuaded the Examiner erred in
rejecting claim 1.
Alice Step One: Are the claims at issue
directed to a patent-ineligible concept?
Claim 1 generally recites: obtaining a service user's encrypted
document from the service source; forwarding, to an escrow, a key for
decrypting the document; transferring the document to an authorized user;
and authorizing the escrow, by the service user, to transfer the key to the
authorized user. The Examiner finds claim 1 is directed to the abstract idea
of "a document transfer between users using encryption key for added
security by an intermediary server." Final Act. 3. The Examiner also finds
the recited process similar to other concepts that have been identified by the
courts as abstract, such as "performance of transactions (buySAFE)[,] and
mitigating risk (Bilski)[, and] ... collecting and comparing known
information (Classen)." Id. at 3--4 (citing buySAFE, Inc. v. Google Inc., 765
F.3d 1350 (Fed. Cir. 2014), Bilski v. Kappas, 561 U.S. 593 (2010), and
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011)).
Having considered the claim steps individually and as a whole, we
agree with the Examiner that claim 1 is directed to document transfer using
5
Appeal2017-006665
Application 11/750, 178
encryption and an escrow for added security. Encryption and escrow are
"building blocks of human ingenuity," performed for at least hundreds of
years. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014).
There is no apparent material difference between the concepts of Appellant's
claimed invention and the long-practiced communication of confidential
information by transmitting it in encrypted form and using a trusted third
party.
The Federal Circuit has indicated that "examiners are to continue to
determine if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Amdocs, 841
F.3d at 1294 n. 2. We agree with the Examiner that the present concept-a
document transfer using an escrow and encryption-is similar to the
patent-ineligible concepts of buySAFE and Bilski. In claim 1, the escrow
server assures ( ostensibly) that the encrypted document and its key are
separately transmitted to their recipient. Spec. ,r 76. 3 The concept of having
an escrow assure a transaction-here, the transmission of the key-is
analogous to buySAFE's abstract idea of having a third-party guarantee a
transaction. 765 F.3d at 1351-52. The concepts of escrow and encryption
3 The Specification states that separate "paths" ensure no one can access the
encrypted document while en route to the recipient (Spec. ,r 76), but the
claimed method does not require dual paths. See Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 ("[D]etail in the
specification does not transform a claim reciting only an abstract concept
into a patent-eligible system or method."). The claims merely require
transferring the encrypted document "over the network" and transferring
encryption key(s) "over the network." Nothing in the claim requires the key
to take a different path "over the network" than the document.
6
Appeal2017-006665
Application 11/750, 178
for a transaction are both analogous to Bilski 's abstract idea of countering a
transaction's risks. See 561 U.S. at 609. Moreover, providing escrows and
secrecy measures for business transactions is unquestionably a "fundamental
economic practice long prevalent in our system of commerce[.]" Alice, 134
S. Ct. at 2350 (quoting Bilski, 561 U.S. at 599).
Regarding Alice's first step, Appellant argues: "[T]he Examiner [ does
not] provid[ e] a reasoned rationale that identifies the judicial exception
recited in the claim and why it is considered an exception, and that identifies
the additional elements ... [ and] why they do not amount to significantly
more than the exception." App. Br. 13. This argument, however, is not
persuasive because it mischaracterizes the Examiner's notice requirement
under 35 U.S.C. § 132. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) ( explaining the notice requirement). The notice requirement is unmet
if a rejection is "so uninformative" it cannot be addressed. Id. We find that
the Examiner's above findings are sufficient to understand and counter the
rejection. Appellant asserts that the Examiner did not comply with the
Guidelines (App. Br. 13-14), but does not, for example, explain why "a
similar or parallel descriptive nature can be seen" between claim 1 and the
above abstract ideas. Amdocs, 841 F.3d at 1294.
Appellant further argues: "[T]he claimed method is not an abstract
idea. The claimed method requires implementation of devices over a
network. . . . This is not the same as implementing the method on a single
general purpose computer, as would be the case with a purely software
program." App. Br. 14. This argument is not persuasive because the use of
a network does not render claimed subject matter patent-eligible. Data
7
Appeal2017-006665
Application 11/750, 178
collection and analysis via a conventional network of devices is well within
the realm of abstract ideas. See e.g., buySAFE, 765 F.3d at 1351
(patent-ineligible "claims directed to creating familiar commercial
arrangements by use of computers and networks"); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)
(patent-ineligible "method for verifying the validity of a credit card
transaction over the Internet"); compare Bascom Glob. Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (Client-server
system was directed to the abstract idea of filtering but patent-eligible due to
the unconventional location and consequent benefits of the filter.).
Appellant further argues that, per Enfzsh, "claims directed to software
... are not inherently abstract" and "a claim directed to an improvement to
computer-related technology ( e.g., computer functionality) is likely not
similar to claims that have previously been identified as abstract by the
courts." App. Br. 14. This argument also is not persuasive. Enfish asked
"whether the focus of the claims is on the specific asserted improvement in
computer capabilities," and held that "[s]oftware can make non-abstract
improvements to computer technology just as hardware improvements can."
822 F.3d at 1335-36 (emphasis added). Appellant does not explain,
however, how or why the claimed method makes a non-abstract
improvement to computer technology, just as a hardware improvement
might.
8
Appeal2017-006665
Application 11/750, 178
Alice Step Two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent-ineligible concept?
Because claim 1 is directed to an abstract idea, we proceed to the
second step in Alice, namely, whether this claim recites an element, or
combination of elements, that is enough to establish that the claim is directed
to significantly more than an abstract idea.
With respect to the additional claim elements, the Examiner finds they
"simply recite a computing system obtaining a document ( obtaining over the
network an encrypted document ... from a device ... ), forwarding an escrow
key (forwarding to an escrow key server...encryption key ... ), facilitating
transferring of the document (facilitating ... ) and obtaining authorization for
the transfer ( obtaining by the escrow key server authorization from the
user...)." Ans. 4; see also Final Act. 3--4. The Examiner also finds they
constitute "generic computer [technology] performing conventional tasks
[such as] ... well know[n] encryption/decryption techniques [for] ...
general data transfers over a wide area network." Ans. 4. In view of the
above, the Examiner concludes the additional elements "do not amount to an
improvement to the functioning of a computer itself [nor] ... move beyond a
general link of the use of an abstract idea to a particular technological
environment." Id.
We agree with the Examiner. There is no indication that, beyond the
above-addressed abstract idea, the claimed computer devices and operations
provide more than "well-understood, routine, conventional acti vit[ ies]."
Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. at 73). For example, there
is no indication that the claimed implementation of the escrow and
9
Appeal2017-006665
Application 11/750, 178
encryption provides a "technical detail ... to solve a specific problem."
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed.
Cir. 2017), cert. denied, 138 S. Ct. 2000 (2018).
Appellant argues claim 1 recites "additional structural and functional
interrelationships between the attribute collection application in the
electronic device, the hardware and software in the device, and the device
identification application in the remote server" that "transform the subject
matter defined by the claims to be beyond merely the abstract idea alleged
by the Examiner." App. Br. 15-16. This argument is not persuasive
because it is conclusory. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (Mere conclusory statements hold little probative value.). The
argument asserts claim 1 recites transformative "interrelationships," but does
not specify the interrelationships, much less support their above
characterization with evidence and reasoning. Even assuming the asserted
interrelationships are "beyond merely the abstract idea" (supra), the
argument would still fail to show these interrelationships do more than limit
the abstract idea to a technological environment.
Appellant further argues "that[,] even if [ claim 1] recite[ s] an
exception (e.g., an abstract idea), [when] ... viewed as a whole [it] clearly
does not seek to 'tie up' the exception" because "each device must be
configured to function in concert by interacting over the network in the
manner required by the claimed process." App. Br. 16. Appellant adds that
the Examiner "concedes to the novelty of the claimed process when viewed
as a whole[;] thus the whole is clearly significantly more than the individual
elements, so as not to tie-up the alleged exception." Id. at 18. These
10
Appeal2017-006665
Application 11/750, 178
arguments are not persuasive because they also are conclusory. See Geisler,
116 F.3d at 1470. The arguments merely assert the claimed interacting of
elements is novel and thus overcomes preemption concerns. Even assuming
the asserted interactions are novel, the arguments do not show the
interactions are distinguishable from the abstract idea of a document transfer
using escrow and encryption. See Berkheimer v. HP Inc., 890 F.3d 1369,
1374 (Fed. Cir. 2018) ("It is clear from Mayo that the 'inventive concept'
cannot be the abstract idea itself."). And even assuming the asserted
interactions prevent claim 1 from preempting all document transfers using
escrow and encryption, "the absence of complete preemption does not
demonstrate patent eligibility." FairWarning IP LLC v. Iatric Systems, Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa, 788 F.3d at 1379).
Conclusion
For the foregoing reasons, we are not persuaded of error in the
rejection of claims 1-7 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-7.
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
11