Ex Parte KUNDU et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813611202 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/611,202 09/12/2012 74739 7590 08/23/2018 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 MukulKUNDU 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. 2011-0070US01 3924 EXAMINER OUELLETTE, JONATHAN P ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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@potomaclaw.com bgoldsmith@potomaclaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MUKUL KUNDU and WILLIAM BLABY 1 Appeal2017-005124 Application 13/611,202 Technology Center 3600 Before MICHAEL J. STRAUSS, AMBER L. HAGY, and AARON W. MOORE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is Oracle International Corporation. See App. Br. 2. Appeal2017-005124 Application 13/611,202 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 3-11, 13-16, and 18-21. Claims 2, 12, and 17 are canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 2 THE INVENTION The claims are directed to a self-service account enrollment system. Spec., Title. Claim 1, reproduced below with a disputed limitation emphasized in italics, is representative of the claimed subject matter: 1. A non-transitory computer-readable medium having instructions stored thereon that, when executed by a processor, cause the processor to enroll a self-service user, the enrolling compnsmg: creating a self-service account for the self-service user at a web portal system, wherein the self-service account comprises an account identity; sending a request for validation to an account management system; receiving validation request information from the account management system, wherein the validation request information is stored within the account management system; sending validation response information to the account management system; receiving validation confirmation information from the account management system in response to the account management system comparing the sent validation response information with validation response information stored within the account management system, wherein the validation confirmation information comprises the account identity; 2 We refer to the Specification, filed Sept. 12, 2014 ("Spec."); the Final Office Action, mailed Nov. 5, 2015 ("Final Act."); the Appeal Brief, filed May 9, 2016 ("App. Br."); and the Examiner's Answer, mailed Dec. 7, 2016 ("Ans."). The Reply Brief, filed Feb. 7, 2017, is acknowledged and has been considered, but is not herein referenced. 2 Appeal2017-005124 Application 13/611,202 linking a user identity of the self-service user to the account identity within the web portal system, wherein the self- service user gains access to the self-service account within the web portal system based on the link between the account identity and the user identity; and linking one or more other user identities of one or more other users to both the user identity of the self-service user and the account identity within the web portal system, wherein the one or more other users are automatically granted access to the self-service account based on the validation of the user identity of the self-service user and based on the link between the account identity and the user identity of the self-service user in addition to the one or more links between the user identity of the self- service user and the one or more other user identities of the one or more other users, and wherein the one or more other users access the self-service account without enrolling with the account management system. REFERENCES The following prior art is relied upon by the Examiner in rejecting the claims on appeal: Hoffman Ellmore Hirvela US 2002/0069178 Al US 7,058,817 Bl US 2010/0136943 Al REJECTIONS The Examiner made the following rejections: June 6, 2002 June 6, 2006 June 3, 2010 Claims 1, 3-11, 13-16, and 18-21 stand rejected under 35 U.S.C. § 101 as unpatentable because these claims are directed to a judicial exception, i.e., an abstract idea. Final Act. 2-3. 3 Appeal2017-005124 Application 13/611,202 Claims 1, 5-11, 16, 20, and 21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ellmore and Hoffman. Final Act. 4--7. Claims 3, 4, 13-15, 18, and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Ellmore, Hoffman, and Hirvela. Final Act. 7-8. ANALYSIS Appellants' contentions are unpersuasive of reversible Examiner error. We adopt as our own ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2-11) and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief (Ans. 2-7) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. 35 U.S.C. § 101 Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever 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 requirernents of this title. In interpreting this statute, the Supreme Court emphasizes that patent protection should not pre-empt "the basic tools of scientific and technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The rationale is that patents directed to basic building blocks of technology would not 4 Appeal2017-005124 Application 13/611,202 "promote the [p ]rogress of [ s ]cience" under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede it. Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) ( citing Alice, 134 S. Ct. at 2354). The Supreme Court set forth a two-part framework for analyzing subject matter eligibility in Alice (134 S. Ct. at 2355). The first step is to determine whether the claim is directed to a patent-ineligible concept. Id. ( citing Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis proceeds to the second step of the Alice/ Mayo framework, in which we "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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The "inventive concept" may be embodied in one or more of the individual claim limitations or in the ordered combination of the limitations. Id. at 2355. The "inventive concept" must be significantly more than the abstract idea itself, and cannot be simply an instruction to implement or apply the abstract idea on a computer. Id. at 2358. "'[W]ell-understood, routine, [and] conventional activit[ies]' previously known to the industry" are insufficient "to transform an abstract idea into a patent-eligible invention." Id. at 2359---60 (citing Mayo, 566 U.S. at 73). Alice/Mayo Step 1: Abstract Idea The Examiner finds the claims are directed to the abstract idea of providing a "method of enrollment and access to user accounts." Final Act. 5 Appeal2017-005124 Application 13/611,202 2. According to the Examiner, the claimed steps involve routine data gathering, organization, and comparison found to constitute abstract ideas as per the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618-74633 (December 16, 2014) ("2014 Guidelines") 3 and numerous decisions of the Court of Appeals for the Federal Circuit. 4 Appellants argue the claims are directed to a specific automated validation system that handles authentication of a self-service user and, as such, is not directed to an abstract idea. App. Br. 5---6. Appellants further argue the claims are not abstract because "they do not preempt all methods and systems for enrollment and access to user accounts" and because "the alleged abstract idea of 'enrollment and access to user accounts' shows no similarities to the abstract ideas identified by the courts." App. Br. 6. According to Appellants, "[ t ]he Examiner is essentially performing an 3 The 2014 Guidelines (or "Guidance") explain(s) that the examples of "concepts courts have found to be" laws of nature, natural phenomena, and abstract ideas "are intended to be illustrative and not limiting." 79 Fed. Reg. at 74622. The 2015 Update provides additional "illustrative" examples to "assist [E]xaminers and the public in applying the principles" in the 2014 Guidance. 4 See, e.g., Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) ( claims directed to processing loan information through a clearinghouse); SmartGene v. Advanced Biological Laboratories, S.A., 555 Fed. App'x 950, 954--56 (Fed. Cir. 2014) (claims directed to comparing new and stored information and using rules to identify options); Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed. App'x 988, 991-92 (Fed. Cir. 2014) (non-precedential) (claims directed to collecting data, recognizing certain data in the set, and storing recognized data in memory); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) ( claims directed to employing a mathematical algorithm to generate a device profile); and Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005, 1007---08 (Fed. Cir. 2014) (non-precedential) (claims directed to managing a game of Bingo). 6 Appeal2017-005124 Application 13/611,202 abstraction of the alleged abstract idea, and generalizing the alleged abstract idea at such a high level (i.e., fundamental economic practice) that it no longer has ANY relationship to the recited limitations." Id. The Examiner responds by noting that the claims are similar to ideas found to be abstract and, in particular, for processing information through a clearinghouse. Ans. 4. According to the Examiner, the claims recite steps of enrollment, determining appropriate access to accounts, and comparing information to validate the information encompassing abstract ideas, e.g., "processing information based on rules and organizing, and transmitting the information based on the business rules (access)." Id. Appellants' arguments are unpersuasive. Claim 1 requires creating an account, exchanging and validating information, and linking enrolled and third-party users to an account identity to grant access to the account. Appellants fail to explain why this subject matter is substantively dissimilar to the cases cited by the Examiner as including claims found to be abstract including the highlighted decision in Dealertrack. In particular, although Appellants assert "the pending claims may not be properly characterized as mere processing information through a clearing house, comparing new and stored information, using categories to organize information, etc." (App. Br. 7), Appellants fail to provide a reasoned basis for the asserted conclusion. Appellants' naked contention of error standing alone, in the absent sufficient evidence and/ or technical reasoning, is inadequate to persuade us that the appealed claims are dissimilar to those found to encompass abstract subject matter in the cited cases. We are also unpersuaded by Appellants' argument that "[t]he Examiner is essentially performing an abstraction of the alleged abstract 7 Appeal2017-005124 Application 13/611,202 idea, and generalizing the alleged abstract idea at such a high level (i.e., fundamental economic practice) that it no longer has ANY relationship to the recited limitations." App. Br. 6. Claim 1 is directed to enrolling a self- service user including steps for facilitating automated customer service interactions to provide account access to a user and third-party invitees of the user. Spec. ,r,r 4, 33. Appellants fail to explain why providing access to account data, such as a customer's utility bill, is other than a fundamental economic practice or why the claimed steps include features or functionality outside the scope of such economic activity. Furthermore, we are unpersuaded by Appellant's preemption argument. See App. Br. 6. Although pre-emption "'might tend to impede innovation more than it would tend to promote it,' thereby thwarting the primary object of the patent laws" (Alice, 134 S. Ct. at 2354 (citing Mayo, 132 S. Ct. at 1293)), "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) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). Appellants' reliance on the decision of the Patent Trial and Appeal Board in Poisson is also unpersuasive of Examiner error. See App. Br. 7. We note Appellant does not cite any authority as to what kind of "proof' the Examiner is required to provide in making a determination as to the abstract idea under 35 U.S.C. § 101. See Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271-72 (Fed. Cir. 2016) (affirming district court 8 Appeal2017-005124 Application 13/611,202 decision that identified an abstract idea in the claims without relying on evidence); OIP Techs., 788 F.3d at 1362---64 (same); Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Manual of Patent Examining Procedure (MPEP) § 2106.07(a)(III) (9th ed. Rev. 08.2017, Jan. 2018). Moreover, Poisson is not a precedential decision and, therefore, we are not bound by it. Nevertheless, we do not consider Poisson to be pertinent to the issue in this appeal. In Poisson, the panel rejected the Examiner's conclusion that the claims were directed to an abstract idea of a new set of rules for playing a card game. Poisson, Appeal 2012-011084, slip op. at 5. Instead, the panel found that the claim involved playing a game of football "using a table and cards." Id. The panel reversed the Examiner's rejection because the Examiner did not provide adequate findings of fact "on which to base the Alice analysis." Id. Thus, the panel concluded that the facts and evidence relied upon by the Examiner did not support a finding that the claim was an ineligible abstract idea. Id. Here, the Examiner made adequate findings of fact, as discussed above, that the claimed method is directed to an abstract idea. For the reasons discussed above, Appellants' contentions in connection with the Examiner's findings under Step 1 of the Alice/Mayo framework are unpersuasive of error. Alice/Mayo Step 2: Inventive Concept The Examiner finds "the claims [to] a method for organizing an individual[']s access and levels to information are deemed to fail to recite significantly more than the idea of enrollment and account access." Final 9 Appeal2017-005124 Application 13/611,202 Act. 3. According to the Examiner, the "additional generic computer elements ... do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation." Final Act. 2. The Examiner concludes that, "[ v ]iewed as a whole, these additional claim element( s) do not provide meaningful limitation( s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim( s) amounts to significantly more than the abstract idea itself." Final Act. 3. Appellants argue the claims "recite improvements to the functioning of a self-service account enrollment system by allowing a self-service user to grant access to a self-service account to other users." App. Br. 9. According to Appellants, this "make[ s] it significantly easier to install and maintain the web portal system" by enabling it to "work with any type of account management system." App. Br. 10. Appellants characterize this improvement as improving "the functioning of the computer" itself and, therefore, constituting "significantly more [ than the abstract idea]" under part 2 of the Alice test." Id. The Examiner responds, finding the argued streamlined self-service enrollment system "is an improvement to a business process not a technological process." Ans. 4-5. Appellants' argument does not persuade us the claims include significantly more than the abstract idea itself. Contrary to Appellants' argument (App. Br. 2-3), the present case is different from Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016), because the focus of the claims here is not directed to an improvement in computers as tools or upon an innovative way to use computers or other devices. Instead, the claims are focused on an independently abstract idea that uses generic and 10 Appeal2017-005124 Application 13/611,202 routine equipment as tools; that abstract idea being a method of enrollment and access to user accounts. Here, the arguably innovative technique of the appealed claims is inextricably a part of the abstract idea of allowing a self- service user to grant access to a self-service account to other users as argued by Appellants (App. Br. 10), not to operation of the implementing technology. Thus, Appellants fail to identify any asserted structures required by the claims or how those structures provide a technological improvement. Moreover, nothing in the claims, understood in light of the Specification, requires anything other than an off-the-shelf, conventional computer processor used for collecting and processing/analyzing various information/data. In particular, Appellants' Specification discloses, "[p ]rocessor 22 may be any type of general or specific purpose processor," with no indication that the operation of the processor itself is improved. Spec. ,r 17. Therefore, unlike Enfzsh, the claims are directed not to an improvement in computer capabilities, but to the results of applying an abstract idea. For the reasons discussed above, Appellant's contentions are unpersuasive of Examiner error. Accordingly, we sustain the rejection of claims 1, 3-11, 13-16 and 18-21 under 35 U.S.C. § 101. 35 U.S.C. § 103(a) The Examiner finds Ellmore discloses granting access to a third-party user based on a link between the account and the enrolled user and based on a link between the enrolled user and the third-party user (Final Act. 5---6) and that Hoffman discloses the remaining features of the disputed limitation (Final Act. 6). Appellants contend Hoffman fails to teach or suggest that 11 Appeal2017-005124 Application 13/611,202 (i) the "third-party user can access a desired user record without enrolling with the system ( e.g., without providing validation response information, where the system validates the third-party user)" ("limitation (i)") (App. Br. 14 ); and (ii) that the third-party user can access a desired user record based on a validation of a user identity of the other user and based on a link between a user record identity and the user identity of the other user in addition to a link between the user identity of the [ (enrolled)] other user and a user identify of the third-party user. ("limitation (ii)") App. Br. 14. The Examiner finds Hoffman's second server communicating directly with a user without going through a first server teaches or suggests providing user access to a self-service account without enrolling with an account management system. Ans. 6-7. Appellants' contention of error in connection with the argued limitation (i) fails to address the Examiner's findings. Instead, it amounts to a naked assertion that Hoffman is deficient without setting forth a reasoned basis for the assertion. Arguments must address the Examiner's action. 37 C.F.R. § 4I.37(c)(l)(iv) ("The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art"). "[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections." In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011 ). Accordingly, in the absence of sufficient reasoning in support of such 12 Appeal2017-005124 Application 13/611,202 assertions, Appellants' naked contention is insufficient to persuade us of reversible Examiner error. In response to argued limitations (ii), the Examiner finds Ellmore discloses providing third-party user access to another (enrolled) user's medical records by the latter granting authorization to a system administrator or customer service representative. Ans. 6. According to the Examiner, this disclosure of Ellmore teaches or suggests basing third-party access on both a link between the account and the enrolled user and based on a link between the enrolled user and the third-party user. Id. Appellants' argument is unpersuasive because it fails to address the Examiner's findings in connection with Ellmore, i.e., that Ellmore, not the argued Hoffman reference, teaches or suggests the argued limitations of "wherein the one or more other users are automatically granted access to the self-service account based on ... the link between the account identity and the user identity of the self-service user in addition to the one or more links between the user identity of the self-service user and the one or more other user identities of the one or more other users." See Final Act. 5; Ans. 5---6. As noted by the Examiner, such argument is unpersuasive because "Appellant is arguing the references separately and not as the combination." Ans. 5. We agree. It is well established that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, for the reasons discussed above, Appellants' arguments are not persuasive of Examiner error. Therefore, we sustain the rejection of 13 Appeal2017-005124 Application 13/611,202 independent claim 1 and, for the same reasons, the rejection of independent claims 11 and 16 under 35 U.S.C. § 103(a), together with the rejections of dependent claims 3-10, 13-15, and 18-21, which are not argued separately with particularity. DECISION We affirm the Examiner's decision to reject claims 1, 3-11, 13-16, and 18-21 under 35 U.S.C. § 101. We affirm the Examiner's decision to reject claims 1, 3-11, 13-16, and 18-21 under 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 41.50(±). AFFIRMED 14 Copy with citationCopy as parenthetical citation