Ex Parte Moskowitz

Patent Trial and Appeal Board

Jul 17, 2018

13826858 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/826,858 03/14/2013 Scott A. Moskowitz
31518 7590 07/19/2018
NEIFELD IP LAW, PC
5400 Shawnee Road
Suite 310
ALEXANDRIA, VA 22312-2300
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.
SCOT0020-3 3105
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
general@neifeld.com
rneifeld@neifeld.com
rhahl@neifeld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT A. MOSKOWITZ 1
Appeal2017---000680
Application 13/826,858
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Scott A. Moskowitz (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 20-42, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Real party in interest Blue Spike, Inc.
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed March 16, 2015) and Reply Brief ("Reply Br.," filed October 11,
2016), and the Examiner's Answer ("Ans.," mailed August 17, 2016), and
Final Action ("Final Act.," mailed August 18, 2014).
Appeal2017-000680
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The Appellant invented a way to transfer information between parties.
Specification para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 20, which is reproduced below (bracketed matter and some
paragraphing added).
20. A method for conducting a trusted transaction between two
of a plurality of parties who have reached an agreement to
transact, comprising:
[ 1] establishing a secure transmission channel over a public
network between the two parties,
using at least one device comprising a processor, a
memory designed to store data in non-transitory form, an
input device, and an output device, said at least one
device comprising a serialized ciphered software
application unique to said at least one device,
wherein said serialized ciphered software application
securely stores in said memory a collection of value-
added digital information;
[2] approving,
using said at least one device, said serialized
ciphered software application, and at least one of
a predetermined key,
a predetermined message, or
a predetermined cipher,
an identity3 of at least one of the two parties;
[3] determining an amount of value-added information to be
exchanged between the parties;
3 The insertion markings in the amendment filed April 21, 2014 indicate that
"identity" is the object of the verb "approving."
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and
[ 4] transmitting,
from one of the parties to the transaction,
over said public network,
to another one of the parties,
using, at least one device comprising a processor, a
memory designed to store data in non-transitory
form, an input device, and an output device,
the value-added information.
The Examiner relies upon the following prior art:
Lee
Ginter
us 5,790,783
us 5,892,900
Hawkins US 6,029,146
Aug. 4, 1998
Apr. 6, 1999
Feb.22,2000
Claims 20-42 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 20-42 stand rejected under 35 U.S.C. § 112(a) as not enabling a
person of ordinary skill in the art to make and use the claimed subject matter
from the original disclosure.
Claims 20, 24, 27-31, and 35--40 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ginter and Lee.
Claims 21-23, 25, 26, 32-34, 41, and 42 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ginter, Lee, and Hawkins.
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ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of enablement matter tum primarily on whether the Examiner
has applied the Wands factors in finding lack of enablement.
The issues of obviousness tum primarily on the breadth of the claims
and whether the art fits within their scope.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01.Value-Adding Component (VAC) is an attachment to the content
that enhances the user's experience of the content. Spec. para. 73.
02. The agglomeration of value-adding components is "value-added
information." Spec. para. 75.
03. Value-added components represent an atomic unit of data that is
defined as the least amount of data that can either add
functionality or be perceptibly recognized to a system for trusted
transactions. Spec. para. 116.
04. The disclosure contains no lexicographic definition of "serialize."
05. The disclosure contains no lexicographic definition of "amount."
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Facts Related to Appellant's Disclosure
06.Another advantage of the present invention is the ability to
serialize or individualize "personal secrets" that are shared
between parties to boost confidence and transparency of
transactions. That control, and the inherent uniqueness of personal
entropy, constructed from such information as a hometown,
favorite restaurant, or high school sweetheart, is a means for
perceptible representations of "secret data" that enhances the ease-
of-use and application of appropriate shared secrets to be
exchanged in conducting trusted transactions. Associating such
secrets with primary value-added information or value-added
components being transacted is an additional novel feature of the
present invention. Essentially, the present invention provides the
ability to personalize or serialize, informationally, an actual
"transaction event," including: the buyer; the seller; primary
information; value-added components and tangible assets created,
manufactured, or manipulated; and any additional reference that
can be made perceptible and secure to any observer. Bridging
cryptographic with real world perception is a benefit over the prior
art. Spec.para. 120
07. The only paragraphs in which the Specification describes
serialization are paragraphs 120, 123, 124, 203, 206, 230, and 242,
and claims 154 and 164 as originally filed. All serialization
references are in the context of protecting data.
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Facts Related to the Prior Art
Ginter
08.Ginter is directed to secure transaction management. Ginter 1:9--
10.
09. Ginter describes a new kind of "virtual distribution environment"
(VDE) that secures, administers, and audits electronic information
use. VDE has capabilities for managing content that travels
"across" the "information highway." These capabilities comprise a
rights protection solution that serves all electronic community
members. These members include content creators and
distributors, financial service providers, end-users, and others.
VDE is the first general purpose, configurable, transaction
control/rights protection solution for users of computers, other
electronic appliances, networks, and the information highway.
Ginter 2:20-32.
10. Ginter describes a user who has purchased a copy of a novel as
being permitted to open and read the novel as many times as she
wants to without any further metering, billing or budgeting. In this
simple example, the "event process" may request metering, billing
and/ or budgeting processes the first time the user asks to open the
protected novel (so the purchase price can be charged to the user).
Ginter 58:39-46.
11. Ginter describes two parties establishing a communication channel
that is known by both parties to be secure from eavesdropping,
secure from tampering, and to be in use solely by the two parties
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Lee
whose identities are correctly known to each other. Standard
public-key or secret-key cryptographic techniques can be used to
implement this process. The first two steps ensure that each party
has a means of making claims that can be validated by the other
party, for instance, by using a public key signature scheme in
which both parties maintain a private key and make available a
public key that itself is authenticated by the digital signature of a
certification authority. Ginter 225:61-226:38.
12.Lee is directed to use of a microprocessor serial number to provide
a software lock. Lee 1:6-7.
13. Lee defines serializing as providing a CPU serial number to a
given set of software. Lee .11 :49-50
14. Lee describes permitting software to be serialized to a particular
processor. Lee 2: 19-20.
ANALYSIS
Claim Construction
Method claim 20 recites "at least one device comprising a serialized
ciphered software application unique to said at least one device, wherein
said serialized ciphered software application securely stores in said memory
a collection of value-added digital information" and "determining an amount
of value-added information to be exchanged between the parties." The
Specification does not define or even suggest what the terms "serialized"
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and "amount" mean in the context of the disclosure. The Specification
defines value added information as an agglomeration of value-adding
components. The Specification defines a value adding component as the
least amount of data that can either add functionality or be perceptibly
recognized to a system for trusted transactions.
The Examiner construes "serialized" to mean using a device serial
number (Ans. 14). The Examiner finds that the art in the form of Lee
describes using the word "serialize" as the Examiner interprets the term,
evidencing usage of the term in that way. Appellant argues that "serialized"
means to make a sequence of values, each based upon the prior value. App.
Br. 22. The problem for Appellant is that the Specification does not define
"serialize" nor does it offer any implementation examples. Most of the
occurrences of the word "serialize" are in the phrase "personalize or
serialize," implying that each accomplishes something similar. To that end,
we find that the Examiner's construction of serialize as using a device serial
number accomplishes protections similar to personalization because a serial
number is generally personal to a user. At the very least, the Examiner's
construction is not divorced from the record and makes total sense in the
context of the Specification and claims. To the extent Appellant has a
different meaning in mind, the inventor's mental perception is unworthy of
patentable weight in the absence of corroboration in the Specification and
claims. We thus construe "serialize" as at least including using a device
serial number within its scope.
The Examiner determines that "value-added information" is not
lexicographically defined. Ans. 12. This is in error as we find supra.
Value-added information is an agglomeration of the least amount of data that
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can either add functionality or be perceptibly recognized to a system for
trusted transactions. FF 02 and 03. The Examiner construes value-added
information as digital content. Ans. 12. We find the Examiner's error in
finding no lexicographic definition of "value-added information" to be
harmless, as the Examiner's construction, i.e. digital content, is a
quantitative agglomeration of bits, the least amount of data that can be
perceptibly recognized to a system for trusted transactions.
The Examiner construes "amount" to mean to be a cost or price of a
product. Appellant does not offer a proposed construction for "amount," but
instead argue that whatever its construction, it differs from price. App. Br.
13-20. We are persuaded by Appellant's argument that amount is
distinguishable from price. App. Br. 13. But again we find this Examiner
error harmless, as the price for an amount of data is a pointer to that data.
Thus, where the Examiner finds art describing a price for data, the art
necessarily also describes that amount of data to which the price attaches.
Claims 2{}-42 rejected under 35 USC§ 101 as directed to non-statutory
subject matter
Method claim 20 recites establishing a secure transmission channel over
a public network, approving an identity, determining an amount of value
added information, and transmitting that information. Thus, claim 20 recites
setting up some communication channel, making a decision to approve data,
determining some amount of data, and transmitting data. None of the
limitations recite implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. Data
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communications set up, reception, analysis and modification, and
transmission are all generic, conventional data processing operations to the
point they are themselves concepts awaiting implementation details. The
sequence of data communications set up-reception-analysis-transmission is
equally generic and conventional. The ordering of the steps is therefore
ordinary and conventional. The remaining claims merely describe
parameters as to who performs steps and what the content may be, with no
implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two of this
analysis as 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 Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to conducting a transaction between two parties, which is a
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fundamental economic practice and a method of organizing human activities
and thus, an abstract idea. Ans. 3.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 20 recites that it is a method for conducting a
trusted transaction between two of a plurality of parties who have reached an
agreement to transact. The steps in claim 20 result in transmitting data
resulting from a transaction. The Specification at paragraph 5 recites that
the invention relates to transfer of information between parties. Thus, all
this evidence shows that claim 20 is directed to trusted transfer of
information between parties, i.e. trusted communication. This is consistent
with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of trusted
communication is a fundamental business practice long prevalent in our
system of commerce. The use of trusted communication is also a building
block of ingenuity in societal integration. Thus, trusted communication, like
hedging, is an "abstract idea" beyond the scope of§ 101. See Alice Corp.
Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
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recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of trusted
communication at issue here. Both are squarely within the realm of
"abstract ideas" as the Court has used that term. See Alice Corp. Pty. Ltd. at
2357.
Further, claims involving data collection, analysis, and display,without
more, are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent ineligible concept"); see
also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 20, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data communication set
up, retrieval, analysis, and transmission and does not recite an improvement
to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 20 is directed to the abstract idea of
setting up communications for, receiving, analyzing, and transmitting data.
The remaining claims merely describe parameters as to who performs
steps and what the content may be. We conclude that the claims at issue are
directed to a patent-ineligible concept.
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The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to set up communications, receive, analyze, and transmit data
amounts to electronic data query and retrieval----one of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp. v. Alstom S.A., supra. Also see In re Katz
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Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.Cir.
2011 )("Absent a possible narrower construction of the terms "processing,"
"receiving," and "storing," ... those functions can be achieved by any
general purpose computer without special programming"). In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP America Inc. v. InvestPic LLC, 890 F .3 d 1016,
1022 (Fed. Cir. 2018).
The limitation of
using at least one device comprising a processor, a memory
designed to store data in non-transitory form, an input device,
and an output device, said at least one device comprising a
serialized ciphered software application unique to said at least
one device, wherein said serialized ciphered software
application securely stores in said memory a collection of
value- added digital information
is not a step, but a recitation of what is supposed to be somehow used in
performing a step, with no recitation of how to do so. Each of the
enumerated devices is part of a conventional computer (the limitation itself
defines a serialized ciphered software application as something that securely
stores data. i.e. computer memory). The two remaining "use" clause
limitations are similarly generic and only describe what to use without
reciting how to do so.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
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are considered separately. The sequence of data communications set up-
reception-analysis-transmission is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
Viewed as a whole, Appellant's method claims simply recite the concept
of trusted communication as performed by a generic computer. To be sure,
the claims recite doing so by advising one to use a computer to establish a
secure channel, approve a party to the communication, determine an amount
of data and transmit the data. But this is no more than abstract conceptual
advice on the parameters for such trusted communication and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of trusted communication under different scenarios.
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They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of trusted communication using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S.Ct. at 2360.
We are not persuaded by Appellant's argument that the examiner fails to
show that claim 20 is directed to an "abstract idea" as that term is defined by
binding case law. Reply Br. 3. We show supra that sufficient intrinsic
evidence supports the determination that claim 20 is directed to an abstract
idea.
We are not persuaded by Appellant's argument that
the examiner has failed to consider that the specification
discloses using unique serial numbers of transmitting devices as
one of the inputs in addition to using as one input a
"predetermined key, a predetermined message, or a
predetermined cipher" to a software application to encode an
identity of a party (see "approving" step).
Id. What the Specification describes as embodiments is not at issue.
Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004 ). More to the point, even were these embodiments in the claims,
the claims do nothing with the data other than transmit the data. Thus, the
data are non-functional within the scope of the claims and undeserving of
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patentable weight. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010).
We are not persuaded by Appellant's argument that "the examiner has
failed to consider that the specification discloses that the admittedly novel
(no rejection under 102) claimed invention is an improved technological
process," citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016) as describing improved character image and voice
syncing animation. Reply Br. 4.
Novelty is not at issue. A novel abstract idea remains abstract. "A claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty."
Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d 1138, 1151 (Fed.
Cir. 2016). Further, the Court in McRO found claims not abstract because
they "focused on a specific asserted improvement in computer animation."
McRO at 1314--1315. No such animation is recited in the instant claims.
We are not persuaded by Appellant's argument that the claims allow for
numerous benefits. Reply Br. 5. Appellant does not contend that the
method recited produces such benefits, but only that the method provides a
context in which benefits might accrue in the presence of non-recited other
steps. Good advice generally allows for substantial benefits, but advice,
being an abstract concept, is not patentable.
We are not persuaded by Appellant's argument that the disclosure
clarifies that a unique device serial number is an input to the algorithm that
encodes the shared secret. Reply Br. 6. Again, we do not import limitations
from the Specification into the claims.
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Claims 2{}-42 rejected under 35 USC§ l 12(a) as not enabling a person of
ordinary skill in the art to make and use the claimed subject matter from the
original disclosure
We are persuaded by Appellant's argument that the Examiner failed to
present a prima facie case. The Examiner determines that one of ordinary
skill would be unable to practice the invention in a conclusory manner. The
Examiner had provided no analysis under Wands. "Whether undue
experimentation is needed is not a single, simple factual determination, but
rather is a conclusion reached by weighing many factual considerations." In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Claims 20, 24, 27-31, and 35-40 rejected under 35 USC§ 103(a) as
unpatentable over Ginter and Lee
We are not persuaded by Appellant's argument that Ginter does not teach
or suggest determining an amount of value-added information to be
exchanged between the parties. App. Br. 13-19. Ginter describes
determining the amount of value-added information in a novel as an
exemplary embodiment. The Examiner points to the price for the novel as
the amount, but as we find supra, the price points to the quantitative amount
of data itself, viz. the novel.
We are not persuaded by Appellant's argument that Lee does not teach
or suggest a "serialized ciphered software application." App. Br. 21-24.
Appellant argues the meaning of "serialized." We construe, supra, this term
to at least encompass the use of a serial number. Appellant does not contend
that Lee fails to describe an application using a serial number. Lee uses a
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serial number to protect data by serializing data to a processor. The
Examiner finds Lee's software application to be ciphered by virtue of its
binding and encoding into machine interpretable language. Ans. 14.
We are not persuaded by Appellant's argument that Lee does not teach or
suggest "a collection of value-added digital information." App. Br. 24--27.
This is a subset of the above argument regarding an amount of value-added
information and is similarly unpersuasive.
We are not persuaded by Appellant's argument that The Examiner has
apparently misread the limitation "approving, using said at least one device,
said serialized ciphered software application, and at least one of a
predetermined key, a predetermined message, or a predetermined cipher, an
identity of at least one of the two parties." App. Br. 27-28. Appellant
contends the Examiner does not appreciate that the object of "approving" is
"an identity." Id. As the Examiner responds, Ginter uses a predetermined
cryptographic cipher to validate and hence approve the identity of the holder
of the key to the cryptographic cipher. Ans. 17; FF 11. As Ginter' s key
holder is one of the parties to the transaction, the claim limitation is met.
We are not persuaded by Appellant's argument that the Examiner has not
presented a proper motivation to include Lee to attempt to overcome the
deficiencies of Ginter. App. Br. 28-34. Appellant contends "there is no
reason for a person of ordinary skill in the art to add to Ginter Lee's alleged
disclosures of: ( 1) ensuring its software is running on an authorized
processor; and (2) to provide processor upgrade reauthorization when
necessary, because Ginter discloses these methods." App. Br. 29. Lee adds
a completely different and complementary form of securing data to Ginter.
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Just because Ginter describes forms of security does not imply that the
security cannot be improved. Security is never 100% and those of ordinary
skill generally look for ways of improving it.
Claims 21-23, 25, 26, 32-34, 41, and 42 rejected under 35 USC§ 103(a)
as unpatentable over Ginter, Lee, and Hawkins
These claims depend from claim 20.
CONCLUSIONS OF LAW
The rejection of claims 20-42 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 20-42 under 35 U.S.C. § 112(a) as not enabling
a person of ordinary skill in the art to make and use the claimed subject
matter from the original disclosure is improper.
The rejection of claims 20, 24, 27-31, and 35--40 under 35 U.S.C.
§ 103(a) as unpatentable over Ginter and Lee is proper.
The rejection of claims 21-23, 25, 26, 32-34, 41, and 42 under
35 U.S.C. § 103(a) as unpatentable over Ginter, Lee, and Hawkins is proper.
DECISION
The rejection of claims 20-42 is affirmed.
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Appeal2017-000680
Application 13/826,858
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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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