Ex Parte Mraz et al

Patent Trial and Appeal Board

Sep 25, 2018

13748147 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/748,147
95050 7590
John S. Economou
78 Ward Dr.
FILING DATE
01/23/2013
09/27/2018
New Rochelle, NY 10804
FIRST NAMED INVENTOR
Ronald Mraz
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.
OC000014 1055
EXAMINER
MIRZA, ADNAN M
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
docketing@economoupatentlaw.com
uspto@dockettrak.com
jeconomou@economousilfin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD MRAZ and GABRIEL SILBERMAN 1
Appeal2018-001066
Application 13/7 48,147
Technology Center 2400
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse. 2
1 According to Appellants, the real party in interest is Owl Cyber Defense
Solutions, LLC. See App. Br. 2.
2 We refer to the Specification, filed Jan. 23, 2013 ("Spec."); the Final
Office Action, mailed Mar. 7, 2017 ("Final Act."); Appeal Brief, filed June
27, 2017 ("App. Br."); the Examiner's Answer, mailed Oct. 27, 2017
("Ans."); and the Reply Brief filed Nov. 9, 2017 ("Reply Br.").
Appeal2018-001066
Application 13/748,147
THE INVENTION
The claims are directed to the capture and securing of dynamically
selected digital information. Spec., Title. Claims 1 and 9, reproduced
below, are illustrative of the claimed subject matter:
1. A system for monitoring a channel passing information, the
information including an identifying designation, comprising:
a channel monitor having an input coupled to an
information channel and an output, the channel monitor
configured to provide on the output all information passing on
the information channel, the information including an identifying
designation;
a manifest engine having a first input coupled to the output
of the channel monitor to receive the information passing on the
information channel, a second input configured to receive an
information manifest table and an output, the information
manifest table having at least one identifying designation, the
manifest engine configured to compare information received on
the first input with the at least one identifying designation in the
information manifest table and to provide on the output only that
information having an identifying designation that matches an
identifying designation included within the information manifest
table; and
a storage server coupled to the output of the manifest
engine and configured to receive and store information provided
on the output of the manifest engine.
9. A method for monitoring a channel passing information, the
information including an identifying designation, comprising the
steps of:
monitoring an information channel with a channel monitor
coupled to the information channel and providing on an output
of the channel monitor all information passing on the information
channel, the information including an identifying designation;
receiving, from the output of the channel monitor and at a
manifest engine, all information passing on the information
channel;
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Application 13/748,147
receiving, at the manifest engine, an information manifest
table having at least one identifying designation;
comparing, in the manifest engine, the received
information with the at least one identifying designation in the
information manifest table and identifying only that portion of
the information having an identifying designation that matches
an identifying designation included within the information
manifest table; and
outputting the identified information from the manifest
engine to a storage sever for storage thereon.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Zhang
Mraz
US 2010/0246549 Al
US 8,352,450 Bl
REJECTIONS
The Examiner made the following rejections:
Sept. 30, 2010
Jan. 8,2013
Claims 1-14 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent eligibility. Final Act. 2--4.
Claims 9, 10, and 12 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Zhang and Mraz. Final Act. 4---6.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred in rejecting claims 1-14 under 35
U.S.C. § 101 and claims 9, 10, and 12 under 35 U.S.C. § I03(a). We agree
with Appellants as to both of these rejections of the claims.
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Appeal2018-001066
Application 13/748,147
35 U.S.C. § 101
To determine patentable subject matter under 35 U.S.C. § 101, 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
Bank Int'!, 134 S. Ct. 2347, 2355 (2014). A court must be cognizant,
however, that "all inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012).
Thus, "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). Instead, "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
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself." Id. (quotation omitted).
Here, the Examiner determines the claims are "directed towards an
abstract idea of using categories to organize, store, and transmit
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Appeal2018-001066
Application 13/748,147
information." Final Act. 3. However, such a high level of abstraction
oversimplifies the claims and fails to consider the actual claim limitations,
including the storage of only that information passing on the channel that
has a particular identifying designation. See App. Br. 6. Appellants disclose,
"the ... invention relates to the use of manifest tables and one-way,
hardware-enforced information transfers, to select the information to be
captured and secured." Spec. ,r 1. In particular, according to the
Specification, one problem of the prior art is that, although it is preferable to
use one-way data links to enhance system security, some communication
protocols require a return message path, i.e., bilateral communication, for
error detection. Spec. ,r 10. According to Appellants, "[i]t is an object of the
present invention to provide a secure method for the selective capture of
information flowing on a shared channel and securing it to comply with
legal and regulatory requirements or security and operational guidelines,
while ignoring all other information on the shared channel." Spec. ,r 11.
This is accomplished by providing a channel monitor and manifest engine
according to claim 1. Spec. ,r 12. That is, the invention is directed to
solving a technological problem in communications systems. In contrast,
the Examiner provides insufficient evidence or reasoning in support of a
determination that claim 1 is directed to an abstract idea. Accordingly,
step 1 of the Alice/Mayo framework is not satisfied, thereby rendering the
rejection improper.
Furthermore, even had the Examiner properly determined the claims
to be directed to an abstract idea, the rejection would still be improper for
the reasons argued by Appellants under step 2, i.e., because "[t]he Examiner
has not made any showing that the channel monitor [ of claim 1] is a generic
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Application 13/748,147
computer function and/or how a generic computer could be programmed to
perform this purported generic computer function." App. Br. 7; Reply Br. 3-
4. That is, the Examiner fails to sufficiently explain why the requirement for
a "channel monitor having an input coupled to an information channel and
an output, the channel monitor configured to provide on the output all
information passing on the information channel, the information including
an identifying designation" is not significantly more than the broad abstract
idea set forth by the Examiner ("using categories to organize, store, and
transmit information"). Final Act. 3. Even if we were to narrow the
formulation of the abstract idea, there are insufficient findings of fact in the
record before us to determine whether limitations such as the structure and
functionality provided by the channel monitor or manifest engine would
have been well-understood, conventional, and routine. Berkheimer v. HP
Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.").
Accordingly, we do not sustain the Examiner's rejection of claims
1-14 under 35 U.S.C. § 101.
35 U.S.C. § I03(a)
Appellants contend the rejection is improper because Zhang fails to
disclose a channel monitor. App. Br. 13. The Examiner responds by relying
on and quoting language from Zhang. Final Act. 8-9; Ans. 5---6. However,
as Appellants have repeatedly argued, the quoted language is found nowhere
in the applied Zhang reference and, instead, is found in a completely
different reference, i.e., U.S. Patent Publication No. 2010/0332965 Al to
Carraher et al. ("Carraher"), which has not been applied by the Examiner.
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App. Br. 13-14; Reply Br. 5. Thus, as the Examiner has not applied the
Carraher reference in rejecting claims 9, 10, and 12 under 35 U.S.C. §
103(a), and has not otherwise explained why the combination of the applied
Zhang and Mraz references teaches or suggests the disputed channel
monitor, we do not sustain the rejection.
DECISION
We reverse the Examiner's decision to reject claims 1-14 under 35
U.S.C. § 101.
We reverse the Examiner's decision to reject claims 9, 10, and 12
under 35 U.S.C. § 103(a).
REVERSED
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