Ex Parte Ratica

Patent Trial and Appeal Board

Dec 31, 2018

13156737 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/156,737 06/09/2011
144885 7590 01/03/2019
The Webb Law Firm/ Visa International
ONE GATEWAY CENTER
420 FT. DUQUESNE BL VD, SUITE 1200
PITTSBURGH, PA 15222
FIRST NAMED INVENTOR
Adam Ratica
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.
8223-1710615 5708
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ADAM RATICA
Appeal2017-008725
Application 13/156,737 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5-11, and 13-20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 "The real party in interest for this appeal and the present application is
CARDINALCOMMERCE CORPORATION." Appeal Br. 1.
Appeal2017-008725
Application 13/156,737
ILLUSTRATIVE CLAIM
1. A computer-implemented method of segmented
processing of order management system data, the method
compnsmg:
using a front end interface of an apparatus to receive
unencrypted payment information and unencrypted personal
information relating to at least one customer order and return
encrypted payment information and encrypted personal
information relating to the at least one customer order;
using a middle tier interface of the apparatus to receive
encrypted payment information and encrypted personal
information relating to at least one customer order and return
decrypted personal information only; and
using a back end interface of the apparatus to receive
encrypted payment information and encrypted personal
information relating to at least one customer order and return
decrypted payment information and decrypted personal
information relating to the at least one customer order;
wherein the interfaces comprise separate Ethernet ports.
CITED REFERENCES
The Examiner relies upon the following references:
Oskari US 2006/0072755 Al
Bykov et al. US 2008/0109372 Al
(hereinafter "Bykov")
Barfield et al. US 2010/0275005 Al
(hereinafter "Barfield")
REJECTIONS
Apr. 6, 2006
May 8, 2008
Oct. 28, 2010
I. Claims 1-3, 5-11, and 13-20 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.
II. Claims 1-3, 5-11, and 13-20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Bykov, Oskari, and Barfield.
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Application 13/156,737
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
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Application 13/156,737
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 2355.
According to the Federal Circuit, the first step of the Alice framework
"calls upon us to look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). Notably, the Federal Circuit warns
that describing the claims at an excessively "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).
The Examiner characterizes all the claims in the Appeal as "directed
to an abstract idea of manipulating data via encryption and decryption,
which is a mathematical relationship/formula and an idea of itself." Final
Action 3.
The Appellant argues that the independent claims are not directed to
an abstract idea, because the recited physical structure and functionality (i.e.,
the three "interface[ s ]" that perform different encryption and decryption
functions) accomplish a specific technical improvement. See Appeal Br.
12-13; Reply Br. 6-8. The nature of the claimed improvement, the
Appellant contends, is discussed in paragraph 41 of the Specification, which
states:
The Web servers in the DMZ ["demilitarized zone" - an
expression that refers to a network's exposure to public access]
could physically be connected only to the front end interface.
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Appeal2017-008725
Application 13/156,737
Without connecting a new physical cable, it would not be
possible to decrypt the data, since the front end interface 104
does not return decrypted data. This principal [sic] is also
applied to the middle tier, where more trust is present but
payment information would not be returned.
Appeal Br. 12 ( quoting Spec. ,r 41)
Indeed, the Examiner's characterization, of what the claims are
directed to, omits the fundamental aspects of the functionality of the ordered
combination. The Appellant's contention that the Examiner appears to have
over-generalized the claim language is reinforced by the Federal Circuit's
decision in Ancora Techs., Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed.
Cir. 2018) in which another type of computer-security technology was
deemed not to be directed to an abstract idea. In Ancora, the Federal Circuit
explained: "Improving security ... can be a non-abstract computer-
functionality improvement if done by a specific technique that departs from
earlier approaches to solve a specific computer problem. Ancora, 908 F .3d
at 1348 (citing Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299, 1304--
05 (Fed. Cir. 2018)).
In view of the foregoing, we are persuaded that the Examiner has not
adequately shown that the claims are directed to judicially excluded subject
matter, under the first step of the Alice framework. Accordingly, we do not
address the second Alice step. See Enfzsh, 822 F.3d at 1339. We do not
sustain the rejection of claims 1-3, 5-11, and 13-20 under 35 U.S.C. § 101.
Obviousness
Among the arguments presented, in regard to the obviousness
rejection, the Appellant submits that the rejection fails to teach or suggest
features of claim 1 's "middle tier interface" "to receive encrypted payment
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Application 13/156,737
information and encrypted personal information relating to at least one
customer order and return decrypted personal information only." See
Appeal Br. 7-8, Reply Br. 2-3.
The Examiner relies upon a combination of Bykov and Oskari for this
limitation. See Answer 3-5. Oskari discloses a wireless "key" device that
exchanges information with a "lock" device (this could be a tangible, three-
dimensional lock - such as a building door - or a virtual lock that
provides access to certain computer functionality), where the interaction
between the key and lock comprises encrypted/decrypted communications.
See Oskari ,r,r 38, 43. According to the Examiner, Oskari teaches the recited
"return[ing] decrypted personal information only," explaining:
a key device requests access to a lock device by encrypting a
random code with a secret key, and sending the result to the
lock device (i.e. receiving encrypted data). The lock device
decrypts the encrypted data, and if the decrypted code is the
same that the lock device originally sent, then the lock opens
(i.e. returns decrypted data).
Answer 3 (citing Oskari ,r 38).
The Appellant contends, in part, that Oskari fails to teach "return[ ing]
decrypted personal information only," because Oskari's key device receives
non-encrypted data (random code) from the lock and returns an encrypted
response to the lock- the opposite of what the claims require (see Appeal
Br. 7-8 (citing Oskari ,r 73, 76-78); Reply Br. 2 (citing Oskari ,r 38)), and
because opening a lock (per Oskari) is fundamentally and qualitatively
different from "return[ing] decrypted personal information only" (see Reply
Br. 2 (citing Oskari ,r 38)).
Both of the Appellant's points are reasonable. The exchange of
encrypted and decrypted information directly between the key and lock
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Application 13/156,737
devices in Oskari (i-f 38) is contrary to what the claims require of the "middle
tier interface." See Oskari ,r 38. Furthermore, Oskari's unlocking a material
structure ( or a virtual one), to provide access thereto (see id. ,r 43), does not
teach the claimed "retum[ing] decrypted personal information only."
The foregoing argument applies to independent claims 9 and 18, as
well as independent claim 1. Therefore, we do not sustain the rejection of
claims-3, 5-11, and 13-20 are rejected under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision rejecting claims 1-3, 5-11,
and 13-20 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1-3, 5-11,
and 13-20 are rejected under 35 U.S.C. § 103(a).
REVERSED
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