Faitelson, Yakov et al.

Patent Trials and Appeals Board

Jan 13, 2020

13378115 - (D) (P.T.A.B. Jan. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/378,115 02/29/2012 Yakov Faitelson CU-9535 BSE 6212
26530 7590 01/13/2020
LADAS & PARRY LLP
224 SOUTH MICHIGAN AVENUE
SUITE 1600
CHICAGO, IL 60604
EXAMINER
CHIANG, JASON
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
01/13/2020 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):
ChicagoUSPTO@ladas.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAKOV FAITELSON, OHAD KORKUS, and OPHIR
KRETZER-KATZIR
Appeal 2019-001264
Application 13/378,115
Technology Center 2400
BEFORE JEAN R. HOMERE, JEREMY J. CURCURI, and IRVIN E.
BRANCH, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6, 13–15, and 18. Appeal Br. 2.
Claims 4, 5, 7–12, 16, 17, and 19–24 are cancelled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Varonis Systems,
Inc. Appeal Br. 2.
Appeal 2019-001264
Application 13/378,115
2
CLAIMED SUBJECT MATTER
The claims are directed to “providing bi-directional visualization of
authority of users over SACs in an enterprise-wide network.” Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A system comprising a non-transitory, tangible computer-
readable medium in which computer program instructions are
stored, which instructions, when read by a computer, cause the
computer to automatically provide bi-directional visualization of
authority of users over SACs in an enterprise-wide network, said
SACs comprising containers, each of said containers comprising
network objects, said authority of a user over a SAC comprising
an ability of said user to modify properties of said network
objects, said system comprising:
a user interface for displaying, in a single view, bi-
directional visualization of authority of all users of said
enterprise-wide network over all SACs in said enterprise-wide
network, said users being users other than owners of said SACs,
each of said network objects of each of said SACs comprising
only at least one of at least one user and at least one user group,
said bi-directional visualization in said single view comprising:
a first uni-directional visualization comprising, for
a given user, user-wise visualization of the authority of said
given user over at least one SAC in respect of which said given
user has authority, said given user being a user other than an
owner of said at least one SAC; and
a second uni-directional visualization comprising
SAC-wise visualization for a given SAC of the authority of at
least one user over said given SAC, said at least one user being a
user other than an owner of said given SAC; and
a user interface for enabling said user to modify said
properties of said network objects.
REJECTION
Claims 1–3, 6, 13–15, and 18 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Non-Final Act. 3.
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Application 13/378,115
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OPINION
The Judicial Exception Rejection of Claims 1–3, 6, 13–15, and 18
The Examiner determines claims 1–3, 6, 13–15, and 18 are directed to
a judicial exception without significantly more. Non-Final Act. 3. In
particular, the Examiner determines the following:
Claims 1–3, 6, 13–15 and 18 are rejected under 35 U.S.C.
101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Claims 1–3, 6, 13–15
and 18 are directed to abstract idea of displaying, monitoring,
reporting and modifying properties of user authority of users
over user/user group. The claim recites organizing human
activities (e.g., displaying, monitoring, reporting and modifying
properties of user authority of users over user/user group), which
the courts have considered to fall within the judicial exceptions,
e.g., as abstract ideas (Alice Corp. V. CLS Bank). Because these
human activities are recited in the claims, these claims are
directed to a judicial exception. The claim(s) does/do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because the user interface as
recited in claims 1–3 and 6 is a generic computer component that
performs functions (i.e., displaying, monitoring, reporting and
modifying properties). These are generic computer functions
(i.e., display, modify properties) that are well-understood,
routine, and conventional activities previously known to the
industry. These claims do not amount to significantly more than
the underlying abstract idea of displaying, monitoring, reporting
and modifying properties of user authority of users over user/user
group. Accordingly, 1–3, 6, 13–15 and 18 are ineligible.
Non-Final Act. 3; see also Ans. 4–7.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
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nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, . . . and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must 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, 573 U.S. at 221 (citation omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic
computer implementation[] fail[s] to transform that abstract idea into a
patent-eligible invention.” Id.
The U.S. Patent and Trademark Office (“USPTO”) recently published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); USPTO
October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
See 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Are the claims patent-eligible?
Step One
Claim 1 recites a computer-readable medium, which falls within the
“manufacture” category of 35 U.S.C. § 101. Claim 13 recites a method,
which falls within the “process” category of 35 U.S.C. § 101. Thus, we must
determine whether the claims recite a judicial exception, and fail to integrate
the exception into a practical application. See 84 Fed. Reg. at 54–55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.
Step 2A—Prong One
Independent claim 1 recites
[i] a user interface for displaying, in a single view, bi-
directional visualization of authority of all users of said
enterprise-wide network over all SACs in said enterprise-wide
network, said users being users other than owners of said SACs,
each of said network objects of each of said SACs comprising
only at least one of at least one user and at least one user group,
said bi-directional visualization in said single view comprising:
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[ii] a first uni-directional visualization comprising,
for a given user, user-wise visualization of the authority of said
given user over at least one SAC in respect of which said given
user has authority, said given user being a user other than an
owner of said at least one SAC; and
[iii] a second uni-directional visualization
comprising SAC-wise visualization for a given SAC of the
authority of at least one user over said given SAC, said at least
one user being a user other than an owner of said given SAC; and
[iv] a user interface for enabling said user to modify said
properties of said network objects.
These steps [i]–[iv] cover displaying, monitoring, reporting, and
modifying properties of user authority of users over users/user groups, and
are thus one or more of “observation, evaluation, judgment, opinion,” which
are examples of concepts capable of being performed in the human mind. 84
Fed. Reg. at 52. In addition, claim 1’s displaying and modifying properties
can be done by human thought and a pen and paper.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Similarly, the Federal Circuit has
found claims directed to “collecting information, analyzing it, and displaying
certain results of the collection and analysis” as directed to a patent-
ineligible abstract idea. Electric Power Group, LLC, v. Alstom, 830 F.3d
1350, 1353 (Fed. Cir. 2016). Accordingly, the mental processes recited in
independent claim 1, e.g., displaying and modifying properties of user
authority of users over users/user groups, all describe the abstract idea. The
abstract idea, even when automated to reduce the burden on the user of what
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once could have been done with pen and paper, remains an abstract idea.
CyberSource, 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).
Thus, we determine claim 1 recites a judicial exception. For these
same reasons, we also determine claim 13 recites a judicial exception.
Step 2A, Prong Two
Because claims 1 and 13 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application.
Appellants’ Specification at paragraph 41 specifically discloses: “The
SPBDVAUS preferably resides on a server 104 which is preferably
connected to network 100. Network 100 preferably also includes a plurality
of disparate computers 106, servers 108 and storage devices 110.” There is
no indication that the computers used in the invention are anything other
than general purpose computers.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Specifically,
there is no improvement to the functioning of the computer, but, instead, the
computer merely implements the abstract idea. In this case, we do not see
any particular machine or manufacture that is integral to the claim; nor do
we see any transformation. That is, we do not see any of the additionally
recited elements applying or using the judicial exception in any meaningful
way beyond generally linking the judicial exception to the recited elements.
Accordingly, we determine that claim 1 is directed to a judicial
exception because it does not recite additional elements that integrate the
recited judicial exception into a practical application. Claim 13 recites
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similar limitations to those discussed with respect to claim 1, and therefore
also is directed to a judicial exception.
Is there something else in the claims that ensures that they are
directed to significantly more than a patent ineligible concept?
Step 2B
Because claims 1 and 13 are directed to a judicial exception, we next
determine, according to Alice, whether these claims recite an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than a judicial exception.
The Specification does not provide additional details about the
computer that would distinguish the recited hardware components from
generic implementation. See Spec. ¶ 41.
The conventional or generalized functional terms by which the
computer components are described reasonably indicate that Appellant’s
Specification discloses conventional components. See Spec. ¶ 41.
In view of Appellant’s Specification, the claimed hardware
components including the computer are reasonably determined to be generic,
purely conventional computer elements. Thus, the claims do no more than
require generic computer elements to perform generic computer functions,
rather than improve computer capabilities.
Accordingly, we determine that claims 1 and 13 are not directed to
significantly more than a patent ineligible concept.
Appellant’s principal arguments
Appellant presents the following principal argument:
Appellants disagree with the Examiner’s statement above
that “the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception”. Appellants note that claims 1 and 13 recite an
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improved system and method for automatically providing bi-
directional visualization of authority of all users in an enterprise
over all SACs in an enterprise-wide network. Appellants note
that the system and method of claims 1 and 13 is specifically
designed to solve a specific problem—of how to automatically
provide bi-directional visualization of authority of users over
SACs in an enterprise-wide network, as specifically noted, inter
alia, in paragraphs [0048]–[0049] of the present application as
published. In particular, the system includes functionality for
providing user-wise visualization of the authority of a given user
over at least one SAC in respect of which the user has authority
and functionality for providing SAC-wise visualization for a
given SAC of the authority of at least one user over the given
SAC. The system also preferably includes functionality for
providing user-wise monitoring and reporting of the exercise of
authority by a given user over at least one SAC with respect to
which the user has authority and functionality for providing
SAC-wise monitoring and reporting of the exercise of authority
over a given SAC by at least one user having authority over said
given SAC.
Appeal Br. 6–7.
These arguments are not persuasive of Examiner error because, as we
explain above, the argued elements of claims 1 and 13 are directed to the
abstract concept capable of being performed in the human mind. 84 Fed.
Reg. at 52. We also explain that the claims do not recite additional elements
that integrate the recited judicial exception into a practical application, and
are not directed to significantly more than a patent ineligible concept.
Appellant’s identified improvements such as all users and all SACs in an
enterprise are improvements to the abstract idea because displaying and
modifying properties of user authority of users over users/user groups can be
done by human thought and a pen and paper; it is, not an improvement to a
technology or computer functionality. Thus, on the record before us, the
claim limitations do not improve the functionality of the various hardware
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components, nor do they achieve an improved technological result in
conventional industry practice. McRO, Inc. v. Bandai Namco Games Am.,
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). More particularly, we do not
agree the claimed invention improves the technology as a whole.
We, therefore, sustain the Examiner’s rejection under 35 U.S.C. § 101
of claims 1–3, 6, 13–15, and 18.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 13–
15, 18
101 Eligibility 1–3, 6, 13–
15, 18

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED