International Business Machines Corporation

Patent Trials and Appeals Board

Sep 10, 2020

2019000403 (P.T.A.B. Sep. 10, 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.
13/939,402 07/11/2013 Suresh N. Chari YOR920130303US2
(30043)
1265
48233 7590 09/10/2020
SCULLY, SCOTT, MURPHY & PRESSER, P.C.
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
IBMPAIRENotify@ssmp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SURESH N. CHARI, CHRISTOPHER GATES, STEPHEN C.
GATES, YOUNGJA PARK, and WILFRIED TEIKEN
____________________

Appeal 2019-000403
Application 13/939,4021
Technology Center 3600
____________________

Before JOHN A. JEFFERY, MARC S. HOFF, and SCOTT B. HOWARD,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1–16 and 21.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention is system and method for automatically
estimating computer asset sensitivity. Spec. ¶ 5. This estimation process may
rely on external information such as attributes of asset users, their access

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states that the real party in interest is International
Business Machines Corporation. Appeal Br. 3.
2 Claims 17–20 have been cancelled.
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patterns, and other published data content by users. The estimation process
may therefore not require direct access to the target assets or to privileged
knowledge about the assets. Spec. ¶ 18.
Claim 1 is reproduced below:
A method for automatically estimating a sensitivity level of an
information technology asset, comprising:
obtaining information about an asset, the asset comprising a computer
network and the obtaining the information comprises identifying Internet
Protocol (IP) address from which the computer network is accessed,
identifying a user associated with the IP address and determining user
attributes of the user and entropy of user accesses of the computer network,
the obtaining performed without having to access the asset such that privacy
of the computer network is preserved;
assigning characteristics to the asset based on the information
comprising at least the user attributes and the entropy of user accesses to the
asset comprising a computer network;
comparing, by a processor, the characteristics of the asset with stored
characteristics of known sensitive assets; and
determining, by the processor, a sensitivity level of the asset based on
the comparing,
the sensitivity level determined without having to access the asset and
privileged knowledge of the asset,
the characteristics comprising features and wherein a machine
learning algorithm is trained based on the features to predict the sensitivity
level,
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the determining performed by executing the trained machine learning
algorithm,
wherein the features can be uniformly used for different asset types in
training the machine learning algorithm to predict a sensitivity level for a
respective different asset type,
wherein the method identifies sensitivity levels for multiple assets
respectively, the method facilitating computer security protection by
automatically identifying a target asset among the multiple assets based on a
corresponding determined sensitivity for providing security protection.

Claims 1–16 and 21 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3.

Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed May 15, 2018), the Reply Brief (“Reply Br.,” filed Oct.
18, 2018), and the Examiner’s Answer (“Ans.,” mailed Aug. 23, 2018) for
their respective details.
ISSUES
1. Does the claimed invention recite an abstract idea?
2. Is the recited abstract idea integrated into a practical application?
PRINCIPLES OF LAW
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 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. See, e.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme 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, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 184 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
Supreme Court held that “[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 at 176; see also id. at 192 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Having said that, the Supreme 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 (quotation marks 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 PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
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Subject Matter Eligibility Guidance (“Memorandum”). 84 Fed. Reg. 50.3
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
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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
are 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 Memorandum.

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
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ANALYSIS
Representative claim 1 recites the following limitations. Aspects of
the claimed abstract idea are indicated in italics. Additional non-abstract
limitations are noted in bold:
1. (Previously Presented) A method for automatically
estimating a sensitivity level of an information technology
asset, comprising:
(a) obtaining information about an asset, the asset
comprising a computer network and the obtaining the
information comprises identifying Internet Protocol (IP)
address from which the computer network is accessed,
identifying a user associated with the IP address and
determining user attributes of the user and entropy of user
accesses of the computer network, the obtaining performed
without having to access the asset such that privacy of the
computer network is preserved;
(b) assigning characteristics to the asset based on the
information comprising at least the user attributes and the
entropy of user accesses to the asset comprising a computer
network;
(c) comparing, by a processor, the characteristics of the
asset with stored characteristics of known sensitive assets; and
(d) determining, by the processor, a sensitivity level of
the asset based on the comparing,
the sensitivity level determined without having to access
the asset and privileged knowledge of the asset,
the characteristics comprising features and wherein (e) a
machine learning algorithm is trained based on the features
to predict the sensitivity level,
the determining performed by executing the trained
machine learning algorithm,
wherein the features can be uniformly used for different
asset types in training the machine learning algorithm to
predict a sensitivity level for a respective different asset type,
wherein the method (f) identifies sensitivity levels for
multiple assets respectively, the method facilitating computer
security protection by automatically identifying a target asset
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among the multiple assets based on a corresponding
determined sensitivity for providing security protection.

These limitations, under their broadest reasonable interpretation,
constitute steps to estimate the sensitivity level of an information technology
asset without having to access the asset. A machine learning algorithm is
employed to learn the sensitivity of the information technology asset based
on user attributes, IP address of a user, and entropy of user accesses of the
network.
We determine that limitation (a) corresponds to the gathering of data
(“obtain information about an asset”).
The Memorandum recognizes that certain groupings of subject matter
have been found by the courts to constitute judicially excepted abstract
ideas: (a) mathematical concepts, (b) certain methods of organizing human
activity, and (c) mental processes. Memorandum, 84 Fed. Reg. at 52. If a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.4 We determine that the claim steps beyond those

4 See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”); Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed.
Cir. 2016) (holding that computer-implemented method for “anonymous
loan shopping” was an abstract idea because it could be “performed by
humans without a computer”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the
use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”);
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directed to extra-solution activity (i.e., gathering, display, or storage of data)
— assigning characteristics to an asset, comparing asset characteristics with
stored characteristics of known assets, determining a sensitivity level of an
asset based on said comparison, said determination made without accessing
the asset, training a machine learning algorithm based on features to predict
the sensitivity level, the method identifying sensitivity levels for multiple

CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372
(Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer
readable medium” does not make a claim otherwise directed to process that
“can be performed in the human mind, or by a human using a pen and
paper” patent eligible); id. at 1376 distinguishing Research Corp. Techs. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l
Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as directed to inventions
that “could not, as a practical matter, be performed entirely in a human’s
mind”). Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract
intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work’” (quoting Benson, 409 U.S. at 67));
Flook, 437 U.S. at 589 (same); Benson, 409 U.S. at 67, 65 (noting that the
claimed “conversion of [binary-coded decimal] numerals to pure binary
numerals can be done mentally,” i.e., “as a person would do it by head and
hand.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139,
(Fed. Cir. 2016) (holding that claims to the mental process of “translating a
functional description of a logic circuit into a hardware component
description of the logic circuit” are directed to an abstract idea, because the
claims “read on an individual performing the claimed steps mentally or with
pencil and paper”); In re BRCA1 & BRCA2-Based Hereditary Cancer Test
Patent Litig., 774 F.3d 755, 763 (Fed. Cir. 2014) (concluding that concept of
“comparing BRCA sequences and determining the existence of alterations”
is an “abstract mental process”); In re Brown, 645 F. App’x 1014, 1017
(Fed. Cir. 2016) (non-precedential) (claim limitations “encompass the mere
idea of applying different known hair styles to balance one’s head.
Identifying head shape and applying hair designs accordingly is an abstract
idea capable, as the Board notes, of being performed entirely in one’s
mind”).
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assets — constitute steps that may be performed in the mind, but for the
recitation of generic computer components.
Accordingly, we conclude that the claims recite a mental process, one
of the categories of abstract ideas recognized in the Memorandum. 84 Fed.
Reg. at 52. We thus conclude that the claims recite an abstract idea.

INTEGRATION INTO A PRACTICAL APPLICATION
We next evaluate whether the claims integrate the identified abstract
idea, of estimating a sensitivity level of an integration technology asset by
using a machine learning algorithm trained to learn the sensitivity level of
the asset based on user features, usage features, and external content
features, without having to directly access the asset, into a practical
application. See Memorandum, 84 Fed. Reg. at 51. We consider whether
there are any additional elements beyond the abstract ideas that, individually
or in combination, “integrate the [abstract ideas] into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit.” Id. at 54–55.
The Revised Guidance Memorandum provides exemplary
considerations that are indicative that an additional element may have
integrated the exception (i.e., the abstract idea recited in the claim) into a
practical application:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
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use of the abstract idea to a particular technological
environment.
See Memorandum, 84 Fed. Reg. at 55; MPEP §§ 2106.05(a)–(c), (e)–(h).
The Examiner finds the claimed invention to be analogous to the
invention claimed in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), and to the invention claimed in Classen
Immunotherapies v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). Final
Act. 5. In Electric Power Group, the invention was a method of detecting
events on an electric power grid in real time. The method included receiving
a plurality of data streams from the electric power grid; receiving data from
other power system and non-grid data sources; detecting and analyzing
events in real time from the plurality of data streams; displaying event
analysis results, and displaying concurrent visualization of measurements;
and deriving a composite indicator of reliability. Electric Power Group, 830
F.3d at 1351–52. The court concluded that “[t]he focus of the asserted
claims . . . is on collecting information, analyzing it, and displaying certain
results of the collection and analysis.” Id. at 1353. The court concluded that
the advance purported by the invention was “not any particular assertedly
inventive technology for performing those functions,” and held that the
claims were not patent-eligible under § 101.
The invention in Classen concerned identifying a first and second
group of mammals, the two groups immunized according to different
immunization schedules; and comparing the effectiveness of the two
immunization schedules, as a result of which one of the immunization
schedules may be characterized as lower risk for developing a chronic
immune-mediated disorder. Classen, 659 F.3d at 1060. The court in Classen
characterized the claim as “directed to the single step of reviewing the
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effects of known immunization schedules as shown in the relevant
literature.” Classen, 659 F.3d at 1067. The court held that the invention
“states the idea of collecting and comparing known information.” Id.
Appellant responds that the claim is similar to the claims found to be
non-abstract and patent eligible in DDR Holdings, LLC v. Hotels.com, LP,
773 F.3d 1245 (Fed. Cir. 2015), and Core Wireless Licensing SARL v. LG
Electronics Inc., 880 F.3d 1356 (Fed. Cir. 2018). Appeal Br. 7–8. Appellant
argues that the claimed invention “solves a problem of determining a
security level of a computer asset without having to directly access that asset
or privileged knowledge about the asset,” which avoids creating a security
risk to the computer storing the assets as well as to the assets. Appeal Br. 7–
8; Spec. ¶ 18. Appellant contends that, as in DDR Holdings, the claimed
invention is not merely the performance of a known business practice along
with the requirement to perform it on the Internet (or on a computer), but is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer security. Id.; DDR Holdings,
773 F.3d at 1257.
The invention in Core Wireless Licensing concerned an improved
display interface for small devices like mobile telephones, in which an
“application summary” could be reached directly from a menu listing
application programs, the application summary displaying a limited list of
data offered within the applications, the application summary being
displayed while the applications are in an unlaunched state. Core Wireless
Licensing, 880 F.3d at 1359. The court found that the invention recited a
specific improvement over prior systems, resulting in an improved user
interface for electronic devices. Consequently, the court concluded that the
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claims are directed to an improvement in the functioning of computers, and
thus not directed to an abstract idea. Id. at 1363.
The Examiner responds to Appellant’s DDR Holdings argument by
insisting that “the present claims amount to merely the application of
obtaining information about an asset” and that Appellant’s invention is
merely an “attempt to solve commercial problems” in an electronic
environment. Ans. 6.
We do not find the Examiner’s analogy to Electric Power Group and
Classen persuasive. To be sure, each of those two cases relied upon by the
Examiner involved straightforward information gathering and presentation,
without “any particular assertedly inventive technology for performing those
functions.” Electric Power Group, 830 F.3d at 1354. Nevertheless, we agree
with Appellant that the disclosed solution to the problem of determining the
security level of a computer asset without having to directly access that
asset, by extracting meta-level features — user features, usage features,
external content features — is a solution rooted in computer technology to
solve a problem that does not exist in the absence of computer technology.
See Reply Br. 2; Spec. ¶ 26; DDR Holdings, 773 F.3d at 1257. We agree
with Appellant that the disclosed analysis based on user features, usage
features, and/or external content features increases the efficiency of the
computer and avoids the possibility of compromising the security of the
computer system. As the court held in Core Wireless Licensing, we regard
those advantages as improvements to the functioning of the computer itself.
Appellant further asserts that the claimed “machine learning algorithm
trained based on the features to predict the sensitivity level” based on
features including “Internet Protocol (IP) address from which the computer
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network is accessed, . . . a user associated with the IP address, . . . user
attributes of the user and entropy of user accesses of the computer network”
is asserted to train a processor or a machine to become more autonomous
and more intelligent, and hence improve computer capabilities or
functionality. Appeal Br. 8–9.
We do not agree with the Examiner that the disclosed machine
learning algorithm does not improve computer capabilities or functionality,
or involves “the mere application of programming to a computer.” Ans. 7.
Appellant discloses that “[s]emi-automatic machine learning algorithms may
be provided to automatically estimate the sensitivity of assets, e.g., by using
information associated with the users,” and as such “do not require direct
access to the target assets or privileged knowledge about the assets.” Spec.
¶ 18. The methods of the present disclosure “may apply instance-based
learning approaches, making the system domain independent and easy to
adapt to new sensitive asset types. Given a small set of known sensitive
assets, the methods of the present disclosure in one embodiment may learn
their characteristics and score other sensitive assets using the models.” Spec.
¶ 20. “Extracting of the meta-level features does not require direct access to
the target assets or privileged knowledge about the assets, and, thus, allows
the methods of the present disclosure in one embodiment to be efficient and
easily scalable to a large set of heterogeneous assets.” Spec. ¶ 21.
We conclude that the recitation of a machine learning algorithm
trained to learn the sensitivity level of an information technology asset based
on meta-level features, without having to directly access the asset, serves to
integrate the identified abstract idea into a practical application.
Consequently, we do not agree with the Examiner’s conclusion that the
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claims are directed to patent-ineligible subject matter. We do not sustain the
Examiner’s rejection of claims 1–16 and 21 under 35 U.S.C. § 101.

CONCLUSIONS
1. The claimed invention recites an abstract idea.
2. The recited abstract idea is integrated into a practical application.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–16, 21 101 Patent Eligible
Subject Matter
1–16, 21

ORDER
The Examiner’s decision to reject claims 1–16 and 21 is reversed.

REVERSED