IRDETO B.V.

Patent Trials and Appeals Board

Aug 21, 2020

2019002732 (P.T.A.B. Aug. 21, 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.
14/430,908 03/24/2015 Yaser Eftekhari 15-30016-US 4258
128144 7590 08/21/2020
Rimon PC
One Embarcadero Center
Suite 400
San Francisco, CA 94111
EXAMINER
AHMED, ENAM
ART UNIT PAPER NUMBER
2112
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YASER EFTEKHARI, MICHAEL WIENER, YONGXIN ZHOU,
and YUAN GU1
____________________

Appeal 2019-002732
Application 14/430,908
Technology Center 2100
____________________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and BETH Z. SHAW,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 14. 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) (2018). According to Appellant, lrdeto B.V. is the real party in
interest. Appeal Br. 2.
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INVENTION
The invention relates generally to a method of performing a function
on error control coded data without decoding the data. Specification
Abstract, p. 5, ll. 6–15. Claim 1 is reproduced below.
1. A method of creating a data structure by processing
encoded digital data according to a first predetermined function,
the method comprising:
receiving an encoded amount of digital data, wherein the
encoded amount of digital data is an amount of digital data that
has been encoded using a predetermined error control code; and
processing the encoded amount of digital data using a
second predetermined function to thereby generate the data
structure as an output;
wherein the second predetermined function is a function
generated based on the first predetermined function and
characteristics of the predetermined error control code and is
configured to correspond to the first predetermined function in
that the result of processing, with the second predetermined
function, a quantity of digital data encoded using the
predetermined error control code equals the result of encoding
with the predetermined error control code the result of
processing the quantity of digital data with the first
predetermined function, to thereby allow the first predetermined
function to be implemented based on input digital data that is
encoded according to the predetermined error control code
without having to perform error control code decoding on the
input digital data.

EXAMINER’S REJECTION2
The Examiner rejected claims 1 through 14 under 35 U.S.C. § 101 for

2 Throughout this Decision we refer to the Appeal Brief filed August 10,
2018 (“Appeal Br.”); Final Office Action mailed March 12, 2018 (“Final
Act.”); and the Examiner’s Answer mailed November 29, 2018 (“Ans.”).
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being directed to patent-ineligible subject matter. Final Act. 4–10.

PRINCIPLES OF LAW
A. Section 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.
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
abstract ideas” are not patentable. 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 Court’s two-part 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,
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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 (1853))); 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
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. (citation omitted)
(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. (alterations in original) (quoting Mayo,
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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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4

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 (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
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2019 Revised Guidance, 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, under
Step 2B, 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. 2019 Revised Guidance, 84 Fed.
Reg. at 52–56.
DISCUSSION
Rejection under 35 U.S.C. § 101
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 2–4. Specifically, the Examiner determines the claims recite an
“abstract idea of an encoding/decoding algorithm and manipulating and
organizing information through mathematical correlations.” Final Act. 2–3
(citing, Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, (Fed. Cir. 2014), and RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017)). The Examiner finds that the claims do not
integrate the abstract idea into a practical application. Id at 6–7. Further, the
Examiner finds that the claimed step “of processing the encoded amount of

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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digital data using a second predetermined function to thereby generate the
data structure as an output does not improve the functionality of a computer,
nor does it improve a technology.” Id at 4.
Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion
on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 1 through 14 under 35 U.S.C. § 101.
Appellant argues that the Examiner’s rejection is in error as the
“claimed invention results in a technical improvement and better operation
of a computing system and thus are not merely an abstract idea.” Appeal Br.
7. Appellant states, that “the independent claims recite a specific series of
steps for creating and/or applying a data structure that can apply a specified
function to encoded data without having to explicitly perform decoding.” Id
at 9. Further, Appellant asserts that their claims are different from those at
issue in Digitech Image Techs, and RecogniCorp, cited by the Examiner.
Specifically, Appellant argues that in Digitech the claims recited descriptive
data and did not recite any manipulation of the data that caused the computer
to operate in a beneficial manner. Id at 9–10. Further, Appellant argues that
in RecogniCorp the court held claims where merely directed to the abstract
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idea of encoding and decoding data, whereas the current claims are not
merely directed to encoding and decoding; and do they recite well known
processing. Id at 11. Appellant argues that the claims recite a series of
ordered steps that render information into a specific format and as such are
similar to those at issue in McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016). Additionally, Appellant argues that the
invention is necessarily rooted in computer technology as it “is directed to
overcoming inefficiencies associated with processing encoded data.”
Appeal Br. 13 (Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014).)

The Judicial Exception
Appellant’s arguments have not persuaded us the Examiner erred in
finding the claims recite abstract mathematical processes. We note that
Appellant has not contested that the claims recite a mathematical concept but
rather, as discussed above, assert the claims recite a technical improvement
and are necessarily rooted in computer technology. Nonetheless, we concur
with the Examiner that the claims recite steps of the abstract idea of an
encoding/decoding algorithm and manipulating information through
mathematical correlations. Representative claim 1 recites: steps of receiving
an amount of encoded digital data and processing the encoded amount of
digital data using a second function (a mathematical operation). Appellant’s
Specification describes the function including a cryptographic process which
may manipulate the data. See Specification p. 9, l. 28– p. 10, l. 15. Further,
as identified by the Examiner, our reviewing court has held that the process
of encoding data is an abstract concept, and noted that addition of a
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mathematical equation does not make it less abstract. RecogniCorp at 1327.
Claim 1 also recites a relationship between a first and second function in that
the second function is “configured to correspond to the first predetermined
function in that the result of processing, with the second predetermined
function, a quantity of digital data encoded using the predetermined error
control code equals the result of encoding with the predetermined error
control code the result of processing the quantity of digital data with the first
predetermined function, to thereby allow the first predetermined function to
be implemented based on input digital data that is encoded according to the
predetermined error control code without having to perform error control
code decoding on the input digital data.” This limitation is not a step of the
method but rather further limits the mathematical process by describing the
function, and only modifies the abstract mathematical operation. As such,
we consider the claim to recite a mathematical concept, and are not
persuaded the Examiner erred in determining the claims recite an abstract
idea.
Integration of the Judicial Exception into a Practical Application
Similarly, Appellant’s arguments have not persuaded us the Examiner
erred by not considering the claims to recite a technical improvement, and
consider them necessarily rooted in computer technology (i.e., not
considering the claims to recite a practical application). As discussed above,
Appellant asserts their claims are similar to those at issue in McRO and DDR
as they recite a series of ordered steps and are necessarily rooted in computer
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technology as they are directed to overcoming inefficiencies in processing
encoded data. We are not persuaded of error by these arguments.
In McRO, the court reviewed claims that use “a combined order of
specific rules that renders information into a specific format that is then used
and applied to create desired results: a sequence of synchronized, animated
characters.” McRO, 837 F.3d at 1315. The court found that the claims did
not “simply use a computer as a tool to automate conventional activity,” but
instead used the computer to “perform a distinct process” that is carried out
in a different way than the prior non-computer method to improve the
technology (of 3-D animation techniques). See McRO, 837 F.3d at 1314–16.
Here, representative claim 1 just recites one step of processing data using a
function. Thus, the claim is not directed to an ordered series of steps as in
McRO.
In DDR Holdings, the claimed invention created a hybrid web page
that combined advantageous elements from two web pages, bypassing the
expected manner of sending a visitor to another party’s web page, in order to
solve the internet-centric problem of retaining website visitors. DDR
Holdings, 773 F.3d at 1257–59. Here, representative claim 1 does not recite
a computer or any device that is processing the data using the function.
While Appellant’s Specification identifies that the use of the abstract
concept helps reduce processing power, this merely shows that the method is
advantage to the abstract idea and does not demonstrate the claim is
necessarily rooted in computer technology or centered around a technical
problem as in DDR Holdings. Specification p. 9, ll. 25–27. Thus,
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Appellant’s arguments have not persuaded us the Examiner erred in not
finding the claims recite a practical application of the abstract idea.
Significantly More than the Abstract Idea
Under the 2019 Revised Guidance, if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Appellant argues the Examiner has not provide the analysis to show
that the additional elements represent well understood routine or
conventional activities as required by Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018). Appeal Br. 15–16.
Appellant’s arguments have not persuaded us the Examiner erred in
considering the claims to not recite significantly more than the abstract idea.
The Examiner finds that the additional elements are instructions to
implement the idea on a computer or a recitation of generic computer
structure to perform generic functions. Final Act. 3. Further, the Examiner
finds that implementing functions or mathematical algorithms on data are
standard processes. Final Act. 4. We concur with the Examiner that the
additional limitations do not amount to significantly more. As discussed
above, representative claim 1 recites an abstract idea. Representative claim
1 does not recite structure in addition to the abstract concept. While
representative claim 1 is not limited to a computer performing the method, in
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as much as the processing limitation could be considered to imply use of a
computer, the act of processing data using function (calculations) is a well-
known operation of a computer. See, MPEP § 2106.05(d) II (ii) (Performing
repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199
(recomputing or readjusting alarm limit values); Bancorp Servs., L.L.C. v.
Sun Life Assurance Col of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“The computer required by some of Bancorp’s claims is employed only for
its most basic function, the performance of repetitive calculations, and as
such does not impose meaningful limits on the scope of those claims.”)).
Thus, Appellant’s arguments have not persuaded us the Examiner erred in
not considering the claim to recite significantly more than the abstract idea.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that representative claim 1 recites an abstract
idea, a mathematical concept. Further, Appellant’s arguments have not
persuaded us that the Examiner erred in finding that the claim is not directed
to an improvement in the functioning of the computer or to other technology
or other technical field; directed to a particular machine; directed to
performing or affecting a transformation of an article to a different state or
thing; or directed to using a judicial exception in some meaningful way
beyond linking the exception to a particular technological environment, such
that the claim as a whole is more than a drafting effort to monopolize the
judicial exception.
For these reasons, we are unpersuaded that the claims recite additional
elements that integrate the judicial exception into a practical application, nor
do the claims add a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional.” See 2019 Revised Guidance,
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84 Fed. Reg. at 54. Accordingly, we sustain the Examiner’s rejection of
representative claim 1, under 35 U.S.C. § 101 as being directed to a patent-
ineligible abstract idea, which is not integrated into a practical application,
and does not include an inventive concept.
Appellant has not presented arguments directed to separate
patentability of claims 2 through 14. Accordingly, we similarly sustain the
Examiner’s rejection of these claims under 35 U.S.C. § 101 as being directed
to a patent-ineligible abstract idea.

CONCLUSION
In summary:

Claim
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–14 101 Eligibility 1–14

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