Lorenzo N. Dantzler

Patent Trials and Appeals Board

Aug 22, 2019

14630745 - (D) (P.T.A.B. Aug. 22, 2019)

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.
14/630,745 02/25/2015 Lorenzo N. Dantzler 3150764 5100
89182 7590 08/22/2019
Peter Loffler
P.O. Box 1001
Niceville, FL 32588-1001
EXAMINER
PANDYA, SUNIT
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
08/22/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LORENZO N. DANTZLER
____________________

Appeal 2019-000723
Application 14/630,7451
Technology Center 3600
____________________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 2–7. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant’s “invention relates to system and method that
computationally produces a true random number.” Spec. 1, ll. 5–6.
Claims 4 and 7 are the independent claims on appeal. Below, we reproduce
claim 4 as illustrative of the appealed claims.
4. A method for generator at least one random number
for transmittal to a software program, the method comprising the
steps of:

1 “Lorenzo N. Dantzler is the real party in interest.” Appeal Br. 2.
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providing a computer having a CPU having an algorithm
running thereon;
having the algorithm creates and thereafter inputs T0BIMT
(Bit Index Management Threads) within the CPU of the
computer such that each T0BIMT continuously increment iIncr
(incremented integer indices) and decrement iDecr (decremented
integer indices) and creates and thereafter inputs T1BST (Bit
Setting Threads) and each thread continuously executes an
Increment first array element Q[B(iIncr mod N)] and Increment
second array element Q[B(iDecr mod N)] and the random number is
compiled by the algorithm, the random number being is an N bit
integer comprised of bits b0, b1, . . . bN-1 and where the bit bn is set
to a zero bit value of the integer at array element Q[Bn]; and
having the computer transmit the random number.

REJECTION
The Examiner rejects claims 2–7 under 35 U.S.C. § 101 as reciting
only patent-ineligible subject matter.

PRINCIPLES OF LAW CONCERNING 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. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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we first determine what concept the claim is “directed to.” Id. 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 that the courts 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 that the courts 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. (15 How.) 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, although the claim at issue recited a mathematical formula,
the Supreme 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.”).
Nonetheless, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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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.
2019 Revised Patent Subject Matter Eligibility Guidance
The U.S. Patent and Trademark Office recently published revised
guidance on the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
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 i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
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PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
A practical application “appl[ies], rel[ies] on, or use[s] the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 54.
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 either:
(3) adds a specific limitation beyond the judicial exception
which is not “well-understood, routine, [or] conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.

ANALYSIS
Initially, we note that Appellant argues against the Examiner’s
rejection of the claims as ineligible for patenting as a group. See Appeal
Br. 8–10. We choose independent claim 4 for our analysis, and the
remaining independent and dependent claims stand or fall with claim 4.
See 37 C.F.R. § 41.37 (c)(1)(iv). For the following reasons, we sustain the
Examiner’s rejection of the claims as patent-ineligible.
As discussed below, we determine that in accordance with point (1) of
the Guidance referenced above, independent claim 4 recites at least one
judicial exception, including an abstract idea. More specifically, as
described in further detail, the abstract idea includes mathematical concepts.
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As set forth above, claim 4 recites the following: (A) “A method for
generator at least one random number for transmittal to a software program,
the method comprising the steps of”: (B) “providing a computer having a
CPU having an algorithm running thereon”; (C) “having the algorithm
create[] and thereafter input[] T0BIMT (Bit Index Management Threads)
within the CPU of the computer such that each T0BIMT continuously
increment iIncr (incremented integer indices) and decrement iDecr
(decremented integer indices) and creates and thereafter inputs T1BST (Bit
Setting Threads) and each thread continuously executes an Increment first
array element Q[B(iIncr mod N)] and Increment second array element
Q[B(iDecr mod N)] and the random number is compiled by the algorithm, the
random number being is an N bit integer comprised of bits b0, b1, . . . bN-1 and
where the bit bn is set to a zero bit value of the integer at array element
Q[Bn]”; and (D) “having the computer transmit the random number.”
Appeal Br., Claims App. (Claim 1). Here, each of claim 4’s recitations
reproduced above, including the claim’s preamble (A) as well as limitations
(B)–(D) in the claim’s body, generates a random number using rules and
inputs, and transmits the random number to another software program.
Generating a number is a concept relating to performing mathematical
calculations, which are mathematical concepts that are an abstract idea. See
MPEP § 2106.04(a)(2)(IV)(B); see Bancorp Servs., LLC v. Sun Life Assur.
Co. of Canada (U.S.), 687 F.3d 1266, 1270–71 (Fed. Cir. 2012) (where the
court identified a concept relating to performing mathematical calculations
as abstract idea).
In accordance with point (2) of the Guidance referenced above,
claim 4 does not recite any additional element that integrates the judicial
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exception into a practical application—i.e., something that “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 54. The claim only generically recites the use of certain
physical hardware—a computer and a CPU—and, thus, these components do
not meaningfully limit the claim. Further, in the Specification, Appellant
does not describe the claimed hardware in such a way as to indicate that the
hardware is anything other than generic. Thus, claim 4 does not affect an
improvement in any technology or technical field.
Therefore, claim 4 is directed to the above-discussed abstract idea,
and does not integrate the judicial exception into a practical application.
In accordance with points (3) and (4) of the Guidance referenced
above, claim 4 fails to recite a specific limitation beyond the judicial
exception which is not well understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the claimed hardware, as well as the functions performed by the claimed
hardware, are purely conventional. Specifically, claim 4 uses known,
generic components to perform their known, basic functions. Although,
arguably, the data processed and transmitted differs, the claim recites the
computer and CPU only at a high level of generality. In other words, here
the claim recites only well-understood, routine, and conventional functions.
See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016);
see also In re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
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possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”).
For the following reasons, when considered as an ordered
combination, claim 4’s hardware does not add anything that is not already
present when we consider the steps separately. Appellant premises its
argument for patent-eligibility of the claims on differences between its
random number generator and conventional random number generators:
Previous random number generators use conventional, well
understood[,] and routine (albeit very complex) mathematical
algorithms to generate random numbers that are not random at
all, [but] rather are pseudorandom in that the next random
number can always be calculated from the previous random
number generated simply by following the logic of the algorithm.
Pseudorandom number generators use a seed value as a base
input and thereafter use the logic of the algorithm to generate the
next “random number.” The random number so generated then
becomes the next seed value and the next random number is
generated and so on. If the seed value is known, the random
number that will be generated next can always be calculated.
Appeal Br. 8. Conversely, in short,
[t]he [claimed] random number generated is based strictly on the
instantaneous capture from the CPU . . .—and depend on the
myriad of tasks that the CPU is executing. Seed values play no
role in [Appellant’s] system, [because] the randomness comes
from the physical state, not the logical state, of certain bits within
the CPU of the computer. It is completely impossible to calculate
or predict the next random number to be generated from the
previous random number generated or even to replicate
[Appellant’s] methodology from one run to the next.
Id. at 9. As stated above, claim 4 recites a generic computer and a CPU.
The computer and CPU remain the same before, during, and after generation
of the random number. Thus, the claim amounts to nothing significantly
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more than instructions to apply the abstract idea with generic hardware, and
does not improve the computer or CPU. Accordingly, the claim recitations
are insufficient to transform the abstract idea into a patent-eligible invention.
See Alice, 573 U.S. at 225–26.
Therefore, based on the foregoing, we sustain the Examiner’s § 101
rejection of independent claim 4. Inasmuch as the remaining claims stand or
fall with claim 4, we also sustain the rejection of claims 2, 3, and 5–7.

DECISION
We AFFIRM the Examiner’s rejection of claims 2–7 under 35 U.S.C.
§ 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED