Luc Boivin et al.

Patent Trials and Appeals Board

Mar 31, 2020

13731749 - (D) (P.T.A.B. Mar. 31, 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.
13/731,749 12/31/2012 Luc Boivin 20120804 2611
168881 7590 03/31/2020
VERIZON - SCLC
VERIZON PATENTING GROUP
1300 I STREET NW
SUITE 500 EAST
WASHINGTON, DC 20005
EXAMINER
NGHIEM, MICHAEL P
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
03/31/2020 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):
VZPatent168881@verizon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUC BOIVIN, JAY J. CAPPY, BRIAN A. FLECK, JEAN F.
DUBOIS, ALESSANDRO M. MEYNARDI,
CHUNG PING CHENG, and MARTIN DOEHRING
____________

Appeal 2019-001523
Application 13/731,749
Technology Center 2800
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 4–12, 14–17, 25, and 27–31 under 35
U.S.C. § 101 as directed to patent ineligible subject matter. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention relates to systems and methods that employ devices at
telecommunications subscribers’ premises to automatically detect and report

1 Appellant identifies Verizon Communications Inc. as the real party in
interest (Appeal Br. 3).
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power outages and restorations in a manner sensitive to subscriber privacy
concerns (Cl. 1, 12; Spec. ¶ 14).
Independent claim 1, reproduced below from the Claims Appendix to
the Appeal Brief, is illustrative of the subject matter on appeal.
1. A method, comprising:
receiving, by a network management service device associated
with a network services provider and from a network terminal
device installed at a subscriber premise, an alert that
the network terminal device has lost primary power, wherein
the alert includes a network terminal identifier;
determining, by the network management service device,
that a power outage within a power grid has occurred, wherein
the determining is based on receiving the alert and other
alerts from other network terminal devices;
sending, by the network management service device and
based on the determining, an outage event indication to an
equipment server device, wherein the outage event
indication includes the network terminal identifier;
associating, by the equipment server device, the network
terminal identifier with a power provider equipment identifier,
wherein the associating is performed using a reference database
of network terminal identifiers and power provider equipment
identifiers, and wherein the associating comprises:
receiving, from the network management service device,
a subscriber data table, the subscriber data table associating:
first hash values derived, using a particular hash function,
from physical addresses of network terminal device locations,
and
the network terminal identifiers for network terminal
devices at the network terminal device locations, storing the
subscriber data table,
receiving, from an outage and restoration management
server device associated with a power provider, an equipment
table, the equipment table associating:
second hash values derived, using the particular hash
function, from physical addresses of power grid customers, and
the power provider equipment identifiers, wherein each
of the power provider equipment identifiers correspond to
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multiple addresses of the physical addresses of the power grid
customers, storing the equipment table, and
matching the first hash values in the subscriber data table
to the second hash values in the equipment table to create the
reference database; and
outputting, by the equipment server device and in
response to the outage event indication, a notification of the
power outage to the outage and restoration management server
device, the notification including the power provider equipment
identifier, wherein the notification is generated using the
reference database and does not include information for a
power provider to identify a service provider customer at the
subscriber premise.

The Examiner maintains the rejection of claims 1, 4–12, 14–17, 25,
and 27–31 under 35 U.S.C. § 101 as being directed to patent ineligible
subject matter. The Examiner’s findings and conclusions regarding the
§ 101 rejection are located on pages 7 to 10 of the Final Action.
The Examiner determines that claims 1, 12, and 25 recite the abstract
idea of “determining, by the network management service device, that a
power outage within a power grid has occurred, wherein the determining is
based on receiving the alert and other alerts from other network terminals”
(Final Act. 7). The Examiner finds that this step involves collecting data,
analyzing it and displaying certain results of the collection and analysis
(Final Act. 7). The Examiner finds that the associating of the network
terminal identifier with a power provider equipment identifier, wherein the
associating is performed using a reference database of network identifiers
and power provider identifiers is merely an abstract idea that involves
collecting data, analyzing it and displaying certain results of the collection
and analysis (Final Act. 7–8). The Examiner finds that the claims include
associating first hash values derived, using a particular hash function, from
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physical addresses of the network terminal device locations, and the network
terminal identifiers for network terminal devices at the network terminal
device locations involves organizing information through mathematical
correlations and collecting, analyzing and displaying data (Final Act. 8).
The Examiner finds that associating second hash values derived, using the
particular hash function, from physical addresses of power grid customers,
and the power provider equipment identifiers, wherein each of the power
provider equipment identifiers corresponds to multiple addresses of the
physical addresses of the power grid customers recites a concept of
organizing information through mathematical concepts (Final Act. 8). The
Examiner finds that matching the first hash values in the subscriber data
table to the second hash values in the equipment table to create a reference
database recites an abstract idea based on collecting data, analyzing it and
displaying certain results (Final Act. 8). The Examiner finds that the steps
of selecting, based on the subscriber data structure, a physical address that is
associated with the one of the multiple network identifiers, generating a first
hash value based on the physical address that corresponds to the one of
multiple network identifiers, and determining whether a power outage within
the power grid has occurred, and relating a power provider equipment
identifier with second hash values derived from physical addresses of power
grid customers recite an abstract idea of collecting and comparing known
information or collecting data, analyzing it and displaying results (Final Act.
8). The Examiner finds that these steps recite mental processes that can be
transformed in the human mind or by a human using a pen and paper (Final
Act. 8).

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STATEMENT 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 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 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.
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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
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. 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.
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The PTO published revised guidance on the application of § 101. USPTO’s
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance (“Memorandum”). 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.
OPINION
Step 1
Claim 1 recites a method comprising several steps. Claim 12 recites a
system comprising structural limitations of a first server and a second server
each having a memory and a processor. Claim 25 recites non-transitory
computer readable medium that includes a series of steps that makes up the
algorithm used to perform the method.
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There is no dispute that independent claims 1, 12, and 25 each recite a
statutory class of invention. Cf. Final Act. 7 to 10, Appeal Br. 21 to 28. We
find that Step 1 of the statutory subject matter analysis is met.

Step 2A Prong 1: Judicial Exception
Following the Memorandum, we now determine whether the claims
recite a judicial exception. In light of the guidance, we agree with the
Examiner that the claims 1, 12, and 25 include an abstract idea that uses
mathematical concepts vis a vis the hash function. (Final Act. 8). Claim 1
recites “first hash values derived, using a particular hash function, from
physical addresses of network terminal device locations” and “second hash
values derived, using the particular hash function, from physical addresses
of the power grid customer”. Claim 12 recites “generate a first hash value
based on the physical address” and “second hash values.” Claim 25 recites
“first hash values derived, using a particular hash function . . .” and “second
hash values derived, using the particular hash function . . .”
The Specification describes hash functions as an algorithm that
cryptographically generates hash values (Spec. ¶ 24). The Specification
describes hash values as an encryption based on a particular algorithm
(Spec. ¶ 24). The hash function may provide a unique identifier for the
physical address without allowing reverse calculations to determine the
physical address (Spec. ¶ 24). The Specification describes that Secure Hash
Algorithm (SHA)-1 or MD5 algorithm may be used to generate hash values
(Spec. ¶ 55). The hash function performs mathematical concepts on the data
to generate hash values. Claims 1, 12, and 25 all recite mathematical
concepts, which is one of the categories of abstract ideas.
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Claims 1, 12, and 25 also recite a method that can be performed using
mental processes, which is another of the categories of abstract ideas. In
particular, the Examiner finds that the steps recited in claims 1 and 25 and
the transformations performed by the processor and memory units recited in
claim 12 can be transformed in the mind of a human or a human using pen
and paper (Final Act. 9). We agree.
Claim 1, for example, recites the following steps: receiving an alert
that of a power outage where the alert includes a network terminal identifier,
determining that a power outage has occurred from other network terminal
devices, sending an outage event indication to an equipment server device
including the network terminal identifier, associating the network terminal
identifier with a power provider equipment identifier using a reference
database wherein the associating includes receiving a subscriber data table
where a first hash value representing the physical address of the network
terminal device location is associated with network terminal identifier for
the network terminal devices and storing the subscriber data table, receiving
an equipment table which associates a second hash value that represents the
physical addresses of the power grid customers and the power provider
equipment identifiers and storing the equipment table, matching the first
hash values in the subscriber data table to the second hash values in the
equipment table to create the reference database, and outputting a
notification generated using the reference database of power outage to the
power provider without identifying a service provider customer. The claim
may recite using servers to send and receive the various data but this could
also be done in the human mind or by a human using pen and paper. The
claim does not specify the number of customers or other data that are being
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compiled in this database, so it is possible that just a few pieces of data may
need to be compiled in the tables.
We find that claims 1, 12, and 25 recite mathematical concepts and
mental processes, and therefore recite an abstract idea. We now proceed per
the guidance to Step 2A, Prong 2.

Step 2A Prong 2: Practical Application
We next determine if the claim is tied to a practical application.
Appellant contends that the claims are not directed to an abstract idea
because the Examiner’s analysis picks the claim apart and finds pieces of it
are directed to an abstract idea, but fails to address the claim as a whole
(Appeal Br. 21). Appellant argues that the Examiner has not shown that the
claims as a whole are directed to exclude subject matter (Appeal Br. 22).
Citing Enfish v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Appellant
contends that the claim as a whole is directed to an improvement in
computer functionality: employing devices at telecommunications
subscribers’ premises to automatically detect and report power outages and
restorations in a manner sensitive to subscriber privacy concerns (Appeal Br.
22). Appellant argues that claim 1, 12, and 25 are directed to a specific
implementation of a solution to a problem in the software arts (Appeal Br.
23). Appellant contends that the Examiner failed to identify a focus of claim
1 under the “directed to” inquiry of Step 2A (Appeal Br. 24). Appellant
argues that the method, software and system provide an unique configuration
that allows automated alerts from network terminals to be used for power
outage notifications, which eliminates delays in detecting and outage and
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isolating a source of the outage, while alleviating subscriber privacy
concerns (Appeal Br. 26).
The Examiner treats the claims as a whole in assessing whether the
claims recite an abstract idea. The Examiner properly addresses whether the
limitations in the claim recite judicial exceptions such as abstract ideas. The
Examiner’s analysis, however, address all the limitations in the claims and
thus treats the claims as a whole (Final Act. 7–10).
We are unpersuaded by Appellant’s argument that the claimed method
and its use in the system or computer readable medium improves the
functionality of a computer as in Enfish. In Enfish, the court found the
claims were not directed to an abstract idea because the claims were directed
to a specific improvement in the way computers operate, embodied in self-
referential table. Enfish, 822 F.3d at 1336. The Enfish claims were directed
to a data storage and retrieval system and the court found that claims were
directed to a specific form of storing data in a computer database (i.e., the
self-referential table). Enfish, 822 F.3d at 1336-37. In other words, the self-
referential table in Enfish changed storage system in the computer.
In contrast, the present claims do not change how the computer
system operates or stores data in memory. Rather, the claims merely require
that some of the data is transformed using a hash function and then stored.
The hash function merely provide a unique identifier for another piece of
data (e.g., the subscriber’s physical address) (Spec. ¶ 24). In other words,
the data is merely stored in a generic manner but under a different identifier.
The functioning of the computer is not changed by using the method of
claim 1, the system of claim 12 or the computer readable medium of claim
25. Rather, the computer in the present invention is used merely as a tool to
receive, store and output data.
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Although Appellant contends that the enhanced privacy achieved by
masking the subscriber’s physical address from the data using a hash
function improves the functionality of the computer, we disagree. (Appeal
Br. 22). The enhanced privacy afforded to a subscriber does not change the
functionality of a computer. Rather, the computer functions in the same way
according to the rules set out in the software. In other words, the enhanced
privacy may be a benefit to subscribers where that is a concern, but that does
not improve the computer functionality. The computer is being used simply
as a tool to run the software loaded therein.
Moreover, the Examiner correctly finds that the enhanced privacy
argued by Appellant is not recited in the claims (Ans. 11). The Examiner
finds that “alleviating subscriber privacy concerns” is not disclosed in the
Specification as an improvement over prior art and it is not recited in the
claims (Ans. 9). Appellant concedes that the claims do not recite
“alleviating subscriber privacy concerns” (Reply Br. 4). Appellant does
argue that the hash values and combining of the data tables enables the
privacy argued (Reply Br. 4). Even if Appellant is correct that the
manipulation of the data and hash values permit the subscriber privacy, such
merely uses a computer as a tool to run the software that recites an abstract
idea based upon mathematical concepts or could be performed using mental
processes. Appellant does not address the Examiner’s finding that the claim
could be performed by mental processes. The servers and terminal devices
are generic computer equipment that receives, stores and transmits data,
which the claim uses for that purpose.
The Examiner analogizes the claimed subject matter in claims 1, 12
and 25 to collecting data, analyzing data and displaying certain results of the
collection and analysis in Electric Power Group LLC v. Alstom S.A., 830
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F.3d 1350 (Fed. Cir. 2016) (Final Act. 7–10). We agree. Claims 1, 12 and
25 each recite acquiring data regarding the status of power in a premise,
using a hash function to generate a hash value which is part of the tabulated
data, and outputting a message that an outage occurred at a particular
location. Similarly, the claims in Electric Power Group involved receiving
data, detecting and analyzing data, and displaying the analysis using generic
computer equipment. Electric Power Group, 830 F.3d at 1352, 1355. As
noted by the court in Electric Power Group and similar to the facts presented
in this appeal, the claims do not require a new source or type of information
or new techniques for analyzing it. Id. at 1355. The claims use a hash
function to generate a hash value for some of the data, but that does not
change the data being reported and monitored. The hash function provides a
unique identifier for a particular piece of data (e.g., the subscriber address)
but that does not change the underlying data that is being acquired and
analyzed.
We find that the abstract ideas recited in the claims are not integrated
into a practical application.

Step 2B: Significantly more than Judicial Exception
We now address whether the additional limitations in the claims
amount to significantly more than the judicial exception. The Examiner
finds that the additional limitations recited by claims 1, 12, and 25 do not
amount to significantly more than the abstract idea (Final Act. 10). The
Examiner finds that the server devices, processors, memories, non-transitory
computer readable medium, and network terminal devices are well
understood, routine and conventional features known in the industry (Final
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Act. 10). The Examiner finds that the alerts/sending data/notifications are
insignificant extra-solution activities (Final Act. 10).
Appellant argues that the Examiner improperly relies on Appellant’s
own parent application (i.e., Meynardi US 2012/0109545) to show that
employing telecommunication devices at a subscriber’s premises to
automatically detect and report power outages and restorations is well
understood, routine and conventional (Appeal Br. 27).
We agree with the Examiner that the additional limitations (e.g.,
servers, memories, processors) in the claims are conventional computer
equipment and fail to render the claimed invention more than the judicial
exception. Although the Examiner does cite to Meynardi, the Examiner
does not rely on that citation alone (Ans. 7). Additional references are cited
to show that the additional features are conventional (Ans. 7). Appellant
contends that the Examiner provides additional reference citations but the
Examiner does not address the complete feature of claim 1 that recites:
outputting, by the equipment server device and in response to
the outage event indication, a notification of the power outage
to the outage and restoration management server device, the
notification including the power provider equipment identifier,
wherein the notification is generated using the reference
database and does not include information for a power provider
to identify a service provider customer at the subscriber
premise.
(Reply Br. 3).
Appellant does not, however, show that the Examiner’s finding that the
references to Ives, Johnson, and Yaney teach that it is known and
conventional to use network terminal devices communicating power outages
with server devices (Ans. 6–7; Reply Br. 3). Appellant argues that
outputting a notification that does not include information for a power
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provider to identify a service provider customer at the subscriber premise
provides a technical improvement over prior art techniques that are not
sensitive to subscriber privacy concerns (Reply Br. 3). The greater privacy
provided by the method does not change that using servers, processors and
network terminal devices are conventionally used and do not add
significantly more to the statutory subject matter analysis. The privacy
aspect of the claim does not change the analysis noted above that the
computer system is being used as a tool to run the method but the
functionality of the computer is not changed by the method.
On this record, we affirm the Examiner’s § 101 rejection of claims 1,
4–12, 14–17, 25, and 27–31.

CONCLUSION

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4-12, 14-17,
25, 27-31
101 Eligibility 1, 4-12,
14-17,
25, 27-31

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