Quigley, Oliver S.C. et al.Download PDFPatent Trials and Appeals BoardJan 9, 202014209381 - (D) (P.T.A.B. Jan. 9, 2020) Copy Citation 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. 14/209,381 03/13/2014 Oliver S.C. Quigley SQR-10800;SQ-0177-US1 5007 129981 7590 01/09/2020 Mattingly & Malur, PC - Square 1800 Diagonal Road, Suite 210 Alexandria, VA 22314 EXAMINER RAVETTI, DANTE ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 01/09/2020 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): cbarnitz@mmiplaw.com ptomail@mmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte OLIVER S.C. QUIGLEY, JASON DOUGLAS WADDLE, BENJAMIN MICHAEL ADIDA, AND MAX JOSEPH GUISE ____________ Appeal 2019-002116 Application 14/209,381 Technology Center 3600 ____________ BEFORE DONALD E. ADAMS, JOHN G. NEW, and RYAN H. FLAX, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 6–21, 28, and 30–41. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Square, Inc.” (Appellant’s July 23, 2018 Appeal Brief (Appeal Br.) 3). Appeal 2019-002116 Application 14/209,381 2 STATEMENT OF THE CASE Appellant discloses that a user (i.e., a purchaser) initiating the financial transaction may need to enter a passcode, such as a personal identification number (PIN) or a password, on a passcode entry interface to authenticate and/or authorize the financial transaction. The passcode entry interface may solicit the user to identify a sequence of symbols/digits representing the passcode. As the user enters the passcode, the electronic device can encrypt the passcode to protect against discovery of the passcode by a malicious third party. One security consideration in designing a passcode entry system is whether a memory snapshot of the passcode entry device can compromise the passcode entered by the user. The disclosed technique involves a method of encrypting portions (e.g., characters, digits or alphabets) of the passcode entered by the user separately, and accumulating the encrypted portions into a cumulative encryption string (e.g., a single encrypted digital string). Hence, the disclosed technique protects the data flow through the memory of the passcode entry device such that any given memory snapshot can reveal at most a single portion (e.g., a character, a digit, or an alphabet) of the passcode. (Spec.2 ¶ 13–14.) Appellant further discloses that [h]omomorphic encryption is a form of encryption that allows specific type(s) of computational operation(s) to be carried out on ciphertexts (i.e., results of encryption) and obtain an encrypted result which, when decrypted, matches the result of the same computational operation(s) performed on the plaintext (i.e., inputs to the encryption). The specific type of computational operation may be referred to as the homomorphic property of the homomorphic cryptosystem. A homomorphic encryption scheme may preserve the homomorphic property for only multiplication, only addition, or for both addition and multiplication. For example, the unpadded RSA and the ElGamal are cryptosystems that 2 Appellant’s March 13, 2014 Specification. Appeal 2019-002116 Application 14/209,381 3 preserve the homomorphic property for multiplication. A cryptosystem refers to a suite of mechanisms/processes for implementing a particular form of encryption and decryption, including, for example, a key generation mechanism, an encryption mechanism, and a decryption mechanism. (Id. ¶ 17.) Appellant’s independent claim 6 is reproduced below: 6. A method of encrypting a passcode, the method comprising: presenting, by a processor of a computing device, a passcode entry interface on a display associated with the computing device; receiving, by the processor, from a user input device of the computing device, an input as an indication of a first portion of the passcode; calculating, by the processor, a first plaintext value based at least in part on the indication, wherein the first plaintext value represents a first encoded portion of the passcode; encrypting, by the processor, the first plaintext value into a first ciphertext using a homomorphic encryption system that preserves a homomorphic property for multiplication; updating, by the processor, a cumulative encryption string to aggregate the first ciphertext corresponding to the first encoded portion into the cumulative encryption string, the cumulative encryption string previously computed from at least one previously received portion of the passcode, the updating the cumulative encryption string comprising multiplying the cumulative encryption string by the first ciphertext to generate an updated cumulative encryption string in accordance with the homomorphic property of the homomorphic encryption system; and transmitting, by the processor, over a network to a destination device, a message including the updated cumulative encryption string. (Appeal Br. 36.) Appeal 2019-002116 Application 14/209,381 4 Ground of rejection before this Panel for review: Claims 6–21, 28, and 30–41 stand rejected under 35 U.S.C. § 101. ISSUE Does the preponderance of evidence of record support Examiner’s finding that Appellant’s claimed invention is directed to patent-ineligible subject matter? 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 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 Appeal 2019-002116 Application 14/209,381 5 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, 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 (Gottschalk, 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 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 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 Gottschalk and Parker); 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 Appeal 2019-002116 Application 14/209,381 6 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, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“Revised 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 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)). See Revised Guidance, 84 Fed. Reg. at 54–55. 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 Revised Guidance, 84 Fed. Reg. at 51. Appeal 2019-002116 Application 14/209,381 7 ANALYSIS Applying the Revised Guidance to the facts on this record, we find that Appellants’ claims are directed to patent-eligible subject matter. The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts, (2) certain methods of organizing human behavior such as fundamental economic practices, and (3) mental processes. On this record, Examiner finds that the requirements for “calculating, by the processor, a first plaintext value based at least in part on the indication, wherein the first plaintext value represents a first encoded portion of the passcode” and “encrypting, by the processor, the first plaintext value into a first ciphertext using a homomorphic encryption system that preserves a homomorphic property for multiplication,” as set forth in Appellant’s claimed invention, are directed to an abstract idea, specifically mental processes (see Non-Final Act.3 3–4). We agree. Our reviewing court has held that collecting, analyzing, and displaying data is abstract. See generally, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“We have explained that claims focused on ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ are directed to an abstract idea”). Therefore, we find no error in Examiner finding that the steps of “presenting, by a processor of a computing device, a passcode entry 3 Examiner’s December 28, 2017 Non-Final Office Action. Appeal 2019-002116 Application 14/209,381 8 interface on a display associated with the computing device,” “receiving, by the processor, from a user input device of the computing device, an input as an indication of a first portion of the passcode,” and “transmitting, by the processor, over a network to a destination device, a message including the updated cumulative encryption string,” as set forth in Appellant’s claimed invention, are abstract concepts (see Non-Final Act. 4 (emphasis omitted)). Having found that Appellant’s claims are directed to a mental process, Examiner further finds that the requirement in Appellant’s claimed invention that requires updating, by the processor, a cumulative encryption string to aggregate the first ciphertext corresponding to the first encoded portion into the cumulative encryption string, the cumulative encryption string previously computed from at least one previously received portion of the passcode, the updating the cumulative encryption string comprising multiplying the cumulative encryption string by the first ciphertext to generate an updated cumulative encryption string in accordance with the homomorphic property of the homomorphic encryption system . . . represent hardware for the abstract idea and/or insignificant post-solution activity . . . [and] do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. (Non-Final Act. 4–5 (emphasis omitted); see generally Appeal Br. 40–44 (reciting similar limitations in Appellant’s independent claims 28, 30, and 36).) We are not persuaded. “In cases involving software innovations, th[e] inquiry often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Appeal 2019-002116 Application 14/209,381 9 System, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (internal quotation marks omitted)); see Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019) (“software inventions [were found] to be patent-eligible where they have made non-abstract improvements to existing technological processes and computer technology”). On this record, Appellant discloses: A challenge associated with encrypting multiple portions of a passcode is that delivery of multiple encrypted files puts a burden on the network used for delivery. Further, decryption of the multiple encrypted files is memory and processor intensive and thus may necessitate more memory and computing resources at the receiving device. The disclosed technique overcomes these challenges by encrypting each portion (e.g., a symbol or digit) of the passcode using a homomorphic cryptosystem and aggregating the encrypted portions into a master encryption file (i.e., the cumulative encryption string). The cumulative encryption string includes only a single layer of encryption despite including multiple separately encrypted portions. The electronic device can utilize the homomorphic property of the homomorphic cryptosystem to combine multiple encrypted portions into a final cumulative encryption string, thus reducing the burden on the network and the receiver-side memory and processor. The disclosed technique enables a single encrypted file to be sent from the electronic device to the card reader without having to send multiple encryption files for each symbol/digit of the passcode. Further, the electronic device can encrypt each individual symbol/digit as the user enters the symbol/digit, thus preventing discovery of the passcode by a malicious third party. (Spec. ¶ 16.) Thus, as Appellant explains, “by providing a cumulative encryption string, the efficiency of the system performing the encryption/decryption is improved and the efficiency of the network is also Appeal 2019-002116 Application 14/209,381 10 improved because only a single cumulative encryption string is transmitted over the network, rather than transmitting multiple portions or segments of the passcode separately” (Appeal Br. 26). In this regard, we find the analysis in Crypto Research, LLC v. Assa Abloy, Inc., 236 F.Supp.3d 671 (E.D.N.Y. 2017) informative. As Crypto explains: Two district court cases are instructive. In this district, in Paone v. Broadcom Corporation, 2015 WL 4988279, the Honorable Brian Cogan took up the question of whether claims describing computer-implemented methods of encrypting data may be directed to patent-eligible subject matter. As an initial matter, Judge Cogan opined that a “patent on a method of data encryption is not per se invalid, as long as it is specific enough.” Id., at *5. In rejecting the defendants’ argument that the patent described the abstract idea of “authenticating authorship” by “executing a cryptographic operation using a cryptographic key,” Judge Cogan characterized the claims as an invention that improved upon existing block cipher technology by “chang[ing] the encryption key for each data block, based on additional, randomly generated data.” Id., at *4. Judge Cogan concluded that the patent did not merely involve the encryption of data, but rather “claims a specific method of doing so,” and was thus patent eligible. Id., at *7. In TQP Dev., LLC v. Intuit Inc., No. 2:12-cv-180-WCB, 2014 WL 651935 (E.D. Tex. Feb. 19, 2014), the Honorable William Bryson determined that a patent of a use of a predetermined characteristic of data being transmitted to trigger the generation of new key values for the use in encryption and decryption in a data communication system was patent eligible. Id., at *3, *7. Judge Bryson noted that limitations in the claim so narrowed it that the preemptive effect was “very much diminished.” Id., at *4. “Because the claim [was] drawn to a very specific method of changing encryption keys, it contain[ed] an ‘inventive concept,’ . . . and [was] a far cry from something that could fairly be characterized as a ‘basic tool[ ] Appeal 2019-002116 Application 14/209,381 11 of scientific and technological work.’” Id. (citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972)). See Crypto, 236 F.Supp.3d at 683–684. In sum, on this record, we find that Appellant’s claims integrate the judicial exception into a practical application that improves existing technological processes and computer technology. This concludes the eligibility analysis on this record. See Revised Guidance, 84 Fed. Reg. at 51. CONCLUSION The preponderance of evidence of record fails to support Examiner’s finding that Appellant’s claimed invention is directed to patent ineligible subject matter. The rejection of claims 6–21, 28, and 30–41 under 35 U.S.C. § 101 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 6–21, 28, 30–41 101 Eligibility 6–21, 28, 30–41 REVERSED Copy with citationCopy as parenthetical citation