Swisscom AG

Patent Trials and Appeals Board

Sep 16, 2020

2019003968 (P.T.A.B. Sep. 16, 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.
15/457,606 03/13/2017 Thomas Seiler 24849US03 4509
23446 7590 09/16/2020
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
LIPMAN, JACOB
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS SEILER and ANDREAS JAROSCH
____________________

Appeal 2019-003968
Application 15/457,6061
Technology Center 2400
____________________

Before MARC S. HOFF, BARBARA A. PARVIS and JASON J. CHUNG,
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 21-38.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s invention system and method to reduce detectability of an
encryption key used in a communication network. One or more bits,
determined at random, are selected for the introduction of bit errors (by
inverting the bits) into the message prior to transmission. Abstract.

1 Appellant states that the real party in interest is Swisscom AG. Appeal. Br.
2.
2 Claims 1-20 have been cancelled.
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Claim 21 is reproduced below:
21. A method comprising:
selecting one or more bits in an encrypted message; and
applying an adjustment to the encrypted message prior to
transmitting the message to introduce bit errors in the message;
wherein:
the adjustment is configured to affect the one or
more selected bits; and the one or more bits are selected
and the adjustment is configured such that there is no
sequence of consecutive bits in the encrypted message
that has a length that is greater than or equal to a defined
threshold value and that is free of bit errors.

Claims 21-38 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Non-Final Act. 3.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Dec. 31, 2018, the Reply Brief (“Reply Br.,” filed
Apr.22, 2019) and the Examiner’s Answer (“Ans.,” mailed Feb. 21, 2019 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?
3. Do the claims recite additional elements that transform the nature of
the claims into a patent-eligible application of an abstract idea?

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 182 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.
In January 2019, the PTO published revised guidance on the
application of § 101. USPTO’s January 7, 2019 Memorandum, 2019
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Revised Patent Subject Matter Eligibility Guidance (“Memorandum”).3
84 Fed. Reg. 50. 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
SECTION 101 REJECTION
Appellant argues the rejected claims as a single unit. We select claim
21 as representative of the claims under appeal, pursuant to our authority
under 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 21 recites the following limitations. Aspects of
the claimed abstract idea are indicated in italics.
21. A method comprising:
selecting one or more bits in an encrypted message; and
applying an adjustment to the encrypted message prior to
transmitting the message to introduce bit errors in the message;
wherein:
the adjustment is configured to affect the one or more
selected bits; and
the one or more bits are selected and the adjustment is
configured such that there is no sequence of consecutive bits in
the encrypted message that has a length that is greater than or
equal to a defined threshold value and that is free of bit errors.

These limitations, under the broadest reasonable interpretation,
constitute a plurality of steps to “introduce bit errors” into a message by
changing (adjusting) certain selected bits of a message, such that no
sequence of consecutive bits beyond a threshold length is free of a bit error.
The Memorandum recognizes that certain groupings of subject matter
have been determined 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
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performed in the mind.4 We determine that the claim steps — selecting one
or more bits of a message, adjusting those bits (which introduces bit errors

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.”);
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
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into the message), the bits to be adjusted selected such that no sequence of
consecutive bits longer than a certain threshold value is free of a bit error --
constitute steps that may be performed in the mind. We regard the step of
transmitting the adjusted message to constitute extra-solution activity.
Appellant argues that none of the claims is directed to an abstract
idea. Reply Br. 8. Appellant contends that the steps of the claimed invention
“are not and cannot be performed in the human mind.” Reply Br. 11.
Appellant argues that each of the claims applies “a particular scheme for
manipulating bits in encrypted messages,” and that “manipulating messages
and transmitting them is something that a human cannot do.” Appellant’s
arguments are not persuasive. First, representative claim 21 recites no
limitations that cannot be performed in the human mind. Second,
manipulating and transmitting messages are, under the broadest reasonable
interpretation of the terms, steps performable by a human being.
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.

INTEGRATED INTO A PRACTICAL APPLICATION
We next evaluate whether the claims integrate the identified abstract
idea of comparing attributes from transaction information against norms of
behavior, in order to identify users who diverge from such norms as

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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potential problem users, 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 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
use of the abstract idea to a particular technological
environment.
See Memorandum, 84 FR at 55; MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant argues that each of the appealed claims “sufficiently
integrate and limit such exception [i.e., the identified abstract idea] into a
particular practical application – namely, for use in securing encrypted
messages for transmittal between communication devices.” Reply Br. 13.
Appellant’s argument is not persuasive. Appellant presents no evidence in
support of this argument, and identifies no additional element or elements in
the claims that would integrate the exception into a practical application.
Appellant contends that even if the claimed invention were
characterized as a mental process, as the Examiner determined, each of the
claims “goes well beyond a mere ‘abstract idea’ because each claim “recites
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a specific and practical application for securely communicating data in
networks.” Reply Br. 8. We are not persuaded by Appellant’s argument.
Representative claim 21 recites no technological structure. The entirety of
the claim limitations may be performed within the human mind, or by a
person using pencil and paper.
In response to Appellant’s argument (Reply Br. 7) that the claims do not pre-
empt all possible implementations of an abstract idea, we note that lack of
preemption will not demonstrate patent eligibility. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).We conclude that the claims do not recite additional
elements that integrate the recited abstract idea of introducing bit errors into
an encrypted message, by adjusting certain bits of the message, into a
practical application under the considerations set forth by the Supreme Court
and the Federal Circuit.
INVENTIVE CONCEPT
Last, we consider whether claims 21-38 express an inventive concept,
i.e., whether any additional claim elements “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, and conventional activity in
the field” or “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality.” Memorandum, 84 Fed. Reg. at 50, 56.
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“The question of whether a claim element or combination of elements
is well-understood, routine, and conventional to a skilled artisan in the
relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018).
Appellant argues that the claims recite an inventive concept including
specific limitations that are not well-understood, routine, or conventional,
because the Examiner did not apply prior art against the claims. Reply Br. 9,
15. We are not persuaded by this argument. Subject matter eligibility under
35 U.S.C. § 101 is an inquiry distinct from the question of anticipation or
obviousness. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1315 (Fed. Cir. 2016). The presence or absence of a prior art rejection does
not impact a determination concerning patent eligibility under § 101.
Further, to establish patent eligibility through the showing of an
inventive concept, Appellant must identify additional elements, beyond the
recited abstract idea, that are not well-understood, routine or conventional.
Appellant has not made such a showing.
Appellant argues that the Examiner failed to individually address each
of the dependent claims, each of which is alleged to add limitations to the
base claim which amount to significantly more than any applicable judicial
exception. Reply Br. 16. Appellant’s argument is not persuasive. Appellant
presents no separate argument directed to any dependent claim being patent-
eligible. In the absence of such separate argument, the Board has selected
independent claim 21 as a representative claim, and claims 22-38 stand or
fall under § 101 with claim 21. See 37 CFR 41.37(c)(1)(iv).
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SUBJECT MATTER ELIGIBILITY - CONCLUSION
We conclude that the claims recite a process of introducing bit errors
into an encrypted message by adjusting certain bits of the message, which
we determine to constitute a mental process, one of the categories of
invention found by the courts to constitute an abstract idea.
We further conclude that the claims do not integrate the identified
abstract idea into a practical application.
We further conclude that the claimed invention does not recite
additional claim elements that transform the nature of the claim into a
patent-eligible application of an abstract idea.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 21-38.

CONCLUSIONS
1. The claimed invention recites an abstract idea.
2. The recited abstract idea is not integrated into a practical
application.
3. The claims do not recite additional elements that transform the
nature of the claims into a patent-eligible application of an abstract idea.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
21-38 101 Patent Eligible
Subject Matter
21-38
Overall
Outcome

21-38

ORDER
The Examiner’s decision to reject claims 21-38 under 35 U.S.C. § 101
is affirmed.
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