The Government of the United States of America, as Represented by the Secretary, Department of Homel

Patent Trials and Appeals Board

Jul 28, 2020

2019005990 (P.T.A.B. Jul. 28, 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.
14/487,598 09/16/2014 David Maher DHS-088 7564
15614 7590 07/28/2020
U.S. Department of Homeland Security, S&T/OGC
Assistant General Counsel, Intellectual Property
Mail Stop 0205
245 Murray Lane
Washington, DC 20528
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
Kelly.Hyndman@hq.dhs.gov
Megan.Smith1@associates.hq.dhs.gov
lavanya.ratnam@hq.dhs.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MAHER
Appeal 2019-005990
Application 14/487,598
Technology Center 3600

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
This is a decision on Appellant’s Request for Rehearing.1 Appellant’s
Request for Rehearing is filed under 37 C.F.R. § 41.52(a)(1) requesting that
we reconsider our Decision of May 1, 2020, wherein, inter alia, we affirmed
the Examiner’s rejection of claims 1–27 under 35 U.S.C. § 101. We have
reconsidered our Decision in light of Appellant’s comments in the request,
and have found no errors. We, therefore, decline to change the Decision.
Appellant’s request is denied.

1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1) (2018).
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Appellant’s Contentions
1. Appellant contends that as to the Decision the Board erred because:
Appellant argued that the claim elements, taken as a
whole, are not directed to organizing human behavior. If the
claim elements taken as a whole were found not to be directed to
organizing human behavior, then the claim’s rejection under
§101 would have been reversed. The Decision, however,
contains no record that the Board analyzed this key legal factor
in reaching its conclusion.
The following portion of Appellant’s Brief demonstrates
. . . that the overlooked argument was made by Appellant:
[t]he question of whether the claims at issue are
directed to the judicially recognized exception of
“organizing human behavior” (as asserted albeit
incorrectly by the Examiner) is tested by analyzing
the claim as a whole. MPEP § 2106.04. The test is
not conducted on an elemental level as proposed by
the Examiner.
To find a claim ineligible under Step II the
Examiner must analyze all the claim elements in
combination under its BRI. Had the Examiner ...
done this analysis, he would have realized that for
example, claim 1 recites among other technical
features:
• “Encapsulated” information “to escort the
information through a firewall”,
• Creating record associated with “a unique
identifier;” “information that bio-identifies the
user;” or “an indication of a determination that
results from the vetting.”
• Generating an electronic receipt.
All of these features clearly indicate that the
claimed subject matter is not “directed to a judicial
exception”
The Board’s Decision (from the lower portion of page 18
to the upper portion of page 20) included an analysis of Alice
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step 2A prong 2, but this analysis was not informed by
Appellant’s Alice step 2A prong 2 argument - instead, the
Board analyzed Appellant’s step 2B argument, apparently
overlooking Appellant’s actual step 2A prong 2 argument. The
following excerpt from page 18 of the Decision clearly states that
the Board’s deliberation of step 2A prong 2 began by jumping
down to Appellant’s arguments about how “the Examiner failed
to meet his burden under Step 2B”:
D.3. 2019 Revised Guidance Step 2A, Prong 2
Having determined that claim 1 recites an
abstract idea, we now turn to whether claim 1 is
directed to that abstract idea, or instead integrates
the judicial exception into a practical application.
Appellant contends:
As an initial matter, the Examiner
failed to meet his burden under Step 2B
because he has failed to consider the elements
Appellant respectfully submits, on at least the facts
presented above, that the Board overlooked and did not respond
to Appellant’s argument that the claim elements taken as a whole
are not directed to organizing human activity.
Req. Reh’g 2–3 (citing Appeal Br. 19, 21; Dec. 18), Appellant’s emphasis
omitted, panel’s emphasis added.
2. Appellant also contends that as to the Decision, the Board erred
because:
Another argument that the Board overlooked, and which
could have resulted in a different deliberative conclusion, is
Appellant’s argument that the rejection should not be
maintained because it fails to provide a sufficient evidentiary
basis, i.e., that the factual basis for its findings should be
presented in writing per the Berkheimer memo. Appellant
wrote:
“... necessarily looks to the interrelationship of the
elements including those that are purported to recite
judicial exceptions. MPEP § 2106.04(a)(1)(II)
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Application 14/487,598
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endorses this,” and that Appellant had “pointed out
in the Response to Final that the Berkheimer Memo
supported Appellant's position inasmuch as it
required the Examiner to provide a factual basis for
Step 2B, which this Examiner did not do.”
Appellant notes that ... “[c]onsistent with the
Berkheimer memo, Applicant hereby request the
Examiner provide the required written factual basis
2B analysis including providing a written
explanation of his position on an element by
element analysis and of the claimed combination as
a whole including the factual basis for the Examiner
position.”
“The Examiner failed to provide anything that could
be credibly taken as a factual basis, as seen in the
Advisory Action.”
However, looking at the Decision, there is no reference
to “Berkheimer.” In other words, the Board appears either to
have overlooked this important legal guidance, or to have
overlooked Appellant’s arguments that raised this deficiency in
the rejection as a basis for reversal.
Req. Reh’g 3–4 (citing Appeal Br. 15), Emphasis added.

ANALYSIS
1.
As to Appellant’s above contention 1, we disagree. In the Decision,
we expressly considered the elements as a whole to determine whether the
claims: (a) recited an abstract idea; and (b) were directed to the recited
abstract idea. See Dec. 15–22. More specifically, we first evaluated claim 1
as a representative claim and determined that the claim recited the steps of
obtaining information, sending the obtained information to be validated,
vetting the obtained information, and receiving a receipt that confirms the
obtained information has been validated and vetted. See Dec. 17. We
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further determined the aforementioned steps were steps of a method of
organizing human activity (e.g., validating and vetting customs information
of an individual). See id.
Subsequent to this determination, we evaluated the other elements of
claim 1 to determine whether the claim as a whole was directed to the
method of validating and vetting customs information. See Dec. 18. As part
of this evaluation, we expressly considered Appellant’s argument that claim
1 recites technical features that have no equivalent outside of a computing
environment, and we determined that the argued features either: (a) merely
generally link the method of organizing human activity to a computer-
implemented operating environment; or (b) were merely extra-solution
activity. See Dec. 20. We also determined that claim 1, when considered as
a whole, did not include a technological improvement, because the claim did
not improve the performance of the computer-implemented operating
environment or other technology, but instead merely improved problems
associated with implementing the underlying method of validating and
vetting customs information manually. See Dec. 21.
Thus, we did not overlook Appellant’s argument that the claim, when
considered as a whole, was not directed to the abstract idea of organizing
human activity. Instead, we expressly rejected this argument and concluded
that claim 1 both recites and is directed to the abstract idea of organizing
human activity.

2.
As to Appellant’s above contention 2, we also disagree. While patent
eligibility is ultimately a question of law, whether something is well-
understood, routine and conventional to a skilled artisan at the time of the
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invention is a factual determination. See Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018). As indicated in the Office’s
Berkheimer memorandum,2 “[a] citation to an express statement in the
specification,” or “[a] citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II),” can demonstrate the well-understood,
routine, conventional nature of an additional element (or combination of
elements). Berkheimer memorandum at 3, 4.
As noted in the Examiner’s Answer, the Examiner cited several
precedential cases as factual evidence of the well-understood, routine, and
conventional nature of “database,” “mobile device,” “firewall,” “electronic,”
and “intermediate,” as recited in claim 1: Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 225 (2014) (creating and maintaining “shadow accounts”);
Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
(updating an activity log); Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an intermediary computer to
forward information); TLI Commc’ns LLC v. AV Auto. LLC, 823 F.3d 607,
610 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (sending
messages over a network); and buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over
a network). See Ans. 4 (citing Advisory Action, mailed September 28, 2018,
at 3). Furthermore, as indicated in the Decision, evidence of the well-
understood, routine, and conventional nature of the aforementioned elements
can also be found in Appellant’s Specification, which describes example

2 USPTO memorandum issued on April 19, 2018, titled “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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systems and hardware for implementing the customs information collection,
validation, vetting, and routing, and also identifies that the example systems
and hardware can be combined, adjusted, and manipulated as contemplated
by one of ordinary skill in the art. See Dec. 22 (citing Spec. ¶¶ 19–97). For
example, Appellant’s Specification describes an example operating
environment, data flow, and method as examples of “how information can
be handled and passed and how traveler information collection,
communication, vetting, and traveler routing is performed,” and further
describes the example embodiments could “be combined, adjusted,
manipulated as contemplated by one of ordinary skill.” Spec. ¶ 19.
Thus, we also did not overlook Appellant’s argument that the
rejection failed to provide a sufficient evidentiary basis. Instead, we
expressly considered this argument and did not find it persuasive.

DECISION
In view of the foregoing discussion, we have granted Appellant’s
request to the extent that we have reconsidered our Decision, but we deny
Appellant’s request to make any changes in our Decision. Appellant has not
identified any points the Board has misapprehended or overlooked.
The request for rehearing is denied.

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CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–27 101 Eligibility 1–27
Overall
Outcome

1–27

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–27 101 Eligibility 1–27
1–9, 11–15,
17–25
103 Ortiz, Molloy 1–9, 11–
15, 17–25

10, 16, 27 103 Ortiz, Molloy,
Goldberg
10, 16, 27
26 103 Ortiz, Molloy, Daniel 26
Overall
Outcome

1–27

DENIED