14286676 (P.T.A.B. Mar. 20, 2018)

Ex Parte Armitage

Patent Trial and Appeal BoardMar 20, 2018

14286676 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/286,676 05/23/2014 16275 7590 03/22/2018 HolzerIPLaw, PC dba Holzer Patel Drennan 216 16th Street Suite 1350 Denver, CO 80202 FIRST NAMED INVENTOR David L. Armitage 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 453011USP 7885 EXAMINER LYNCH, SHARON S ART UNIT PAPER NUMBER 2438 NOTIFICATION DATE DELIVERY MODE 03/22/2018 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): hiplaw@blackhillsip.com docket@hpdlaw.com rholzer@hpdlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID L. ARMITAGE Appeal2017-008824 Application 14/286,676 Technology Center 2400 Before: ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and NORMAN H. BEAMER, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection 1 of claims 1-12 and 14--20. Claim 13 has been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 See Specification, filed May 23, 2014 ("Spec."); Final Office Action, mailed March 9th, 2016 ("Final Rejection"); Appeal Brief, filed October 5, 2016 ("Br."); and Examiner's Answer, mailed January 11, 2017 ("Answer"). Appeal2017-008824 Application 14/286,67 6 The Invention Appellant's invention relates to "configurable, encrypted, secure QR code creation and use." Abstract. Claims 1, 10, and 17 are independent claims and are illustrative of the claimed subject matter, as reproduced below: Independent Claim 1 A monitoring method, comprising; receiving authorization information from a user device at a quick response ("QR") creation system; determining authorized data based at least in part on the authorization information by the QR creation system; encrypting the authorized data by the QR creation system; creating a quick response code using the encrypted authorized data, by the QR creation system; recording the quick response code by the user device; transmitting the recorded quick response code to a server by the user device; and decrypting the transmitted recorded quick response code by the server. Independent Claim 10 A non-volatile computer readable medium, having stored thereon instructions, which if executed by a processor, cause the processor to: receive an encrypted quick response code at a user device; reading the quick response code to identify encrypted information within the encrypted quick response code; 2 Appeal2017-008824 Application 14/286,67 6 decrypting the encrypted information; and transmitting a communication comprising the decrypted information by the user device, wherein the communication comprises a dynamic report, and wherein the decrypted information comprises information about an asset. Independent Claim 17 A method for encrypted secure quick response ("QR") code creation, compnsmg: receiving identification information generally related to a user at a computing system; determining asset information about monitored assets, based at least in part on the identification information generally related to a user by the computing device; creating an encrypted QR code comprising the determined asset information; and presenting the created encrypted QR code capable of being received by a user device. Rejections Claims 1-12 and 14--20 are rejected under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. 3 Appeal2017-008824 Application 14/286,67 6 Claims 1-12 and 14--20 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Claims 1-6, 8-12, and 14--19 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Lafrance et al. (US 2013/0176141 Al, published July 11, 2013 (filed Jan. 5, 2012)) (hereinafter "Lafrance") in view ofTolba et al. (US 2013/0179692 Al, published July 11, 2013 (filed Jan. 11, 2012)) (hereinafter "To 1 ba"). Claim 7 is rejected under 35 U.S.C. Â§ 103 as being unpatentable over Lafrance and Tolba, further in view of Mori et al. (US 2001/0025272 Al, published Sept. 27, 2001 (filed Jan. 30, 2001)) (hereinafter "Mori"). Claim 20 is rejected under 35 U.S.C. Â§ 103 as being unpatentable over Lafrance and Tolba, further in view ofNelson et al. (US 2013/0290416 Al, published Oct. 31, 2013 (filed April 27, 2012)) (hereinafter "Nelson"). ISSUES Did the Examiner err in rejecting claims 1-12 and 14--20 as indefinite under 35 U.S.C. Â§ 112?2 Did the Examiner err in rejecting claims 1-12, and 14--20 as being directed to judicially excepted subject matter? Did the Examiner err in rejecting claims 1---6, 8-12, and 14--19 as obvious because Lafrance and Tolba fail to teach or suggest the argued limitations? 2 Because Appellant does not contest the merits of the indefiniteness rejections, we proforma sustain the Examiner's rejections on the grounds of indefiniteness. 4 Appeal2017-008824 Application 14/286,67 6 Did the Examiner err in rejecting claim 7 as obvious because Lafrance, Tolba, and Mori fail to teach or suggest the argued limitations? Did the Examiner err in rejecting claim 20 as obvious because Lafrance, Tolba, and Nelson fail to teach or suggest the argued limitations? ANALYSIS We have considered all of Appellant's arguments and any evidence presented. We disagree with Appellant's arguments and we adopt as our own the findings, legal conclusions, and explanations, as set forth in the Answer (5-19) in response to Appellant's arguments. (Br. 10-22). We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection of Claims 1-12, and 14-20 underÂ§ 101 Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks omitted)). In Alice, the Supreme Court set forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). 5 Appeal2017-008824 Application 14/286,67 6 The first step in that analysis is to determine whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. See Alice, 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible concept, the second step in that analysis is to "consider the elements of each claim both individually and 'as an ordered combination' to determine whether [there are] additional elements that 'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1297-98). In other words, the second step is to "search for an 'inventive concept'-i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). Alice/Mayo - Step 1 In rejecting claims 1-12, and 14-20 under 35 U.S.C. Â§ 101, the Examiner finds the claim is directed to an abstract idea of converting authorized data into a QR code for use in authorization, which is an abstract idea invo 1 ving mathematical relationships/ formulas. Ans. 6. As to the first step of the Alice inquiry, Appellant contends "these claims cover improving an technological process as indicated by the Federal Circuit in Enfish." Br. 13 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). According to Appellant, [ c ]laim 1 requires a method for encrypting and transmitting authorized data, where the authorized data is determined by user information. The encrypted QR code is recorded by a user device and later the authorized, encrypted data is transmitted to a server and decrypted for use. 6 Appeal2017-008824 Application 14/286,67 6 [T]he claim elements of claim 1 relate to a method for determining information that a user is authorized to receive, encrypting the authorized information and putting it into a QR code for the user to read or copy, then sending that information to a server to be decrypted and used. Such an idea is not abstract, because it requires a computing device specially configured to receive user authorization information, determine what information can be presented to the user, encrypting that information into a QR code to be read by a user device, the user device sending the encrypted QR code to another computing device to be decrypted and used. Br. 13-14. In other words, Appellant argues, like Enfish, the claims are directed to a specific implementation of a solution to using QR codes, as such, are not directed to an "abstract idea." We are unpersuaded by Appellant's arguments. Contrary to Appellant's assertion, we conclude the character of claim 1 as a whole is directed to a mathematical operation of converting authorized data into a QR code. Such claimed subject matter is similar to subject matter found by our reviewing courts to be abstract. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("a scientific truth, or the mathematical expression of it, is not [a] patentable invention" (citation omitted)); see also Parker v. Flook, 437 U.S. 584, 595 (1978) ("if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory" (citation omitted)); Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("[a] mathematical formula ... 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" (citation omitted)); In re Grams, 888 F.2d 835, 7 Appeal2017-008824 Application 14/286,67 6 837 (Fed. Cir. 1989) ("mathematical algorithms join the list ofnon- patentable subject matter not within the scope of section 101 "). Appellant argues claim 1 is not directed to a mathematical formula because it requires a computing device specially configured to receive user authorization information, determine what information can be presented to the user, encrypting that information into a QR code to be read by a user device, the user device sending the encrypted QR code to another computing device to be decrypted and used. Br. 13-14. To the extent that Appellant is arguing that claim 1 recites additional elements that amount to "significantly more" than the abstract idea, that issue is distinct from whether claim 1 is directed to a mathematical operation of converting authorized data into a QR code. Appellant's arguments that claim 1 is directed to "significantly more" are addressed infra. Alice/Mayo - Step 2 As to the second step of the Alice inquiry, Appellant contends the claim elements of claim 1 of the subject application recite real world input (e.g., user authorization), transformative processing (determining authorized data based on the user authorization, encrypting the authorized information, creating a QR code of the encrypted, authorized information, recording of the QR code by a user device, transmitting the recorded QR code to a server), and real world output (decrypting the QR code for use) .... Further, this transformative processing provides a potential benefit over prior solutions, as was important in Diehr, by enabling only authorized data to be presented to a user, encrypting it, and transmitting the encrypted data from a user device to a server, thereby keeping authorized information secure, through a user device, to a use at a server for vanous purposes. 8 Appeal2017-008824 Application 14/286,67 6 Br. 14. The Examiner determines claim 1 does not include additional elements that are sufficient to amount to significantly more than an abstract idea. The Examiner finds the authorized data is encrypted and used to generate a QR code, however the authorized data is not really being transformed - it is merely being hidden in a form that unauthorized persons cannot access. When the authorized data is decrypted, it will still be the same authorized data. In addition, the claim does not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or any meaningful application of the claimed process (i.e. simply decrypting the QR code is well- known and generic). Final Act. 4. The Examiner also finds that: The additional claim elements comprising recording the QR code, transmitting the recorded QR code and decrypting the QR code comprise generic computer functions that are well-understood, routine and conventional activities known in the field of QR codes. Ans. 6-7. We are not persuaded by Appellant's arguments. Contrary to Appellant's arguments, the Specification does not describe, and Appellant does not present evidence to establish how any of the steps recited in Appellant's claims 1, 10, and 17 provides a specific improvement to the computer. See Enfzsh, 822 F.3d at 1336. Likewise, Appellant has not demonstrated how these claims improve the way a computer uses QR codes, as the claims in Enfish did via a "self-referential table for a computer database." See Enfzsh, 822 F.3d at 1336, 1337, 1339. In fact, none of the 9 Appeal2017-008824 Application 14/286,67 6 steps recited in Appellant's claims 1, 10, and 17 provides, and nowhere in the Specification can we find, any description or explanation as to how these steps are intended to provide: (1) a "solution ... necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks," as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific improvement to the way computers operate," as explained in Enfish, 822 F.3d at 1336; or (3) an "unconventional technological solution ... to a technological problem" that "improve[ s] the performance of the system itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841F.3d1288, 1306, 1302 (Fed. Cir. 2016). Further to the second step of the Alice inquiry, we find nothing in claims 1, 10, and 17 that adds anything "significantly more" to transform the abstract concept of "converting authorized data into a QR code" into a patent-eligible application. Alice, 134 S. Ct. at 2357. To the extent that Bilski 's "machine-or-transformation" test may be applicable, such a test can only be "useful" in the second step of the Alice inquiry. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014 ). However, limiting the abstract concept of "converting authorized data into a QR code" to a general purpose computer as recited in Appellant's claims 1, 10, and 1 7, does not transform the abstract idea into a patent eligible invention under 35 U.S.C. Â§ 101. As recognized by the Supreme Court, "the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention." See Alice, 134 S. Ct. at 2358, 2359 (concluding claims "simply instruct[ing] the practitioner to implement the abstract idea of intermediated settlement on a 10 Appeal2017-008824 Application 14/286,67 6 generic computer" are not patent eligible); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (concluding claims merely reciting abstract idea of using advertising as currency as applied to particular technological environment of the Internet are not patent eligible); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (concluding claims reciting "generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer" are not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible"). Because Appellant's claims 1-21 are directed to a patent-ineligible abstract concept and do not recite something "significantly more" under the second prong of the Alice analysis, we sustain the Examiner's rejection of these claims under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter in light of Alice and its progeny. Prior Art rejections under 35 USCÂ§ 103(a) Appellant has presented several arguments (Br. 19-22) as to why the combination of the references does not teach or suggest the features recited in independent claims 1, 10, and 17, and dependent claims 7 and 20. We have reviewed the Examiner's response to Appellants' arguments. The Examiner has provided a comprehensive response to each argument presented by the Appellant on pages 12 through 19 of the Answer. We have reviewed this response and concur with the Examiner's findings and conclusions. We adopt as our own (1) the findings and reasons set forth by 11 Appeal2017-008824 Application 14/286,67 6 the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner's Final Action and Answer in response to Appellant's Appeal Brief. Final Act. 18-32; Ans. 12-19. We observe that no Reply Brief is of record to rebut such findings, including the Examiner's responses to Appellant's arguments. DECISION We summarily sustain the Examiner'sÂ§ 112 indefiniteness rejection of claims 1-12 and 14--20. We affirm the Examiner's decision rejecting claims 1-12 and 14--20 under 35 U.S.C. Â§ 101. We affirm the Examiner'sÂ§ 103(a) rejections of claims 1-12 and 14-- 20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 12