Ex Parte Burton

Patent Trial and Appeal Board

Mar 20, 2018

12597717 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/597,717 10/26/2009 Craig Alexander Burton
64046 7590 03/22/2018
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
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.
44474-502NO lUS 1891
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG ALEXANDER BURTON
Appeal2016-008663
Application 12/597,717
Technology Center 3600
Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 29--33, and 44--47, which are all the claims pending in this
application. Claims 2-28 are cancelled. Claims 34--43 are withdrawn. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellant's invention relates to: "a supervised voting system and in
particular an electronic voting system. It also relates to a method of
operation of the voting system." (Spec. 1, 11. 3-5).
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Application 12/597,717
Exemplary Claim
1. Supervised voting method for allowing a voter to vote
under the supervision of a supervisor at a voting booth that
includes a voting terminal at which the voter can vote, the
voting terminal capable of securely communicating with an
electronic voting system, the voting terminal comprising a
computer system that includes a media reader capable of
reading an immutable medium, the method comprising:
the voting terminal booting using instructions on an
immutable medium;
the voting terminal executing instructions on the immutable
medium to disable peripheral inputs that would allow
introduction of malicious software to the voting terminal;
the voter providing identity information to the supervisor;
the supervisor verifying the identity of the voter and sending
the identity information to a remote polling administrator
service from a presiding officer terminal, the remote polling
administrator service determining voter specific options to be
presented to the voter;
the polling administrator service sending details of the voter-
specific voting options to the voting terminal of the voting
booth;
the voting terminal of the voting booth displaying the voting
options to the voter;
the voting terminal of the voting booth receiving voting
information from the voter; and
the voting terminal of the voting booth sending the voting
information to a vote processor.
(Emphasis added in bold and in italics).
Rejection
Claims 1, 29--33, and 44--47 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. (Final Act. 2--4).
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Issue on Appeal
Did the Examiner err in rejecting claims 1, 29--33, and 44--47 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013) ). The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
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abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human
activities, an idea of itself, and mathematical formulas or relationships.
Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017).
Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78-79). We consider the question of
whether the claims are directed to a specific improvement in the
capabilities of the computing devices, or, instead, "a process that qualifies as
an 'abstract idea' for which computers are invoked merely as a tool."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that
improves the relevant technology, or (b) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfzsh, 822 F.3d at 1336.
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The Examiner's Rejection of Claims 1, 29-33, and 44-47 under §101 1
The Examiner set forth a rejection under 35 U.S.C. § 101 for claims
1, 29-33, and 44--47 in the Non-Final Action (2--4), mailed March 3, 2015.
Regarding the first step of the Mayo/Alice analysis, the Examiner
concludes that claims 1, 29-33, and 44--47 are directed to an abstract idea:
"the claims are directed towards facilitating voting by a voter after
authenticating the voter and presenting voter specific voting options, which
is considered to be an abstract idea inasmuch as such activity is considered
[] a fundamental voting method using digital equipment." (Non-Final Act. 3)
(emphasis added). 2
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds "the elements involved in the recited process perform the same
activities according to their generic functionalities which are well-
understood, routine and conventional" and "[t]he claims do not amount to
significantly more than the abstract idea itself." 3 (Non-Final Act. 4)
(emphasis added).
1 We consider the claims as a whole and give the contested claim limitations
the broadest reasonable interpretation (BRI) consistent with the
Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
3 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325 (Fed.
Cir. 2016). In particular, "[t]he 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., 881F.3d1360, 1368 (Fed. Cir. 2018).
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The Examiner also finds "the claims do not effect an improvement to
another technology or technical field; the claims do not amount to an
improvement to the functioning of a computer itself' and "merely amount to
the application or instructions to apply the abstract idea (i.e. facilitating
voting) using . . . generic computer system[] components."
(Non-Final Act. 4) (emphasis added).
Thus, the Examiner concludes that all claims 1, 29--33, and 44--47 on
appeal are not patent-eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellant contends, inter alia that
"[fJacilitating supervised voting by voters at any polling station
is not a mathematical algorithm, nor a fundamental economic or
longstanding commercial practice" nor is the claim 1 feature of
"[ d]isabling peripheral devices that allow introduction of
malicious software to the voting terminal."
(App. Br. 14--15) (emphasis added).
We agree with Appellant (id.) that the act of voting itself is not an
economic or longstanding commercial practice, particularly because in the
United States it is against the law to knowingly or willfully pay another
person to vote, or to accept payment from another in exchange for one's vote
in a federal election. See 52 U.S.C. § 10307(c). The various states have
similar laws covering state and local elections.
However, we nevertheless find that voting is a method of organizing
human activity that has long existed in the context of democratic
governments formed at various times throughout history. For example,
ancient Greece had a system of voting. We additionally conclude that
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voting is an abstract idea of decision making. See Ex Parte Pink et al.,
2015 WL 3827160 at* 5 (PTAB, June 18, 2015).
As indicated above, abstract ideas may include, methods of organizing
human activities, an idea of itself, and mathematical formulas or
relationships. Alice, 134 S. Ct at 2355-57. We additionally note that
independent claim 4 7 recites "receiving an indication that the voting
terminal is authenticated based on the checksum" (i.e., based upon a
mathematical formula - a checksum). (emphasis added).
Therefore, under Mayol Alice step one, we agree with the Examiner
that the claimed supervised and authenticated methods of voting are directed
to an abstract idea. (Non-Final Act. 3, claims 1, 29-33, and 44--47).
Mayo/Alice Analysis - Step 2
Because we conclude all claims on appeal are directed to an
abstract idea, we proceed to the second part of the Mayo/Alice analysis.
We further analyze the claims to determine if there are additional
limitations that individually, or as an ordered combination, ensure the
claims amount to "significantly more" than the abstract idea. Alice, 134 S.
Ct. at 2357 (emphasis added).
Regarding Alice Step 2, Appellant urges, inter alia:
Independent claim 1 is distinguishable from the claims at issue
in Alice, Ultramercial, buySAFE, Accenture, and Bancorp for
similar reasons to the claims at issue in DDR. Independent
claim 1 does not "recite a common place business method
aimed at processing business information, applying a known
business process to the particular technological environment of
the Internet, or creating or altering contractual relations using
generic computer functions and conventional network
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operations." See, DDR, 773 F3d at 1259. Independent claim 1,
does not, as the Office Action alleges, recite a fundamental
voting method using digital equipment. See, Office Action, pg.
3. Independent claim 1 is directed to a solution for facilitating
supervised voting by voters at any polling station, rather than
the pol[l]ing station they are assigned. See, pg. 3, 11. 12-14.
(App. Br. 14) (emphasis added).
We particularly note that the preamble of claim 1 recites "the voting
terminal comprising a computer system." (Emphasis added). Thus, we
conclude under a broad but reasonable interpretation, that the recited "voting
terminal" may be implemented on a generic "computer system," with
appropriate programming to implement the portion of the steps of the
method that is positively recited as being performed by the voting terminal.
(Claim 1 ). We note other steps or acts of method claim 1 are performed by
persons, i.e., a voter and a supervisor.
Our reviewing court provides guidance regarding the use of a generic
computer merely as a tool. See Alice, 134 S. Ct. at 2358 (holding that "the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention"); Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
("An abstract idea on 'an Internet computer network' or on a generic
computer is still an abstract idea.") (citation omitted) (emphasis added);
Elec. Power Grp., 830 F.3d at 1355 ("We have repeatedly held that such
invocations of computers and networks that are not even arguably inventive
are 'insufficient to pass the test of an inventive concept in the application' of
an abstract idea.") (citation omitted)); Intellectual Ventures I LLC v. Capital
One Financial Corporation, 850 F.3d 1332, 1341 (Fed. Cir. 2017).
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Appellant cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) (App. Br. 13). We note in DDR, the Federal Circuit
applied the Supreme Court's Alice two-step framework, and upheld the
validity of DDR 's patent on its web-page display technology. DDR, 773
F.3d at 1255.
However, we find the problem addressed by Appellant's claims is not
similar or otherwise analogous to the specific technical problem addressed
by the subject claims in DDR. In DDR, the claims were directed to retaining
a website visitor when the visitor clicked on a third-party merchant's
advertisement on the host website. Instead of taking the visitor to the third-
party merchant's website (and thus losing the visitor to the third-party
merchant), DDR's claimed system generated a hybrid web
page that: (1) displayed product information from the third-party merchant,
but also, (2) retained the host website's "look and feel."
Here, Appellant's claims 1, 29--33, and 44--47 are silent regarding any
mention of a website or webpage, much less a website that retains the host
website's "'look and feel"' while displaying product information from the
third-party merchant, as was the case in DDR, 773 F.3d at 1257 (emphasis
added). More broadly, on this record, it is our view that Appellant has not
established that the claims on appeal attempt to solve "a challenge particular
to the Internet," as considered by the court in DDR. Id. at 1256-57. Thus,
we find Appellant's claimed invention does not provide a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. at 1257.
Therefore, we find the claims here do not address a similar problem
and do not contain a similar inventive concept as the patent-eligible claims
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in DDR. As emphasized by the Federal Circuit: "DDR Holdings does not
apply when ... the asserted claims do not 'attempt to solve a challenge
particular to the Internet."' Smart Sys. Innovations, LLC v. Chi. Transit
Auth., 873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)).
Appellant additionally argues:
The instructions executed by the voting terminal disables
peripheral inputs prohibiting the introduction of malicious
software into the voting terminal that could surreptitiously
affect the voting outcome. Providing solutions to prohibit the
introduction of malicious software into voting terminals is
an improvement to the both the voting terminal itself, and the
technical field of electronic voting systems.
(App. Br. 17-18).
However, as noted above, we find the recited "voting terminal" may
be implemented on a generic "computer system" with appropriate
programming to implement the portion of the steps of the method that is
positively recited as being performed by the voting terminal. (Claim 1 ). It
is our view that preventing the introduction of malicious software by
disabling unauthorized access to the voting terminal is conventional and
known, as such isolation would be necessary to provide secure election
results.
Although Appellant's dependent claim 29 recites "updating an
electoral roll database to indicate that the voter has voted," we conclude
claim 29 is not "directed to a specific improvement to the way computers[,
networks, or databases] operate, [such as] the self-referential table" found by
the court to be patent eligible in Enfzsh, 822 F.3d at 1336.
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We further note that the Supreme Court emphasizes: "[t]he 'novelty'
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter." Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court
further guides that "[ e ]ligibility and novelty are separate inquiries." Two-
Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a
particular claimed feature was novel does not "avoid the problem of
abstractness").
Applying the aforementioned guidance here, we conclude that none of
Appellant's claims on appeal is directed to an improvement in a processor,
computer system, database, memory, network, or the Internet. Thus, we
conclude the additional elements recited in the claims beyond the abstract
idea, such as the voting terminal comprising a computer system, the vote
processor, and the electoral roll database (claim 29), do not provide an
inventive concept. (Ans. 3) (emphasis added).
Therefore, we conclude that none of the claim limitations, viewed
"both individually and as an ordered combination," amount to significantly
more than the judicial exception in order to sufficiently transform the
nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct.
at 2355 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79).
Accordingly, we conclude, in our Mayo/Alice analysis, that each of
Appellant's claims 1, 29-33, and 44--47, considered as a whole, is directed
to (under step one), a patent-ineligible abstract idea, and under step two,
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does not recite something "significantly more" to transform the nature of
the claim into a patent-eligible application.
For at least the reasons discussed above, we sustain the Examiner's
rejection under 35 U.S.C. § 101 of claims 1, 29--33, and 44--47, as being
directed to patent-ineligible subject matter in light of Alice and its progeny. 4
Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief, or are not responsive to arguments raised in the Examiner's Answer,
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
The Examiner did not err in rejecting claims 1, 29--33, and 44--47
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
4 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner's decision rejecting claims 1, 29--33, and
44--47 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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