Ex Parte Evans

Patent Trial and Appeal Board

Apr 9, 2018

14082331 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/082,331 11/18/2013
27682 7590 04/10/2018
HUNTON ANDREWS KURTH LLP
INTELLECTUAL PROPERTY DEPARTMENT
Riverfront Plaza, East Tower
951 East Byrd Street
Richmond, VA 23219-4074
FIRST NAMED INVENTOR
Alexander William Evans
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.
74447 .000006 9360
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
MAILDATE DELIVERY MODE
04/10/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER WILLIAM EV ANS
Appeal 2016-006576
Application 14/082,331
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 100-109, 111-127, and 129-141, which are
all of the pending claims, under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this decision, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Nov. 9, 2015), Reply Brief ("Reply Br.," filed June 17,
2016), and Specification ("Spec.," filed Nov. 18, 2013), and to the
Examiner's Answer ("Ans.," mailed Apr. 19, 2016), and Final Office Action
("Final Act.," mailed June 11, 2015).
2 According to the Appellant, the real party in interest is St. Isidore
Research, LLC. Appeal Br. 2.
Appeal 2016-006576
Application 14/082,331
STATEMENT OF THE CASE
The Appellant's invention "relates to fraud prevention and fraud
'early warning' notifications for transactions, in particular remote and/or
electronic transactions such as 'e-commerce' and 'm-commerce'
transactions." Spec. i-f 2.
Claims 100 and 118 are the independent claims on appeal. Claim 100
(Appeal Br. 17 (Claims App.)) is exemplary of the subject matter on appeal
and is reproduced below.
100. A method for authenticating a device to be
associated with an account, the method comprising:
receiving at a server, over a first network, a
communication from a first device associated with an account,
wherein the communication comprises an account access
request related to a second device not associated with the
account;
determining by an automated data processor at least one
contact device associated with the account and accessible over
an associated network;
extracting from a database, by the automated data
processor, information associated with each of the at least one
contact device;
transmitting to each of the at least one contact device
over its associated network using the information associated
with each said contact device, a verification message associated
with the account access request;
receiving, over a second network that may be the same as
the first network, a response related to the verification message;
verifying, using a processor, the authenticity of the
account access request based on the response; and
authenticating the second device, such that one or more
subsequent requests to access the account from the second
device are granted without communicating with the first device.
2
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Application 14/082,331
ANALYSIS
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., 569 U.S. 576, 588-89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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." Id. (emphasis
added) (citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 78-79).
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. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all
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Application 14/082,331
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery, i.e., "whether the focus of the claims is on [a] 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." See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016).
Under the first step of the Alice framework, the Examiner determines
that independent claims 100 and 118 are directed to the abstract idea of
"authenticating a device by transmitting verification messages." Ans. 6; see
also Final Act. 2, 4. The Appellant argues that "[t]his is an impermissibly
broad characterization that ignores not only the detailed elements of the
independent claims, but also the dependent claims" (Reply Br. 3), but does
not state what the Appellant considers the claims to be directed to.
Before determining whether the claims at issue are directed to an
abstract idea, we must first determine what the claims are directed to.
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, [566 U. S. at 69] 132 S. Ct. at 1293 ("For all
inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.")
Rather, the "directed to" inquiry applies a stage-one filter to
claims, considered in light of the specification, based on
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Appeal 2016-006576
Application 14/082,331
whether "their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016)
(inquiring into "the focus of the claimed advance over the prior
art").
Enfzsh, 822 F.3d at 1335.
The step-one analysis requires us to consider the claims "in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp., 790 F.3d at 1346. The
question is whether the claims as a whole "focus on a specific means or
method that improves the relevant technology" or are "directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Independent claim 100 provides for "[a] method for authenticating a
device to be associated with an account" comprising the steps of receiving at
a server request data to authenticate a second device, determining by a
processor a contact device, extracting data from a database associated with
the contact device, transmitting to the contact device verification data,
receiving responsive data, verifying using a processor the request based on
the received data, and authenticating the second device. Appeal Br. 17.
(Claims App.). There is no specific apparatus or technology recited to
perform the steps. Independent claim 118 provides for a system comprising
servers, processors, module, and database to perform the functions of
claim 100. Id. at 19--20. The Specification provides for an invention
"relat[ing] to fraud prevention" in transactions "wherein it is desirable to
authenticate and verify" parties' identities. Spec. i-f 2. The Appellant points
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Application 14/082,331
to Figure 2 and paragraphs 51 and 98 as support for determining a contact
device, Figure 18 and paragraph 54 for verifying the authenticity of the
request, and Figure 18 and paragraphs 41 and 42 for authenticating the
second device. Appeal Br. 3--4. The cited portions of the Specification do
not provide details on how these steps are performed, but indicate that they
can be performed by analyzing or comparing data. The dependent claims
further define the step of receiving a response by providing from what
device responsive data is received, when the response is received, and the
type of data in the response, the step of verifying by matching data, the type
of network used, the account, the step of transmitting verification data by
defining timing, adding a step of notifying a party, and the type of device.
In that context, independent claims 100 and 118 (and the dependent
claims) are directed to receiving, analyzing, verifying, and transmitting data
to authenticate a device. 3 The claims are similar to claims deemed abstract
ideas by our reviewing court in CyberSource Corp. v Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) ("verifying the validity of credit card
transactions over the Internet"), Fair Warning IP, LLC v. Iatric Systems, Inc.,
839 F.3d 1089, 1093-94 (Fed. Cir. 2016) ("collecting and analyzing
information to detect misuse and notifying a user when misuse is detected"
in an abstract idea), buySAFE, Inc. v. Google, Inc., 765 F. 3d 1350, 1355
(Fed. Cir. 2014) (guaranteeing transactions), and Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (process of
3 We note that "[a]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board's "slight revision of its abstract idea analysis
does not impact the patentability analysis." Id. at 1241.
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Application 14/082,331
gathering and analyzing information of a specified content and displaying
the result). Here, the claims involve nothing more than receiving,
determining, analyzing, and sending data to authenticate a device without
any particular inventive technology- an abstract idea. See Electric Power,
830 F.3d at 1354. As such, we find unpersuasive the Appellant's argument
that "The Claims Are Not Directed to Ideas Identified by Courts as
Abstract." Appeal Br. 6 (emphasis omitted).
We also find unpersuasive the Appellant's arguments that the claims
are not directed to an unpatentable abstract idea because they are analogous
to those of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014 ), in that they "address a modem technological challenge
(preventing fraud in digital transactions) that is particular to a specific
processing technology" (Appeal Br. 6-7), address problems that arise in the
use of networked computers (id. at 7), and the "claim[ ed] solution is
'necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,"' i.e., "the problem
created of how to authenticate remote parties to a transaction with a near-
zero delay" (id. at 14--15) (emphasis omitted) (citing Spec. pp. 1-11).
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host's website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
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Application 14/082,331
of computer networks." Id. The court cautioned that "not all claims
purporting to address Internet-centric challenges are eligible for patent." Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in
DDR Holdings, the computer network was not operating in its "normal,
expected manner" and the claims did not "recite an invention that is ...
merely the routine or conventional use of the Internet." Id. at 1258-59.
In contrast, here, according to the Appellant, the claims address the
problems of "preventing fraud in digital transactions" (Appeal Br. 7) and
"authenticat[ing] remote parties to a transaction with a near-zero delay (id.
at 14) (emphasis omitted). Although the transactions are network-centric
and the parties remote, preventing fraud in and quickly authenticating
transactions, even remote ones (e.g., over the telephone), are not problems
rooted in technology arising out of computer networks, but rather business
problems that existed prior to the Internet and computers.
Also, unlike DDR Holdings, here, the solution comprises components
of generic servers, processors, module, and database operating in their
normal capacities to receive, determine, analyze (verify) and store data. See
Spec. i-fi-17 6-81, Fig. 1. The Appellant does not direct attention to, and we
do not see, where the Specification provides that the components act in an
abnormal manner. Rather, the claims "recite an invention that is ... merely
the routine or conventional use of the Internet." DDR Holdings, 773 F.3d
at 1258-59.
We further find unpersuasive of Examiner error the Appellant's
argument that "the Office failed to conduct a proper 35 U.S.C. § 101
analysis." Appeal Br. 7; see also Reply Br. 2-3. Here, in rejecting the
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Application 14/082,331
pending claims under § 101, the Examiner analyzes the claims using the
Mayo/Alice two-step framework. Specifically, the Examiner looks to the
language of the claims and determines that the claims are directed to the
abstract idea of "authenticating a device by transmitting verification
messages." Ans. 6. The Examiner cites to and compares the idea to judicial
decisions. See id. at 6, 9--11. The Examiner further determines that the
additional elements of the claims, taken alone and as an ordered
combination, do not ensure that the claims amount to significantly more than
the abstract idea. Id. at 6-7; see also Final Act. 4--5. The Examiner, thus,
has clearly followed Office guidelines. 4 And, the Examiner has clearly
articulated the reasons for the rejection and has notified Appellant of the
reasons for the rejection "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." 35 U.S.C. § 132. We find that, in doing so, the Examiner
set forth a prima facie case ofunpatentability. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed.
Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection."
Further, as to Appellant's argument regarding "substantial, concrete
evidence" to "show[] that the recited method is old and well-known"
(Appeal Br. 9), we note that the Examiner cites to the intrinsic evidence of
the claim language as evidence in determining that the claims are directed to
4 We further note that the MPEP and guidelines are not legal requirements.
Cf In re Fisher, 421F.3d1365, 1372 (Fed. Cir. 2005) ("The MPEP and
Guidelines 'are not binding on this court"').
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Application 14/082,331
an abstract idea. See Final Act. 4. Although the Supreme Court provided
references in its analysis in Alice (see Appeal Br. 9), evidence may be
helpful in certain situations where, for instance, facts are in dispute. But it is
not always necessary, and is not necessary here. See Mortgage Grader, Inc.
v. First Choice Loan Servs. Inc., 811F.3d1314, 1325 (Fed. Cir. 2016) ("[I]t
is also possible, as numerous cases have recognized, that a § 101 analysis
may sometimes be undertaken without resolving fact issues.").
Whether "the recited method is old and well-known" is not part of the
35 U.S.C. § 101 analysis. That "the lack of any prior art rejections under
35 U.S.C. §102 or §103 indicates that the Office recognizes that the claims
are novel and non-obvious" (Appeal Br. 9; see also Reply Br. 4), does not
automatically indicate patent-eligible subject matter under 35 U.S.C. § 101.
An abstract idea does not transform into an inventive concept just because
the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 90.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology, 133 S. Ct.
at 2117. Indeed, "[ 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); see also Mayo, 566 U.S. at 90 (rejecting "the Government's
invitation to substitute§§ 102, 103, and 112 inquiries for the better
established inquiry under § 101 ").
In response to the Appellant's argument that "the pending claims
would 'pose no comparable risk of pre-emption"' because they "do not
broadly and generically claim all forms of device" (Appeal Br. 10-11 ), we
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Application 14/082,331
note that although the Supreme Court has described "the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of preemption" (see Alice, 134 S. Ct. at 2354),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id. The aforementioned concept is not
sufficiently limiting so as to fall clearly on the side of patent-eligibility.
Under the second step of the Mayo/Alice framework, we agree with
and find supported the Examiner's determination that the elements of
independent claims 100 and 118, and their dependent claims, individually or
as an ordered combination, do not amount to significantly more than that
abstract idea. See Final Act. 4--5; Ans. 7-8. We are not persuaded of
Examiner error by the Appellant's arguments that assert the opposite. See
Appeal Br. 11-14.
The Appellant recites the limitations of claims 100 and 118 5 and state
that they "are significantly more than the alleged abstract idea." Appeal
Br. 11-14. However, the Appellant does not provide further support or
reasoning as to why or how the limitations of receiving, determining,
5 The Appellant's reference to "claim 17" (Appeal Br. 12) is considered a
typographical error and that the Appellant actually refers to claim 118.
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Application 14/082,331
extracting, transmitting, and verifying data and authenticating a device are
not well-understood, routine, and conventional functions of a generic
computer. Cf Reply Br. 5 ("The mere fact that they might be implemented
using on a computer using 'generic functions' (Answer at p. 5 and p. 8) is
irrelevant."). The Specification provides that the method is performed by a
system comprising generic servers, devices, processor, network, module, and
database. See Spec. i-fi-1 7 6-81. There is no indication in the Specification
that any technologically novel or inventive hardware is required to perform
the method. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 F.3d. at 1336 (focusing on
whether the claim is "an improvement to [the] computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity"). As noted above, the Specification does not provide details for
the specific authentication step, but indicates it can be performed by
analyzing or comparing recorded/stored data. See Spec. i-fi-141--42.
To the extent the Appellant argues that the claims are significantly
more than the abstract idea because of the detailed, numerous steps required
(see Appeal Br. 11-14; Reply Br. 4--5), we disagree. "None of these [seven]
individual steps, viewed 'both individually and 'as an ordered combination,'
transform the nature of the claim into patent-eligible subject matter."
Ultramercial, 772 F.3d at 715. Having routine steps of receiving,
determining, extracting, transmitting, and verifying data and authenticating a
device by analyzing data, and the use of a network, "do not transform an
otherwise abstract idea into patent-eligible subject matter." Id. at 716.
Thus, we sustain the Examiner's rejection of claims 100-109, 111-
127, and 129-141under35 U.S.C. § 101.
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DECISION
The Examiner's rejection of claims 100-109, 111-127, and 129-141
under 35 U.S.C. § 101 is AFFIRMED.
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).
AFFIRMED
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