Ex Parte KUNDU et al

Patent Trial and Appeal Board

Aug 21, 2018

13611202 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/611,202 09/12/2012
74739 7590 08/23/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
MukulKUNDU
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.
2011-0070US01 3924
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUKUL KUNDU and WILLIAM BLABY 1
Appeal2017-005124
Application 13/611,202
Technology Center 3600
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Oracle International
Corporation. See App. Br. 2.
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Application 13/611,202
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-11, 13-16, and 18-21. Claims 2, 12, and 17 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
THE INVENTION
The claims are directed to a self-service account enrollment system.
Spec., Title. Claim 1, reproduced below with a disputed limitation
emphasized in italics, is representative of the claimed subject matter:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to enroll a self-service user, the enrolling
compnsmg:
creating a self-service account for the self-service user at
a web portal system, wherein the self-service account comprises
an account identity;
sending a request for validation to an account management
system;
receiving validation request information from the account
management system, wherein the validation request information
is stored within the account management system;
sending validation response information to the account
management system;
receiving validation confirmation information from the
account management system in response to the account
management system comparing the sent validation response
information with validation response information stored within
the account management system, wherein the validation
confirmation information comprises the account identity;
2 We refer to the Specification, filed Sept. 12, 2014 ("Spec."); the Final
Office Action, mailed Nov. 5, 2015 ("Final Act."); the Appeal Brief, filed
May 9, 2016 ("App. Br."); and the Examiner's Answer, mailed Dec. 7, 2016
("Ans."). The Reply Brief, filed Feb. 7, 2017, is acknowledged and has been
considered, but is not herein referenced.
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linking a user identity of the self-service user to the
account identity within the web portal system, wherein the self-
service user gains access to the self-service account within the
web portal system based on the link between the account identity
and the user identity; and
linking one or more other user identities of one or more
other users to both the user identity of the self-service user and
the account identity within the web portal system, wherein the
one or more other users are automatically granted access to the
self-service account based on the validation of the user identity
of the self-service user and based on the link between the account
identity and the user identity of the self-service user in addition
to the one or more links between the user identity of the self-
service user and the one or more other user identities of the one
or more other users, and wherein the one or more other users
access the self-service account without enrolling with the
account management system.
REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Hoffman
Ellmore
Hirvela
US 2002/0069178 Al
US 7,058,817 Bl
US 2010/0136943 Al
REJECTIONS
The Examiner made the following rejections:
June 6, 2002
June 6, 2006
June 3, 2010
Claims 1, 3-11, 13-16, and 18-21 stand rejected under 35 U.S.C.
§ 101 as unpatentable because these claims are directed to a judicial
exception, i.e., an abstract idea. Final Act. 2-3.
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Claims 1, 5-11, 16, 20, and 21 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Ellmore and Hoffman. Final
Act. 4--7.
Claims 3, 4, 13-15, 18, and 19 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Ellmore, Hoffman, and Hirvela.
Final Act. 7-8.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own ( 1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2-11) and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief (Ans. 2-7) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
35 U.S.C. § 101
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirernents of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not pre-empt "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The rationale
is that patents directed to basic building blocks of technology would not
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"promote the [p ]rogress of [ s ]cience" under the U.S. Constitution, Article I,
Section 8, Clause 8, but instead would impede it. Accordingly, laws of
nature, natural phenomena, and abstract ideas are not patent-eligible subject
matter. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017)
( citing Alice, 134 S. Ct. at 2354).
The Supreme Court set forth a two-part framework for analyzing
subject matter eligibility in Alice (134 S. Ct. at 2355). The first step is to
determine whether the claim is directed to a patent-ineligible concept. Id.
( citing Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis
proceeds to the second step of the Alice/ Mayo framework, in which we
"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, 134 S. Ct. at 2357 (quoting Mayo, 566
U.S. at 72, 79).
The "inventive concept" may be embodied in one or more of the
individual claim limitations or in the ordered combination of the limitations.
Id. at 2355. The "inventive concept" must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Id. at 2358. "'[W]ell-understood,
routine, [and] conventional activit[ies]' previously known to the industry"
are insufficient "to transform an abstract idea into a patent-eligible
invention." Id. at 2359---60 (citing Mayo, 566 U.S. at 73).
Alice/Mayo Step 1: Abstract Idea
The Examiner finds the claims are directed to the abstract idea of
providing a "method of enrollment and access to user accounts." Final Act.
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2. According to the Examiner, the claimed steps involve routine data
gathering, organization, and comparison found to constitute abstract ideas as
per the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed.
Reg. 74618-74633 (December 16, 2014) ("2014 Guidelines") 3 and
numerous decisions of the Court of Appeals for the Federal Circuit. 4
Appellants argue the claims are directed to a specific automated validation
system that handles authentication of a self-service user and, as such, is not
directed to an abstract idea. App. Br. 5---6. Appellants further argue the
claims are not abstract because "they do not preempt all methods and
systems for enrollment and access to user accounts" and because "the
alleged abstract idea of 'enrollment and access to user accounts' shows no
similarities to the abstract ideas identified by the courts." App. Br. 6.
According to Appellants, "[ t ]he Examiner is essentially performing an
3 The 2014 Guidelines (or "Guidance") explain(s) that the examples of
"concepts courts have found to be" laws of nature, natural phenomena, and
abstract ideas "are intended to be illustrative and not limiting." 79 Fed. Reg.
at 74622. The 2015 Update provides additional "illustrative" examples to
"assist [E]xaminers and the public in applying the principles" in the 2014
Guidance.
4 See, e.g., Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)
( claims directed to processing loan information through a clearinghouse);
SmartGene v. Advanced Biological Laboratories, S.A., 555 Fed. App'x 950,
954--56 (Fed. Cir. 2014) (claims directed to comparing new and stored
information and using rules to identify options); Cyberfone Systems, LLC v.
CNN Interactive Group, Inc., 558 Fed. App'x 988, 991-92 (Fed. Cir. 2014)
(non-precedential) (claims directed to collecting data, recognizing certain
data in the set, and storing recognized data in memory); Digitech Image
Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir.
2014) ( claims directed to employing a mathematical algorithm to generate a
device profile); and Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005,
1007---08 (Fed. Cir. 2014) (non-precedential) (claims directed to managing a
game of Bingo).
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abstraction of the alleged abstract idea, and generalizing the alleged abstract
idea at such a high level (i.e., fundamental economic practice) that it no
longer has ANY relationship to the recited limitations." Id.
The Examiner responds by noting that the claims are similar to ideas
found to be abstract and, in particular, for processing information through a
clearinghouse. Ans. 4. According to the Examiner, the claims recite steps
of enrollment, determining appropriate access to accounts, and comparing
information to validate the information encompassing abstract ideas, e.g.,
"processing information based on rules and organizing, and transmitting the
information based on the business rules (access)." Id.
Appellants' arguments are unpersuasive. Claim 1 requires creating an
account, exchanging and validating information, and linking enrolled and
third-party users to an account identity to grant access to the account.
Appellants fail to explain why this subject matter is substantively dissimilar
to the cases cited by the Examiner as including claims found to be abstract
including the highlighted decision in Dealertrack. In particular, although
Appellants assert "the pending claims may not be properly characterized as
mere processing information through a clearing house, comparing new and
stored information, using categories to organize information, etc." (App. Br.
7), Appellants fail to provide a reasoned basis for the asserted conclusion.
Appellants' naked contention of error standing alone, in the absent sufficient
evidence and/ or technical reasoning, is inadequate to persuade us that the
appealed claims are dissimilar to those found to encompass abstract subject
matter in the cited cases.
We are also unpersuaded by Appellants' argument that "[t]he
Examiner is essentially performing an abstraction of the alleged abstract
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idea, and generalizing the alleged abstract idea at such a high level (i.e.,
fundamental economic practice) that it no longer has ANY relationship to the
recited limitations." App. Br. 6. Claim 1 is directed to enrolling a self-
service user including steps for facilitating automated customer service
interactions to provide account access to a user and third-party invitees of
the user. Spec. ,r,r 4, 33. Appellants fail to explain why providing access to
account data, such as a customer's utility bill, is other than a fundamental
economic practice or why the claimed steps include features or functionality
outside the scope of such economic activity.
Furthermore, we are unpersuaded by Appellant's preemption
argument. See App. Br. 6. Although pre-emption "'might tend to impede
innovation more than it would tend to promote it,' thereby thwarting the
primary object of the patent laws" (Alice, 134 S. Ct. at 2354 (citing Mayo,
132 S. Ct. at 1293)), "the absence of complete preemption does not
demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs. Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
Appellants' reliance on the decision of the Patent Trial and Appeal
Board in Poisson is also unpersuasive of Examiner error. See App. Br. 7.
We note Appellant does not cite any authority as to what kind of "proof' the
Examiner is required to provide in making a determination as to the abstract
idea under 35 U.S.C. § 101. See Affinity Labs of Tex., LLC v. Amazon.com
Inc., 838 F.3d 1266, 1271-72 (Fed. Cir. 2016) (affirming district court
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decision that identified an abstract idea in the claims without relying on
evidence); OIP Techs., 788 F.3d at 1362---64 (same); Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir.
2014); see also Manual of Patent Examining Procedure
(MPEP) § 2106.07(a)(III) (9th ed. Rev. 08.2017, Jan. 2018). Moreover,
Poisson is not a precedential decision and, therefore, we are not bound by it.
Nevertheless, we do not consider Poisson to be pertinent to the issue in this
appeal. In Poisson, the panel rejected the Examiner's conclusion that the
claims were directed to an abstract idea of a new set of rules for playing a
card game. Poisson, Appeal 2012-011084, slip op. at 5. Instead, the panel
found that the claim involved playing a game of football "using a table and
cards." Id. The panel reversed the Examiner's rejection because the
Examiner did not provide adequate findings of fact "on which to base the
Alice analysis." Id. Thus, the panel concluded that the facts and evidence
relied upon by the Examiner did not support a finding that the claim was an
ineligible abstract idea. Id. Here, the Examiner made adequate findings of
fact, as discussed above, that the claimed method is directed to an abstract
idea.
For the reasons discussed above, Appellants' contentions in
connection with the Examiner's findings under Step 1 of the Alice/Mayo
framework are unpersuasive of error.
Alice/Mayo Step 2: Inventive Concept
The Examiner finds "the claims [to] a method for organizing an
individual[']s access and levels to information are deemed to fail to recite
significantly more than the idea of enrollment and account access." Final
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Act. 3. According to the Examiner, the "additional generic computer
elements ... do not add a meaningful limitation to the abstract idea because
they would be routine in any computer implementation." Final Act. 2. The
Examiner concludes that, "[ v ]iewed as a whole, these additional claim
element( s) do not provide meaningful limitation( s) to transform the abstract
idea into a patent eligible application of the abstract idea such that the
claim( s) amounts to significantly more than the abstract idea itself." Final
Act. 3.
Appellants argue the claims "recite improvements to the functioning
of a self-service account enrollment system by allowing a self-service user to
grant access to a self-service account to other users." App. Br. 9. According
to Appellants, this "make[ s] it significantly easier to install and maintain the
web portal system" by enabling it to "work with any type of account
management system." App. Br. 10. Appellants characterize this
improvement as improving "the functioning of the computer" itself and,
therefore, constituting "significantly more [ than the abstract idea]" under
part 2 of the Alice test." Id. The Examiner responds, finding the argued
streamlined self-service enrollment system "is an improvement to a business
process not a technological process." Ans. 4-5.
Appellants' argument does not persuade us the claims include
significantly more than the abstract idea itself. Contrary to Appellants'
argument (App. Br. 2-3), the present case is different from Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016), because the focus of
the claims here is not directed to an improvement in computers as tools or
upon an innovative way to use computers or other devices. Instead, the
claims are focused on an independently abstract idea that uses generic and
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routine equipment as tools; that abstract idea being a method of enrollment
and access to user accounts. Here, the arguably innovative technique of the
appealed claims is inextricably a part of the abstract idea of allowing a self-
service user to grant access to a self-service account to other users as argued
by Appellants (App. Br. 10), not to operation of the implementing
technology. Thus, Appellants fail to identify any asserted structures
required by the claims or how those structures provide a technological
improvement. Moreover, nothing in the claims, understood in light of the
Specification, requires anything other than an off-the-shelf, conventional
computer processor used for collecting and processing/analyzing various
information/data. In particular, Appellants' Specification discloses,
"[p ]rocessor 22 may be any type of general or specific purpose processor,"
with no indication that the operation of the processor itself is improved.
Spec. ,r 17. Therefore, unlike Enfzsh, the claims are directed not to an
improvement in computer capabilities, but to the results of applying an
abstract idea.
For the reasons discussed above, Appellant's contentions are
unpersuasive of Examiner error. Accordingly, we sustain the rejection of
claims 1, 3-11, 13-16 and 18-21 under 35 U.S.C. § 101.
35 U.S.C. § 103(a)
The Examiner finds Ellmore discloses granting access to a third-party
user based on a link between the account and the enrolled user and based on
a link between the enrolled user and the third-party user (Final Act. 5---6) and
that Hoffman discloses the remaining features of the disputed limitation
(Final Act. 6). Appellants contend Hoffman fails to teach or suggest that
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(i) the "third-party user can access a desired user record without enrolling
with the system ( e.g., without providing validation response information,
where the system validates the third-party user)" ("limitation (i)") (App. Br.
14 ); and (ii)
that the third-party user can access a desired user record based
on a validation of a user identity of the other user and based on a
link between a user record identity and the user identity of the
other user in addition to a link between the user identity of the
[ (enrolled)] other user and a user identify of the third-party user.
("limitation (ii)") App. Br. 14.
The Examiner finds Hoffman's second server communicating directly
with a user without going through a first server teaches or suggests
providing user access to a self-service account without enrolling with an
account management system. Ans. 6-7.
Appellants' contention of error in connection with the argued
limitation (i) fails to address the Examiner's findings. Instead, it amounts to
a naked assertion that Hoffman is deficient without setting forth a reasoned
basis for the assertion. Arguments must address the Examiner's action.
37 C.F.R. § 4I.37(c)(l)(iv) ("The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant."); In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art"). "[I]t has long been
the Board's practice to require an applicant to identify the alleged error in
the examiner's rejections." In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir.
2011 ). Accordingly, in the absence of sufficient reasoning in support of such
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assertions, Appellants' naked contention is insufficient to persuade us of
reversible Examiner error.
In response to argued limitations (ii), the Examiner finds Ellmore
discloses providing third-party user access to another (enrolled) user's
medical records by the latter granting authorization to a system administrator
or customer service representative. Ans. 6. According to the Examiner, this
disclosure of Ellmore teaches or suggests basing third-party access on both a
link between the account and the enrolled user and based on a link between
the enrolled user and the third-party user. Id.
Appellants' argument is unpersuasive because it fails to address the
Examiner's findings in connection with Ellmore, i.e., that Ellmore, not the
argued Hoffman reference, teaches or suggests the argued limitations of
"wherein the one or more other users are automatically granted access to the
self-service account based on ... the link between the account identity and
the user identity of the self-service user in addition to the one or more links
between the user identity of the self-service user and the one or more other
user identities of the one or more other users." See Final Act. 5; Ans. 5---6.
As noted by the Examiner, such argument is unpersuasive because
"Appellant is arguing the references separately and not as the combination."
Ans. 5. We agree. It is well established that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Accordingly, for the reasons discussed above, Appellants' arguments
are not persuasive of Examiner error. Therefore, we sustain the rejection of
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independent claim 1 and, for the same reasons, the rejection of independent
claims 11 and 16 under 35 U.S.C. § 103(a), together with the rejections of
dependent claims 3-10, 13-15, and 18-21, which are not argued separately
with particularity.
DECISION
We affirm the Examiner's decision to reject claims 1, 3-11, 13-16,
and 18-21 under 35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1, 3-11, 13-16,
and 18-21 under 35 U.S.C. § 103(a).
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(±).
AFFIRMED
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