Ex Parte Mahendrakar et al

Patent Trial and Appeal Board

Mar 17, 2017

14246991 (P.T.A.B. Mar. 17, 2017)

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.
14/246,991 04/07/2014 Alka Mahendrakar 24080.15US3 2751
25541 7590 03/21/2017
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
EXAMINER
SHAIFER HARRIMAN, DANT B
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
03/21/2017 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):
t williams @ ngelaw.com
ipusmail@ngelaw.com
tmcdonough @ ngelaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALKA MAHENKRAKAR, KEHANG CHEN, and
LUIS OBREGON
Appeal 2016-007118
Application 14/246,9911
Technology Center 2400
Before HUNG H. BUI, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Rejection of claims 1—20, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the Real Party in Interest is Trans Union LLC.
App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed December 12, 2015
(“App. Br.”); Examiner’s Answer mailed May 5, 2016 (“Ans.”); Non-Final
Office Action mailed July 15, 2015 (“Non-Final Act.”); and original
Specification filed April 7, 2014 (“Spec.”).
Appeal 2016-007118
Application 14/246,991
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention relates to “systems and methods for
authenticating the identity of an individual prior to allowing access to
confidential or secure information pertaining to that individual, such as a
credit file or report, [i.e., credit scores from credit bureaus such as True
Credit® by TransUnion, VantageScore® by VantageScore Solutions LLC,
FICO® by Fair Isaac Corporation] particularly over computer connections
across a network, such as the Internet.” Spec. Tflf 1—2; Abstract. According
to Appellants, “credit bureaus cannot rely on a consumer having a password,
but must authenticate the consumer through other means should they seek
access to their credit file.” Spec. 1 8. As such, Appellants propose using a
series of personal questions, via a website interface, to which a consumer
must answer correctly for authentication before granting access to
confidential information pertaining the consumer. Spec. 19.
Representative Claim
Claims 1,12, and 18 are independent. Claim 12 is representative of
Appellants’ invention and is reproduced:
1. A method for authenticating the identity of a user
seeking access to data related to the user via a client device in
communication with a server, the method comprising the steps
of:
receiving a plurality of exam definitions through a
customer interface from an entity that manages the confidential
data of the user;
requesting by the server, and receiving from the client
device, initial data entered by the user;
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searching a database in communication with the server for
a set of confidential data including at least one portion of the
initial data;
generating an exam comprising at least one question based
at least in part on a portion of the confidential data relating to the
user, wherein the exam creation function creates the exam based
on the plurality of exam definitions;
transmitting the exam to the client device for presentation
to the user;
determining at the server whether the user passed the
exam; and
granting access to the confidential data related to the user
if the server determines that the user passed the exam.
App. Br. 32 (Claims App’x).
Examiner’s Rejection
Claims 1—22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject. Non-Final Act. 3^4.
ANALYSIS
With respect to independent method claim 12, and similarly, system
claim 1 and “computer readable medium” claim 18, the Examiner finds
these claims are directed to an abstract idea of “comparing new and stored
information and using rules to identify options,” i.e.,
comparing of user inputted answers with pre-stored user answers
that dictates when the inputted answer matches the pre-stored
answer to an authentication examination question, a rule allows
the user access to the confidential data or when an answer does
not match, a rule blocks the user access to the requested
confidential data.
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Application 14/246,991
Ans. 10; see also Non-Final Act. 3. In particular, the Examiner finds
Appellants’ claims 1—20 are directed to:
an application on a server that selectively controls access to user
confidential data, where the application includes an exam
creation function that allows the server to create examination
questions or challenge questions based at least in part on the
stored confidential data of the user in an external database; an
exam administration function that forces the server to send the
created examination questions to the user client interface, if the
user answers all questions correctly, the user is allowed to access
the confidential information ....
Non-Final Act. 3. The Examiner also finds additional elements recited in
these claims do not amount to significantly more than the abstract idea itself.
Id. According to the Examiner, any reference to “computer-implemented”
using a “processor” to implement the abstract idea does not transform the
abstract idea into a patent eligible subject matter under 35 U.S.C. § 101. Id.
Likewise, the Examiner reasons:
[t]he request for access to confidential data and the response of
generated examination questions mechanism is a generic
computing operation that does not enhance the functionality of
the computer. Further, the claim does not recite an improvement
to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment.
Id. (emphasis modified).
Appellants present several arguments against the § 101 rejection.
First, Appellants contend
the Examiner ignored meaningful limitations that require
specific structure for the authentication tool recited in the claims,
such as, for example, a customer interface with one or more input
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fields configured to receive a plurality of exam definitions
entered by an entity that manages the confidential data of the
user....
App. Br. 11; see also id. at 11—12.
Second, Appellants contend “the Office Action provides conclusory
statements regarding the purported ‘additional elements’ with little to no
written explanation or analysis to support its conclusion.” Id. at 12 (citing
Non-Final Act. 4). Instead, Appellants argue these claims contain additional
elements, such as (1) a server hosting a specific application, (2) at least one
database ... to allow the server to retrieve .. . confidential data, and (3) a
customer interface, and when these features “are considered individually and
as an ordered combination, amount to significantly more than simply
applying the alleged abstract idea of ‘comparing new and stored information
and using rules to identity options.’” Id. at 12—14.
Third, Appellants contend “claims 1—20 are not directed to an abstract
idea.” Id. at 15—21. In particular, Appellants argue
representative Claim 1 is generally directed to a networked
system that includes (1) one or more databases for storing the
confidential data of a user, (2) a customer interface with input
fields for receiving exam definitions entered by the entity that
manages the user’s confidential data, and (3) a server for hosting
an application that provides the user with selective access to the
confidential data, via a client interface.
Id. at 16. Similarly, Appellants argue “the claimed invention is not directed
to mental processes that can be, and are routinely, performed without a
computer,” citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555
Fed. Appx. 950 (Fed. Cir. 2014). Id. at 17—18. Likewise, Appellants argue
none of the functions related in claims 1—20 involves “mathematical
concepts.” Id. at 19-20.
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Fourth, Appellants argue “Claim 1 clearly does not attempt to tie up
the use of all authentication tools on all computers across all networks.
Rather, Claim 1 recites specialized elements that limit the claim to a specific
application of the alleged abstract idea on specific computers in a specific
networked system.” Id. at 22. Fifth, Appellants also argue, “like the claims
at issue in DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014),”
“Claim 1 provides a technical solution that is necessarily rooted in computer
technology in order to overcome a technical problem specifically arising in
the realm of identity authentication over a network.” Id. at 23; see also id. at
24—26. Lastly, Appellants argue “Claim 1 is inextricably tied to one or more
particular machines, thereby satisfying at least the machine prong of the
machine-or-transformation test and further evidencing its patent-eligibility.”
Id. at 27 (citing In re Bilski,3 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc)).
We are not persuaded by Appellants’ arguments. The Supreme Court
has long held that “[l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice, 134 S. Ct. at 2354 (quoting Assoc, for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal
quotation marks omitted)). The “abstract ideas” category embodies the
3 In In re Bilski, the Federal Circuit adopted a “machine-or-transformation”
(MoT) test to determine whether a process claim is eligible under 35 U.S.C.
§101. However, the Supreme Court held, in Bilski v. Kappos, 130 S. Ct.
3218, 3227 (2010), that the “MoT” test, while a “useful and important clue,”
is no longer the sole test for determining the patent-eligibility of process
claims under § 101. Since Bilski v. Kappos, the Supreme Court has created a
two-step framework in Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct.
2347, 2354 (2014) to address whether a claim falls outside of § 101, which
we discuss infra.
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longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S.Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets 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)). The first step in the analysis
is to “determine whether the claims at issue are directed to one of those
patent-ineligible concepts,” such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims “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 1298, 1297). 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).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that method claim 12 and its corresponding system claim 1 and
“computer readable medium” claim 18 are directed to a patent-ineligible
abstract concept of “comparing new and stored information and using rules
to identify options.” Non-Final Act. 4. All the steps recited in Appellants’
method claim 12 and “computer readable medium” claim 18, including, for
example: (i) “receiving a plurality of exam definitions” in advance, (ii)
“receiving . . . initial data entered by the user,” (iii) “generating an exam
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comprising at least one question . . . based on the plurality of exam
definitions,” (iv) “transmitting the exam to the client” and (v) “determining
. . . whether the user passed the exam” before (vi) “granting access to the
confidential data,” are abstract processes of collecting, storing, and
analyzing information of a specific content prior to granting access to the
content. System claim 1 recites similar limitations in the context of (i) a
server hosting an application providing selective access, (ii) a database
storing the confidential data, and (iii) a customer interface to allow input of
exam definitions. Nevertheless, information as such is intangible. See
Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007).
Information collection and analysis, including when limited to particular
content, is within the realm of abstract ideas. See, e.g., Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
Turning to the second step of the Alice inquiry, we find nothing in
method claim 12 and similarly, in system claim 1 or “computer readable
medium” claim 18, that adds anything “significantly more” to transform the
abstract concept of collecting, storing, and analyzing information into a
patent-eligible application. Alice, 134 S. Ct. at 2357. Appellants do not
argue each of the steps of (i) “receiving a plurality of exam definitions” in
advance, (ii) “receiving . . . initial data entered by the user,” (iii) “generating
an exam comprising at least one question . . . based on the plurality of exam
definitions,” (iv) “transmitting the exam to the client” and (v) “determining
. . . whether the user passed the exam” before (vi) “granting access to the
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confidential data,” is individually inventive. None of Appellants’ arguments
show that some inventive concept arises from the ordered combination of
these steps, which, even if true, would be unpersuasive given that they are
ordinary steps in data analysis and are recited in the ordinary order. Instead,
claims 1, 12, and 18 simply incorporate a general-purpose computer and
generic components such as “database” and “customer interface” to perform
the abstract concept of “comparing new and stored information and using
rules to identity options,” i.e., collecting, storing, and analyzing information.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can provide a “useful clue” in the second step of
the Alice framework. Under Bilski’s MoT test, a claimed process is patent-
eligible under § 101 if: (1) it is tied to a particular machine or apparatus; or
(2) it transforms a particular article into a different state or thing. Bilski, 545
F.3d at 954 (citing Gottschalk, 409 U.S. at 70). However, contrary to
Appellants’ arguments, Appellants’ method claim 12 and its corresponding
system claim 1 and “computer readable medium” claim 18 are neither
sufficiently “tied to a particular machine or apparatus” nor involved in any
type of transformation of any particular article.4
For example, limiting such an abstract concept of “comparing new
and stored information and using rules to identify options” to a general
purpose computer having generic components such as “database” and
“customer interface” recited in Appellants’ claims 1, 12, and 18 does not
4 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
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make the abstract concept patent-eligible under 35 U.S.C. § 101. Ans. 3. 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 2359 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (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” not patent eligible); and 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” (internal citation omitted)).
As further recognized by the Examiner,
appellants[’] claimed invention can [also] be recited as a mental
process or by pencil and paper. For examiner, I write a question
on a piece of paper that conveys a challenge question that reflects
my knowledge of the user and the security requirements of a
service provider of a filing cabinet, if the user writes the wrong
answer down on piece of paper and hands it back to me, I do not
give the user a file cabinet key to access the filing drawer of the
service provider.
Ans. 22—23. Likewise, Appellants’ claimed
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customer interface mechanism is a generic computing operation
that does not enhance the functionality of the computer,. . . does
not recite an improvement to another technology or technical
field of challenge response, nor does the customer interface claim
limitation improve the functioning of the computer itself, further
applicant’s customer interface does not implement a meaningful
limitation beyond the generally linking of an abstract interface to
a particular technological environment.
Ans. 28.
In contrast to DDR Holdings and the recent Federal Circuit’s decision
in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), in which
the Federal Circuit held that claims directed to specific improvements in
computer capabilities (i.e., self-referential table for a computer database) are
patent-eligible subject matter, Appellants’ claims 1—20 are neither rooted in
computer technology nor do they seek to improve any type of computer
capabilities, such as Enfish’s “self-referential table for a computer database.”
Instead, Appellants’ claims 1—20 simply recite an abstract concept of
“comparing new and stored information and using rules to identify options,”
i.e., collecting, storing, and analyzing information.
Because Appellants’ claims 1,12, and 18 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 as well as respective dependent claims 2—11, 13—
17, and 19—20 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice and its progeny.
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CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—20 under 35 U.S.C.
§101.
DECISION
As such, we AFFIRM the Examiner’s § 101 rejection of claims 1—20.
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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