Ex Parte Martinez de Velasco Cortina et al

Patent Trials and Appeals Board

May 8, 2019

14659502 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/659,502 03/16/2015 Francisco Martinez de Velasco Cortina
27189 7590 05/10/2019
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
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.
l 16546-613CT14 3012
EXAMINER
OUSSIR, EL MEHDI
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/10/2019 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCO MARTINEZ DE VELASCO CORTINA and
MANFRED RIETZLER
Appeal 2017-011851
Application 14/659,502
Technology Center 3600
Before ERIC B. CHEN, NABEEL U. KHAN, and MICHAEL M. BARRY,
Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--4 and 7-23, which constitute all pending claims (claims 5 and 6
have been cancelled). See Final Act. 1-2 and App. Br. 18-21 (Claims
App'x). We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the Applicant, Neology, Inc. as the real party in
interest. App. Br. 2.
Appeal 2017-011851
Application 14/659,502
Introduction
Appellants' disclosed embodiments and claimed invention relate
generally to providing secure identification solutions. Spec. ,r 1. Disclosed
embodiments include cryptographic "credit and debit exchange keys" that
provide for security of payment information and for protecting use of
"personal information (e.g., biometrics) contained in [a] device." Spec.
,r 53. A key is generated when an individual's biometric stored in the
device, such as a fingerprint, is matched with the output of a biometric
reader, e.g., at a point of sale. Spec. ,r,r 65-73. Encryption using the key
enables protecting both the individual's biometric information and stored
payment information, such as a credit card number, for a point of sale
transaction. Id.
Claim 1, which recites limitations for a mobile device, and claim 1 7,
which recites analogous requirements for a method for secure transactions
using a mobile device, are illustrative:
1. A mobile device, comprising:
short range radio frequency (RF) circuitry;
memory configured to store biometric authentication
information and payment information;
a biometric module configured to read biometric
information;
an authentication module configured to determine
whether the biometric information read by the biometric
module corresponds to the biometric authentication information
stored in memory; and
a secure module configured to:
generate a key when the biometric information
read by the biometric reading device is determined by the
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authentication module to correspond to the biometric
authentication information stored in memory;
encrypt the key and the payment information
stored in memory; and
provide, via the short range RF circuitry, the
encrypted key and payment information for use in a
transaction.
17. A method for secure transactions using a mobile
device, comprising:
storing biometric authentication information and payment
information in memory;
reading biometric information using a biometric reader;
determining whether the biometric information read by
the biometric reader corresponds to the biometric authentication
information stored in memory;
generating a key when the biometric information read by
the biometric reader is determined to correspond to the
biometric authentication information stored in memory;
encrypting the key and the payment information stored in
memory; and
providing the encrypted key and payment information for
use in a transaction.
App. Br. 18, 20 (Claims App'x). 2
2 There is a third independent claim----claim 10--which recites a system that
includes a mobile device with the same limitations as claim 1, along with a
"point of sale (POS) device" configured, inter alia, to receive the encrypted
key and payment information from the mobile device. See App. Br. 19-20
(Claims App'x).
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Application 14/659,502
Rejections3 and References
All pending claims stand rejected under 35 U.S.C. § 101 as directed to
an abstract idea, without reciting significantly more. Final Act. 8-12; see
also id. at 2---6.
Claims 1--4, 8-13, 15-20, 22, and 23 stand rejected as unpatentable
under 35 U.S.C. § 103 over Walker (US 6,163,771; Dec. 19, 2000), Holmes
(US 6,848,048 Bl; Jan. 25, 2005), and Chen (US 5,590,197; Dec. 31, 1996).
Final Act. 12-20; see also id. at 6-7.
Claims 7, 14, and 21 stand rejected as unpatentable under 35 U.S.C.
§ 103 over Walker, Holmes, Chen, and Voltmer (US 2002/0112177 A 1;
Aug. 15, 2002). Final Act. 20.
ANALYSIS
General Law for the§ 101 Rejection, and The 2019 Guidance
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
3 The Examiner rejected all pending claims based on the doctrine of
nonstatutory, obviousness-type double patenting. Final Act. 21-27. In
response to Appellants' representation in the Appeal Brief that a terminal
disclaimer will be filed upon the indication of allowable subject matter, the
Examiner agreed to hold that rejection in abeyance. App. Br. 15-16; Ans. 3.
In view of this, our decision does not address that double patenting rejection.
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and Alice. See Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
Id. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
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protection for that formula in the abstract ... 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." Id. ( citing Benson and Flook); see also id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50-57 (Jan. 7, 2019) ("the 2019 Guidance"). According to the 2019
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 4
See the 2019 Guidance at 52, 55-56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, does the office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See the 2019 Guidance at 56.
Our Analysis
For the§ 101 rejection, Appellants argue all claims together as a
group, contending, that the claims are not directed to an abstract idea
pursuant to the Alice/Mayo framework. App. Br. 7-12. For our analysis, we
select independent claim 17 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Alice/Mayo Step One
When we assess what the claims are directed to, we must do so at the
same level of generality or abstraction expressed in the claims themselves.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Here, claim 17 recites "[a] method for secure transactions using a mobile
device" by (1) "storing biometric authentication information and payment
information," (2) "reading biometric information," (3) "determining whether
the biometric information ... corresponds to the [ stored] biometric
authentication information," (4) "generating a key when the biometric
information ... is determined to correspond to the biometric authentication
4 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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information stored," (5) "encrypting the key and the payment information,"
and ( 6) "providing the encrypted key and payment information for use in a
transaction."
Considering the steps collectively, we conclude claim 17 is directed to
using biometric authentication and encryption for a secure payment
transaction. This is not an abstract idea, because it is neither a mathematical
concept, nor a mental process, nor a method of organizing human activity,
nor a combination of those categories. See Alice, 573 U.S. at 216; Mayo,
566 U.S. at 71; see also the 2019 Guidance at 51-55.
Thus, the Examiner errs in determining the claims are directed to an
abstract idea in step one of the Alice/Mayo framework. Accordingly, we do
not sustain the§ 101 rejection of claims 1--4 and 7-23.
A. The§ 103 Rejections
In the § 103 rejection of the independent claims, the Examiner finds
Walker teaches the disputed limitation of "generat[ing] a key ... when the
biometric information read by the biometric reading device is determined by
the authentication module to correspond to the biometric authentication
information," as recited. Final Act. 13, 18 (citing Walker col. 5, 1. 49---col. 6,
1. 38, Figs. 1-9). Appellants contend Walker does not teach the disputed
limitation because Walker teaches using biometric authentication simply to
allow access to the device, and any key generation is a separate process
triggered when the device user subsequently requests generation of single-
use credit card information. App. Br. 13-14. In other words, Appellants
contend the Examiner errs because Walker does not teach generating the key
when the biometric information is authenticated. Appellants' argument is
persuasive.
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The Examiner responds by finding Walker teaches that "[o]nce the
biometric data is authenticated, the device generates a code which is utilized
to complete a transaction." Ans. 16 (citing Walker Abstract, Figs. 1-3, 8, 9,
13, and "all related text"). The Examiner does not explain, however, nor do
we discern from the record before us, how or why this finding teaches or
suggests the "when" requirement of the disputed limitation.
Walker's only described purpose for biometric authentication is to
access the device. See, e.g., Walker Fig. 3B and col. 6, 11. 14--20. Walker
teaches that when access is granted based on successful authentication, "the
device responds by querying the cardholder on display 102 whether it should
generate a single-use credit card number." Walker col. 6, 11. 20-22; see also
col. 6, 1. 60-col. 7, 1. 25 ( disclosing an embodiment that uses key-based
encryption for generating a single-use card number). Thus, generation of a
key as part of generating the single-use card number takes place only after
the user provides input in response to the prompt, which in tum is only
provided after the end of successful biometric authentication. Because there
necessarily is a delay between the conclusion of biometric authentication
and the request to generate a key, Appellants persuade us that artisans of
ordinary skill would have understood that generating a key in Walker takes
place after the biometric information is authenticated, not when it is
authenticated (as required by the disputed limitation).
Thus, we agree with Appellants that the Examiner's findings do not
establish that Walker teaches ( or suggests) all requirements of the disputed
limitation. Accordingly, the Examiner has not established a prima facie case
of obviousness for the independent claims and, therefore, we do not sustain
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the § 103 rejections of claims 1, 10, and 17, and, likewise, of their dependent
claims 2--4, 7-9, 11-16, and 18-23.
DECISION
We reverse the Examiner's 35 U.S.C. § 101 rejection of claims 1--4
and 7-23.
We reverse the Examiner's 35 U.S.C. § 103 rejections of claims 1--4
and 7-23.
REVERSED
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