Ex Parte Ogilvie

Patent Trial and Appeal Board

Jan 13, 2014

11203732 (P.T.A.B. Jan. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN W. OGILVIE
____________________

Appeal 2011-012559
Application 11/203,732
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, MICHELLE R. OSINSKI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012559
Application 11/203,732

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 3-21. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellant’s claimed invention “provides tools and techniques which
can help manage electronically stored confidential information” (Spec. 2,
ll. 2-3).
Claims 1 and 6, reproduced below, are illustrative of the subject
matter on appeal:
1. A method for submitting confidential information,
comprising the steps of:
submitting a group characteristic description for storage
in an electronic repository, the group characteristic description
describing a physical characteristic of a person which is shared
by at least a dozen other people, the electronic repository being
free of data fields that identify the person by name, telephone
number, residential address, employer, credit card number,
insurer-issued identification number, or government-issued
identification number; and
submitting confidential information for retrievable
storage in the electronic repository indexed in connection with
the group characteristic description, the confidential
information pertaining to the person;

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed
February 24, 2011) and Reply Brief (“Reply Br.,” filed June 26, 2011), and
the Examiner’s Answer (“Ans.,” mailed May 11, 2011).
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thereby storing for later retrieval the confidential
information of the person, without storing the person’s
identification in connection with their confidential information,
and facilitating use of the physical characteristic for verification
that the confidential information pertains to the person.

6. A method for retrieving confidential information,
comprising the steps of:
entering a code into an interface of an electronic
repository which contains confidential information pertaining to
a person, the electronic repository being free of data fields that
identify the person by name, telephone number, residential
address, employer, credit card number, insurer-issued
identification number, or government-issued identification
number; and
using a verification procedure based on a physical
characteristic description in a group characteristic description
and also based on the code to at least help in verifying that a
person to whom the confidential information may pertain is
indeed the person to which it does pertain.

THE REJECTIONS
The following rejections are before us for review:
Claims 1, 3-11, and 21 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 6, 10, and 11 are rejected under 35 U.S.C. § 102(e) as
anticipated by Tyler (US 2005/0059034 A1, pub. Mar. 17, 2005).
Claims 1, 3-5, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kumomura (US 6,477,521 B1, iss. Nov. 5, 2002) in view
of Tyler.
Claims 7-9 and 12-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tyler in view of Kumomura.

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ANALYSIS
Non-Statutory Subject Matter
Independent claims 1 and 6 and dependent claims 3-5, 7-11, and 21
Appellant argues claims 1, 3-11, and 21 as a group (App. Br. 5-7).
We select claim 1 as representative. The remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We are not persuaded by Appellant’s argument that claim 1 recites
patent-eligible subject matter because the claimed method is “tied to a
particular machine, namely, an electronic repository that is programmed
and/or wired to perform the claimed process(es)” (App. Br. 6). Instead, we
agree with the Examiner that the steps of claim 1 merely receive and store
data for later retrieval, without any further processing. The steps thus fail to
impose meaningful limits on the execution of the claimed method, and are
mere data gathering steps, and properly considered insignificant extra-
solution activity. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011) (“while claim 3 describes a method of analyzing
data regarding Internet credit card transactions, nothing in claim 3 requires
an infringer to use the Internet to obtain that data . . . . The Internet is
merely described as the source of the data. We have held that mere ‘[data-
gathering] step[s] cannot make an otherwise nonstatutory claim statutory.”’
(In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688
F.2d 789, 794 (CCPA 1982))).
Appellant argues that particular machinery is required for electronic
database storage and retrieval (see App. Br. 6). Yet any electronic
repository is capable of receiving and storing data. The claimed electronic
repository is not specially adapted to receive and store data, and is not a
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“particular machine” in the context of the machine-or-transformation test.
See Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010).
The Supreme Court has made clear that a patent claim’s failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry. See Bilski, 130 S.Ct at 3227. However, we conclude that, absent
other factors weighing either toward or against patent eligibility, the
machine-or-transformation factors both weighing against patent eligibility is
alone sufficient to establish a prima facie case of patent-ineligibility.2
See id. (the machine-or-transformation test is “a useful and important clue,
an investigative tool, for determining whether some claimed inventions are
processes under § 101.”) Appellant has not pointed to any convincing
factors that weigh towards patent eligibility, and we are unable to find any
such factors.
Appellant acknowledges that the preamble recites an unpatentable
abstract idea, i.e., “submitting confidential information” (Reply Br. 3).
But Appellant asserts that the use of an electronic repository, as described in
claim 1, is “a detail neither found nor required in the abstract idea of
submitting confidential information” and, therefore, that “the claim itself is
more specific and narrower than the abstract idea” (Reply Br. 3-4).
As described above, the steps of claim 1 merely receive and store data
for later retrieval, without any further processing. These steps are mere data
gathering steps, which cannot make an otherwise nonstatutory claim
statutory. See CyberSource, 654 F.3d at 1370.

2 Appellant does not contend that claim 1 satisfies the “transformation”
prong of the machine-or-transformation test.
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In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We also will sustain the Examiner’s
rejection of claims 3-11, and 21, which stand or fall with claim 1.
Anticipation
Independent claim 6 and dependent claims 10 and 11
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 6 under 35 U.S.C. § 102(e) because Tyler fails to teach a
group characteristic description, i.e., a “physical characteristic description in
a group characteristic description,” as recited in claim 6 (App. Br. 7-9 and
Reply Br. 4).
The Examiner asserts that DNA, as disclosed in Tyler, is a group
characteristic description (Ans. 11). However, we agree with Appellant that
the Specification plainly excludes DNA from use as a group characteristic
description (see, e.g., App. Br. 7 and 9).
Appellant’s invention relates to a method for storing and retrieving
confidential information regarding a particular person from a storage unit,
e.g., an electronic repository, without specifically identifying that person,
i.e., personal identifying information is excluded from the repository to
prevent a linkage in the repository between the person’s identity and his/her
confidential information. The Specification describes at page 4, lines 24-26
that “[e]lectronically stored personal identifying information,” i.e., personal
identifying information, may include various data, including a person’s
name, address, DNA print, etc. A “group characteristic description,” on the
other hand, is described as a physical characteristic description that places a
person in a group without specifically identifying the individual
(see Spec. 14, ll. 2-25). The Specification thus expressly discloses that the
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electronic repository is “free of data fields 114 that identify the person 502
whose confidential information it contains” (see Spec. 20, ll. 16-17), and that
“[u]nique identifiers such as fingerprints and DNA are likewise excluded
[from the repository] as identifying information 114” (see Spec. 20, ll. 25-
26).
The Examiner asserts that “DNA traits and specifically some types of
DNA such as MTDNA are common to several people” and that “[g]iven the
broadest reasonable interpretation, DNA is a characteristic shared by living
organisms such as people . . .” (Ans. 11). However, the Examiner cannot
reasonably deny that DNA specifically identifies a particular person. As
such, DNA cannot constitute a “group characteristic description,” as recited
in claim 6.
Moreover, even accepting the Examiner’s interpretation, Tyler does
not disclose that DNA is used, along with a code, in a verification procedure
to verify that a person to whom confidential information may pertain is
indeed that person, i.e., “using a verification procedure based on a physical
characteristic description in a group characteristic description and . . . the
code . . . in verifying that a person to whom the confidential information
may pertain is indeed the person to which it does pertain,” as recited in
claim 6.
Tyler discloses a method for conducting anonymous genetic testing
and describes that patients are provided with an Alias ID, which is used to
track a genetic sample from the patient (Tyler, Abstract). The test sample
from the patient is thus identified only by the Alias ID (Tyler, para. [0010].
In fact, the Examiner acknowledges that “Tyler . . . teaches using a code [not
a combination of the code and DNA] to verify that the person to whom the
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confidential information may pertain is indeed the person to which it does
pertain (¶ 10)” (Ans. 5).
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 6 under 35 U.S.C. § 102(e). We also will not sustain the
Examiner’s rejection of dependent claims 10 and 11 for the same reasons.
Obviousness
Independent claim 1 and dependent claims 3-5, 7, 9, 15, 18, 20, and 21
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because Figure 3 and
column 3, lines 57-60 of Kumomura, cited by the Examiner, do not teach
“submitting a group characteristic description for storage in an electronic
repository,” as recited in claim 1 (App. Br. 9-11).
Kumomura discloses an information processing system, and describes
that the system includes a customer database that stores customer attributes
and/or service information for each customer (Kumomura, Abstract).
A record of the customer database is shown in Figure 3, and Kumomura
describes at column 3, lines 57-60 that the record includes, for each
customer, “such columns as . . . characteristics [i.e., age and sex
characteristics, as shown in Figure 3] . . . .,” (id.). Each of age and sex
(gender) identifies a group to which persons belong rather than identifying
a particular individual; thus, each constitutes a “group characteristic
description,” as recited in claim 1.
Appellant argues that “group characteristics identify a group to which
people belong, based on some shared physical characteristic, rather than
identifying an individual person” and that “Kumomura teaches away from
the distinction by listing (i) personal identifying information that belongs
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uniquely to an individual right next to (ii) age and sex characteristics,
without treating them any differently from each other; see ‘Customer Name’
in cited Figure 3 right next to ‘Group,’ and in column 3 as well” (App. Br.
10). Yet, as the Examiner observes, that other data may or may not be
submitted and stored, does not negate that a group characteristic is submitted
(Ans. 12). “In other words, data elements, besides the group characteristic,
that are or are not submitted do not further limit the step of submitting a
group characteristic” (id.).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also will sustain the Examiner’s
rejection of dependent claims 3-5, 7, 9, 15, 18, 20, and 21 which were not
separately argued. See App. Br. 9-11.
Dependent claim 8
Claim 8 depends from independent claim 6 and recites that:
the verification procedure comprises entering at least one group
characteristic description in connection with entering the code,
and the method prevents confidential information from being
retrieved when the entered group characteristic description
fails to match a previously stored group characteristic
description of the person to whom the confidential information
pertains. [Emphasis added].
Appellant argues that the Examiner erred in rejecting claim 8 under
35 U.S.C. § 103(a) by refusing to give patentable weight to the “fails to
match” portion of the claim language. In this regard, Appellant maintains
that claim 8 expressly and positively recites a condition, i.e., that “the
entered group characteristic description fails to match a previously stored
group characteristic description of the person to whom the confidential
information pertains,” and a response to that condition, i.e., that “the method
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prevents confidential information from being retrieved,” and that such
expressly recited claim limitations are not optional and cannot properly be
ignored (App. Br. 11-12).
We agree with Appellant. Claim 8 is directed to a method for
retrieving confidential information, including a verification procedure
designed to ensure that the person to whom the information pertains has
access to that information. Preventing confidential information from being
retrieved when the entered group characteristic description fails to match a
previously stored group characteristic description of the person to whom the
confidential information pertains is a primary feature of the claimed method.
As such, it is not optional and is entitled to patentable weight.
Therefore, we will not sustain the Examiner’s rejection of claim 8
under 35 U.S.C. § 103(a).
Dependent claim 17
Claim 17 depends from independent claim 12 and recites that:
the system comprises software configuring hardware to receive
multiple physical characteristic descriptions of a person when
confidential information of that person is submitted to the
electronic repository, and the system comprises software
configuring hardware to require a randomly chosen proper
subset of those characteristic descriptions to be entered and
match before displaying retrieved confidential information of
the person.
The Examiner sets forth two bases for rejecting claim 17 under
35 U.S.C. § 103(a):
First, the claim is directed to the intended use of the system and
steps that the system is performing. It has been held that,
“While features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus
must be distinguished from the prior art in terms of structure
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rather than function alone” (MPEP 2114; In re Swineheart,
169 USPQ 226; In re Schreiber, 44 USPQ2d 1429 (Fed. Cir.
1997)).

Second, the step, “the system receives . . .” is optional, and
according to the MPEP, “Language that suggests or makes
optional but does not require steps to be performed or does not
limit a claim to a particular structure does not limit the scope of
a claim or claim limitation” (MPEP 21 06.II.C).
(Ans. 9).
Specifically addressing the Examiner’s second basis, Appellant argues
that the rejection of claim 17 is improper because claim 17 does not contain
the phrase “the system receives” and is a system claim that does not contain
steps, optional or otherwise. Appellant also maintains that the claimed
“software configuring hardware” is a particular structure which is required
and, therefore, limits the claim (App. Br. 13).
We do not disagree with Appellant’s arguments. However, at the
same time, we also observe that claim 17 merely recites that the system
comprises software configuring hardware “to receive” multiple physical
characteristic descriptions of a person, rather than positively reciting a step
of receiving such descriptions. This claim language connotes an intended
use of the software configuring hardware, which does not limit the scope of
the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). As such, prior art “software
configuring hardware” need only be capable of this intended use to meet the
claim limitation. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Appellant has made no showing here nor, indeed, offered any
argument, that the combination of Tyler and Kumomura fails to disclose or
suggest software configuring hardware capable of “receiv[ing] multiple
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physical characteristic descriptions of a person when confidential
information of that person is submitted to the electronic repository” or of
“requir[ing] a randomly chosen proper subset of those characteristic
descriptions to be entered and match before displaying retrieved confidential
information of the person,” as recited in claim 17.
We are not persuaded, on this record, of error on the part of the
Examiner. Therefore, we will sustain the Examiner’s rejection of claim 17
under 35 U.S.C. § 103(a).
Independent claim 12 and dependent claims 13, 14, 16, and 19
Claim 12 is directed to a system for managing confidential
information and recites that the system comprises, inter alia, “an electronic
repository which contains confidential information pertaining to a person
and is configured for retrieval of the confidential information by the person
in response to at least entry of a code.” Claim 12 also specifically describes:
the electronic repository being free of data fields that
effectively identify the person by name, telephone number,
residential address, employer, credit card number, insurer-
issued identification number, or government-issued
identification number, the electronic repository also containing
a group characteristic description which places the person in a
group of hundreds of people having a shared characteristic
without specifically identifying the person.
We are not persuaded by Appellant’s argument that the rejection of
claim 12 (and its dependent claims) should be withdrawn because the
Examiner erred in refusing to give patentable weight to the way that data is
stored in the electronic repository and the data that is excluded from the
repository (App. Br. 13-16). That the electronic repository contains
particular information does not affect the structure of the claimed apparatus.
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As such, we agree with the Examiner that the informational content of the
electronic repository is non-functional descriptive material that may not be
relied on for patentability (Ans. 8). See In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994); see also Ex parte Nehls, 88 USPQ2d 1883, 188790 (BPAI
2008) (precedential) (discussing non-functional descriptive material).
Focusing specifically on claim 13, Appellant argues that:
Regardless of whether the data itself is functional, the way that
the data is saved in the repository is functional, involving as it
does the relationship between the physical characteristic
description and the code. In particular the fact that “the code
alone [without the physical characteristic description] is
insufficient for the software to retrieve the confidential
information” functionally distinguishes this claimed invention
from Tyler.
(App. Br. 15). But that argument similarly fails.
That “the confidential information is indexed in the electronic
repository based on at least a physical characteristic description and the
code, and the code alone is insufficient for the software to retrieve the
confidential information,” as recited in claim 13, does not alter or otherwise
affect the structure of the claimed system. Therefore, it constitutes non-
functional descriptive material that may not be relied on to distinguish over
the prior art. Structural claims, such as claims directed to an article or
apparatus, must be distinguished from the prior art in terms of structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 12-14, 16, and 19 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection of claims 1, 3-11, and 21 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 6, 10, and 11 under 35 U.S.C.
§ 102(e) is reversed.
The Examiner’s rejections of claims 1, 3-5, 7, 9, and 12-21 under
35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejection of claim 8 under 35 U.S.C. § 103(a) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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