Ex Parte Prehofer et alDownload PDFPatent Trial and Appeal BoardAug 3, 201812329499 (P.T.A.B. Aug. 3, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/329,499 12/05/2008 11764 7590 Ditthavong & Steiner, P.C. 44 Canal Center Plaza Suite 305 Alexandria, VA 22314 08/07/2018 FIRST NAMED INVENTOR Christian Prehofer 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. P3009USOO 8910 EXAMINER REAGAN, JAMES A ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 08/07/2018 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): docket@dcpatent.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN PREHOFER and SASU T ARKOMA Appeal2017---001685 Application 12/329,499 Technology Center 3600 Before ANTON W. PETTING, AMEE A. SHAH, and MATTHEW S. MEYERS, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Christian Prehofer and Sasu Tarkoma (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1-11, 13-17, 19, and 21-23, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). 1 Our decision will make reference to the Appellants' Appeal Brief ("Appeal Br.," filed November 23, 2015) and Reply Brief ("Reply Br.," filed November 15, 2016), and the Examiner's Answer ("Ans.," mailed September 15, 2016), and Final Action ("Final Act.," mailed June 22, 2015). Appeal2017-001685 Application 12/329,499 The Appellants invented a way of obfuscating context information associated with a user. Specification para. 1. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method comprising: [ 1] determining, by an apparatus of a service provider, context information associated with a user based on information of a communication device associated with the user; [2] receiving a level identification of one or more objects, one or more object categories, or a combination thereof, for obfuscation; [3] determining a privacy policy associated with the user based on the level identification that specifies one of a plurality of user activity levels of one or more user activities independent from user interactions with the communication device associated with the user; and [ 4] obfuscating by the apparatus at least one user activity portion of the context information based on the privacy policy associated with the specified user activity level. The Examiner relies upon the following prior art: Busch US 2008/0248815 Al Mullen US 2008/0287112 Al Joshi US 7 ,694,328 B2 2 Oct. 9, 2008 Nov. 20, 2008 Apr. 6, 2010 Appeal2017-001685 Application 12/329,499 Claims 1-11, 13-17, 19, and 21-23 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 1-6, 10, 11, 13-17, 19, and 21-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Busch and Joshi. Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Busch, Joshi, and Mullen. ISSUES The issues of eligible subject matter tum primarily on whether the claims recite more than abstract conceptual advice of what a computer is to provide without implementation details. The issues of obviousness tum primarily on whether the art describes identifying a level of user activity and determining a privacy policy upon that. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Claim Construction 01. The disclosure contains no lexicographic definition of "obfuscate." 02. The ordinary meaning of "obfuscate" is to make so confused or opaque as to be difficult to perceive or understand or to render 3 Appeal2017-001685 Application 12/329,499 indistinct or dim; darken2. In programming, the meaning is an often practiced process to make code unclear for someone else to follow. It is an intentional effort to mislead or confuse. 3 Facts Related to Appellants' Disclosure 03.The Specification's only examples of obfuscation are in paragraph 85, referring to Figure 9, reference 940, and paragraphs 123-128 including Tables 1 and 2. The examples show obfuscated information as being textual information that is broader in meaning than the information it obfuscates. For example, original age 34 is obfuscated by age 30-35 and gender "female" is obfuscated by gender "none". There is a single example of obfuscation of an image in paragraph 125 as obfuscating peoples' faces. The Specification does not show or explain further how peoples' faces would be obfuscated. 04. The Specification describes obfuscation as being performed by an obfuscation module (reference 215). The Specification's description of this module only describes its selection characteristics, and has no description for how this module 2 American Heritage Dictionary. 5th Ed. 2018 https://www.ahdictionary.com/word/search.html?q=obfuscate 3 Computer Support Group. http://www.csgnetwork.com/ glossaryo .html#obfuscate 4 Appeal2017-001685 Application 12/329,499 implements the selected level of obfuscation to achieve the type of obfuscation selected. Facts Related to the Prior Art Busch OS.Busch is directed to generating information associated with geographic locations, targeted content delivery, targeted search results, navigation systems, mobile conversion tracking, and location based services on mobile devices. Busch para. 2. Joshi 06.Joshi is directed to a security solution that can be implemented on a large network. Joshi 1:10-12. 07. Joshi describes policies coming in from the management server being directly proportional to level of security provided by the client. This may not be a big issue in enterprise networks which are tightly controlled and are protected by firewalls. For mobile users, however, this is a big security issue. The mobile user is always on the move and using accessing the enterprise network through such mediums as cyber cafes, insecure wireless networks, etc. to create a virtual private network (VPN) into the enterprise network. If the client attempts to download policies from the management server, which can be easily spoofed in insecure networks like the above, incorrect policies could be downloaded from a malicious server, which could compromise the client machine and in tum infect the enterprise network through the 5 Appeal2017-001685 Application 12/329,499 VPN. As mentioned above the level of security provided on the client may be completely dependent on the policies coming in from the server. To protect the mobile user from attacks like the above, the client implements a component which attempts to authenticate the management server. Joshi 8:49---67. ANALYSIS Claims 1-11, 13-17, 19, and 21-23 rejected under 35 US.C. § 101 as directed to non-statutory subject matter We begin by construing the term "obfuscate." The term is not lexicographically defined. The ordinary meaning is to confuse or make indistinct. In programming, it means to make unclear. The examples generally show broadening of textual meaning to coarsen the specificity. One example of an image describes obfuscating faces, but provides no further evidence on what that means. Thus, we construe obfuscation as altering data to make it less distinct and specific. Method claim 1 recites determining context information, receiving a level identification, determining a privacy policy based upon that level, and obfuscating part of the context information based on that policy. Thus, claim 1 recites receiving and analyzing data, and altering data to make it less distinct and specific. None of the limitations recite implementation details for any of these steps, but instead recite functional results to be achieved by any and all possible means. Data reception, analysis and modification, and display are all generic, conventional data processing operations to the point 6 Appeal2017-001685 Application 12/329,499 they are themselves concepts awaiting implementation details. The sequence of data reception-analysis-display is equally generic and conventional. The ordering of the steps is therefore ordinary and conventional. The remaining claims merely describe process parameters, with no implementation details. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat else is there in the claims before us? [] To answer that question, [] consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent- eligible application. [The Court] described step two of this analysis as a 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." Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014) ( citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Examiner finds the claims directed to the most basic functions of a computer. Ans. 4. Although the Court in Alice made a determination as to what the claims were directed to, we find that this case's claims themselves and the 7 Appeal2017-001685 Application 12/329,499 Specification provide enough information to inform one as to what they are directed to. The preamble to claim 1 does not recite what it is directed to, but the steps in claim 1 result in altering data to make it less distinct and specific. The Specification at paragraph 1 recites that the invention relates to obfuscating context information associated with a user. Thus, all this evidence shows that claim 1 is directed to altering data to make it less distinct and specific, i.e. altering textual information. This is consistent with the Examiner's finding. It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are directed to an abstract idea. The concept of altering textual information is a fundamental clerical practice long prevalent in our system of record keeping. The use of altering textual information is also a building block of ingenuity in literature. Thus, altering textual information, like hedging, is an "abstract idea" beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of risk hedging in Bilski and the concept of altering textual information at issue here. Both are squarely within the realm of "abstract ideas" as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357. 8 Appeal2017-001685 Application 12/329,499 Further, claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent ineligible concept"); see also In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data retrieval, analysis, and transmission and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused on a specific asserted improvement in computer animation"). As such, claim 1 is directed to the abstract idea of receiving, analyzing, and transmitting data. The remaining claims merely describe process parameters. We conclude that the claims at issue are directed to a patent-ineligible concept. The introduction of a computer into the claims does not alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment."' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same 9 Appeal2017-001685 Application 12/329,499 deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implement[t]" an abstract idea "on ... a computer," that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional feature[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted). "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to receive, analyze, modify, and transmit data amounts to electronic data query and retrieval----one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. See Elec. Power Grp. v. Alstom S.A., supra. Also see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' .. . those functions can be achieved by any general purpose computer without special programming"). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 10 Appeal2017-001685 Application 12/329,499 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America Inc. v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) Considered as an ordered combination, the computer components of Appellants' method add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis-display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. Viewed as a whole, Appellants' method claims simply recite the concept of altering textual information as performed by a generic computer. To be sure, the claims recite doing so by advising one to base the modification on some level of interaction. But this is no more than abstract conceptual advice on the parameters for such altering textual information and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. 11 Appeal2017-001685 Application 12/329,499 The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. The Specification spells out different generic equipment4 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of altering textual information under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of altering textual information using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice Corp. Pty. Ltd. at 2360. As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long "warn[ ed] ... against" interpreting § 101 "in ways that make patent eligibility 'depend simply on the draftsman's art.' Alice Corp. Pty. Ltd. at 2360. 4 Specification paragraphs 130--144 describe various generic and conventional hardware elements that might be used. 12 Appeal2017-001685 Application 12/329,499 We are not persuaded by Appellants' argument that "[I]t is unclear how a claim that expressly recites physical features with which a claimed method operates is merely abstract." Appeal Br. 3. Alice speaks directly to this as we determine supra. We are not persuaded by Appellants' argument that the claim recites features that adapt, for example, a user device and a service provider to new and useful ends such as enabling obfuscation of at least one user activity portion of context information based on a specified activity level to enable taking into account the unique features of a mobile device and wireless environment and the different contextual parameters that can change over time, enabling targeted value added service delivery in mobile and wireless contexts Appeal Br. 4. The problem for Appellants is these alleged advantages are not in the claim, and in any event, utility is not a determinative factor. Much abstract advice is highly useful, as for example the adages "a stitch in time saves nine" and "an ounce of prevention is worth a pound of cure" enable the entire billion dollar preventative maintenance industry and all of the rework preventative maintenance provides, and yet these adages remain abstract conceptual advice. Probably most damaging to Appellants' case is that there is simply no disclosure, much less claim recitation, of any technical implementation for the obfuscation. As such, the claim recite no more than abstract conceptual advice to alter information according to context. 13 Appeal2017-001685 Application 12/329,499 Claims 1-6, 10, 11, 13-17, 19, and21-23 rejectedunder35 USC§ 103(a) as unpatentable over Busch and Joshi We are persuaded by Appellants' argument that the art fails to describe determining a privacy policy associated with the user based on the level identification that specifies one of a plurality of user activity levels of one or more user activities independent from user interactions with the communication device associated with the user. Appeal Br. 6. The Examiner cites Joshi 8:49-67, which states "policies coming in from the management server are directly proportional to level of security provided by the client." Ans. 14. On its face, this describes determining a policy associated with the user based on the level of security rather than the level of user activity and does not describe an identification of the level. Claims 7-9 rejected under 35 USC§ 103(a) as unpatentable over Busch, Joshi, and Mullen These claims depend from claim 1. CONCLUSIONS OF LAW The rejection of claims 1-11, 13-17, 19, and 21-23 under 35 U.S.C. § 101 as directed to non-statutory subject matter is proper. The rejection of claims 1-6, 10, 11, 13-17, 19, and21-23 under 35 U.S.C. § 103(a) as unpatentable over Busch and Joshi is improper. The rejection of claims 7-9 under 35 U.S.C. § 103(a) as unpatentable over Busch, Joshi, and Mullen is improper. 14 Appeal2017-001685 Application 12/329,499 DECISION The rejection of claims 1-11, 13-17, 19, and 21-23 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). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 15 Copy with citationCopy as parenthetical citation