Ex Parte SATO et al

Patent Trial and Appeal Board

Aug 28, 2013

11928613 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YOSHINORI SATO
and AKIHIKO KAWASAKI
____________________

Appeal 2011-004492
Application 11/928,613
Technology Center 2100
____________________

Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
JUSTIN BUSCH, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).

Appellants’ Invention
Appellants’ invention relates to protection of personal data. An
information processing apparatus counts, for each of the multiple personal
data, the number of personal data that include a combination of the same
item values as an item value of the selected item, and outputs only item
values of items having the number of personal data equal to or larger than a
threshold. See Abstract.

Illustrative Claim
Independent claim 1 further illustrates the invention as follows, with
disputed elements highlighted in italics:
1. An information output apparatus, comprising:
a storing unit which stores multiple personal data entries
each including multiple items respectively associated with item
values;
a count unit which selects at least one of the multiple
items for each of the multiple personal data entries and counts
the number of personal data entries that include the same item
values associated with the selected item;
a judging unit which judges whether the counted number
of personal data entries is equal to or greater than a
predetermined threshold; and
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a result output unit which when the counted number of
personal data entries is equal to or greater than the
predetermined threshold, anonymizes the item value of an item
other than the selected item to a output device.

Rejections on Appeal
The Examiner rejected claims 1-3 and 5-7 under 35 U.S.C. § 102(e) as
being anticipated by Sweeney (US 7,269,578 B2, Sep. 11, 2007). Ans. 4.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Sweeney and Sweeney 2 (Achieving k-Anonymity Privacy
Protection Using Generalization and Suppression, Int’l Journal on
Uncertainty, Fuzziness and Knowledge-Based Systems, Vol. 10, No. 5 (Oct.
2002)). Ans. 7.
The Examiner rejected claims 1, 6, and 7 under 35 U.S.C. § 102(e) as
being anticipated by Lunt (US 2006/0123461 A1, Jun. 8, 2006). Ans. 8.

PRINCIPLES OF LAW
Burden on Appeal
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379
F.2d 1011, 1016 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the Examiner. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case is
established when the party with the burden of proof points to evidence that is
sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See
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Saab Cars USA, Inc. v. U. S., 434 F.3d 1359, 1369 (Fed. Cir. 2006). In
particular, regarding the Patent Examiner’s burden of production:
[A]ll that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132. As the statute itself instructs,
the examiner must “notify the applicant,” “stating the reasons
for such rejection,” “together with such information and
references as may be useful in judging the propriety of
continuing prosecution of his application.” 35 U.S.C. § 132.

In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).

ANALYSIS1
Anticipation rejection by Sweeney
Issue: Under §102, did the Examiner err in finding that claims 1-3 and
5-7 are anticipated by Sweeney? More particularly, did the Examiner
establish a prima facie case that Sweeney anticipates “a count unit which
selects at least one of the multiple items for each of the multiple personal
data entries and counts the number of personal data entries that include the
same item values associated with the selected item,” as recited in
independent claim 1 (emphasis added), and similarly recited in independent
claims 6 and 7?
Appellants contend “[t]he Examiner did not properly show where
Sweeney identically discloses such [count unit] claimed limitations or

1 Appellants make additional arguments with respect to claims 1-7. App. Br.
7-14. We do not reach the merits of these additional arguments because
these issues are dispositive of the appeal.
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explain how or why such limitations would necessarily be inherent in the
disclosure of Sweeney.” Consequently, claims 1-3 and 5-7 are patentable
over Sweeney. App. Br. 12-13.
In rejecting claims 1-3 and 5-7, the Examiner finds that Sweeney
discloses the disputed limitation (Ans. 5). In particular, the Examiner relies
upon Figure 7 (core algorithm), but does not provide sufficient evidence or
explanation as to how these portions teach or suggest the disputed limitation.
However, our rules require that “[w]hen a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.” 37 C.F.R. § 1.104(c)(2) (emphasis added). Thus, we do not
find that the portions of Sweeney relied upon by the Examiner, without
further explanation, disclose the disputed limitation.
Here, we also observe that the Examiner, in the “Response to
Arguments” section of the Answer (10, et seq.), does not address
Appellants’ arguments supra regarding the aforementioned disputed
limitation.
In an ex parte appeal, the Board “is basically a board of review — we
review … rejections made by patent examiners.” Ex parte Gambogi, 62
USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by 35 U.S.C.
Section 134 is not a process whereby the examiner … invite[s] the [B]oard
to examine the application and resolve patentability in the first instance.” Ex
parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999).
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Because the Board is “basically a board of review,” Ex parte
Gambogi, 62 USPQ2d at 1211, and not a place of initial examination, we
will not engage in the de novo examination required to precisely map the
aforementioned disputed limitation to the algorithm of Sweeney cited by the
Examiner (Ans. 5).
We thus conclude that the rejections of independent claims 1, 6, and 7
lack the requisite specificity needed for the establishment of a prima facie
case of unpatentability, and therefore, we reverse the Examiner’s rejection of
claims 1, 6, and 7.
Because we have reversed the rejection for independent claim 1, we
also reverse the Examiner’s anticipation rejection of dependent claims 2, 3,
and 5 for the same reasons.

Obviousness rejection of claim 4 by Sweeney and Sweeney 2
Because we have reversed the rejection for independent claim 1, we
also reverse the Examiner’s obviousness rejection of dependent claim 4 for
the same reasons.

Anticipation rejection by Lunt
Issue: Under §102, did the Examiner err in finding that claims 1, 6,
and 7 are anticipated by Lunt? More particularly, did the Examiner establish
a prima facie case that Lunt anticipates “a count unit which selects at least
one of the multiple items for each of the multiple personal data entries and
counts the number of personal data entries that include the same item values
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associated with the selected item,” as recited in independent claim 1
(emphasis added), and similarly recited in independent claims 6 and 7?
Appellants contend the Examiner
identified counted number 1130 in Fig. 11 as the claimed count
unit. However, counted number 1130 in Fig. 11 does not
“select[] at least one of the multiple items ... and count[] the
number of personal data entries,” as claimed. Paragraph [0105]
of Lunt describes that “[t]he count portion 1130 reflects the
number of records in each respective grouping of categories.”
The Examiner also identified “COUNT> 1” in Fig. 12 as the
claimed one of the multiple items to be selected. The
“COUNT> 1” is irrelevant to the claimed one of the multiple
items to be selected.

App. Br. 9 (alteration in original).
Appellants also contend Lunt does not disclose or suggest at least one
of the multiple items for each of the multiple personal data entries be
selected and the number of personal data entries that include the same item
values be counted. Consequently, Appellants argue that claims 1, 6, and 7
are patentable over Lunt. App. Br. 8-10.
In the “Response to Arguments” section of the Answer (Ans. 16), the
Examiner merely finds that Figure 15 (and figures 11-13) of Lunt discloses
“the COUNT value, and compares against a threshold value ‘2’ for ensuring
identifiable data not being displayed.” However, the Examiner has not
established, and we do not readily find, where Lunt discloses selecting one
of the multiple items for each of the multiple personal data entries and
counting the number of personal data entries that include the same item
values associated with the selected item. To affirm the Examiner on this
record would require considerable speculation on our part. We decline to
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engage in speculation. Similar to our discussion above, the Examiner did not
establish a prima facie case of anticipation by Lunt. Therefore, we reverse
the Examiner’s rejection of claims 1, 6, and 7.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against claims 1, 6, and 7 under 35 U.S.C. § 101.
Claim 1
Independent claim 1 can be implemented purely as a software system.
Nothing in the specification precludes any of the “storing unit,” “counting
unit,” “judging unit,” or “result output unit” from being implement as
software.
A claim that covers both statutory and non-statutory
embodiments (under the broadest reasonable interpretation of
the claim when read in light of the specification and in view of
one skilled in the art) embraces subject matter that is not
eligible for patent protection and therefore is directed to non-
statutory subject matter.

MPEP § 2106. Therefore, we find independent claim 1 is unpatentable under
35 U.S.C. § 101, as being directed to nonstatutory subject matter.
Claim 6
Claim 6 reads as follows:

6. An information output method which outputs personal
data to an output device, the data output method comprising the
steps of:
storing multiple personal data entries each including
multiple items respectively associated with item values;
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selecting at least one of the multiple items for each of the
multiple personal data entries and counting the number of
personal data entries that include the same item values
associated with the selected item;
judging whether the counted number of personal data
entries is equal to or greater than a predetermined threshold;
and
anonymizing, when the counted number of personal data
entries is equal to or greater than the predetermined threshold,
the item value of an item other than the selected item.

Although it is acknowledged that patent eligibility under § 101 is a
coarse filter and that disqualifying abstractness of a claim must be manifest,
that does not compel a conclusion that there is never a valid basis to hold
that a claim is simply too abstract to qualify as patent eligible. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011); see also Research Corp. Techs, Inc. v. Microsoft Corp., 627 F.3d 859
(Fed. Cir. 2010) and Classen Immunotherapies, Inc. v. Biogen Idec et al.,
659 F.3d 1057 (Fed. Cir. 2011). Similar to the claim 3 in CyberSource, all
of Appellants’ claim 6’s “steps can be performed in the human mind, or by a
human using a pen and paper,” which is merely an abstract idea and, thus,
directed to non-statutory subject matter. See CyberSource, 654 F.3d at 1372-
73 (“[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101.”).
Claim 7
Because the method underlying claim 7 is the same method we find
unpatentable in claim 6, we also find claim 7 unpatentable under 35 U.S.C.
§ 101. See CyberSource, 654 F.3d at 1374 (“Regardless of what statutory
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category (‘process, machine, manufacture, or composition of matter,’ 35
U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes.”).

DECISION
We reverse the Examiner’s rejections of claims 1-7 as set forth above.
We enter a new rejection of claims 1, 6, and 7 under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection
… shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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).

REVERSED
37 C.F.R. 41.50(b)

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