Ex Parte Schirmer

Patent Trial and Appeal Board

Apr 30, 2018

10323279 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/323,279 12/18/2002
45092 7590
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
05/02/2018
FIRST NAMED INVENTOR
Andrew L. Schirmer
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.
LOT920020040US 1 1299
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW L. SCHIRMER
Appeal2017-000299
Application 10/323,279
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN A. EV ANS, and
JASON M. REPKO, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 4--9, 11, 12, 15, 16, 18, and 19.
App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellant states the real party in interest is International Business
Machines Corporation. App. Br. 1.
2 Rather than reiterate the arguments of the Appellant and the Examiner, we
refer to the Appeal Brief (filed November 16, 2015, "App. Br."), the Reply
Brief (filed September 29, 2016, "Reply Br."), the Examiner's Answer
(mailed July 29, 2016, "Ans."), the Final Action (mailed July 17, 2015,
"Final Act."), and the Specification (filed December 18, 2002, "Spec.") for
their respective details.
Appeal2017-000299
Application 10/323,279
STATEMENT OF THE CASE
The claims relate to the determination of the relationship of a data
item, obtained from a private data source, to an entity. See Abstract.
INVENTION
Claims 1, 8, and 15 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A computer implemented method for protecting privacy,
compnsmg:
obtaining, by a computing device, a data item from a
private source;
identifying, by the computing device, a relationship of
the data item to an entity;
obtaining, by the computing device, approval to publish
the data item from a data item approver by determining, by the
data item approver, to approve of the publication of the data
item by applying a first set of criteria;
wherein the first set of criteria is selected from the
group consisting of: whether the data item is
secret, or whether the data item is accurate;
obtaining, by the computing device, approval to publish
the relationship from a relationship approver different than the
data item approver by determining, by the relationship
approver, that an acceptable relationship exists using a second
set of criteria different from the first set of criteria, wherein the
determining of an acceptable relationship includes analyzing
meta data pertaining to the data item by a relationship system;
and
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Application 10/323,279
publishing, by the computing device, the data item and
the relationship after receiving approval from both the data item
approver and the relationship approver; wherein information
about the relationship and the relationship approver is hidden
from the data item approver until both the data item and the
relationship are approved for publication.
Ginter, et al.,
Pettovello
Arroyo, et al.,
References and Rejections
us 5,892,900
US 6,449,621 Bl
US 2003/0033167 Al
The claims stand rejected as follows:
Apr. 6, 1999
Filed Nov. 3, 1999
Filed Aug. 13, 2002
1. Claims 1, 2, 4--9, 11, 12, 15, 16, 18, and 19 stand rejected under 35
U.S.C. § 101 as directed to a judicial exception. Final Act. 3.
2. Claims 1, 2, 4--9, 11, 12, 15, 16, 18, and 19 stand rejected under 35
U.S.C. § 103 as unpatentable over Ginter, Arroyo, and Pettovello.
Final Act. 4--8.
ANALYSIS
We have reviewed the rejections of Claims 1-20 in light of
Appellant's arguments that the Examiner erred.
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 3-8.
CLAIMS 1, 2, 4--9, 11, 12, 15, 16, 18, AND 19: ABSTRACT IDEA.
In Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014), the
Supreme Court elaborates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
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Application 10/323,279
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. 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 eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016). 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."
Enfzsh, 822 F.3d at 1334 (citing Mayo, 566 U.S. at 78-79). 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."' Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72-73).
Mayo/Alice Step 1
The Examiner finds Claim 1 recites, in part, a method of obtaining
data from a private source, identifying a relationship, obtaining approval to
publish a data item, obtaining approval to publish a relationship, publishing
a data item and a relationship. Ans. 2.
Appellant contends the Examiner fails to identify the particular
judicial exception which the claims are allegedly directed. Rather, the
Examiner finds the claims are directed to "the abstract idea of publishing
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Application 10/323,279
content based upon receiving approval." Ans. 8 (citing Final Act. 3).
Appellant argues that the finding does not align with a judicially recognized
exception. Id. Appellant argues that simply being a computer-implemented
method is the sole basis of the Examiner's rejection, but that privacy
technology is a critical element of modem computer technology and finding
such technology to be too abstract to be patentable subject matter is a
reversible error. Reply Br. 3.
At Step 1, we agree with the Examiner that the claims are directed to
an abstract method, albeit computerized, of categories to organize, store and
transmit information, which corresponds to concepts previously identified as
abstract. See Ans. 2 (citing CyberFone3). Although the claims recite "a
computing device," the individual steps of the method are capable of being
performed by a person, either mentally or with paper and pencil. Such
capability renders the method abstract. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011).
Mayo-Alice Step 2
Appellant argues "even if the claimed method of protecting privacy
were deemed abstract under the first step of the Alice test, the claims include
additional elements that are sufficient to amount to significantly more than
the judicial exception." Reply Br. 3. At Step 2, the analysis considers 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." Enfzsh, 822 F.3d at 1334
3 CyberFone Systems, LLC v. CNN Interactive Group, 558 Fed. Appx. 988
(Fed. Cir. 2014) (non-precedential).
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Appeal2017-000299
Application 10/323,279
(citing Mayo, 566 U.S. at 78-79). Although Appellant argues the claim
elements "amount to significantly more than the judicial exception" (Reply
Br. 3), but Appellant fails to specify which element or combination of
elements allegedly amounts to significantly more.
On the record before us, we are not persuaded the claims recite
"significantly more" than an abstract idea, nor are we persuaded the
Examiner errs in rejecting Claims 1, 2, 4--9, 11, 12, 15, 16, 18, and 19 under
35 U.S.C. § 101.
CLAIMS 1, 2, 4--9, 11, 12, 15, 16, 18, AND 19: OBVIOUSNESS OVER GINTER,
ARROYO, AND PETTOVELLO.
The Examiner finds Ginter fails to disclose determining an acceptable
relationship using meta data. Final Act. 5. The Examiner finds Arroyo
teaches determining an acceptable relationship using meta data. Id.
Appellant contends Arroyo is silent as to meta data. App. Br. 9.
Contrary to Appellant, the Examiner finds Arroyo discloses "meta
data." Ans. 4 (citing Arroyo, i-f 53; Fig. 5).
In agreement with Appellant, our search of Arroyo fails to reveal the
term "meta data." Specifically, our search of Paragraph 53 and Figure 5
fails to reveal the term "meta data." Nor has the Examiner mapped the terms
actually found in Arroyo to the claimed "meta data."
Because the cited art does not teach at least one claim limitation, we
are constrained by the record to reverse the rejection of Claims 1, 2, 4--9, 11,
12, 15, 16, 18, and 19 under 35 U.S.C. § 103.
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Appeal2017-000299
Application 10/323,279
DECISION
The rejection of Claims 1, 2, 4--9, 11, 12, 15, 16, 18, and 19 under 35
U.S.C. § 101 is AFFIRMED
The rejection of Claims 1, 2, 4--9, 11, 12, 15, 16, 18, and 19 under 35
U.S.C. § 103 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). See 37 C.F.R. §
1.136(a)(l )(iv).
AFFIRMED
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