Ex Parte Spinelli et al

Patent Trials and Appeals Board

Mar 14, 2019

12365974 - (D) (P.T.A.B. Mar. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/365,974 02/05/2009
132265 7590 03/18/2019
Kilpatrick Townsend & Stockton LLP/Equifax, Inc.
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309-4528
Tony Spinelli
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.
096923-0370571 7005
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/18/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONY SPINELLI, DAVID HANNIGAN, and
NICK NEDOSTUP
Appeal2017-010380
Application 12/365,974
Technology Center 3600
Before ST. JOHN COURTENAY III, DENISE M. POTHIER, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 39-42, 44--50, and 52---61, which are all of the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm-in-part.
1 According to Appellants, the real party in interest is Equifax, Inc. App. Br.
1.
2 Claims 1-38, 43, and 51 have been canceled, and claims 62 and 63 have
been withdrawn from consideration in accordance with a restriction
requirement by the Examiner ( election by original presentation). Final Act.
2; see also App. Br. 1.
Appeal2017-010380
Application 12/365,974
INVENTION
Appellants' invention relates to providing data security. Abstract.
Claim 39 is illustrative and reads as follows:
39. A method comprising:
generating, by a device comprising a processor, hashed credit bureau
records by hashing credit bureau records of a majority of individuals having
an age over a pre-set age and residing in at least one of the United States of
America or a state within the United States of America, and storing the
hashed credit bureau records;
deleting, by the device, the credit bureau records subsequent to
generating the hashed credit bureau records;
subsequent to deleting the credit bureau records, hashing, by the
device, updated credit bureau records received subsequent to hashing the
credit bureau records, and modifying the stored hashed credit bureau records
using the hashed updated credit bureau records;
deleting the updated credit bureau records subsequent to modifying
the stored hashed credit bureau records using the hashed updated credit
bureau records; and
subsequent to deleting the updated credit bureau records:
receiving, by the device, an electronic communication
addressed to an additional device in a network,
hashing, by the device, content from the electronic
communication,
determining, by the device, that the hashed content from the
electronic communication matches at least one of the stored hashed
credit bureau records as modified using the hashed updated credit
bureau records, and
preventing the electronic communication from being
transmitted to the additional device via the network based on
determining that the hashed content from the electronic
communication matches at least one of the stored hashed credit bureau
records as modified using the hashed updated credit bureau records.
2
Appeal2017-010380
Application 12/365,974
REJECTI0NS 3
Claims 39-42, 44--50, and 52---61 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception without
significantly more. Final Act. 7-11.
Claims 39, 40, 42, 44, 47, 48, 50, 52, 55, and 57 stand rejected under
35 U.S.C. § I03(a) as unpatentable over the combination of Radatti (US
2003/0140049 Al; published July 24, 2003), Shaffer et al. (US
2002/0136381 Al; published Sept. 26, 2002) ("Shaffer"), and Igakura (US
2002/0042796 Al; published Apr. 11, 2002). Final Act. 12-17.
Claims 41, 49, and 56 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Radatti, Shaffer, Igakura, and Seinfeld
et al. (US 2007/0179903 Al; published Aug. 2, 2007) ("Seinfeld"). Final
Act. 17-18.
Claims 45, 53, and 58 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Radatti, Shaffer, Igakura, and Hahn et
al. (US 7,934,098 B 1; issued Apr. 26, 2011) ("Hahn"). Final Act. 18-20.
Claims 46 and 54 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Radatti, Shaffer, and Igakura, Labaton
(US 2009/0265768 Al; published Oct. 22, 2009), and Rawat et al. (US
2006/0224602 Al; published Oct. 5, 2006) ("Rawat"). Final Act. 20-21.
Claims 59 and 60 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Radatti, Shaffer, Igakura, and Nemoto
3 In the Answer, the Examiner withdrew a rejection of claim 61 under
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. See Ans. 3.
3
Appeal2017-010380
Application 12/365,974
et al. (US 2008/0010686 Al; published Jan. 10, 2008) ("Nemoto"). Final
Act. 21-22.
Claim 61 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over the combination of Radatti, Shaffer, Igakura, and Pavlyushchik (US
8,099,785 Bl; issuedJan.17, 2012). Final Act. 22-23.
ANALYSIS
Rejection of Claims 39-42, 44-50, and 52-61 under 35 USC§ 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court 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. v. CLS Bankint'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
and Alice. Id. 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." See Alice, 573
U.S. 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
4
Appeal2017-010380
Application 12/365,974
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 ( Gottschalk v. 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,
193 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); 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 187; 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
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, e.g., 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
5
Appeal2017-010380
Application 12/365,974
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. USPTO's January 7, 2019 Memorandum, 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 ("2019
Guidance"). Under that 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
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we 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 2019 Guidance.
Here, Appellants contend the Examiner erred because preventing
communication of sensitive information via data networks is not an abstract
6
Appeal2017-010380
Application 12/365,974
idea. App. Br. 23. Appellants also argue each independent claim provides a
solution that is necessarily rooted in computer technology ( e.g., a
combination of hashing sensitive data and deleting the sensitive data) in
order to overcome a problem specifically arising in the realm of computer
networks. App. Br. 10. Appellants further argue the particular arrangement
of claim elements (e.g., the arrangement of hashing sensitive data, deleting
the un-hashed sensitive data after hashing, and preventing data transmissions
after deleting the un-hashed sensitive data) improves existing technological
processes ( e.g., data communications). Id.
Step 2A, Prong One - Recited Judicial Exception
Step 2A of the 2019 Guidance is a two-prong inquiry. In Prong One,
we evaluate whether the claim recites a judicial exception. Under Supreme
Court precedent, claims directed purely to an abstract idea are patent in-
eligible. As set forth in the 2019 Guidance, which extracts and synthesizes
key concepts identified by the courts, abstract ideas include (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes. Among those mental processes identified in the 2019 Guidance
are concepts performed in the human mind, such as observation, evaluation,
judgment, and opinion. In addition, the Federal Circuit has concluded that
claims to the mental process of "translating a functional description of
a logic circuit into a hardware component description of the logic circuit"
are directed to an abstract idea because the claims "read on an
individual performing the claimed steps mentally or with pencil and paper."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149--50 (Fed.
Cir. 2016); see also Gottschalkv. Benson, 409 U.S. 63, 67 (1972)) (noting
that the claimed "conversion of [binary-coded decimal] numerals to pure
7
Appeal2017-010380
Application 12/365,974
binary numerals can be done mentally," i.e., "as a person would do it by
head and hand.").
Like those concepts, claim 39 recites mental processes that practically
could be performed via pen and paper or in a person's mind:
generating ... hashed credit bureau records by hashing
credit bureau records of a majority of individuals having an
age over a pre-set age and residing in at least one of the United
States of America or a state within the United States of
America, and storing the hashed credit bureau records;
deleting ... the credit bureau records subsequent to
generating the hashed credit bureau records;
subsequent to deleting the credit bureau records, hashing
... updated credit bureau records received subsequent to
hashing the credit bureau records, and modifying the stored
hashed credit bureau records using the hashed updated credit
bureau records;
deleting the updated credit bureau records subsequent to
modifying the stored hashed credit bureau records using the
hashed updated credit bureau records;
The limitation "generating ... hashed credit bureau records by
hashing credit bureau records" of certain individuals and "storing the
hashed credit bureau records" practically could be performed via pen and
paper or in a person's mind. Because the claim does not limit the
complexity of either the hashing algorithm or the credit bureau records, a
person with pen and paper could generate a written record on paper by
hashing, mentally or on paper, credit bureau records, and then store the
paper on which the record appears. A person with pen and paper could also
"delet[e] . .. the credit bureau records subsequent to generating the hashed
credit bureau records," for example, by crossing them out with a pen. The
same logic applies to the last two limitations, above, which recite updated
credit bureau records and require "subsequent to deleting the credit bureau
8
Appeal2017-010380
Application 12/365,974
records, hashing ... updated credit bureau records received subsequent to
hashing the credit bureau records, and modifying the stored hashed credit
bureau records using the hashed updated credit bureau records," and
"deleting the updated credit bureau records subsequent to modifying the
stored hashed credit bureau records using the hashed updated credit bureau
records."
Similarly, we conclude the following steps of independent claim 4 7
recite mental processes that practically could be performed via pen and
paper or in a person's mind:
generate hashed credit bureau records by hashing the
credit bureau records and storing the hashed credit bureau
records,
delete the credit bureau records subsequent to generating
the hashed credit bureau records,
hash, subsequent to deleting the credit bureau records,
updated credit bureau records received subsequent to ...
hash[ing] the credit bureau records,
modify the stored hashed credit bureau records using the
hashed updated credit bureau records,
delete the updated credit bureau records subsequent to ..
. modify[ing] the stored hashed credit bureau records using the
hashed updated credit bureau records;
We also conclude the following steps of independent claim 55 recite
mental processes that could practically be performed via pen and paper or in
a person's mind:
generating hashed credit bureau records by hashing
credit bureau records of a majority of individuals having an
age over eighteen and residing in the United States of America,
and for storing the hashed credit bureau records;
deleting the credit bureau records subsequent to
generating the hashed credit bureau records;
9
Appeal2017-010380
Application 12/365,974
subsequent to deleting the credit bureau records, hashing
updated credit bureau records received subsequent to hashing
the credit bureau records, and for modifying the stored hashed
credit bureau records using the hashed updated credit bureau
records;
deleting the updated credit bureau records subsequent to
modifying the stored hashed credit bureau records using the
hashed updated credit bureau records;
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are integrated
into a practical application.
Step 2A, Prong Two - Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, claim 39 recites the additional elements of:
subsequent to deleting the updated credit bureau records:
receiving, by the device, an electronic communication
addressed to an additional device in a network,
hashing, by the device, content from the electronic
communication,
determining, by the device, that the hashed content from the
electronic communication matches at least one of the stored hashed
credit bureau records as modified using the hashed updated credit
bureau records, and
preventing the electronic communication from being
transmitted to the additional device via the network based on
10
Appeal2017-010380
Application 12/365,974
determining that the hashed content from the electronic
communication matches at least one of the stored hashed credit bureau
records as modified using the hashed updated credit bureau records.
Claim 39 also recites the additional element of "a device comprising a
processor."
Considering the claim as a whole, the "preventing" step applies or
uses the abstract idea in a meaningful way such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. The
"preventing" is "based on determining that the hashed content from the
electronic communication matches at least one of the stored hashed credit
bureau records as modified using the hashed updated credit bureau records."
Because the preventing is based on the hashed content from the electronic
communication matching the stored hashed credit bureau records, the
limitation imposes meaningful limits on the claim such that it is more than
nominally or tangentially related to the invention. In other words, the
limitation amounts to more than insignificant extra-solution activity. Thus,
the abstract idea in claim 39 is integrated into a practical application.
Claims 4 7 and 55 recite similar "preventing" steps, which applies or uses the
abstract idea in a meaningful way.
Because claims 39, 47, and 55 integrate the recited judicial exception
into a practical application, they are not "directed to" a judicial exception
and, therefore, our inquiry ends.
For these reasons, under the 2019 Guidance, we reverse the
Examiner's§ 101 rejection of independent claims 39, 47, and 55. We also
reverse the Examiner's§ 101 rejection of the dependent claims and are
persuaded that the Examiner erred in concluding claims 40-42, 44--46, 48-
11
Appeal2017-010380
Application 12/365,974
50, 52-54, and 56-61, which fall with the independent claims from which
they depend.
Rejection of Claims 39-42, 44-50, 52-58, and 61 under 35 US.C. § 103(a)
We have reviewed the§ 103(a) rejections of claims 39-42, 44--50,
52-58, and 61 in light of Appellants' arguments that the Examiner erred.
We have considered in this decision only those arguments Appellants
actually raised in the Briefs. Any other arguments Appellants could have
made, but chose not to make, in the Briefs are waived. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
With respect to independent claim 39, Appellants contend the cited
portions of Radatti, Shaffer, and Igakura do not disclose the "particular
sequence of hashing credit bureau records, deleting the un-hashed credit
bureau records, and then matching the hashed version of the deleted records
to an electronic communication," recited in claim 39. App. Br. 32-35.
Appellants argue "Radatti does not teach deleting the files used to create the
hash values in its system, let alone using hashed versions of deleted
data for some other purpose." Id. at 33-34. Appellants further argue
Shaffer and Igakura fail to cure Radatti's deficiency. Id. at 34.
We are not persuaded that the Examiner erred. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
12
Appeal2017-010380
Application 12/365,974
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413,425
(CCPA 1981).
Appellants attack Radatti individually, even though the Examiner
relied on the combination of Shaffer, Igakura, and Radatti in rejecting claim
39. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re
Keller, 642 F .2d at 425). The Examiner found Radatti teaches the steps of
generating hashed records, deleting the original records, and hashing
updated records. Final Act. 12; Ans. 10-11. The Examiner relied on
lgakura in combination with Radatti and Shaffer as teaching deleting
updated records. Final Act. 13-14; Ans. 11.
Appellants have not persuasively rebutted the Examiner's findings. In
particular, Appellants have not persuasively argued why the disputed claim
limitations would not have been obvious to those of ordinary skill in the art
in light of the cited teachings of the combined references. See App. Br.
32-35.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Shaffer, Igakura, and Radatti teaches or
suggests the disputed limitations of claim 3 9.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 39, as well as the Examiner's § 103(a) rejection of
independent claims 47 and 55, which Appellants argue are patentable for
similar reasons. App. Br. 32. We also sustain the Examiner's rejection of
13
Appeal2017-010380
Application 12/365,974
dependent claims 40-42, 44--46, 48-50, 52-54, 56-58, and 61, not argued
separately with particularity. Id. at 30-31.
Claims 59 and 60
Appellants argue that the Examiner erred in rejecting dependent claim
59 because the cited portions of Radatti, Shaffer, and Igakura fail to teach or
suggest that the device of claim 39 "is included in an additional network"
and "wherein the performs the determining step based on the network to
which the electronic communication is addressed being external to the
additional network," and "wherein the device omits the determining step and
the preventing step for an additional electronic communication addressed to
the additional network that includes the device." App. Br. 37.
We are persuaded that the Examiner erred. Claim 59 requires that the
"determining" and "preventing" steps of claim 39 are omitted for additional
electronic communications addressed to an additional network that includes
the device. We agree with Appellants that the Examiner has not cited
sufficient teachings in Nemoto for the requirements of claim 59. Neither
Nemoto's Abstract nor Nemoto's paragraph 146, cited by the Examiner,
teaches or suggests omitting the determining and preventing steps as claim
59 requires. See Ans. 11-12. Nemoto's Abstract teaches that a control unit
determines whether to permit accesses to resources from an external
apparatus, in accordance with access control levels. See Ans. 11 ( citing
Nemoto Abstract). Paragraph 146 ofNemoto merely teaches that a control
unit receives rank information and an address of an access target from an
external apparatus via an external interface and compares the rank
information with a stored upper limit value. See Nemoto ,r 146. The cited
portions of N emoto do not sufficiently teach or suggest the disputed
14
Appeal2017-010380
Application 12/365,974
limitation "the device omits the determining step and the preventing step for
an additional electronic communication addressed to the additional network
that includes the device."
For these reasons, on the record before us, we do not sustain the
Examiner's§ 103(a) rejection of claim 59, or of claim 60, dependent
thereon. Accordingly, we reverse the Examiner's§ 103(a) rejection of
dependent claims 59 and 60.
DECISION
We reverse the Examiner's decision rejecting claims 39-42, 44--50,
and 52---61 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 39-42, 44--50,
52-58, and 61 under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 59 and 60 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
15