Ex Parte Tserkovny et alDownload PDFPatent Trial and Appeal BoardAug 28, 201811754676 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/754,676 05/29/2007 25537 7590 08/30/2018 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Alex Tserkovny 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. 20060365 7807 EXAMINER MANDEL, MONICA A ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX TSERKOVNY, ANTOINETTE F. HERSHEY, THOMAS J. ANTELL, and MICHAEL A. WEINTRAUB Appeal2017-004423 Application 11/754,676 1 Technology Center 3600 Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and ROBERT L. KINDER, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's non-final rejection of claims 1-3, 5-10, 12-19, and 22. 2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Verizon Communications Inc. as the real party in interest. Appeal Br. 3. 2 A prior decision on appeal was rendered in this application, Appeal No. 2012-010978 (mailed Sept. 16, 2015), reversing the Examiner's prior rejections. Appeal2017-004423 Application 11/754,676 SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants claim a system and method for exchanging information between subscribers of network services. See generally Spec. ,r 16. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A system, comprising a management device; and a first proxy device to: receive a request from a first subscriber of network services provided by the system, the request being intended for a second subscriber of network services provided by the system, and forward control information associated with the request to the management device; where the management device is to: receive the control information associated with the request from the first proxy device, identify requirements associated with communications between the first and second subscribers, and forward the requirements to the first proxy device; and a second proxy device, where the first proxy device is further to: receive the requirements from the management device, process the request in accordance with the identified requirements, wherein the processing comprises performing at least one of first security related processing or first compatibility related processing on the request, and forward message data associated with the processed request to the second proxy device, wherein the second proxy device is associated with the second subscriber, and wherein the second proxy device is to: 2 Appeal2017-004423 Application 11/754,676 receive the message data from the first proxy device, perform at least one of second security related processing or second compatibility related processing on the received message data, and forward the message data, subsequent to performing at least one of the second security related processing or second compatibility related processing, to the second subscriber. THE REJECTION The following rejection is before us for review: Claims 1-3, 5-10, 12-19, and 22 are rejected under 35 U.S.C. § 101. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1-3, 5-10, 12-19, and 22 under 35 U.S.C. § 101. 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." 3 Appeal2017-004423 Application 11/754,676 Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) ( citations omitted) ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. Although the Court in Alice made a direct finding as to what the claims were directed to, we determine that the plain language of the claims and the Specification provide enough information to inform one as to what they are directed to. The Examiner found that the claims are directed to "the abstract idea of comparing new and stored information and using rules to identify options which is a type of 'idea "of itself" similar to those found by courts to be abstract (e.g. Smartgene)." Non-Final Act. 2 (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014)). In other words, we find that the claims are directed to routing messages between subscribers via respective proxies according to rules to effect security or format compatibility. We agree with the Examiner. We find that representative claim 1 recites steps of, "receiv[ing] a request from a first subscriber," "receiv[ing] ... control information associated with the request," "identify[ing] requirements associated with communications between the first and second subscribers," "forward[ing] ... requirements to the first proxy device," "receiv[ing] the requirements," "process[ing] the request in accordance with the identified requirements," and "forward[ ing] message data associated with the processed request to the second proxy device ... associated with the second subscriber," constitute "analyzing 4 Appeal2017-004423 Application 11/754,676 information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, routing messages between subscribers via respective proxies according to rules to effect security or format compatibility is an "abstract idea" beyond the scope of§ 101. Also, the Specification states: "Proxies 230 and 232 allow participants who conduct business transactions with other parties to exchange data in a secure, accountable and highly trusted manner." Spec. ,r 18. "Broker 220 may provide and guarantee secure and highly accountable data exchanges between providers and consumers, such as provider 270 and consumer 280." Spec. ,r 17. "[A] billing system included in backend systems 240 may generate billing information for subscribers. As another example, an auditing system included in backend systems 240 may audit transactions involving subscribers." Spec. ,r 20. "Provisioning system 250 may include provisioning information used by management layer 210 to ensure that customers are able to communicate in a seamless, transparent manner in accordance with agreed to protocols, standards, etc." Spec. ,r 21. "[A] billing system included in backend systems 240 may use the stored transaction information for billing one or both of provider 270 and consumer 280 for the particular transaction/communication session, for auditing purposes, for monitoring purposes .... " Spec. ,r 51. Claim 9 recites, "the at 5 Appeal2017-004423 Application 11/754,676 least one backend component comprises a billing component, where the billing component is to: identify billing parameters agreed to by the first and second subscribers, and generate billing information based on the billing parameters and the received transaction information." Appeal Br. 3 6. Thus, routing messages between subscribers via respective proxies according to rules to effect security or format compatibility in transactions is also a fundamental economic principle because security against fraud is a basic tenant of commerce. The patent-ineligible end of the spectrum includes fundamental economic practices. Alice, 134 S. Ct. at 2357. As in Alice, 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 an intermediated settlement, as discussed in Alice, and the concept of routing messages between subscribers via respective proxies according to rules to effect security or format compatibility. Both are squarely within the realm of "abstract ideas" as the Court has used that term. That the claims do not preempt all forms of the abstraction or may be limited to transaction messages, do not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data reception, transmission, and linkage and does not recite an improvement to a particular computer 6 Appeal2017-004423 Application 11/754,676 technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (finding claims not abstract because they "focused on a specific asserted improvement in computer animation"). The introduction of a computer into the claims does not alter the analysis at Alice step two. [T]he 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 deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[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 featur[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted). Instead, "the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer." Id. at 23 59. 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 retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval----one of the most basic functions of a computer. All of these computer functions are 7 Appeal2017-004423 Application 11/754,676 well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 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 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) ( citation omitted). 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- access/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) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. 8 Appeal2017-004423 Application 11/754,676 The 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 equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. See, e.g., Spec. ,r,r 12-15. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. We have reviewed all the arguments (Appeal Br. 10-31; Reply Br. 2- 11) Appellants have submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments that have been made, but, for purposes of completeness, we will address various arguments in order to address specific contentions made by Appellants. Appellants argue, "In contrast to the Examiner's allegations, claim 1 recites real world features involving communications between a management device, a first proxy device and a second proxy device that are not at all related to merely comparing new and stored information and identifying options." Appeal Br. 12 (emphasis omitted). We disagree with Appellants. The fact that a claim recites "real world features" does not by itself render it patent eligible. We reference our 9 Appeal2017-004423 Application 11/754,676 two-step Alice analysis above with regard to the standards for patent eligibility under 35 U.S.C. § 101. Appellants argue, "the initial burden of establishing a prima facie case of patent-ineligible subject matter under 35 U.S.C. § 101 has not been established in the first instance by a preponderance of the evidence." Id. at 13. In this regard, there is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., section IV, "JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY" to 2014 INTERIM GUIDANCE ON PATENT SUBJECT MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings." (emphasis added) (footnote omitted)). We agree that evidence may be helpful in certain situations where, for instance, facts are in dispute. 3 But, it is not always necessary. Based on the above analysis set forth by the Examiner (Non-Final Act. 2---6), we are unpersuaded it is necessary in this case. 3 See, e.g., MPEP § 2106. 07 ( a )(III) (2018) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Thus, the court does not require 'evidence' that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues." (citations omitted)). 10 Appeal2017-004423 Application 11/754,676 Appellants argue, "The pending claims, such as claim 1, are similarly rooted in computer technology, such as the use of a management device and first and second proxy devices to facilitate efficient communications between first and second subscribers of network services provided by the claimed system." Appeal Br. 13. In light of the breadth of the claim, the Appellants' argument is not persuasive as to error in the rejection. This is because claim 1 does not designate beyond the term "device" any more technology than a "device." We note that a pen and paper constitute a writing device. If a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent eligible under § 101. Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011). Likewise unpersuasive is Appellants' citation to DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014), to evidence that claim 1 is "necessarily rooted in computer technology." Appeal Br. 16-17. We disagree with Appellants because in DDR the claims at issue involved, inter alia, "web pages displays [with] at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants" ( claim 1 of US 7,818,399). DDR, 773 F.3d at 1249. There is no such claim element with this degree of detail here before us. All that is required by the claims are generically recited "proxy devices" and a "management device." Appellants argue, "With respect to claim 1, no prior art has been applied to claim 1 and all of the Examiner's previous prior art rejections were reversed by the Patent Trial and Appeal Board. Therefore, the features 11 Appeal2017-004423 Application 11/754,676 of claim 1 are clearly not well understood, routine and conventional in the field." Appeal Br. 18-19 (emphasis omitted)). We disagree with Appellants. We understand the Examiner, through citation to the July 2015 Update (Answer 6), to rely on prior court decisions finding that certain computer functions are well-understood, routine, and conventional functions. These prior court decisions adequately support this finding to satisfy the requirement to set forth a prima facie case of unpatentability under 35 U.S.C. § 101. Furthermore, the question in step two of the Alice framework is not whether an additional feature is novel, but whether the implementation of the abstract idea involves "more than performance of 'well-understood, routine, [and] conventional activities previously known to the industry.'" Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134 S. Ct. at 2359). Concerning Appellants' arguments to the rejection of independent claim 10 (Appeal Br. 19-23), we direct Appellants' attention to our finding above that the claims are also directed to "routing messages between subscribers via respective proxies according to rules to effect security or format compatibility to effect transactions [which] is a fundamental economic principle." We also restate our arguments above directed to the arguments concerning claim 1 and the similar issues raised which are equally covered by our analysis therein. Concerning Appellants' arguments to claims 2, 3, 5-9, 12-19, and 22, we also affirm the rejections of the dependent claims because Appellants have not challenged such with any reasonable specificity. See In re Nielson, 12 Appeal2017-004423 Application 11/754,676 816 F.2d 1567, 1572 (Fed. Cir. 1987). Appellants arguments only generally allege "[t]he Office Action has not particularly addressed" the dependent claims as providing "significantly more." (See e.g., Appeal Br. 24). Appellants' arguments fail because they do not indicate what features of these limitations cause the claims to add "significantly more features" and why. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37 C.F.R. § 4I.37(c)(l)(iv). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-3, 5-10, 12-19, and 22 under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 1-3, 5-10, 12-19, and 22 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation