Ex Parte Vialen et al

Patent Trial and Appeal Board

Feb 28, 2018

14302218 (P.T.A.B. Feb. 28, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/302,218 06/11/2014 Jukka Vialen 39700-526C04US 5466
12358 7590 03/02/2018
Mint7 T evin/Nnkia Teohnnlnaies; Ov
EXAMINER
One Financial Center
Boston, MA 02111
PEZZLO, JOHN
ART UNIT PAPER NUMBER
2465
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
IPDocketingBOS @mintz.com
IPFileroomBOS@mintz.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 JUKKA VIALEN and VALTTERINIEMI
Appeal 2017-009835
Application 14/302,218
Technology Center 2400
Before MICHAEL J. STRAUSS, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1 and 28—39, which represent all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Throughout this Decision we have considered the Appeal Brief filed March
31, 2017 (“App. Br.”), Reply Br. filed July 11, 2017, the Examiner’s Answer
mailed May 11, 2017 (“Ans.”) and the Final Office Action mailed
November 10, 2016 (“Final Act.”).
2 Appellants identify Nokia Technologies Oy as the real party in interest.
App. Br. 3.
Appeal 2017-009835
Application 14/302,218
INVENTION
Appellants’ invention is directed to a method for checking the
integrity of communications between a mobile station and a cellular
network. Spec. 12.
Claim 1 is representative and reproduced below:
1. A method comprising:
calculating, by at least one processor, an integrity output based
at least in part on a plurality of values, at least one of the plurality of
values comprising information relating to an identity of a channel
from a plurality of channels, each of the plurality of channels having a
different identity, and at least one of the plurality of input values
being identical for the plurality of channels.
REJECTIONS
The Examiner rejected claims 1 and 28—38 under 35U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2.
The Examiner rejected claims 1 and 28—39 under 35 U.S.C. § 103(a)
as being unpatentable over 3GPP TS 33.102 V3.3.1 Release 1999 hereinafter
3GPP and Agee et al. (US 2016/0204914 Al) hereinafter Agee. Final Act.
3.
CONTENTIONS AND ANALYSIS
We have reviewed Appellants’ arguments in the Brief, the Examiner’s
rejection, and the Examiner’s response to Appellants’ arguments.
Section 103 Rejection
We concur with Appellants’ conclusion that the Examiner erred in
rejecting claims 1 and 28—39 under 35 U.S.C. § 103 as unpatentable over
3GPP and Agee. As Appellants point out, the application claims the benefit
of the earlier filing date of Foreign Patent Application No. GB
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Appeal 2017-009835
Application 14/302,218
2000/0004178.0, filed on Feb. 22, 2000. A certified copy thereof was
included in the Appeal Brief. App. Br. 11-12, Evidence App’x.
The Examiner concludes that “Agee is prior art based on provisional
application number 60/211,462 which supports security and a processor and
predates the effective date of the application.” Ans. 9. However, U.S.
Provisional Application No. 60/211,462 was filed on Jun. 13, 2000, which is
subsequent to Appellants’ effective priority date of Feb. 22, 2000. Because
Agee is not prior art, we do not sustain the Examiner’s rejection of claim
claims 1 and 28—39 under 35 U.S.C. § 103 as unpatentable over the
combination of 3GPP and Agee.
Section 101
The Examiner determines claims 1 and 28—38 are directed to the
abstract idea of following a 3C3PP algorithm to provide security for
messages (channels) between nodes without actually communicating over
the channel between the two nodes. Ans. 7. The Examiner also determines
additional elements recited in these claims do not amount to significantly
more than the abstract idea itself. Id.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 13—18; Reply Br. 5—7. Appellants contend the claims
are not directed to an abstract idea and that the claims amount to
significantly more than an abstract idea. Id.
We do not find Appellants’ arguments persuasive. The Supreme
Court has long held that “[ljaws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134 S. Ct.
2347, 2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)). The ‘“abstract ideas’ category
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Application 14/302,218
embodies ‘the longstanding rule that ‘[a]n idea of itself, is not patentable.’”
Id. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75—78 (2012)). 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 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 the additional
elements [that] “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 77—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.’” Id. (alteration in original) (quoting Mayo, 566 U.S. at 77—
78). The prohibition against patenting an abstract idea “‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610—11 (2010).
Addressing the first step of the Alice inquiry, we agree that
Appellants’ claims are directed to an abstract idea, as explained by the
Examiner. Ans. 7. The steps recited in Appellants’ claims are abstract
processes of calculating data. Cf. Elec. Power Grp. LLC v. Alstom S.A., 830
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Appeal 2017-009835
Application 14/302,218
F.3d 1350, 1353 (Fed. Cir. 2016) (“collecting information, analyzing it, and
displaying certain results of the collection and analysis” is abstract); In re
Salwan, Appeal No. 2016-2079, 2017 WL 957239 at *3 (Fed. Cir. Mar. 13,
2017) (affirming the rejection under § 101 of claims directed to “storing,
communicating, transferring, and reporting patient health information,”
noting that “while these concepts may be directed to practical concepts, they
are fundamental economic and conventional business practices”); Cyberfone
Systems, LLC v. CNN Interactive Grp, Inc., 558 F. App’x 988, 992 (Fed. Cir.
2014) (nonprecedential) (“using categories to organize, store, and transmit
information is well-established”); Apple, Inc. v. Ameranth, 842 F.3d 1229,
1241 (Fed. Cir. 2016) (“ability to generate menus with certain features” held
abstract). Additionally, the claims are not directed to a specific
improvement in the way computers operate. Cf. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Turning to the second step of the Alice inquiry, the limitations in
Appellants’ claims do not add anything “significantly more” to transform
into a patent-eligible application the abstract concept of storing, updating,
and transmitting data. Alice, 134 S. Ct. at 2357.
The specific details of the claims are not “significantly more” than the
abstract idea. These are ordinary steps in data analysis and are recited in an
ordinary order. Limiting an abstract concept of calculating data to a general
purpose computer having generic components, such as the “processor”
recited in Appellants’ claims, does not make the abstract concept patent-
eligible under 35 U.S.C. § 101.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
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eligible invention.” Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims “simply instructing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer” are not patent eligible).
Because Appellants’ claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s rejection of these
claims under 35U.S.C. § 101 as being directed to patent-ineligible subject
matter in light of Alice and its progeny.
For these reasons, and for the additional reasons stated in the Final
Rejection and Answer, we sustain the 35 U.S.C. § 101 rejection of claims 1
and 28—38.
CONCFUSION
We reverse the rejection of claims 1 and 28—39 under 35 U.S.C.
§103.
We affirm the rejections of claims 1 and 28—38 under 35 U.S.C.
§101.
DECISION
The decision of the Examiner to reject claims 1 and 28—38 is affirmed.
The decision of the Examiner to reject claim 39 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)(l)(iv).
AFFIRMED-IN-PART
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