Gail-Joon AhnDownload PDFPatent Trials and Appeals BoardJul 18, 201914168240 - (D) (P.T.A.B. Jul. 18, 2019) Copy Citation 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. 14/168,240 01/30/2014 Gail-Joon Ahn AzTE0113 5935 84646 7590 07/18/2019 Proactive Patents LLC 955 Garden Park Drive Ste 230 Allen, TX 75013 EXAMINER LEMIEUX, JESSICA ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 07/18/2019 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): eofficeaction@appcoll.com mzarinelli@proactivepatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GAIL-JOON AHN ____________________ Appeal 2018-004377 Application 14/168,2401 Technology Center 3600 ____________________ Before HUNG H. BUI, ADAM J. PYONIN, and MICHAEL M. BARRY, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3–8, 10–15 and 17–20, which are all the claims pending in the application. App. Br. 60–64 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellant, Open Invention Network LLC is the real party in interest. App. Br. 2. 2 Our Decision refers to Appellant’s Appeal Brief filed October 20, 2017 (“App. Br.”); Reply Brief filed March 22, 2018 (“Reply Br.”); Examiner’s Answer mailed February 21, 2018 (“Ans.”); Final Office Action mailed July 19, 2017 (“Final Act.”); and original Specification filed January 30, 2014 (“Spec.”). Appeal 2018-004377 Application 14/168,240 2 STATEMENT OF THE CASE Existing user-centric identity management systems enable “users to maintain control over their own digital identities,” but “do not provide adequate user awareness of the consequences of their behavior and other relevant information.” Spec. ¶¶ 9, 38. Appellant’s invention seeks to provide methods for “managing an online user transaction and applying known user information to a risk analysis procedure prior to conducting the transaction.” Spec. ¶ 2. According to Appellant, by utilizing “ontology-based evaluation operations and privacy preference evaluation operations” where potential risks are evaluated by an ontology server that calculates risks in releasing the identified attributes (e.g., user information, billing information, product information, etc.) before submitting the identity information in an online transaction, Appellant’s invention can “assist the user with identifying a relative degree of risk of exposure when performing an identity disclosure.” Spec. ¶¶ 39, 61. Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the claimed subject matter: 1. A method comprising: accessing an online service hosted by a service provider server from a user device; receiving a product selection at the service provider server; creating a request for user identity attributes; transmitting the request for user identity attributes to an identity provider server; identifying at least one class associated with the user identity attributes stored in the identity provider server; receiving an updated set of user identity attributes responsive to the transmitted request; Appeal 2018-004377 Application 14/168,240 3 evaluating the user identity attributes to identify at least one relevant attribute that satisfies the request; transmitting the user identity attributes to an ontology server configured to calculate at least one risk factor; evaluating the at least one risk factor associated with releasing the at least one relevant attribute by determining a numerical risk score based on a numerical personality risk value assigned to the at least one class; and releasing the at least one relevant attribute when the at least one risk factor is below a threshold risk level. App. Br. 60 (Claims App.). EXAMINER’S REJECTION Claims 1, 3–8, 10–15 and 17–20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Final Act. 7–10. DISCUSSION In support of the § 101 rejection of claims 1, 3–8, 10–15 and 17–20, the Examiner determines the claims are directed to “transaction management, a business plan enhanced by common generic hardware, which is a fundamental economic practice” and includes limitations that are similar to (1) concepts of generating menus on a computer as discussed in Ameranth; (2) concepts of collecting information, analyzing it, and displaying certain results of the collection and analysis as discussed in Electric Power Group; and (3) concepts of organizing information through mathematical correlations as discussed in Digitech. Final Act. 8–9; see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (citation Appeal 2018-004377 Application 14/168,240 4 omitted) (holding claims directed to “generating a second menu from a first menu and sending the second menu to another location” are patent-ineligible under § 101); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding claims directed to “a process of organizing information through mathematical correlations” are patent- ineligible under § 101); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that claims directed to “gathering and analyzing information of a specified content, then displaying the results” are patent-ineligible under § 101). The Examiner also determines the claims fail to amount to “significantly more than the judicial exception” because the additional elements recited (e.g., receiver, user device, processor, and transmitter) (1) are generic computer elements that perform generic computer functions that are “well-understood, routine, and conventional activities previously known to the pertinent industry”; and (2) do not improve the functioning of a computer or improve any other technology. Final Act. 9–10; Ans. 6–11. Appellant argues independent claims 1, 8, and 15 with the same arguments and supporting authorities (App. Br. 11–58). We select claim 1 as representative; thus, claims 3–7, 10–14, and 17–20 stand or fall with claim 1 (see 37 C.F.R. § 41.37(c)(1)(iv)). Legal Framework To determine whether claims are patent eligible under § 101, we apply the Supreme Court’s two-step framework articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the Appeal 2018-004377 Application 14/168,240 5 second step 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.” Id. (citation omitted). 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. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). The Federal Circuit has described the Alice step-one inquiry as looking at the “focus” of the claims, their “character as a whole,” and the Alice step-two inquiry as looking more precisely at what the claim elements add—whether they identify an “inventive concept” in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Because there is no single definition of an “abstract idea” under Alice step 1, the Federal Circuit has adopted the common law, analogy-driven approach (i.e., the “analogous claim” test) to determine whether a claim is directed to an abstract idea, and has instructed us “to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., 830 F.3d at 1353–54). Appeal 2018-004377 Application 14/168,240 6 The Office recently published revised guidance interpreting governing case law and establishing a framework to govern all patent-eligibility analysis under Alice and § 101 effective as of January 7, 2019. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”). Revised Guidance Under the Revised Guidance, we first look under Alice step 1 or “Step 2A” to whether: (1) Prong One: the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., [i] mathematical concepts, [ii] mental processes, or [iii] certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) Prong Two: if a judicial exception is recited, whether the claim recites additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)– (h)).3 See Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong One (Judicial Exception) and Prong Two (Integration into a Practical Application). Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an “inventive concept” under Alice step 2 (i.e., Step 2B of the Revised Guidance). See 2019 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18. Specifically, we look to whether the claim: 3 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2018-004377 Application 14/168,240 7 1) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 2) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Turning to the first step of the Alice inquiry, Appellant argues the claims are not directed to an abstract idea because the Examiner (1) “does not consider the operations and the results included in the various operations” and (2) “result[s] of the claims [are] a decision to release sensitive ‘attribute’ information, a tangible and utility-based result stemming from calculations corresponding to risk.” App. Br. 13, 14; see also Reply Br. 2–3. Appellant’s arguments are unpersuasive. Contrary to Appellant’s arguments, Appellant’s Specification and claims describe evaluating risk factors associated with releasing at least one attribute to enable a user to “be informed of the risks involved in disclosing their identity attributes when online.” Spec. ¶ 38. For example, Appellant’s representative claim 1 defines a computer-implemented method comprising (numbering added): [1] accessing an online service hosted by a service provider server from a user device; [2] receiving a product selection at the service provider server; [3] creating a request for user identity attributes; [4] transmitting the request for user identity attributes to an identity provider server; Appeal 2018-004377 Application 14/168,240 8 [5] identifying at least one class associated with the user identity attributes stored in the identity provider server; [6] receiving an updated set of user identity attributes responsive to the transmitted request; [7] evaluating the user identity attributes to identify at least one relevant attribute that satisfies the request; [8] transmitting the user identity attributes to an ontology server configured to calculate at least one risk factor; [9] evaluating the at least one risk factor associated with releasing the at least one relevant attribute by determining a numerical risk score based on a numerical personality risk value assigned to the at least one class; and [10] releasing the at least one relevant attribute when the at least one risk factor is below a threshold risk level. App. Br. 60 (Claims App.). As correctly recognized by the Examiner (see Ans. 6–7), steps (1)–(7) and (9)–(10) of Appellant’s representative claim 1 are descriptive of operations that would ordinarily take place between a user (purchaser) and a service provider during an online transaction. For example, limitations (1)–(2) characterize an online transaction where a purchaser is browsing to purchase, e.g., a product. After selecting the product, the purchaser is required to input identity attributes to finish the check-out and, in doing so, the person determines which identity attributes are required in steps (3)–(7). Lastly, the purchaser determines whether there is risk associated with giving such identity attributes in steps (9)–(10). In addition, step (8) encompasses consulting an expert for numerical data. These are steps that online purchasers go through when conducting a business transaction online, and thus, these steps are nothing more than a series of “fundamental economic practices and methods of organizing human activities” identified in the Revised Guidance, and thus an abstract Appeal 2018-004377 Application 14/168,240 9 idea. See Alice, 573 U.S. at 217–19 (intermediated settlement of traded or exchanged financial obligations to mitigate the risk that one party will not perform); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010) (risk hedging); buySAFE Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (creating a contractual relationship and guaranteeing transactions); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (citations omitted) (“[the] concept of ‘offer based pricing’ is similar to other ‘fundamental economic concepts’ found to be abstract ideas by the Supreme Court and this court.”). Alternatively, steps (1)–(10), highlighted with steps (7) “evaluating the user identity attributes to identify at least one relevant attribute that satisfies the request” and (9) “evaluating the at least one risk factor associated with releasing the at least one relevant attribute by determining a numerical risk score based on a numerical personality risk value assigned to the at least one class,” describe a series of “mental processes” that could be performed in the human mind or by a human using a pen and paper—a subject matter that falls within the three types of abstract ideas identified by Revised Guidance. For example, steps of evaluating attributes and risk factors associated with selecting a particular attribute based on risk score can be performed by a person who is conducting online transaction to determine, e.g., which credit card to use in view of the transaction type. Therefore, we conclude steps (1)–(10) recite “mental processes” identified in the Revised Guidance and, thus, claim 1 recites an abstract idea. See Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52, 54. Appeal 2018-004377 Application 14/168,240 10 Thus, under Step 2A, Prong One, we agree with the Examiner that the claims recite a judicial exception, i.e., an abstract idea. Step 2A, Prong Two (Integration into a Practical Application) Under Prong Two of the Revised Guidance, we must determine if the claims integrate the judicial exception into a practical application. That is, we identify any additional claim limitations beyond the judicial exception and evaluate the additional limitations individually and in combination for determining whether these limitations integrate the judicial exception into a practical application. However, we discern no additional elements (or combination of elements) recited in Appellant’s claims 1, 8, and 15 (e.g., one or more server systems and mobile device) that integrate the judicial exceptions into a practical application. See Revised Guidance, Revised Step 2A, Prong Two. For example, Appellant’s claimed additional elements (e.g., a user device and one or more server systems, which inherently include a processor, transmitter, receiver) recited in claim 1 do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Appellant argues that claim 1 “provides a particular solution to a technological problem” by improving computer-related technology through (1) computer-authorized security; (2) “risk control features” that “provides Appeal 2018-004377 Application 14/168,240 11 data organization in an elevated and unprecedented model not found in conventional user attribute selection and risk assessment approaches”; and (3) consolidating attributes from various different places when determining risk factors instead of identifying attributes from various different places to assess risk factors. App. Br. 14, 20, 22; Reply Br. 3–5. As recognized by the Examiner (see Ans. 9), the claim is focused on “collecting information, analyzing it, and releasing information,” rather than improving computer-related security. Further, Appellant’s claim 1 does not recite any feature necessary to improve any computer-related technology. In particular, Appellant’s method of “evaluating the at least one risk factor associated with releasing the at least one relevant attribute by determining a numerical risk score based on a numerical personality risk value assigned to the at least one class” does not provide a technical solution to a technical problem. The focus of Appellant’s invention is not to improve the performance of computers or any underlying technology, but to use computers as a tool to gather “a numerical risk score based on a numerical personality risk value assigned to the at least one class” so as to provide risk analysis of user attributes to the user (see Spec. ¶¶ 60–62). That is, while Appellant’s methods may improve the user’s process of making an informed decision about releasing user attributes, it is not an improvement to another technology or technical field. Thus, under Step 2A, Prong Two, we determine the judicial exception is not integrated into a practical application under the Revised Guidance. Appeal 2018-004377 Application 14/168,240 12 Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance In the second step of the Alice inquiry, Appellant argues claims 1, 3– 8, 10–15 and 17–20 recite “significantly more” than the alleged abstract idea because (1) like the claims in Diamond v. Diehr, 450 U.S. 175 (1981), Appellant’s claims “improve an existing technological process and relate to conventional industry, in this case, online user submitted actions” (App. Br. 14); and (2) like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), Appellant’s claims are “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” App. Br. 13–14, 22–23. Appellant’s arguments are not persuasive because (1) Appellant has not demonstrated or directed us to any such “technical improvements” and (2) Appellant has also not demonstrated the claimed generic processors, servers, receivers, and transmitter are able, alone or in combination, to perform functions that are not merely generic, as the claims in DDR. See DDR Holdings, 773 F.3d at 1258. As discussed supra, Appellant’s claims merely recite computation steps performable by conventional computers, or even manually by persons performing online transactions: steps that are well-understood, routine, and conventional. As previously discussed, Appellant’s Specification and claims describe techniques that provide numerical risk value of user attributes enabling the evaluation of releasing of the relevant attributes to complete an online transaction—a fundamental economic practice long prevalent in our system of commerce. See Spec. ¶¶ 60–62. Appellant’s evaluating technique based on received numerical risk score does not provide a technical solution Appeal 2018-004377 Application 14/168,240 13 to a technical problem unique to the Internet, i.e., a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Rather, the solution proposed by Appellant is a business solution that utilizes a general purpose computer rather than a technological solution. We find no element or combination of elements recited in Appellant’s claims 1, 8, and 15 that contain any “inventive concept” or add anything “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. 208 at 221. Nor do the claims provide any technical solution to a technical problem as required by DDR Holdings or entail an unconventional technological solution to a technological problem as required by Amdocs. Moreover, Appellant has not shown any specific limitation in claims 1, 8, and 15 beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field. See MPEP § 2106.05(d). Because Appellant’s independent claims 1, 8, and 15 are directed to a patent-ineligible abstract concept and do not recite an “inventive concept” by providing a solution to a technical problem under the second step of the Alice analysis, we sustain the Examiner’s § 101 rejection of independent claims 1, 8, and 15, and their dependent claims 3–7, 10–14, and 17–20 not separately argued. CONCLUSION On the record before us, we conclude Appellant has not demonstrated the Examiner erred in rejecting claims 1, 3–8, 10–15 and 17–20 under 35 U.S.C. § 101. Appeal 2018-004377 Application 14/168,240 14 DECISION As such, we affirm the Examiner’s rejection of claims 1, 3–8, 10–15 and 17–20 under 35 U.S.C. § 101. 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). AFFIRMED Copy with citationCopy as parenthetical citation