Hewlett-Packard Development Company, L.P.Download PDFPatent Trials and Appeals BoardJul 10, 20202019002622 (P.T.A.B. Jul. 10, 2020) 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. 15/304,825 10/17/2016 Matthew D GAUBATZ 84546268 6279 22879 7590 07/10/2020 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER BALI, VIKKRAM ART UNIT PAPER NUMBER 2663 NOTIFICATION DATE DELIVERY MODE 07/10/2020 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): ipa.mail@hp.com jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW D. GAUBATZ, STEVEN J. SIMSKE, and ROBERT ULICHNEY ____________ Appeal 2019-002622 Application 15/304,825 Technology Center 2600 ____________ Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU, and SHARON FENICK, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b)(1). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Hewlett-Packard Development Company, L.P. as the real party in interest. Appeal Br. 2. Appeal 2019-002622 Application 15/304,825 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to authentication methods for confirming that a product is associated with an expected source. Spec. ¶ 1. “For example, a package may include a barcode, steganographic halftone, grid code, or other printed image that may include authentication data used to verify that the package is associated with the expected source. If the authentication data is found unlikely to be authentic, counterfeiting may be suspected.” Id. Claims 1, 6, and 12 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer system, comprising: a storage storing a data partition key and an authentication data; and a processor in communication with the storage to: determine partition authentication information related to partitions of the authentication data by comparing the partitions to the data partition key to determine a degree of similarity; determine content authentication information related to the content of the authentication data, wherein the partition authentication information and the content authentication information are independent and of different lengths, and wherein content authentication information is determined in portions of data determined to have a higher likelihood of authenticity based on the degree of similarity associated with particular portions; determine a likelihood of authenticity of the authentication data based on the partition authentication information and the content authentication information using at least one of an error rate of the amount of data per partition and a distribution of Hamming distances of the data partition key and the authentication data; and Appeal 2019-002622 Application 15/304,825 3 output binary information related to the likelihood of authenticity based on a threshold. Appeal Br. 14 (Claims App.). REJECTION Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 4–8. OPINION An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted § 101 to “contain[] an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In Alice, the Supreme Court reiterated the two-step framework previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (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, 573 U.S. at 217. The first step in this analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id. Concepts determined to be abstract ideas include certain methods of organizing human activity, such as fundamental economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined Appeal 2019-002622 Application 15/304,825 4 that the claims are directed to a patent-ineligible concept, the second step of the analysis requires consideration of 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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). “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. at 221 (alterations in original) (quoting Mayo, 566 U.S. at 77). In other words, the claims must contain an “inventive concept,” or some element or combination of elements “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566 U.S. at 72–73). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. at 221. In January 2019, the PTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 “All USPTO personnel are, as a matter of internal agency management, expected 2 In October 2019, in response to received public comments, the PTO issued a further memorandum clarifying the Revised Guidance. USPTO Memorandum, October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019), available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (“October 2019 Update”). Appeal 2019-002622 Application 15/304,825 5 to follow the guidance.” Id. at 51; see also October 2019 Update at 1. Consistent with that guidance,3 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 fundamental economic practices, or mental processes) (“Step 2A, Prong 1”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong 2”).4 See Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then (under “Step 2B”) look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, and 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. 3 Our reviewing court has explained that the Revised Guidance “cannot modify or supplant the Supreme Court’s law regarding patent eligibility, or [our reviewing court’s] interpretation and application thereof.” In re Rudy, 956 F.3d 1379, 1383 (Fed. Cir. 2020). Our decision is based upon applicable statutory authority and precedent of the United States Supreme Court and Court of Appeals for the Federal Circuit and applies the analytical framework set forth in the Revised Guidance in a manner consistent with authority and precedent. 4 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (Section III.A.2). Appeal 2019-002622 Application 15/304,825 6 See Revised Guidance, 84 Fed. Reg. at 56. The Examiner determines that the claims are directed to an abstract idea. Final Act. 7. Specifically, the Examiner finds that the claims recite analyzing data using mathematical formulas and outputting results of the analysis, as well as mental processes. Id.; Ans. 7–8. The Examiner further determines that the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Act. 7–8; Ans. 8. For example, the Examiner finds that the claims recite generic computing components and do not reflect an improvement in computers or a technical field. Final Act. 7–8. Appellant argues that the claims are not directed to an abstract idea because they are directed to an improvement in computer-related technology, specifically providing “an additional level of security designed around a payload . . . of individual data-carrying partitions of an authentication string” without preempting all ways of doing so. Reply Br. 11; Appeal Br. 11. Appellant further argues that the claims amount to significantly more than an abstract idea because they define improvements to computer functionality and “describe a specific solution to authentication problems when operating under limited authentication space by providing a natural and integrated multi-factor approach to authentication.” Reply Br. 20–21; see Appeal Br. 8, 11. According to Appellant, the Examiner’s determinations are conclusory and without adequate support, and the Examiner has not considered the claims as a whole. Appeal Br. 5; Reply Br. 22. Appeal 2019-002622 Application 15/304,825 7 Step 2A, Prong 1 We agree with the Examiner that the claims recite a judicial exception, i.e., an abstract idea. See Ans. 8. In particular, we agree that the claims recite mental processes. See id. For example, independent claim 1 recites: determine partition authentication information related to partitions of the authentication data by comparing the partitions to the data partition key to determine a degree of similarity; determine content authentication information related to the content of the authentication data, wherein the partition authentication information and the content authentication information are independent and of different lengths, and wherein content authentication information is determined in portions of data determined to have a higher likelihood of authenticity based on the degree of similarity associated with particular portions; determine a likelihood of authenticity of the authentication data based on the partition authentication information and the content authentication information using at least one of an error rate of the amount of data per partition and a distribution of Hamming distances of the data partition key and the authentication data Under their broadest reasonable interpretation, these “determine” limitations cover performance of the limitations in the mind (as do corresponding limitations in independent claims 6 and 12), but for the recitation of generic components. That is, other than the “computer system,” “storage,” and “processor in communication with the storage” recited in claim 1 (and “processor reading and executing instructions from a machine-readable storage medium” recited in claim 6, and “machine-readable non-transitory storage medium comprising instructions executable by a processor” recited in claim 12) as performing the recited steps, nothing in the claims precludes Appeal 2019-002622 Application 15/304,825 8 those steps from being performed in the human mind. For example, but for the recitation of the “computer system,” “storage,” and “processor,” claim 1 encompasses mentally determining the partition authentication information by mentally comparing the partitions to the data partition key to mentally determine a degree of similarity; mentally determining the content authentication information independently of the partition authentication information determination, in portions of data having a higher likelihood of authenticity based on the degree of similarity associated with particular portions; and mentally determining a likelihood of authenticity of the authentication data based on the partition authentication information and the content authentication information using an error rate of the amount of data per partition or a distribution of Hamming distances of the data partition key and the authentication data. The October 2019 Update cautions that in evaluating patentability, we should keep in mind that “[c]laims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.” October 2019 Update 7. “In contrast,” however, “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions.” Id. at 7–8. While Appellant argues that certain steps “cannot be performed mentally owing to the level of analysis and processing that [they] require[],” Appellant provides no evidence or explanation as to why those steps cannot be performed in the mind. Reply Br. 14–17. For example, Appellant argues that the step of “determin[ing] partition authentication information related to partitions of Appeal 2019-002622 Application 15/304,825 9 the authentication data by comparing the partitions to the data partition key to determine a degree of similarity” cannot be performed mentally. Id. at 14–15. However, on the present record, it appears that this limitation encompasses comparisons which could be performed mentally. See Spec. ¶¶ 23–24, Fig. 3. Appellant also provides portions of the Specification in support of the argument (Reply Br. 15–16), but these portions of the Specification do not support a finding that the limitations could not be practically performed in the human mind. Paragraph 26 of the Specification notes that information “may be used in any suitable manner and in any suitable combination to determine the likelihood of authenticity.” Spec. ¶ 26 (quoted at Reply Br. 16). Additionally, while Appellant cites a paragraph relating to the distribution of Hamming distances, we note that this calculation is one alternative to be used in the limitation relating to the determination of a likelihood of authenticity. See Reply Br. 16 (quoting Spec. ¶ 38). Thus, even if we found that the calculation of such a distribution could not be practically performed in the human mind, the limitation as a whole might still be performed mentally. We agree with the Examiner, therefore, that these limitations recite mental processes. See Answer 8. Accordingly, the claims recite mental processes and, thus, an abstract idea. Step 2A, Prong 2 Because the claims recite an abstract idea, we next look to whether the claims recite additional elements that integrate the abstract idea into a practical application. Revised Guidance, 84 Fed. Reg. at 54. Claim limitations that indicate integration into a practical application include Appeal 2019-002622 Application 15/304,825 10 additional elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. Id. at 55. When a claim recites a judicial exception and fails to integrate the judicial exception into a practical application, the claim is “directed to” the judicial exception. Id. at 51. We determine that the additional limitations recited in the claims do not integrate the recited judicial exception into a practical application. For example, claim 1 additionally recites “output[ting] binary information related to the likelihood of authenticity based on a threshold.” This “output” step is recited at a high level of generality (i.e., as general means of outputting a result based on the likelihood of authenticity determination) and amounts to insignificant post-solution activity. See Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g). We agree with the Examiner that the claims otherwise merely recite generic computer components that similarly fail to integrate the recited abstract idea into a practical application. See Final Act. 8.5 For example, 5 Appellant contends that the Examiner has not provided “support for the assertion that the claim elements are a recitation of generic conventional computer functions,” citing the PTO’s Berkheimer Memorandum, which clarifies that an examiner’s conclusion that an element represents well- understood, routine, conventional activity must be based upon a factual determination supported in writing. Reply Br. 21–22; see “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19, 2018), https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.pdf. Appellant’s contention that the Examiner has not provided adequate support under Berkheimer is inapposite because the Examiner has not made a finding that any claim elements are well- understood, routine, and conventional. We, however, make such a finding as discussed below in Step 2B. Appeal 2019-002622 Application 15/304,825 11 claim 1 recites a “computer system,” “storage,” and “processor.” These limitations are recited at a high level of generality, i.e., as generic components performing generic computer functions of computer processing, data storage (i.e., storing the data partition key and authentication data), and communication. These generic limitations merely apply the abstract idea using generic computer components. See Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f). The claim limitations do not include any particular machine that is integral to the claim. See Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(b). Appellant argues that the claims are not directed to an abstract idea, but rather to “a specific improvement to the technical field of product authentication” (Appeal Br. 10), providing “an additional level of security designed around a payload . . . of individual data-carrying partitions of an authentication string” (Reply Br. 11). We are unpersuaded by Appellant’s argument because the claims do not reflect a technological improvement in addition to the abstract idea. As discussed above, the recited “computer system,” “storage,” and “processor” are merely generic computer components performing generic functions of computer processing, data storage, and communication. The additionally recited elements “do not require an arguably inventive set of components or methods, such as measurement devices or techniques, that would generate new data. They do not invoke any assertedly inventive programming.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). Although Appellant argues that “the claimed techniques evaluate the degree to which the partitions representing the data express the appropriate amount of data, thereby creating an additional channel of information” (Reply Br. 11), this Appeal 2019-002622 Application 15/304,825 12 “additional channel of information” results from the step of “determin[ing] partition authentication information,” which, as discussed in the above analysis under Step 2A, Prong 1, is a mental process and, thus, an abstract idea. The claims simply recite the abstract idea with the benefit of generic computer technology. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (finding that automation of an abstract idea and “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”). Thus, the claims do not reflect an improvement in computer functionality or to any other technology or technical field. See Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(a). Even in combination, the additional limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, we agree with the Examiner that the claims are directed to an abstract idea. Step 2B Turning to Step 2B of the Revised Guidance, we determine that there are no specific limitations beyond the judicial exception, i.e., the abstract idea, that are not “well-understood, routine, and conventional” in the field. See Alice, 573 U.S. at 225. For example, the “computer system,” “storage,” and “processor” recited in claim 1 are mere recitations of generic computer structures performing generic computer functions that are well-understood, routine, and conventional, and thus do not amount to significantly more than the abstract idea. See Spec. ¶¶ 13 (“The computing system 100 may include a processor 101 and a machine-readable storage medium 102.”), 14 (“The processor 101 may be a central processing unit (CPU), a semiconductor- Appeal 2019-002622 Application 15/304,825 13 based microprocessor, or any other device suitable for retrieval and execution of instructions.”), 15 (disclosing that “machine-readable storage medium 102 may be any suitable machine readable medium” and listing various examples). Those additional elements relate to no more than implementation of the abstract idea using generic computer components and do not provide an inventive concept to transform the abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 223–24. In Step 2B, we further reevaluate the extra-solution activity of “output[ting] binary information related to the likelihood of authenticity based on a threshold.” See Revised Guidance, 84 Fed. Reg. at 56. Although Appellant argues that “the claims are directed to a tangible termination (‘yes’, ‘no’) of whether a product is authentic or not” (Reply Br. 18 (emphasis omitted)), we find nothing unconventional in this step of outputting a result based on the likelihood of authenticity determination. Although Appellant argues that the claims amount to significantly more than the abstract idea by “describ[ing] a specific solution to authentication problems when operating under limited authentication space by providing a natural and integrated multi-factor approach to authentication” (Reply Br. 21), Appellant has not shown that the claims on appeal add any specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field. The “multi-factor approach to authentication” results from the “determine” steps, which, as discussed above in Step 2A, Prong 1, recite an abstract idea. Appellant also provides no evidence of how the ordered combination is unconventional or amounts to significantly more than the abstract idea to which the claims are otherwise directed. Appeal 2019-002622 Application 15/304,825 14 Appellant further argues that the claimed features are recited in a “high degree of detail” (Reply Br. 16) and that the claims do not “preempt all ways of enabling an additional level of security designed around the payload . . . of individual data-carrying partitions of an authentication string” (Appeal Br. 11). This argument is unavailing, as the absence of complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity—such as identifying a relevant audience, a category of use, field of use, or technological environment.”) (citations omitted), vacated and remanded, WildTangent, Inc. v. Ultramercial, LLC, 573 U.S. 942 (2014) (remanding for further consideration in light of Alice). Thus, even if the claims do not preempt the abstract idea, that alone is insufficient to render the claims patent-eligible. While Appellant argues that the Examiner’s determinations are conclusory and that the Examiner has not considered the claims as a whole (Appeal Br. 5), we have reviewed the record and, considering the claim elements individually and as an ordered combination, we agree with the Examiner that there are no meaningful claim limitations that represent sufficiently inventive concepts to transform the nature of the claims into a patent-eligible application of the abstract idea. Appeal 2019-002622 Application 15/304,825 15 For the foregoing reasons, we sustain the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101. CONCLUSION The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is affirmed. DECISION SUMMARY In summary: TIME PERIOD FOR RESPONSE 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 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 Copy with citationCopy as parenthetical citation