Masayuki Abe

Patent Trials and Appeals Board

Oct 9, 2019

14371110 - (D) (P.T.A.B. Oct. 9, 2019)

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.
14/371,110 07/08/2014 Masayuki Abe 433892US28PCT 4121
22850 7590 10/09/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PARSONS, THEODORE C
ART UNIT PAPER NUMBER
2494
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MASAYUKI ABE
________________

Appeal 2018-002566
Application 14/371,110
Technology Center 2400
________________

Before CAROLYN D. THOMAS, JASON V. MORGAN, and
JASON M. REPKO, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
JASON V. MORGAN

Opinion Dissenting-in-part filed by Administrative Patent Judge
CAROLYN D. THOMAS

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
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Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. An oral hearing was held August
13, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Summary of the disclosure
The Specification discloses a digital signature method that uses a
signature consisting of four group elements and two verification equations,
ensuring security even with groups based on symmetric bilinear mapping,
which is often used in encryption protocols. Spec. ¶¶ 10, 26.
Illustrative claim
1. A signature verification system comprising:
a signature device which includes processing circuitry
configured to generate an electronic signature that is applied to
electronic data, the electronic signature corresponding to a
particular user, and
a verification device, connected to the signature device via a
network, which includes processing circuitry configured to
receive the electronic data and to verity that the electronic data
was transmitted by the particular user by verifying the
electronic signature,
wherein the processing circuitry of the signature device is
configured to:
record information indicating p, G1, G2, GT, e, g1, and g2,
information needed to obtain e(gu, gv) and e(hu, hv), and
data that includes gs, hs, gt, ht, {g1, h1}, . . . , {gK, hK} as a

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party-in-interest as Nippon
Telegraph and Telephone Corporation. Appeal Br. 1.
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public key vk and records data that includes vk, γs, δs, γt,
δt, γu, δu, γv, δv, {γ1, δ1}, . . . , {γk, δk} as a secret key sk;
select ζ and ρ at random from integers between 0 and
p − 1, both inclusive, obtains w, s, t, and r, as given
below,
w=g1ζ ,
s g1ρ,
t g2δu∙δv δs∙ρ ∏ mk δkKk 1
1
δt,
r g2γu∙γv γs∙ρ∙t γt ∏ mk γtKk 1
1
ζ ,
and generate, as a signature σ, data that includes w, s, t,
and r; and
the processing circuitry of the verification device is configured
to:
record the public key vk; and
check whether two equations
e gu, gv e g , s e gt, t ∏ e gk, mkKk 1 e w, r ,
e hu, hv e hs, s e ht, t ∏ e hk, mkKk 1
are satisfied, and
where G1, G2, and GT represent groups of order p, e represents
pairing of G1 × G2 → GT, g1 represents any generator of group
G1, g2 represents any generator of group G2, K represents a
predetermined integer not smaller than 1, k represents an integer
between 1 and K, both inclusive, m1, . . . , mK represent elements
of group G1, message M is M=(m1, . . . , mK), ^ represents a
power;
γs, δs, γt, δt, γu, δu, γv, δv, {γ1, δ1}, . . . , {γk, δk}are integers between
0 and p – 1, both inclusive; and
gs, hs, gt, ht, gu, hu, gv, hv, {g1, h1}, . . . , {gK, hK} are given as
follows:
gs = g1^γs hs = g1^δs
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gt = g1^γt ht = g1^δt
gu = g1^γu hu = g1^δu
gv = g2^γv hv = g2^δv
gk = g1^γk hk = g1^δk
where k = 1, . . . , K.
Examiner’s rejection
The Examiner rejects claims 1–8 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 7–10.
ANALYSIS
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in § 101, including: (1) laws of nature; (2) natural phenomena; and
(3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217–18.
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“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607,
611 (Fed. Cir. 2016)).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Revised 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) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
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 look to
whether the claim:
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(3) adds a specific limitation beyond the judicial
exception that is 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 Revised Guidance, 84 Fed. Reg. at 56.
Revised Guidance step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines that the claimed invention “involve[s]
mathematical aspects.” Final Act. 8. That is, the Examiner determines that
claim 1 “merely calculates a number using a mathematical formula.” Ans. 9
(citing Gottschalk v. Benson, 409 U.S. 63, 66–67 (1972); Parker v. Flook,
437 U.S. 584, 594–95 (1978)). Thus, the Examiner determines that the
abstract idea at issue is similar to patent-ineligible “mathematical concepts
such as mathematical algorithms, relationships, formulas, and/or
calculations.” Adv. Act. 2 (Sept. 2, 2016) (internal quotations and citations
omitted).
We agree with the Examiner that claim 1 recites mathematical
formula and, thus, mathematical concepts that are well-established as forms
of abstract ideas. Revised Guidance, 84 Fed. Reg. at 51–52. Specifically,
claim 1 recites: (1) on a signature device, calculating w=g1ζ , s g1ρ,
t g2δu∙δv δs∙ρ ∏ mk δkKk 1
1
δt, and r g2γu∙γv γs∙ρ∙t γt ∏ mk γtKk 1
1
ζ , where ζ
and ρ are integers selected randomly from between 0 and p – 1 and (2)
evaluating (i.e., checking) the two equations
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e gu, gv e g , s e gt, t ∏ e gk, mkKk 1 e w, r and
e hu, hv e hs, s e ht, t ∏ e hk, mkKk 1 . Claim 1 further recites
where G1, G2, and GT represent groups of order p, e represents
pairing of G1 × G2 → GT, g1 represents any generator of group
G1, g2 represents any generator of group G2, K represents a
predetermined integer not smaller than 1, k represents an integer
between 1 and K, both inclusive, m1, . . . , mK represent elements
of group G1, message M is M=(m1, . . . , mK), ^ represents a
power;
γs, δs, γt, δt, γu, δu, γv, δv, {γ1, δ1}, . . . , {γk, δk}are integers between
0 and p – 1, both inclusive; and
gs, hs, gt, ht, gu, hu, gv, hv, {g1, h1}, . . . , {gK, hK} are given as
follows:
gs = g1^γs hs = g1^δs
gt = g1^γt ht = g1^δt
gu = g1^γu hu = g1^δu
gv = g2^γv hv = g2^δv
gk = g1^γk hk = g1^δk
where k = 1, . . . , K.
Because these formulas self-evidently represent mathematical
concepts, we agree with the Examiner that claim 1 recites an abstract idea.
Revised Guidance step 2A, prong two
Appellant contends the Examiner erred because even if the purported
abstract idea is “the mere use of math formulas . . . the claims do clearly
recite a real-world application that goes beyond an abstract idea of mere
math formulas.” Appeal Br. 23. That is, Appellant argues “the present claims
are not directed merely to executing an algorithm without outputting or
utilizing the results of the algorithm.” Reply Br. 3. Appellant thus urges us
to consider the additional recitations that ostensibly describe how the
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mathematical formula are applied (e.g., “a signature device which includes
circuitry configured to generate an electronic signature that is applied to
electronic data, the electronic signature corresponding to a particular user,”
“a verification device, connected to the signature via a network, which
includes processing circuitry configured to receive the electronic data and to
verify that the electronic data was transmitted by the particular user by
verifying the electronic signature,” “determine that the signature is correct
when the two equations are satisfied”). These arguments are relevant to
whether the recited abstract idea is integrated into a practical application.
See Revised Guidance, 84 Fed. Reg. at 53.
The Examiner acknowledges that “the mathematical aspects of the
claims may be considered improvements to the field of electronic signature
generation and verification for enabling secure electronic signature
transmission,” but determines “there is no ‘other’ technological or technical
field that is improved upon thereby.” Final Act. 9; see also Adv. Act. 2
(Sept. 21, 2016) (“the abstract idea identified by Examiner was not
electronic signature generation and verification, specifically, but rather the
underlying mathematics used to perform those steps”). The Examiner further
determines the system of claim 1 “stops when it has computed a number and
then makes no use of the number computed to improve the computer or to
improve another technology.” Ans. 10. In other words, it appears the
Examiner either interprets “the field of electronic signature generation and
verification for enabling secure electronic signature transmission” to be a
field of mathematics or interprets the recitations directed to mathematical
concepts as swallowing up any non-mathematical recitations. Appellant
contends, however, that “the electronic signature is . . . applied to electronic
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data, transmitted to a verification device across a network, and then used to
verify that a particular user transmitted the electronic data.” Reply Br. 3–4.
That is, Appellant argues the Examiner’s analysis in effect fails to consider
the claimed application of the recited mathematical concept.
Appellant’s arguments are persuasive of error. A claim containing a
mathematical formula is directed to patent-eligible subject matter when the
claim “implements or applies that formula in a structure or process which,
when considered as a whole, is performing a function which the patent laws
were designed to protect.” Diamond v. Diehr, 450 U.S. 175, 192 (1981). The
mathematical formula by itself would be patent-ineligible, even with
“insignificant post-solution activity” (id. at 191), as would a claim directed
to generic signature verification (cf. Prism Techs. LLC v. T-Mobile USA,
Inc., 696 F. App’x 1014, 1017 (Fed. Cir. 2017) (a process that included
“confirming the authenticity of . . . identity data” was “directed to the
abstract idea of ‘providing restricted access to resources’”)). Specific
improvements to even well-understood, routine, and conventional activities
can, nonetheless, be patent-eligible. See Bascom Glob. Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (citing Alice,
573 U.S. at 225); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1337–39 (Fed. Cir. 2016) (claims “not simply directed to any form of storing
tabular data, but instead . . . specifically directed to a self-referential table
for a computer database” were not directed to an abstract idea). Therefore, in
determining that claim 1 is directed to an abstract idea, the Examiner
erroneously considers only the mathematical concepts recited without
considering how they are applied.
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Furthermore, both the Examiner and Appellant interpret claim 1 as
including verification of a signature. See, e.g., Final Act. 9 (“the
mathematical aspects of the claims may be considered improvements to the
field of electronic signature generation and verification for enabling secure
electronic data transmission”); Ans. 11 (“the instant claims are directed to
nothing more than computing a pure number—the signature or the
verification”); Appeal Br. 24; Reply Br. 3–4. That is, the mathematical
concepts of claim 1 are not merely claimed as abstract mathematical
principles, but are instead claimed as part of the process of using a public
key to verify that a signature calculated for a message had to have been
calculated using a secret key corresponding to the public key. Spec. ¶ 2. And
although the claimed invention does not make a specific use of this
verification, known uses are broad and practical. See id. ¶ 3 (a “digital
signature is used as a basic element in a variety of encryption protocols used
for electronic money, credentials systems, and the like”).
A claim that is “so abstract and sweeping as to cover both known and
unknown uses” is not directed to patent-eligible subject matter. Benson, 409
U.S. at 68 (citing O’Reilly v. Morse, 56 U.S. 65 (1853)). For example, the
claimed binary-coded decimal to pure binary conversion invention of
Benson merely “varie[d] the ordinary arithmetic steps a human would use”
and could “be performed without a computer.” Id. at 67. Thus, the Supreme
Court did not credit conversion of binary-coded decimal to pure binary to be
a practical use by itself. See id. (instead identifying end uses as varying
“from the operation of a train to verification of drivers’ licenses to
researching the law books for precedents”). The Supreme Court’s refusal to
consider binary-coded decimal to pure binary conversion to be a practical
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use reflects the fact that the conversion does not produce any additional
information, but instead merely provides the same information (a number
encoded as binary-coded decimal) in another form (the same number in
encoded as pure binary). That is, the conversion steps recited in Benson were
merely mathematical operations without a recited practical application.
Appellant contends that electronic signature verification itself is, in
contrast, a practical use. Appeal Br. 25. New and useful information—
whether the electronic signature is correct (i.e., had to have been produced
using a secret key corresponding to a public key)—is produced by
performing the verification.
Furthermore, the particular equations recited represent a mathematical
approach that prevents broad preemption of all mathematical approaches to
signature verification because there are other possible approaches to
signature verification. See McRO, 837 F.3d at 1315; see also Spec. ¶¶ 5–11
(describing and citing to non-patent literature disclosing “[k]nown
conventional technologies of group structure preserving signature systems”).
“Groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry.” Myriad, 569 U.S. at 591 (citing Funk
Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948)). But the
claimed invention does not recite solving mathematical formula in the
abstract. Instead, the claimed invention applies the recited mathematical
formula to effect a practical application: ensuring security through signature
verification. See Diehr, 450 U.S. at 187; SRI Int’l, Inc. v. Cisco Sys., Inc.,
930 F.3d 1295, 1304 (Fed. Cir. 2019) (a claim that improved “the technical
functioning of the computer and computer networks by reciting a specific
technique for improving computer network security” was patent-eligible).
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The claimed invention, in particular, improves related prior art
electronic signature verification technologies by reducing the length of the
signature required and by reducing how much computation is needed to
verify a signature. See Spec ¶¶ 26, 54. Thus, under step 2A, prong two, of
the Revised Guidance, the additional elements in claim 1 “reflect an
improvement in the functioning of a computer,” which indicates that “the
judicial exception has been integrated into a practical application.” Revised
Guidance, 84 Fed. Reg. at 55.
For these reasons, we determine that the invention of claim 1
integrates the underlying abstract idea, mathematical concepts, into the
practical application of signature verification. Accordingly, we do not
sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1.
Claims 2, 7, and 8
Claim 2 is similar to claim 1, with the key difference being the
recitation of slightly different mathematical formula. Claims 7 and 8 are
directed to signature verification methods related to the signature
verification claims 1 and 2 respectively. Appeal Br. 38–42. In rejecting
claims 2, 7, and 8 as being directed to patent-ineligible subject matter, the
Examiner relies on the same determinations as those made with respect to
claim 1. See, e.g., Final Act. 7–10. For similar reasons as those discussed
above, we also do not sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 2, 7, and 8.
Claims 3 and 4
Claims 3 and 4 are directed to signature devices that make use of the
signature device equations of claims 1 and 2 respectively. See Appeal Br.
32–35. In rejecting claims 3 and 4 as being directed to patent-ineligible
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subject matter, the Examiner relies on the same determinations as those
made with respect to claim 1 without ascertaining whether the differences
between each of these claims and representative claim 1 affect the analysis
under 35 U.S.C. § 101. See, e.g., Final Act. 7–10.
Claims 3 and 4 lack the particular electronic signature verification
recitations discussed above with respect to claim 1. The preambles of claims
3 and 4, however, recite that the claims are directed to signature devices
configured to generate an electronic signature that is applied to electronic
data . . . and to transmit the electronic signature to a verification device
configured to verify that the electronic data was transmitted by a particular
user by verifying the electronic signature. See Appeal Br. 32–34.
A “preamble limits the invention if it recites essential structure or
steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.”
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002) (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999)). The processing circuitry of claims 3 and 4
both “generate, as a signature σ, data that includes w, s, t, and r,” where the
recited data is described in four equations. See Appeal Br. 33, 35.
Generation of these signatures, and thus the claimed processing circuitry
configured to generate signatures, is given life, meaning, and vitality only
because the generated signatures are verifiable by a verification device. As
such, the preamble limitations of claims 3 and 4 identifying the application
of the generated signature are entitled patentable weight and our analysis
with respect to claim 1 is similarly dispositive with respect to claims 3 and 4.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 3 and 4.
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Claims 5 and 6
Claims 5 and 6 are directed to verification devices that make use of
the verification device equations of claims 1 and 2 respectively. Appeal Br.
at 36–38. In rejecting claims 5 and 6 as being directed to patent-ineligible
subject matter, the Examiner relies on the same determinations as those
made with respect to claim 1 without ascertaining whether the differences
between each of these claims and illustrative claim 1 affect the analysis
under 35 U.S.C. § 101. See, e.g., Final Act. 7–10.
Claims 5 and 6 both recite processing circuitry configured to
determine that a signature is correct when two equations are satisfied, or
that the signature is incorrect when at least one of the two equations is
satisfied. See id. at 36–37. That is, claims 5 and 6 both recite verification of
an electronic signature in a patent-eligible manner similar to that discussed
above with respect to claim 1. Therefore, our analysis with respect to claim 1
is, similarly dispositive with respect to claims 5 and 6.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 5 and 6.

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CONCLUSION2
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–8 101 Eligibility 1–8
REVERSED

2 Although we do not sustain the Examiner’s 35 U.S.C. § 101 rejection of
the claims based on Appellant’s and the Examiner’s mutual understanding of
what the claimed invention is directed to, we caution that there are apparent
inconsistencies in the use of the claim limitations that, if left unaddressed,
may render the claimed invention indefinite under 35 U.S.C. § 112, second
paragraph. For example, claim 1 recites generating “an electronic signature
that is applied to electronic data” (emphasis added) and receiving the
electronic data. Yet, claim 1 fails to provide an explicit link between the
signed electronic data and, for example, “message M.” There is a similar
lack of an explicit link between the “electronic signature” and recitations
such as “signature σ” and “the signature” (which omits the sigma). There are
also no recitations directed to transmission of data in signature σ (i.e., w, s, t,
and r) from the signature device that generates this data, or to the receipt of
this information on the verification device, which uses this data in the
equations for determining that a signature is correct. It is incumbent on
Appellant and the Examiner to identify and ensure that all such
inconsistencies are either remedied or found to be immaterial. We direct
Appellant and the Examiner to Example 41 of the Subject Matter Eligibility
Examples as illustrating how limitations in a cryptographic communications
claim (i.e., a claim in a field that is related to the field of the claimed subject
matter here) can be explicitly tied together to avoid inconsistency. See
Subject Matter Eligibility Examples: Abstract Ideas, 14–15, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf (Jan. 7, 2019) (reciting, for example, a transformation of (1) a
plaintext word signal to (2) one or more message block signals MA to (3) a
ciphertext word signal CA that is (4) transmitted over a communication
channel).
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THOMAS, Administrative Patent Judge, Dissenting-in-part

Although I agree with the Majority’s Decision to reverse the
Examiner’s rejection of claims 1, 2, and 5–8, I respectfully dissent from the
Majority’s decision to also reverse the Examiner’s rejection of claims 3 and
4 under 35 U.S.C. § 101. Specifically, I disagree with the Majority’s
interpretation that “[g]eneration of these signatures, and thus the claimed
processing circuitry configured to generate signatures, is given life,
meaning, and vitality only because the generated signatures are verifiable by
a verification device.” Decision 13.
Firstly, the claimed “generate, as a signature σ, data that includes w, s,
t, and r” (see claims 3 and 4) is positively recited in the body of claims 3 and
4. Thus, I believe the preamble is not needed to give “life, meaning, and
vitality” to such a recitation, as proffered by the Majority, as the body of the
claim already accomplishes this. Secondly, “a verification device” is not
recited in the body of claims 3 and 4. As such, it is unclear how the
preamble is essential to understand a non-cited “verification device” in the
body.
A preamble is not limiting “‘where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention.”’ Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002) (quoting Rowe v.
Dror, 112 F.3d 473, 478 (Fed.Cir.1997)). Catalina identified several
guideposts to aid in determining whether a preamble should be given
limiting weight. Symantec Corp. v. Computer Assocs., Inc., 522 F.3d 1279,
1288–89 (Fed. Cir. 2008). Among the guideposts identified in Catalina are
the following:
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[D]ependence on a particular disputed preamble phrase for antecedent
basis may limit claim scope because it indicates a reliance on both the
preamble and claim body to define the claimed invention. Bell
Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d
615, 620 (Fed. Cir. 1995) (“[W]hen the claim drafter chooses to use both the
preamble and the body to define the subject matter of the claimed invention,
the invention so defined, and not some other, is the one the patent
protects.”). Likewise, when the preamble is essential to understand
limitations or terms in the claim body, the preamble limits claim scope.
Pitney Bowes [Inc. v. Hewlett-Packard Co.], 182 F.3d [1298,] 1306 …
[(Fed. Cir. 1999)]. Catalina, 289 F.3d at 808.
In particular, guideposts tending to show that the preamble is a claim
limitation include: dependence on a particular disputed preamble phrase for
antecedent basis, when the preamble is essential to understand limitations or
terms in the claim body, and when the preamble recites additional structure
or steps underscored as important by the specification. Id.
On the other hand, guideposts tending to show that the preamble is not
a claim limitation include: when the claim body describes a structurally
complete invention such that deletion of the preamble phrase does not affect
the structure or steps of the claimed invention, and when the preamble
describes the use of an invention. Id. at 809.
Here, I believe claims 3 and 4 recite structurally complete inventions,
i.e., a signature device, such that deletion of “a verification device” from the
preamble does not affect the structure of claims 3 and 4. Furthermore, I
believe the preamble merely describes the intended use of the signature
device, i.e., to transmit the signature to a separate device, i.e., a verification
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device, that is configured to verify the signature. As a result, I disagree with
the Majority that the “verification device” in the preamble of claims 3 and 4
is entitled patentable weight.
To the extent that the Majority is relying upon the signature device
combined with the signature verification device to show an integration into a
practical application, I believe claims 3 and 4 lack portions, i.e., the
verification portion, of such a determination.
For at least the reason noted supra, I determine that claims 3 and 4
(1) recite a judicial exception and (2) do not integrate that exception into a
practical application. Thus, I believe claims 3 and 4 are directed to the
aforementioned abstract idea.
Turning to the second step of the Alice inquiry, I now must look to
whether claims 3 and 4 contain any “inventive concept” or add anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.

See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
I find no element or combination of elements recited in Appellant’s
claims 3 and 4 that contains any “inventive concept” or adds anything
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“significantly more” to transform the abstract concept into a patent-eligible
application. Appellant has not adequately explained how claims 3 and 4 are
performed such that they are not a routine and conventional function of a
generic computer, e.g., performing calculations. Furthermore, a finding of
novelty or non-obviousness does not require the conclusion that the claimed
subject matter is patent-eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or nonobviousness, but, rather, is a search for “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.”’ Alice, 573 U.S. at 216. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
See also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) ( “The ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.”).
Because Appellant’s independent claims 3 and 4 are directed to a
patent-ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” I would sustain the Examiner’s
rejection of the claims 3 and 4 under 35 U.S.C. § 101 as being directed to
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non-statutory subject matter in light of Alice, its’ progeny, and the Revised
Guidance.
Therefore, I respectfully dissent-in-part from the Majority Decision
reversing the rejection of claims 3 and 4 under 35 U.S.C. § 101.