Muhtar B. Akbulut et al.Download PDFPatent Trials and Appeals BoardSep 20, 201915040208 - (D) (P.T.A.B. Sep. 20, 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. 15/040,208 02/10/2016 Muhtar B. Akbulut AUS920150450US1 4371 106325 7590 09/20/2019 IBM Corp. - Fishkill Drafting Center 11501 Burnet Road Austin, TX 78758 EXAMINER OBISESAN, AUGUSTINE KUNLE ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 09/20/2019 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): fdciplaw@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MUHTAR B. AKBULUT, MARIO A. MALDARI, and DAVID D. TAIEB ____________________ Appeal 2018-009200 Application 15/040,2081 Technology Center 2100 ____________________ Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants’ Brief (“App. Br.”) identifies Int’l Business Machines Corp. as the real party in interest. App. Br. 2. Appeal 2018-009200 Application 15/040,208 2 CLAIMED SUBJECT MATTER The claimed subject matter generally relates to “electronic data storage, and more particularly to managing data privacy in data storage systems.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for providing electronic image security on a mobile device, comprising: identifying one or more data elements, in a first electronic image, having at least one feature, comprising at least one pixel region of the first electronic image, matching a predefined exclusion feature; designating the first electronic image for exclusion from a backup operation based on the identification; detecting existing backups of the first electronic image on a server; and removing all the existing backups of the first electronic image from the server based on the designating. App. Br. 24 (Claims App’x). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Bodlaender et al. McInerney et al. Min et al. WO 2006/011067 A2 US 2008/0307333 A1 US 2014/0181012 A1 Feb. 2, 2006 Dec. 11, 2008 June 26, 2014 Chakra et al. US 2014/0189803 Al July 3, 2014 Yunsi CN20151632686 20150929 Jan. 20, 2016 REJECTIONS Claims 1–10 and 12–20 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Final Act. 4. Appeal 2018-009200 Application 15/040,208 3 Claims 1–4, 11–15, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Min, Bodlaender and McInerney. Final Act. 5–14. Claims 5–10, and 16–19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Min, Bodlaender, McInerney and Chakra. Final Act. 14–18. Claim 5 also stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Min, Bodlaender, McInerney and Yunsi. Final Act. 18. ISSUES (1) Did the Examiner err in concluding that claims 1–10 and 12–20 are directed to a judicial exception, without significantly more, under 35 U.S.C. § 101? (2) Has the Examiner erred in finding the combination of Min, Bodlaender and McInerney teaches, suggests, or otherwise renders obvious each and every limitation recited in the independent claims? ANALYSIS FIRST ISSUE: REJECTION UNDER 35 U.S.C. § 101 Legal Standard In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court instructs us to “[f]irst . . . determine whether the claims at issue are directed to [a] . . . patent-ineligible concept[]” (id. at 217), and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the Appeal 2018-009200 Application 15/040,208 4 nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second step as a search for “an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73). The USPTO has published revised guidance on the application of § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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) (Guidance, Step 2A, prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, 2018)) (Guidance, Step 2A, prong 2). 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: (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 Appeal 2018-009200 Application 15/040,208 5 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance (Step 2B). Examiner’s Findings and Conclusion The Examiner rejects the claims under § 101 as being directed to a judicial exception without significantly more. Final Act. 4. The Examiner determines that the claims recite an “abstract idea identifying one or more data elements in an electronic image having exclusion feature, designate electronic image for exclusion from a backup operation.” Final Act. 4. At Alice step 2, the Examiner determines the claims do not recite an inventive concept: The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the generically recited computer elements included in the claims do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. Final Act. 4. Appellants’ Contentions2 Appellants contend that the claims are not directed to an abstract idea because the claims “provide electronic image security on a mobile device. 2 Appellants’ arguments are made with respect to claim 1, which Appellants indicate “is representative of the other independent claims for purposes of this analysis.” App. Br. 15. We treat claim 1 as representative in our analysis of the § 101 rejection. 37 C.F.R. § 41.37(c)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Appeal 2018-009200 Application 15/040,208 6 Therefore, the claims cannot possibly be abstract [because] the claim elements determine whether an image contains elements that warrant it being excluded from a backup (and for existing backups to be removed).” App. Br. 15. Appellants further argue the Examiner erred in Alice step 2 because the “Examiner’s rationale for stating that the other elements of Applicant’s claimed invention are routine, well-understood, or conventional [is unsupported] because [the] Examiner’s one-paragraph rejection provides zero evidence and zero rationale for its finding that the additional elements are routine.” App. Br. 11–12. Revised Guidance, Step 2A, Prong One 3 The Judicial Exception Applying the guidance set forth in the Memorandum, we are not persuaded of Examiner error. The Memorandum instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. We focus here on the third grouping—mental processes. See Memorandum. Claim 1 recites the following limitations: (1) “identifying one or more data elements, in a first . . . image, having at least one feature, . . . matching a predefined exclusion feature;” (2) “designating the first . . . image for exclusion from a backup operation based on the identification,” and (3) 3 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-009200 Application 15/040,208 7 “detecting existing backups of the first . . . image on a server.” App. Br. 24 (Claims App’x) (emphasis added). These limitations, under their broadest reasonable interpretation, recite mental processes as defined in the guidance. A claim recites a mental process when the claim encompasses acts people can perform using their minds or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This is true even if the claim recites that a generic computer component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); see also Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). Limitation (1) recites identifying elements and features in an image; limitation (2) recites designating to exclude an image; and limitation (3) recites finding duplicates of the same image. Limitations (1) and (2) encompass a person looking at a photograph and deciding in their mind not to keep the photograph because the photo includes, for example, a particular person’s face. Limitation (3) may be performed by reviewing existing photographs to determine if a duplicate of the photograph already exists. These are tasks readily performed in the human mind by observation, Appeal 2018-009200 Application 15/040,208 8 evaluation, and using judgement. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed. Cir. 2016). Accordingly, we conclude claim 1 recites a judicial exception of a mental process. Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Having determined that claim 1 recites a judicial exception, our analysis under the Memorandum turns now to determining whether claim 1 is directed to the recited judicial exception. We do so by determining whether there are “additional elements that integrate the judicial exception into a practical application.” See Guidance (Step 2A, prong 2), see also MPEP § 2106.05(a)–(c), (e)–(h)). Claim 1 recites the following additional limitations: (a) that the image is an “electronic image” and the feature “compris[es] at least one pixel region,” (b) the existing backups are “on a server,” and (c) “removing all of the existing backups of the first electronic image from the server based on the designating.” App Br. 24 (Claims App’x). These limitations are insufficient to integrate the recited mental process into a practical application. Limitations (a) and (b) merely recite the nominal use of generic computer technology, which is insufficient to remove the claim from the mental process category. See Guidance at 52 n. 14 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of “computer” or “computer readable medium” does not make a claim otherwise directed to process that “can be performed in the human mind, or by a human using a pen and paper” patent eligible)). Appeal 2018-009200 Application 15/040,208 9 Limitation (c), which recites removing the existing backups of the image based on the exclusion feature also is insufficient to integrate the abstract idea into a practical application. In particular, this additional limitation merely adds insignificant extra-solution activity to the judicial exception. MPEP § 2106.05(g) (describing such activity as “activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim”). See MPEP § 2106.05(g). See Mayo, 566 U.S. at 77–80; see also Diamond v. Diehr, 450 U.S. 175, 191–92 (1981) (“insignificant post-solution activity will not transform an unpatentable principle into a patentable process”). Here, the removal of existing backups is tangential to the primary process of identifying those images having an exclusion feature much in the same way that adjusting an alarm limit according to a mathematical formula was “post-solution activity” and insufficient to satisfy § 101. Parker v. Flook, 437 U.S. 584, 590, 596–98 (1978). Hence, the backup removal limitation is not sufficient to integrate the recited abstract ideas into a practical application. Accordingly, we are not persuaded of error in the Examiner’s determination that claim 1 is directed to an abstract idea. The Inventive Concept – Step 2B Having determined the claim is directed to a judicial exception, we proceed to evaluating whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)) or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance (Step 2B). Our review of the Examiner’s rejection under Step 2B is guided by the Appeal 2018-009200 Application 15/040,208 10 revised examination procedure published online by the USPTO on April 19, 2018, entitled “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding requirement for Examiners, as applicable to rejections under § 101. As noted above, the Examiner determines that “[t]he claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the generically recited computer elements included in the claims do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation.” Final Act. 4 (italics added). Appellants contend that the Examiner has failed to provide a sufficient evidentiary basis for this determination. App. Br. 12 (“Examiner’s one- paragraph rejection provides zero evidence and zero rationale for its finding that the additional elements are routine.”). Because the Examiner did not provide evidence or explanation, Appellants assert the Examiner’s cursory analysis does not meet the requirements set forth in the Berkheimer Memorandum. Id. We agree with Appellants. The Examiner’s determination in Step 2B of the Guidance is predicated, at least in part, on a determination that the additional elements recited in the claim are “routine in any computer implementation.” Final Act 4. However, the Examiner does not provide any evidence or explanation in support of this determination. In particular, the Examiner has not provided any evidence that the limitation “removing all of the existing backups of the first electronic image from the server based on the designating” was routine. Consequently, we are constrained by the record Appeal 2018-009200 Application 15/040,208 11 before us to reverse the Examiner’s rejection under 35 U.S.C. § 101 as lacking the necessary evidentiary basis under the Berkheimer Memorandum. SECOND ISSUE: REJECTION UNDER 35 U.S.C. § 103 The Examiner rejects claim 1 as obvious over the combined teachings of Min, Bodlaender, and McInerney. 4 Final Act. 5–7. Relevant here, the Examiner finds the combination of Min and Bodlaender teaches or suggests the recited “identifying one or more elements, in a first electronic image, having at least one feature, comprising at least one pixel region of the first electronic image, matching a predefined exclusion feature.” Final Act. 5–6 (citing Min ¶¶ 98, 139 and Bodlaender 2, ll. 25–26); Ans. 3–4 (citing Min ¶¶ 62, 84, 87, 134, and 145). The Examiner finds that Min teaches excluding an image from a backup based on a memo written on the image. Ans. 3. The Examiner further finds that Min teaches that the memo is analyzed to determine whether it is in an exclusion list, and if so, the image is excluded from backup. Ans. 4. The Examiner explains this disclosure in Min teaches the “identifying” limitation of claim 1 because the memo on the image is analyzed by extracting pixel information, and the extracted pixel information is a feature of the image. Ans. 4. Appellants argue the Examiner has failed to establish obviousness because the cited references do not teach or suggest “identifying one or more elements, in a first electronic image, having at least one feature, comprising 4 Appellants present arguments with respect to claim 1, but also indicated that the arguments pertaining to claim 1 “apply equally to independent claims 12 and 20” and also that “[t]he arguments apply to the dependent claims.” App. Br. 18. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(iv). Appeal 2018-009200 Application 15/040,208 12 at least one pixel region of the first electronic image, matching a predefined exclusion feature,” as recited in claim 1. App. Br. 18–20; Reply Br. 3–5. Appellants contend that the text written on Min’s image is merely a memo that is separate from the image content because the memo is user- generated and the image is machine-generated. Reply Br. 4. Appellants further argue that Min’s process requires a user input in order to determine that the image should be excluded from a backup operation, and that the claim “requires no such user action.” Reply Br. 4. Appellants further contend that it is not the pixel pattern of the memo, but instead the information conveyed by the memo, which determines whether an image is excluded from a backup operation. Reply Br. 5. We are not persuaded by Appellants arguments. Min teaches the use of a content memo to exclude images from backup. Min ¶ 143 (“FIG. 21 illustrates a UI content memo setting for backup exception according to another embodiment of the present invention.”). Figure 21 of Min, which is referenced in the paragraphs cited by the Examiner, provides an example of an image with a content memo added: Appeal 2018-009200 Application 15/040,208 13 The image 2101 depicted in Figure 21 is an “electronic image” within the meaning of claim 1, and it includes a hand-written memo “2012.12.28 HEAVY SNOW IN GANGHAM.” We agree with the Examiner that this memo is part of the “image” because it is displayed within the boundaries of the image on the screen of the mobile device as a collection of pixels. We further agree with the content memo is a “feature” of the image because it is an attribute of the image which can be analyzed or processed by the system. Appellants’ specification states that “[d]ata features refer to any feature, attribute, or characteristic of the data that can be identified, measured, analyzed, or otherwise processed.” Spec. ¶ 23. The content memo is located in a particular pixel region of the image, as illustrated by Figure 21. See also Min ¶ 145 (“information related to a latest captured picture may be written in a partial area of the picture”). Min further teaches that “content including a specific location or a specific word may be excluded from backup by analyzing a location.” Min ¶ 145. We agree with the Examine that this description teaches “a predefined exclusion feature.” Appellants’ Specification defines Appeal 2018-009200 Application 15/040,208 14 “predefined exclusion feature” broadly, stating that “[a] predefined exclusion feature refers to a[] feature that is defined (for example in a definitions file) so as to trigger a backup exclusion process.” Spec. ¶ 27. Thus, Min teaches that the content memo is analyzed to determine if is matches a “feature that is defined . . . so as to trigger a backup exclusion process” and it excludes the image from backup on that basis. As such, we agree with the Examiner that Min teaches or suggests “identifying one or more elements, in a first electronic image, having at least one feature, comprising at least one pixel region of the first electronic image, matching a predefined exclusion feature.” Appellants’ contentions regarding the cited portions of Min are not commensurate with the broad scope of the argued limitation. For example, Appellants argue that the content memo is separate from the image content because it is user-generated while the image is machine-generated. Reply Br 4. However, there is no requirement in the claim that the image not include a user-generated portion. Similarly, Appellants’ contention that the claim requires no user action is unpersuasive because the language of the claim does not exclude user action from its scope. Finally, Appellants’ argument that it is only the information conveyed by the pixel pattern of the memo, and not the pixel pattern itself is also unpersuasive. As we noted above, the phrase “predefined exclusion feature” is defined broadly as “a feature that is defined . . . so as to trigger a backup exclusion process.” Spec. ¶ 27. Thus, there is no requirement in the claim that the pixel pattern alone be the trigger. In sum, Appellants have not shown error in the Examiner’s determination that claim 1 would have been obvious in view of the prior art. Appeal 2018-009200 Application 15/040,208 15 As such, we sustain the rejection of claim 1 under 35 U.S.C. § 103. Because we have selected claim 1 as representative, the remaining claims 2–20 fall with claim 1 for the same reasons. See 37 C.F.R. § 41.37(c)(1)(iv). DECISION We reverse the Examiner’s decision rejecting claims 1–10 and 12–20 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation