Weiming Tang et al.

Patent Trials and Appeals Board

May 11, 2020

2018005559 (P.T.A.B. May. 11, 2020)

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.
13/890,734 05/09/2013 Weiming Tang 47376-129F01US (264376) 2210
123896 7590 05/11/2020
Mintz Levin/Wayne Fueling Systems LLC
One Financial Center
Boston, MA 02111
EXAMINER
CHOO, JOHANN Y
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
ipdocketingbos@mintz.com
ipfileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte WEIMING TANG and
JAMES MATTHEW BREWER
________________

Appeal 2018-005559
Application 13/890,734
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, SHARON FENICK, and
RUSSELL E. CASS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–28, which constitute all of the pending claims.1
Appeal Br. 7–66. We have jurisdiction under 35 U.S.C. § 6(b). The Board
conducts a limited de novo review of the appealed rejections for error based
upon the issues identified by Appellant, and in light of the arguments and
evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). We AFFIRM.

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 Wayne
Fueling Systems LLC. Appeal Brief filed October 31, 2017 (“Appeal
Br.”), 1.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows: fast and secure
communication can be achieved (e.g., in a fueling environment payment
system) with systems and methods that validate an authentication request
based on one or more pre-validated cryptographic keys.” Abstract.

STATEMENT OF THE REJECTIONS
Claims 1–28 stand rejected under 35 U.S.C. § 101 as being directed to
an exception to patent-eligible subject matter without reciting significantly
more. Final Act. 5–6.2
Claims 1, 3, and 6 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Chan (US 2007/0136800 A1; published June 14, 2007),
Goto (US 2009/0092060 A1; published Apr. 9, 2009), and Shambroom
(US 2001/0020274 A1; published Sept. 6, 2001). Final Act. 7–11.
Claims 2, 14, 17, and 28 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Chan, Goto, Shambroom, and Dickelman
(US 2009/0144194 A1; published June 4, 2009). Final Act. 11–12.
Claims 4–13, 18–25, and 27 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Chan, Goto, Shambroom, and Kohan
(US 2005/0256742 A1; published June 4, 2009). Final Act. 12–19.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
June 14, 2017 (“Final Act.”); the Examiner’s Answer mailed March 8, 2018
(“Ans.”); and the Reply Brief filed May 8, 2018 (“Reply Br.”).
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Claims 15 and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Chan, Goto, Shambroom, and Lyons
(US 2012/0118947 A1; published May 17, 2012). Final Act. 19.
Claims 4–11 and 18–25 stand rejected under 35 U.S.C. § 112(b) as
being indefinite. Final Act. 6–7.

THE SECTION 101 REJECTION
Background
Independent claim 1 reads as follows with paragraph numbers added
for ease of reference and with claim language emphasized to indicate the
portions of the claim that recite an abstract idea:
1. A terminal, comprising:
[(i)] a wireless transceiver configured to communicate
wirelessly with a mobile device;
[(ii)] a secure element configured to store one or more pre-
validated cryptographic keys; and
[(iii)] a processor coupled to the secure element and the wireless
transceiver, the processor being programmed to
[(a)] receive, via the wireless transceiver, an
authentication request from the mobile device, the
authentication request including a public key and a
random number,
[(b)] authenticate the mobile device by validating the
public key received in the authentication request based on
the one or more pre-validated cryptographic keys stored
in the secure element,
[(c)] after the validating, generate a session key based on
the random number received in the authentication request,
[(d)] transmit, via the wireless transceiver, when the
mobile device is successfully authenticated, an
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authentication response including the session key to the
mobile device, and
[(e)] receive secure information from the mobile device,
the secure information being encrypted by the session key.
Claims 1–28 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent-eligible subject matter without significantly
more. Final Act. 5–6. More specifically, the Examiner determines that the
claims are directed to abstract ideas and that the additional elements do not
recite significantly more. Id. According to the Examiner, the additional
elements, viewed individually and in combination amount to no more than
mere instructions to implement the abstract idea on “generic computer
structure[s] that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry.” Id. at 5.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
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is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
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Benson and Flook) (citation omitted); see also, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “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. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
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guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 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:
(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.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
Appellant presents multiple arguments for why the Examiner’s
rejection is in error. Appeal Br. 44–66. Generally, Appellant argues that the
rejection lacks sufficient analysis to establish a proper rejection (id. at 44–
46), that claim 1 recites patent-eligible subject matter (id. at 46–57), and that
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even if claim 1 is directed to an abstract idea, the elements of claim 1
amount to significantly more than the abstract idea (id. at 57–63). See
2019 Guidance, 84 Fed. Reg. 51 (“[The 2019 Guidance] supersedes all
versions of the USPTO’s ‘Eligibility Quick Reference Sheet Identifying
Abstract Ideas’ (first issued in July 2015 and updated most recently in
July 2018).
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (iii)(a) recites “receive . . . an authentication request . . . ,
the authentication request including a public key and a random number.”
Receiving data or an authentication request that includes data constitutes a
certain method of organizing human activity. More specifically, receiving a
request for information constitutes a method of managing interactions
between people. The 2019 Guidance expressly recognizes this certain
method of organizing human activity as constituting a patent-ineligible
abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Receiving such an authentication request also constitutes a mental
process. More specifically, receiving such a request constitutes making a
mental observation. The 2019 Guidance also recognizes mental processes,
including observations, as constituting a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52.
Accordingly, limitation (iii)(a) recites a patent-ineligible abstract idea.
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Limitation (iii)(b) recites “authenticate the mobile device by
validating the public key received in the authentication request based on the
one or more pre-validated cryptographic keys stored.” Authenticating a
cryptographic public key by comparing that received public key’s number to
a stored key number constitutes a mental process, such as an evaluation or
judgment that can be performed in the human mind. The 2019 Guidance
expressly recognizes such mental processes as constituting patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly,
limitation (iii)(b) recites a patent-ineligible abstract idea.
Limitation (iii)(c) recites “after the validating, generate a session key
based on the random number received in the authentication request.”
Generating a cryptographic session key entails performing a mathematical
concept, such as by determining a mathematical relationship or performing a
mathematical calculation. The 2019 Guidance expressly recognizes
mathematical relationships and calculations as constituting patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52.
Generating a cryptographic session key also constitutes a mental
process, such as an evaluation or judgment that can be performed either in
the human mind or with the aid of pencil and paper. The 2019 Guidance
expressly recognizes such mental processes as constituting patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. The “mental processes”
judicial exception also includes concepts that can be performed by a human
with a pen and paper as well as those that can be performed entirely in the
mind. See October 2019 Guidance Update at 9 (“A claim that encompasses
a human performing the step(s) mentally with the aid of a pen and paper
recites a mental process”) (emphasis omitted).
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Accordingly, limitation (iii)(c) recites a patent-ineligible abstract idea.
Limitation (iii)(d) recites “transmit . . . when the mobile device is
successfully authenticated, an authentication response including the session
key.” Transmitting information or data such as a cryptographic session key
constitutes a certain method of organizing human activity. More
specifically, transmitting data constitutes a method of managing interactions
between people. The 2019 Guidance expressly recognizes this certain
method of organizing human activity as constituting a patent-ineligible
abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Transmitting data also constitutes a mental process. More
specifically, transmitting data entails expressing an opinion. The
2019 Guidance also recognizes mental processes, including expressing
opinions, as constituting a patent-ineligible abstract idea. 2019 Guidance,
84 Fed. Reg. at 52.
Accordingly, limitation (iii)(d) recites a patent-ineligible abstract idea.
Limitation (iii)(e) recites another data-receiving step—“receive secure
information . . . , the secure information being encrypted by the session
key.” For the reasons discussed in relation to limitation (iii)(a), the data-
receiving step of limitation (iii)(e) also recites a patent-ineligible abstract
idea. 2019 Guidance, 84 Fed. Reg. at 52.
For these reasons, each of limitations (iii)(a) through (iii)(e) recites a
judicial exception to patent-eligible subject matter under step 2A, prong 1, of
the 2019 Guidance. “Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
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STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id.
at 55; MPEP § 2106.05(a).
Before addressing Appellant’s arguments, we first note that the
additional elements of various of claim 1’s limitations do not add
significantly more to the associated abstract ideas because the limitations,
read in full so as to include the additional elements, merely are directed to
insignificant extra-solution activity. For example, limitation (iii)(a) recites,
in full, “receive, via the wireless transceiver, an authentication request from
the mobile device, the authentication request including a public key and a
random number.” This limitation merely constitutes insignificant extra-
solution data gathering. Limitation (iii)(e) also recites a step of insignificant
extra-solution data gathering: “receive secure information from the mobile
device, the secure information being encrypted by the session key.”
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
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Limitation (iii)(d) recites, in full, “transmit, via the wireless
transceiver, when the mobile device is successfully authenticated, an
authentication response including the session key to the mobile device.”
This limitation does not add any meaningful limitations to the abstract idea
because it merely constitutes the insignificant post-solution activity of
transmitting data. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241–42 (Fed. Cir. 2016) (holding that printing or downloading generated
menus constituted insignificant extra-solution activity).
Turning to Appellant’s arguments, Appellant first contends that the
Examiner’s reliance on Dealertrack is improper because claim 1 does not
wholly preempt the concept of “authentication of devices and managing/
auditing transactions,” or other concepts. Appeal Br. 47–48 (citing
Dealertrack, Inc. v. Huber, 674 F. 3d 1315 (Fed. Cir. 2012)); see also
Appeal Br. 49 (wherein Appellant similarly argues that claim 1 does not
preempt an abstract idea). This argument is unpersuasive.
We recognize that the Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at 216.
However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
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ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
Appellant argues that the Examiner’s reliance on Benson is improper.
E.g. Appeal Br. 48 (citing Benson, 409 U.S. at 65). According to Appellant,
[p]resent claim 1 is clearly not directed to converting signals
from binary-coded decimal form into pure binary form, nor is it
directed more generally to a mathematical procedure for
converting one form of numerical representation to another.
Claim 1 is not directed to a mathematical procedure at all. The
concept in Benson is simply wholly irrelevant to claim 1.
Appeal Br. 48–49.
This argument is unpersuasive because cryptographic operations, such
as “generat[ing] a session key based on the random number received in the
authentication request,” as recited in limitation (iii)(c), specifically entail a
mathematical procedure for converting numerical data representative of
plaintext to another set of encrypted numerical data that represents a
ciphertext.
The fact that claim 1 also recites a “wireless transceiver configured to
communicate with a mobile device,” a “secure element,” and a “processor”
that is configured to perform the above-noted abstract ideas, as Appellant
argues (Appeal Br. 49), merely indicates that generic computer components
are employed to carry out the claimed abstract ideas more efficiently, and
recitation of these additional elements is insufficient to demonstrate
integration of the abstract ideas into a practical application. See Alice, 573
U.S. at 226 (determining that the claim limitations “data processing system,”
“communications controller,” and “data storage unit” were generic computer
components that amounted to mere instructions to implement the abstract
idea on a computer); October 2019 Guidance Update at 11–12 (recitation of
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generic computer limitations for implementing the abstract idea “would not
be sufficient to demonstrate integration of a judicial exception into a
practical application”).
Appellant also argues that “it would not be possible to successfully
authenticate a mobile device as recited in claim 1 by using a purely mental
process.” Appeal Br. 50. This argument is unpersuasive because it is not
commensurate in scope with the language of claim 1. Nothing in claim 1
reasonably precludes the use of an authentication protocol that is capable of
being performed either mentally or with the aid of pencil and paper. And
again, the recited processor that is programmed to transmit the data for
authentication, via the wireless transceiver, is not part of the underlying
abstract idea. It constitutes an additional element that is used to carry out the
abstract idea of data authentication more efficiently. Restated, Appellant is
improperly conflating the recited abstract idea with the additional elements.
Appellant argues that the Examiner’s reliance on Cybersource is
improper. Appeal Br. 51 (citing CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)). According to Appellant,
claim 1 is clearly not directed to a mere comparison of obtained
intangible data. Claim 1 recites numerous features
demonstrating this fact. For example, the processor being
programmed to “generate a session key based on the random
number received in the authentication request” is not a mere
comparison of obtained intangible data but is, instead, creation
of something (a session key).
Id.
This argument is unpersuasive. Appellant is essentially arguing that
claim 1 does not only recite one abstract idea (authenticating a request)
because claim 1 recites multiple abstract ideas (e.g., authenticating a request
and generating a session key). But a claim need not be addressed to a single
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abstract idea to be patent ineligible. As our reviewing court has held,
combining several abstract ideas does not render the combination any less
abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does
not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims
were directed to a combination of abstract ideas).
Appellant additionally argues,
[f]or another example, the processor being programmed to
“transmit, via the wireless transceiver, when the mobile device is
successfully authenticated, an authentication response including
the session key to the mobile device: is not a mere comparison
of obtained intangible data but is, instead, communication of
information to a physical device (the mobile device) via another
physical device (the wireless transceiver).
Appeal Br. 51.
This argument is unpersuasive. Appellant is essentially arguing that
claim 1 recites additional elements beyond the abstract idea. But this
argument does not address the relevant question of whether the additional
elements add significantly more to the abstract idea so as to integrate the
abstract idea into a practical application.
Appellant argues that the Examiner’s reliance on Cybersource is
improper because “present claim 1 is not the mere obtaining of information
and then using it in some undefined manner.” Id. at 53. According to
Appellant, the claimed “authentication request . . . is instead used in a
manner specifically recited in claim 1.” Id. This argument is unpersuasive.
Merely stating that the authentication request is used for a specific purpose
does not constitute an argument for why the specific purpose entails
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significantly more than an abstract idea. For example, the specific purpose
could be, instead, to narrow a claimed abstract idea to a more specific
abstract idea. See SAP Am. In. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018) (“even if a process of collecting and analyzing information is
‘limited to particular content’ or a particular ‘source,’ that limitation does
not make the collection and analysis other than abstract”).
Furthermore, we understand the Examiner to be relying on cases such
as Cybersource, FairWarning, and buySAFE for the broader proposition that
“longstanding commercial practices and [] methods of organizing human
activity,” generally, constitute patent ineligible subject matter. Advisory
Action 2, mailed Sept. 5, 2017.
Appellant argues that the Examiner’s reliance on FairWarning is
unavailing because FairWarning’s claims merely implemented within a new
environment, an old practice “that humans in analogous situations detecting
fraud have asked for decades, if not centuries.” Appeal Br. 54–55 (quoting
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094–95 (Fed.
Cir. 2016)). According to Appellant, “[c]laim 1 clearly does not recite a
process that humans have performed for years to authenticate devices and
manage/audit transactions, or for that matter used at all due to the claim
distinguishing over the prior art as discussed herein.” Id. at 55.
This argument is unpersuasive for two reasons. First, using secret codes and
passwords to authenticate communications and people are processes that
humans have engaged in for decades, if not centuries. Second, “[t]he
‘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.” Diehr,
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450 U.S. at 188–89. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Furthermore, like Cybersource we understand the Examiner to be relying on,
FairWarning for the broader proposition that “longstanding commercial
practices and [] methods of organizing human activity,” generally, constitute
patent ineligible subject matter. Advisory Action 2, mailed Sept. 5, 2017.
Appellant argues that the Examiner’s reliance on buySAFE is
improper because that case deals with creating a contractual relationship and
“the abstract idea of ‘authentication of devices and managing/auditing
transactions’ as alleged by the Examiner, . . . does not correspond to the
concept identified as an abstract idea in buySAFE.” Appeal Br. 55–56
(citing buySAFE, Inc. v. Google, Inc., 765 F.2d 1350 (Fed. Cir. 2014)).
Appellant’s arguments are unpersuasive. We presume that the
Examiner does not rely on buySAFE for the proposition that the specific
abstract ideas at issue there and here are analogous. Rather, we presume the
Examiner is relying on buySAFE, like Cybersource and FairWarning, for
the broader proposition that “longstanding commercial practices and []
methods of organizing human activity,” generally, constitute patent
ineligible subject matter. Advisory Action 2, mailed Sept. 5, 2017.
Furthermore, even if Appellant were correct that none of Dealertrack,
Benson, Cybersource, FairWarning, and buySAFE can be relied upon to
show patent ineligibility, arguing which cases are not relevant to the present
claims is not the same as providing evidence and reasoning to demonstrate
why claim 1 does integrate the recited abstract ideas into a practical
application.
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Appellant asserts that software-based inventions that improve the
performance of the computer system itself is patent eligible even when the
invention is otherwise directed toward abstract ideas. Appeal Br. 59 (citing
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341,1351 (Fed. Cir. 2016). Appellant argues
[c]laim 1 includes a technical improvement over prior art ways
of the “authentication of devices and managing/auditing
transactions” (the alleged abstract idea), at least because no one
has previously authenticated devices of managed/audited
transactions as in the claimed implementation, which includes,
e.g., receiving via a wireless transceiver an authentication
request from a mobile device where the authentication requires
includes a public key and a random number.
Appeal Br. 60.
This argument is unpersuasive because Appellant essentially is
arguing for patent eligibility on the basis of claim 1’s novelty and
unobviousness. As explained above, “[t]he ‘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.” Diehr, 450 U.S. 175 at 188–89. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Appellant also argues claim 1 is directed to a technical improvement:
[c]laim 1 includes a technical improvement over prior art ways
of the “authentication of devices and managing/auditing
transactions” (the alleged abstract idea), at least because no one
has previously authenticated devices of managed/audited
transactions as in the claimed implementation, which includes,
e.g., receiving via a wireless transceiver an authentication
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request from a mobile device where the authentication requires
includes a public key and a random number.
Appeal Br. 60.
Appellant further asserts,
even [if] a generic authentication of devices and managing/
auditing transactions may [have been] well known (similar to
how in BASCOM filtering content on the internet was a known
concept), present claim 1 and the present application describe
how the particular arrangement of elements of claim 1 is a
technical improvement over prior art ways of authenticating
devices and managing auditing transactions[:] “Completing the
authentication process in a single exchange can advantageously
decrease the amount of time required to complete a transaction,
increasing user convenience.”
Appeal Br. 60 (citing Spec. ¶ 65); see also id. (citing Spec. ¶¶ 99–102 to
support the proposition that Appellant’s Specification “discuss[es]
‘advantages and/or technical effects’ of the disclosed systems and
methods.”).
Appellant’s Specification further explains why the present
authentication protocol potentially can be completed in a decreased time:
“[D]igital certificates are pre-stored and pre-authenticated on the
payment terminal and the mobile device, such that a reduced-size
public key/identifier pair can be exchanged instead of a plurality
of larger certificates, thus enabling rapid authentication and
transaction execution.” “By way of further example, in some
embodiments, secure mutual authentication between two devices
can be completed with only one transfer from the first device
(e.g., a payment terminal) to the second device (e.g., a mobile
device) and one transfer from the second device to the first
device, thus enabling rapid authentication and transaction
execution.”
Spec. ¶¶ 100–01; see also Appeal Br. 61 (citing Bascom for the proposition
that generic technical components can be combined in a non-conventional
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way so as to produce a technology-based solution to existing technical
problems).
Appellant’s arguments are unpersuasive because these arguments
evidence that the present invention does not entail a technical solution to a
technical problem, but rather an improvement to an abstract problem that has
utility in non-computerized interactions between humans that pre-date the
advent of the Internet, as well as utility in computer environments. More
specifically, Appellant’s description of the improvement—“[c]ompleting the
authentication process in a single exchange [to] advantageously decrease the
amount of time required to complete a transaction, [and thereby] increasing
user convenience” (Appeal Br. 60)—constitutes an improvement to a
method of organizing human activity among companies, people, and their
proxies, which methods entail commercial or legal interactions. This is so
regardless of whether computers are involved.
For example, a purchaser of gasoline from a gas station may wish to
have the payment charged to purchaser’s charge account. To do so, the
purchaser could tell the gas-station attendant the identity of her charge
account and the associated account number. In response, the attendant could
ask the purchaser for a driver’s license to confirm her identification and then
call the charge account company to verify the legitimacy of the account and
the available credit. The charge account company could also verify the
identity of the gas-station attendant before authorizing the charge.
However, this three-party authentication-and-validation protocol
among the gas-station attendant, the purchaser, and the charge account
company could take place more quickly and conveniently if the transaction
were simplified such that the authentication-and-validation protocol takes
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place between only two parties instead of three. For example, a gasoline
company could establish a charge-account program such that the company
issues charge cards with account numbers (or credentials or authentication
certificates) to pre-registered and authorized customers and further
authorizes the gas-station attendant to approve purchases below a certain
monetary threshold without the need to seek further authorization from the
gasoline company. In such a case, the purchaser would only need to
authenticate her identity by showing the gas-station attendant her driver’s
license or personal identification and the charge card.
Various other hypothetical situations can be envisioned in which a
principal (either a company or a person) authorizes an agent to contract or
act on its behalf with third parties without the need for the principal’s prior
approval. And such delegations of authority to an agent create tradeoffs of
benefits and risks. For example, not requiring an agent obtain the principal’s
authorization at the time of a transaction improves the speed and
convenience of the transaction, while increasing the risk to some degree that
the agent will act improperly or not carry out the principal’s wishes. Thus,
the claims do not reflect an improvement in the functioning of a computer or
improvement in technology, but rather an improved method of arranging
communications (which could be applied to communications between
people, as well as computers) in order to improve authentication of
transactions. “[A] claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016).
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Appellant next cites DDR Holdings, LLC v. Hotels.com., L.P., 773
F.3d 1245 (Fed. Cir. 2014) for support of claim 1’s patent eligibility.
Appeal Br. 61–62. In particular, Appellant asserts,
The [DDR Holdings] court held that the claims at issue did not
generically recite “use the Internet” to perform a business
practice[,] but instead “recite[d] a specific way to automate the
creation of a composite web page by an ‘outsource provider’ that
incorporates elements from multiple sources in order to solve a
problem faced by websites on the Internet.”
Appeal Br. 61 (citing DDR Holdings, at 1258–59). Appellant urges that
“[l]ike the claims in DDR Holdings, present claim 1 does not generically
recite ‘use a computer’ or ‘use the Internet’ to perform a business practice[,]
but instead requires specific functionality using a specific approach.”
Appeal Br. at 61.
This argument is unpersuasive. First because Appellant attempts to
support this argument by reciting the entirety of claim 1 verbatim. Id. at 61–
62. The mere restatement of the claim language does not constitute an
argument on the merits, much less constitute evidence that supports an
argument on the merits. See 37 C.F.R. § 41.37(c)(1)(iv) (“[a] statement
[that] merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
Secondly, and as already noted, claim 1 is directed to an improvement
to an abstract idea—not to an improvement to technology. As such, the
specificity by which the abstract idea is claimed is immaterial to the question
of patent eligibility. Apple v. Ameranth Inc., 842 F.3d at 1240 (“An abstract
idea can generally be described at different levels of abstraction.”); see also
SAP Am. In., 898 F.3d 1161 at 1168 (“even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
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‘source,’ that limitation does not make the collection and analysis other than
abstract.”).
Lastly, Appellant argues that “[t]he USPTO’s 2015 Updated Guidance
also demonstrates that claim 1 recites patent eligible subject matter by
reciting significantly more than the alleged abstract idea of the claim.”
Appeal Br. 62. More particularly, Appellant argues that Example 21,
claim 2, of the 2015 Updated Guidance indicates that a claim is directed to
patent-eligible subject matter when, looking at the additional limitations as
an ordered combination, the claim does not simply recite organizing and
comparing data, but instead “addresses the Internet-centric challenge of
alerting a subscriber with time sensitive information when the subscriber’s
computer is offline.” Appeal Br. 62. Appellant then contends that
“[c]laim 1 similarly recites an ordered combination of features.” Id. at 63.
This argument is unpersuasive because Appellant again merely recites
the entirety of claim 1 without presenting substantive arguments for why any
of the additional elements, either alone or in their ordered combination,
constitute significantly more than the noted abstract ideas. Id.
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 1 is directed to a particular machine or
transformation, or that claim 1 adds any other meaningful limitations for the
purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e).
Accordingly, Appellant does not persuade us that claim 1 integrates the
recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
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STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d).
Appellant’s Specification, by describing computer-related components
at a high level without details of structure or implementation, indicates that
the recited additional elements—the wireless transceiver, the mobile device,
the secure element, and the processor—are well understood, routine and
conventional:
The computer system 200 can include a processor 202
[that] controls the operation of the computer system 200, for
example by executing an operating system (OS), device drivers,
application programs, and so forth. The processor 202 can
include any type of microprocessor or central processing unit
(CPU), including programmable general-purpose or special-
purpose microprocessors and/or any of a variety of proprietary
or commercially–available single or multi-processor systems.
The computer system 200 can also include a memory 204,
[that] provides temporary or permanent storage for code to be
executed by the processor 202 or for data that is processed by the
processor 202. The memory 204 can include read-only memory
(ROM), flash memory, one or more varieties of random access
memory (RAM), and/or a combination of memory technologies.
Spec. ¶¶ 27, 28.
The computer system 200 can also include a secure
element 216. The secure element 216 can be a tamper-resistant
platform (e.g., a one-chip secure microcontroller) capable of
securely hosting applications and their confidential and
cryptographic data (e.g., key management) in accordance with
the rules and security requirements set forth by a set of well-
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identified trusted authorities. The secure element 216 can be
capable of providing random number generation, generating
device-specific public/private key pairs, and executing a security
algorithm. Known examples of security algorithms include, but
are not limited to: Hash, TDES, AES, RSA, etc. Exemplary
secure elements 216 include Universal Integrated Circuit Cards
(UICC), embedded secure elements, and micro secure digital
(microSD) cards.
The computer system 200 can also include a secure
communication interface 218 through which the computer
system 200 can conduct mutual authentication procedures and
communicate with other computer systems. The secure
communication interface 218 can be wireless (e.g., near-field
communication (NFC), Wi-Fi, Bluetooth, and the like) or wired
(e.g., USB or Ethernet). In the case of NFC, for example, the
computer system 200 can include a radio transceiver configured
to communicate with a radio transceiver of another device using
one or more standards such as ISO/IEC 14443, FeliCa, ISO/IEC
18092, and those defined by the NFC Forum.
Id. ¶¶ 34, 35.
Moreover, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to an abstract idea that is made more efficient with generic
computer components—“validat[ing] an authentication request based on one
or more pre-validated cryptographic keys.” Spec. ¶ 6.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
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Claim 15
Dependent claim 15 reads, as follows: “The terminal of claim 1,
wherein the secure information comprises a service instruction to open a
door of the terminal, and wherein the terminal is configured to open the door
in response to the service instruction.”
Appellant argues that “claim 15 does not merely recite ‘sending/
receiving/comparing/processing data’ [because] a physical structure, a door,
is opened. A structural effect is thus achieved, namely the opening of the
door of the terminal, so as to recite ‘significantly more’ than the alleged
abstract idea.” Appeal Br. 64 (citing Final Act. 5–6). Appellant argues that
even assuming . . . that computer devices and computing devices
do generically include a door, it is not a generic function for a
processor of the computer device or computing device to open
the door or to open the door in response to receipt of secure
information including a service instruction. To the extent that
computer devices and computing devices have a door or are
involved in opening a door thereof at all, such opening would be
in a specific context for a specific reason so as to not be generic
function.
Id.
Appellant also argues that Diehr holds that even when a claim recites
an abstract idea (in that case a mathematical formula), “the claim is
nevertheless directed to patent eligible subject matter when it, ‘considered as
a whole, is performing a function which the patent laws were designed to
protect (e.g., transforming or reducing an article to a different state or
thing).’” Appeal Br. 65 (citing Diehr, 450 U.S. at 192).
Appellant points out that “[i]n Diehr the ‘claims involve the
transformation of an article, in this case raw, uncured synthetic rubber, into a
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different state or thing,’ cured rubber.” Appeal Br. 65 (citing Diehr,
450 U.S. at 184, 177–79). Appellant then argues,
[e]ven assuming in arguendo that present claim 15 is directed to
an abstract idea under Step 2A of the § 101 analysis, claim 15 is
directed to patent eligible subject matter under Step 2B of the
§ 101 analysis because, similar to Diehr, it involves the
transformation of an article to a different state. Namely, the door
of the terminal is opened such that the terminal is in a different
physical state due to the combination of recited elements similar
to the rubber in Diehr being in a different physical state due to
the combination of recited elements.
Appeal Br. 65.
This argument is unpersuasive. The claims of Diehr were directed a
machine that improved the process for chemically transforming synthetic
rubber from an uncured physical state to a cured state. Diehr, 450 U.S.
at 184. Claim 15, in contrast, does not entail transforming the chemical state
of mechanical door or a terminal. The claim entails a secure communication
protocol for sending an electronic signal to an electronic latch.
Secure communications are not created solely for the sake of
themselves. Rather secure communications are created for the purpose of
conveying some sort of data, information, or instructions in private. For
example, the instructions might be to gain access to a computer system or
initiate a software application within a computer system. If the patent
eligibility of secure communications were based upon whether the
communications were used to initiate some further action, clever claim
drafters could obviate all patent-eligibility rejections for cryptographic
protocols by additionally claiming the most rudimentary of post-solution
activities to be carried out with the secure communications.
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Furthermore, Appellant’s Specification indicates that in response to
receiving the signal, the terminal door’s electronic latch can be unlocked in
any desired, typical manner:
In some embodiments, the mobile device can be a service
mobile device possessed by a user seeking to access the payment
terminal, or a fuel dispenser or other system of which it is a part,
for service purposes. In such cases, instead of transmitting
payment or loyalty information upon completion of the mutual
authentication process, the service mobile device can be
configured to transmit an instruction to open or unlock a service
door, perform a diagnostic test, or perform other service-related
functions. If the service mobile device is authenticated by the
payment terminal, the payment terminal can respond to the
service request by controlling an actuator to open or unlock the
service door, etc. Accordingly, service personnel can be
authenticated to prevent unauthorized access or unauthorized
field service or troubleshooting operations, thereby providing
improved security as compared with a traditional mechanical key
model.
Spec. ¶ 98.
As such, the additional language of claim 15 does not recite an
improvement to the mechanical operation of an electronic latch. That
is, claim 15 does not recite significantly more than an abstract idea.
The claim merely is directed to insignificant post-solution activity.
See, e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d at 1241–42 (Fed.
Cir. 2016) (holding that printing or downloading generated menus
constituted insignificant extra-solution activity). Furthermore, using
electrical signals to initiate solenoids and other electronic actuators,
switches, and triggers was well-understood, routine, and conventional
in the art.
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Conclusion
Accordingly, we sustain the Examiner’s rejection of claim 1 and 15
under 35 U.S.C. § 101 as being directed to an exception to patent-eligible
subject matter without reciting significantly more. We, likewise, sustain the
101 rejection of claims 2–14 and 16–28, which Appellant does not argue
separately. Appeal Br. 65–66.

THE SECTION 112(B) REJECTION
The Rejection and Contentions
Dependent claim 4 reads as follows:
4. The terminal of claim 1, wherein:
the public key is specific to the mobile device and the
public key is encrypted in the authentication request by a private
key that is superior to the public key in a certificate hierarchy;
the authentication request includes a unique identifier that
specifies the chain of public keys in the certificate hierarchy
which ultimately decrypts the public key; and
the random number is encrypted by a private key
corresponding to the public key.
In the Final Office Action, the Examiner determines that claim 4’s
limitation of “superior . . . key” is unclear. The Examiner explains,
The term [superior key] is not a term of art and is not adequately
described in the specifications or the drawings. The specification
[is] directed to a hierarchy of certificates, and the designated
drawing item 400 does not pertain to public/private key pairings.
Therefore it is unclear as to what the term “superior . . . key”
refers to or what applicant intends to claim with such limitations.
Final Act. 7.
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In the Examiner’s Answer, the Examiner acknowledges the
Specification may provide some guidance regarding the term
“superior . . . key”, further explaining,
it is noted that while the specifications may provide one possible
interpretation of the limitations, the claims themselves provide
no such limiting factors, therefore, under the broadest reasonable
interpretation, the limitations may include a variety of possible
interpretations that would each alter the scope of the claims and
differ the processes being provided. Therefore the limitation is
considered unclear and would cause the scope of the claim to
become indefinite. . . . [T]he plain language of the claims further
support the Office’s possible interpretations as the plain text of
the claims [does] not call forth the various specifics as cited by
appellant as such specifics are only in the specification[] of the
application as merely one possible interpretation and are
nowhere to be found in the actual claim language. Therefore it
is certainly within reason that the limitation of calling a key
‘superior’ in a ‘hierarchy’ would include one key enveloping
another in double encryption, being higher in a table, or being
older, more valuable, etc. Therefore appellant’s argument is not
persuasive.
Ans. 10–11.
Appellant argues the Examiner’s interpretation is inconsistent with the
claim language, explaining,
Claim 4 does not recite “a private key that is superior to
the public key” without any further context (although even
without further context the phrase is not necessarily indefinite).
Instead, claim 4 specifies that the superiority is “in a certificate
hierarchy” and that the unique identifier in the authentication
request “specifies a chain of public keys in the certificate
hierarchy.” The Examiner’s interpretation of “superior . . . key”
as being “construed in a variety of ways including being more
valuable, being older, being placed higher on a [sic] index, being
in an outer layer of a file, etc.” is therefore inconsistent with the
plain language of the claim.
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Appeal Br. 38.
Next, Appellant argues that the Specification describes the claimed
“superior . . . key,” contending, “the present specification describes
certificates in the certificate hierarchy 400 as including keys such that a
person skilled in the art would clearly understand that keys also have
superiority/inferiority in a certificate hierarchy.” Appeal Br. 40.
Analysis
We understand the Examiner’s position to be that the metes and
bounds of claim 4 are unclear because a “superior . . . key,” as recited in
claim 4, could include a variety of interpretations including the following:
“one key enveloping another in double encryption, being higher in a table, or
being older, more valuable.” Ans. 11. We disagree with the Examiner’s
determination that these alternative definitions fall within the broadest
reasonable interpretation of the claim. We, instead, agree with Appellant
that the metes and bounds of claim 4 are reasonably clear. See In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (explaining that language in
a claim is unclear if it is “ambiguous, vague, incoherent, opaque, or
otherwise unclear in describing and defining the claimed invention.”)
Reading claim 4, it seems reasonably clear that the term “superior . . .
key” refers to placement of a key in a key certificate hierarchy. As noted by
the Appellant, the instant Specification describes the placement of
public/private key pairs in a certificate hierarchy. Fig. 4 and Spec. ¶¶ 38–43.
Moreover, even if the other potential definitions proffered by the
Examiner were reasonable alternatives, this fact would not render the claim
indefinite. The breadth of a claim is not to be equated with indefiniteness.
See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971).
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We, therefore, do not sustain the indefiniteness rejection of claim 4, or
of claims 6, 7, 11, 18, 20, 21, and 25, which recite similar limitations.
Claims 5, 8–10, 19, 22–24 also were rejected as indefinite due to their
dependency from one of claims 4 and 18. For the reasons set forth above,
we, likewise, do not sustain the indefiniteness rejection of claims 5, 8–10,
19, and 22–24.

THE SECTION 103 REJECTIONS
Determinations and Contentions
The Examiner finds the combination of Chan, Goto, and Shambroom
teaches or suggests claim element (iii)(a), which recites “[a] processor being
programmed to: receive, via the wireless transceiver, an authentication
request from the mobile device, the authentication request including a public
key and a random number.” In particular, the Examiner finds that Chan
generally teaches limitation (iii)(a)’s requirement of a processor being
programmed to “receive, via the wireless transceiver, an authentication
request from the mobile device,” but does not teach “the authentication
request including a public key and a random number.” Final Act. 8–9.
The Examiner finds that Shambroom teaches “the authentication
request including a public key.” Id. at 10. More specifically, the Examiner
finds Shambroom’s transmission 206 from client 200 to network server 300
(FIG. 2) includes a public key and an identifier and that this transmission
corresponds to the request for authentication, as recited in claim 1. The
Examiner further finds that Goto cures the remainder of Chan’s deficiencies
by teaching “a random number.” Id. at 9–10.
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Appellant argues the combination of Chan, Goto, and Shambroom
fails to teach claim 1’s limitation (iii)(a). Appeal Br. 11–12. Specifically,
Appellant argues Shrambroom fails to teach “the authentication request
including a public key” because Shambroom transmits a public key in
response to an authentication request—not as part of the authentication
request, as required by claim 1. Id.
Analysis
The Examiner’s interpretation is inconsistent with Shambroom’s
disclosure. Shambroom describes the authentication as follows:
As shown in FIG. 2, client 200, which can include a web
browser 205, initiates a request for authenticated secure access
to the web server 305 of network server 300 as indicated by
arrow 206. . . .
Web server 305 of network server 300 responds to the
request at 206 by transmitting information back to web browser
205 that will be used to authenticate the identity of network
server 300 to client 200 and support generation of additional
information which will be used to encrypt future transmissions
between client 200 and network server 300. If, for example, an
SSL transaction is employed in the system of FIG. 2, web server
305 sends web browser 205, as indicated by arrow 208, a
certificate that includes network server 300’s public key and an
identifier indicating a cryptographic algorithm supported by
network server 300.
Shambroom ¶¶ 58–59.
We agree with the Appellant that paragraph 59 of Shambroom does
not teach “authentication request including a public key.” As excerpted
above, Shambroom discloses a web browser 205 sends an authentication
request 206, and web server 305 responds to this request with response 208.
Moreover, it is the web server’s response 208 that includes a public key—
not the web browser 205.
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The Examiner’s interpretation of response 208 corresponding to the
request for authentication is unpersuasive. We, therefore, do not sustain the
obviousness rejection of independent claim 1 over Chan, Goto, and
Shambroom. We, likewise, do not sustain the obviousness rejection of claim
3, which depends from claim 1, or of independent claim 16, which recites
similar limitations to claim 1.
With respect to the remaining obviousness rejections of dependent
claims 1, 2, 4–15, 17–28, the Examiner does not rely on the additionally
cited references, Dickelman, Kohan, and Lyons, to cure the noted
deficiencies of the rejection over Chan, Goto, and Shambroom. Final
Act. 11–19. Accordingly, we, likewise, do not sustain the obviousness
rejection of these claims for the reasons set forth above in relation to for
claim 1 above.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–28 101 Eligibility 1–28
4–11, 18–
25
112(b) Indefiniteness 4–11, 18–25
1, 3, 16 103 Chan, Goto,
Shambroom
1, 3, 16
2, 14, 17,
28
103 Chan, Goto,
Shambroom,
Dickelman
2, 14, 17, 28
4–13, 18–
25, 27
103 Chan, Goto,
Shambroom,
Kohan
4–13, 18–25,
27
15, 26 103 Chan, Goto,
Shambroom,
15, 26
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Lyons
Overall
Outcome
1–28