Elementum, LLC

Patent Trials and Appeals Board

Jun 30, 2021

2020003964 (P.T.A.B. Jun. 30, 2021)

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.
14/526,136 10/28/2014 Leonard M. ADLEMAN LSN-6099-5 8530
23117 7590 06/30/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ASGARI, SIMA
ART UNIT PAPER NUMBER
3699
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD M. ADLEMAN
Appeal 2020-003964
Application 14/526,136
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and CARL L. SILVERMAN,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 17, 19, 20, 22–26, 44, 49, 52–54, and
57–61, which are all claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ELEMENTUM LLC.
Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to methods and systems for creating and using
massless currency. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to:
[S]pecially configured computing machines, systems of
specially configured inter-communicating computing machines
and specially configured computing machine-implemented
processes capable of effecting the practical use of massless
currencies that can be used with a high degree of security,
efficiency, usability and the like, as a medium of exchange in
transactions involving goods and/or services in the real world
(e.g., physical goods) as well as goods and/or services in the
electronic domain (e.g. digital music), for barter, for monetary
exchange, for commercial transactions, and the like.
Spec. 1:8-15.
Exemplary Claim
Claim 17, reproduced below, is representative of the subject matter on
Appeal (emphasis added to contested prior-art limitations):
17. A machine-implemented process enabling
transactions using a dual currency, operations of said machine-
implemented process being performed by at least one
computing device of a note generating authority and said
operations comprising:
encrypting, with a secret key of the note generating
authority, at least a portion of each of plural data strings to
generate respectively corresponding notes of said dual currency,

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Aug. 22, 2019); Reply Brief (“Reply Br.,” filed May 5, 2020); Examiner’s
Answer (“Ans.,” mailed Mar. 5, 2020); Final Office Action (“Final Act.,”
mailed Jan. 23, 2019); and the original Specification (“Spec.,” filed
Oct. 28, 2014) (claiming benefit of US 61/924,428, filed Jan. 7, 2014).
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each of said notes having a respectively corresponding face
value;
transmitting at least some of said notes to computing
devices external to the note generating authority;
receiving, from a first user’s computing device, a
replacement-request including a first data string and a request
for a computing device of the note generating authority to
transmit to a second user’s computing device, a new note of the
dual currency;
applying a single public key of the note generating
authority to decrypt the first data string and produce a second
data string;
determining, based on the second data string, that the first
data string is a note previously distributed by a computing
device of the note generating authority to a computing device
external to the note generating authority and is not a destroyed
note in a list of destroyed notes maintained by a computing
device of the note generating authority in a memory of the
computing device;
encrypting, with a secret key of the note generating
authority, a third data string including the requested new note
with a face value equal to or less than the face value of the
received previously distributed note;
adding the received previously distributed note to the list
of destroyed notes; and
transmitting the new note to the second user’s computing
device.
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Chaum US 5,712,913 Jan. 27 1998
Wheeler et al. (“Wheeler”) US 2002/0032860 A1 Mar. 14, 2002
Billingsley US 7,567,909 B1 July 28, 2009
Talker US 2014/0143142 A1 May 22, 2014
REJECTIONS
Rejection Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
R1 17, 19, 20, 22–26, 44, 49, 52–54, 57–61 101 Eligibility
R2 17, 19, 20, 22–26, 44, 49, 52–54, 57–61 112(a)
Written
Description
R3 44, 49, 57–61 112(b) Indefiniteness
R4 49 102(a)(1)/102(a)(2) Billingsley
R5 17, 19, 22–24, 26, 44, 49, 53, 54, 57–61 103
Billingsley,
Wheeler
R6 52 103 Billingsley, Wheeler, Talker
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 14–40) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-
ineligible subject matter Rejection R1 of claims 17, 19, 20, 22–26, 44, 49,
52–54, and 57–61 on the basis of representative claim 17; and we decide the
appeal of obviousness Rejection R5 of claims 17, 19, 22–24, 26, 44, 49, 53,
54, 57–60, infra. We separately address written description Rejection R2 of
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claims 17, 19, 20, 22–26, 44, 49, 52–54, and 57–61; indefiniteness Rejection
R3 of claims 44, 49, and 57–61; anticipation Rejection R4 of claim 49; and
obviousness Rejection R5 of claim 61, infra.
Remaining claim 52 in obviousness Rejection R6, not argued
separately, stands or falls with independent claim 17 from which it depends.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Based upon our review of the record, as discussed below, we find a
preponderance of the evidence supports particular arguments advanced by
Appellant with respect to:
(a) subject matter eligibility Rejection R1 of claims 17,
19, 20, 22–26, 44, 49, 52–54, and 57–61;
(b) written description Rejection R2 of claims 17, 19, 20,
22–26, 44, 49, 57, and 61;
(c) indefiniteness Rejection R3 of claims 49, 60, and 61;
(d) anticipation Rejection R4 of claim 49;

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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(e) obviousness Rejection R5 of claims 17, 19, 22–24,
26, 44, 49, 53, 54, and 57–60; and
(f) obviousness Rejection R6 of claim 52 for the specific
reasons discussed below.
However, we disagree with Appellant’s arguments with respect to:
(g) written description Rejection R2 of claims 52–54;
(h) indefiniteness Rejection R3 of claims 44 and 57–59;
and
(i) obviousness Rejection R5 of claim 61.
Unless otherwise noted, for items (g) through (i) above, we
incorporate by reference herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer
in response to Appellant’s arguments. We highlight and address specific
findings and arguments regarding separately argued claims for emphasis as
follows.
1. § 101 Rejection R1: Claims 17, 19, 20, 22–26, 44, 49, 52–54, 57–61
Issue 1
Appellant argues (Appeal Br. 14–25; Reply Br. 2–5) the Examiner’s
rejection of claim 17, 19, 20, 22–26, 44, 49, 52–54, and 57–61 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter is in error.
These contentions present us with the following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 17 patent-ineligible under
§ 101?
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Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
However, the 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim 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

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “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))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to detecting suspicious
activity by using network monitors and analyzing network packets, SRI Int’l,
Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019); (c) a claim to
a specific data encryption method for computer communication involving a
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several-step manipulation of data, Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1149 (Fed. Cir. 2016) (distinguishing TQP Devel., LLC v.
Intuit Inc., Appeal No. 2:12-cv-180-WCB, 2014 WL 651935, at *4 (E.D.
Tex. Feb. 19, 2014)) (the specific data encryption method “could not
conceivably be performed in the human mind or with pencil and paper”).
Whereas a claim limitation to a process that “can be performed in the human
mind, or by a human using a pen and paper” qualifies as a mental process, a
claim limitation that “could not, as a practical matter, be performed entirely
in a human’s mind” (even if aided with pen and paper) would not qualify as
a mental process.5
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[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 Supreme 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. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical

5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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 (citation 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 Revised Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101.6 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised

6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/
content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal
public comments, the Office issued further guidance on October 17, 2019,
clarifying the Revised Guidance. USPTO, October 2019 Update: Subject
Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are,
as a matter of internal agency management, expected to follow the
guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
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guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).7
Under MPEP § 2106, 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) (“Step 2A, Prong One,” referred
to herein as “Step 2A(i)”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two,”
referred to herein as “Step 2A(ii)”).8
MPEP § 2106.04(a)) and § 2106.04(d).
Under this guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9

7 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
8 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application, using one or more of the
considerations introduced in subsection I supra, and discussed in more detail
in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and
2106.05(e) through (h).” MPEP § 2106.04(d)II.
9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,10 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field; 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.11
MPEP § 2106.05(d).
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine, or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .

the MPEP for analyzing the claim should be followed. See MPEP
§ 2106.04(a)(3) (“Tentative Abstract Ideas”).
10 This corresponds to Alice part one where it is determined whether the
claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim
is “not directed to an abstract idea under part one of the Alice framework, we
do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
11 Items (3) and (4) correspond to Alice part two where it is determined
whether the claim “contains an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application” (Alice, 573 U.S.
at 221) and continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See MPEP §§ 2106.05(d)(I)(2); 2106.07(a).
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 17, as a process claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 17 is directed to “an abstract idea
as it is organizing human activities, a mental process, and/or a mathematical
concept (relationships) (e.g. encryption).” Final Act. 6.
We conclude claim 17 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 17 recites
an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention is directed to “practical use of massless currencies that can be
used with a high degree of security, efficiency, usability and the like, as a
medium of exchange in transactions involving goods and/or services in the
real world (e.g., physical goods) as well as goods and/or services in the
electronic domain (e.g. digital music), for barter, for monetary exchange, for
commercial transactions, and the like.” Spec. 1:10–15.
Appellant’s Abstract describes the invention as:
Methods, systems, and computer-readable storage
mediums are described for effecting practical use of a dual
currency which is a currency that can be electronically created
and stored, and further for which there is a secret key (e.g., the
secret key of a public key/secret key pair as used in public key
cryptography) such that: an entity that does not possess the
secret key cannot, in practice, create notes of the currency; and
an entity that does possess the secret key can, in practice, create
notes of the currency without assistance from entities that do
not possess the secret key.
Spec. 63 (Abstract).
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We determine that claim 17, overall, recites a combination of a mental
process, mathematical concepts, and certain methods of organizing human
activity in the form of commercial interactions. This type of abstract
activity, i.e., use of a dual currency to create notes as recited in each of
limitations L1 through L8, for example, and aside from any computer-
related aspects, includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
with pen and paper. See CyberSource, 654 F.3d at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).12
Thus, under Step 2A(i), we agree with the Examiner that claim 17’s
method for “enabling transactions using a dual currency” recites one or more
abstract ideas. We conclude claim 17, under our Revised Guidance, recites a
judicial exception of enabling transactions using a dual currency, and thus is
an abstract idea.

12 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely 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 (math)
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) (determining the pending claims were directed to a combination
of abstract ideas).
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In TABLE I below, we identify in italics the specific claim limitations
in claim 17 that we conclude recite an abstract idea. We additionally
identify in bold the additional (non-abstract) claim limitations that are
generic computer components and techniques, and underline limitations
representing extra or post-solution activity:
TABLE I
Independent Claim 17 Revised Guidance
A machine-implemented
process enabling transactions
using a dual currency,
operations of said machine-
implemented process being
performed by at least one
computing device of a note
generating authority and said
operations comprising:
A process is a statutory subject matter
class. See 35 U.S.C. § 101 (“Whoever
invents or discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new and
useful improvement thereof, may obtain a
patent therefor, subject to the conditions
and requirements of this title.”).
[L1a] encrypting, with a
secret key of the note
generating authority, at least
a portion of each of plural
data strings

[L1b] to generate
respectively corresponding
notes of said dual currency,
each of said notes having a
respectively corresponding
face value;
Encryption involves mathematical
calculations, which is an abstract idea. See
MPEP § 2106.04(a)(2)(I)(C); see also SAP
America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018) (holding that
claims to a “series of mathematical
calculations based on selected information”
are directed to abstract ideas).
As claimed, generating currency notes is
merely insignificant extra-solution activity
that does not add significantly more to the
abstract idea to render the claimed
invention patent-eligible. See MPEP
§ 2106.05(g)
[L2a] transmitting at least
some of said notes to
Transmitting information (data) is
insignificant extra-solution activity.
Revised Guidance 55, n.31; see also
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Independent Claim 17 Revised Guidance

[L2b] computing devices
external to the note
generating authority;
MPEP § 2106.05(g). See In re Bilski, 545
F.3d 943, 962 (Fed. Cir. 2008) (en banc),
aff’d on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of the
machine or transformation in the claimed
process must not merely be insignificant
extra-solution activity”); see also MPEP
§ 2106.05(g); and see buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (computer receives and sends
information over a network).
As claimed and described in the
Specification, “computing devices”
represent generic computing devices. See
Spec. 8:5–10:10.
[L3a] receiving, from [L3b]
a first user’s computing
device, a replacement-
request including a first data
string and a request for a
computing device of the note
generating authority to
transmit to a second user’s
computing device, a new
note of the dual currency;
Receiving information such as a
replacement request, i.e., data gathering,
is merely insignificant extra-solution
activity that does not add significantly
more to the abstract idea to render the
claimed invention patent-eligible. See
MPEP § 2106.05(g); Revised Guidance
55 n.31; see In re Bilski, 545 F.3d 943,
962 (Fed. Cir. 2008) (en banc), aff’d on
other grounds, 561 U.S. 593 (2010)
(“[T]he involvement of the machine or
transformation in the claimed process
must not merely be insignificant extra-
solution activity”).
As claimed, “a first [and second] user’s
computing device” represent generic
computer components. See Spec. 8:5–
10:10.
[L4] applying a single public
key of the note generating
authority to decrypt the first
Applying a cryptographic key to a string
to produce a second string involves
mathematical calculations, which is an
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Independent Claim 17 Revised Guidance
data string and produce a
second data string;
abstract idea. See MPEP
§ 2106.04(a)(2)(I)(C); see also SAP Am.,
898 F.3d at 1163 (holding that claims to a
“series of mathematical calculations based
on selected information” are directed to
abstract ideas).
[L5] determining, based on
the second data string, that
the first data string is a note
previously distributed by a
computing device of the note
generating authority to a
computing device external to
the note generating authority
and is not a destroyed note in
a list of destroyed notes
maintained by a computing
device of the note generating
authority in a memory of the
computing device;
See Step 2A(ii) analysis, infra.
[L6] encrypting, with a
secret key of the note
generating authority, a third
data string including the
requested new note with a
face value equal to or less
than the face value of the
received previously
distributed note;
Encrypting a data string involves
mathematical calculations and is an
abstract idea. See MPEP
§ 2106.04(a)(2)(I)(C); see also SAP Am.,
898 F.3d at 1163 (holding that claims to a
“series of mathematical calculations based
on selected information” are directed to
abstract ideas).
[L7] adding the received
previously distributed note
to the list of destroyed notes;
and
See Step 2A(ii) analysis, infra.
[L8] transmitting the new
note to the second user’s
computing device.
See Step 2A(ii) analysis, infra.
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Spec. 42 (Claims App.).
Under the broadest reasonable interpretation standard,13 we conclude
the above recited steps that would ordinarily occur when enabling
transactions using a dual currency. See Final Act. 6. For example, receiving
a replacement request for a note and providing a new note of the dual
currency is an operation that generally occurs while enabling transactions
using a dual currency. Further, keeping track of notes issued to customers
and recording destroyed or expired notes is a process that routinely occurs in
banking services, whether initiated person-to-person, on paper, or using a
computer.
Further, as identified in TABLE I, above, we identify limitations L1a
(“encrypting . . . a portion of each of plural data strings”), L4 (“applying a
single public key . . . to decrypt the first data string and produce a second
data string”), and L6 (“encrypting . . . a third data string”) recite various
abstract ideas.

13 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, in addition to the abstract ideas recited
in limitations L1a, L4, and L6, as identified above, we find limitation L3a
recites insignificant data gathering. See MPEP § 2106.05(g). Data
gathering, as performed by the step or function in Appellant’s claims, is a
classic example of insignificant extra-solution activity. See, e.g., In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v.
Kappos, 561 U.S. 593 (2010).
We also find limitations L1b, and L2a recite insignificant extra-
solution activity. The Supreme Court guides that the “prohibition against
patenting abstract ideas ‘cannot be circumvented’ . . . [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting
Diehr, 450 U.S. at 191–92). Furthermore, on this record, we are of the view
that Appellant’s claims do not operate the recited generic computer
components (limitations L2b, L3b) in an unconventional manner to achieve
an improvement in computer functionality. See MPEP § 2106.05(a).
However, in addition to the abstract steps recited in limitations L1a,
L4, and L6 identified in Step 2A(i), supra, claim 1 further recites limitations
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L5 (“determining . . . that the first data string is a note previously distributed
. . . and is not a destroyed note in a list of destroyed notes”), L7 (“adding the
received previously distributed note to the list of destroyed notes”), and L8
(“transmitting the new note to the second user’s computing device”). For
the reasons discussed below, we conclude limitations L5, L7, and L8
integrate the abstract ideas into a practical application as determined under at
least one of the MPEP sections cited above.14
Appellant’s Specification discloses “dual currency note creator may
be called by the dual currency replacer (shown, for example, in FIGs. 12A
and 12B) as a result of a dual currency replacement request.” Spec. 26:25–
27.
Appellant argues, “it is incorrect for the Examiner to conclusively
dismiss these transforming features as ‘still merely directed to dividing
currency specifically, performing a transaction by making a payment and
receiving the change.’” Appeal Br. 23 (quoting Final Act. 2–3).
We are persuaded by Appellant’s argument that carrying out the steps
of L5 (“determining, based on the second data string, that the first data string
is a note previously distributed by a computing device of the note generating
authority to a computing device external to the note generating authority and
is not a destroyed note in a list of destroyed notes maintained by a
computing device of the note generating authority in a memory of the
computing device”); L7 (“adding the received previously distributed note to

14 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field,” and
§ 2106.05(e) “Other Meaningful Limitations.”
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the list of destroyed notes”); and L8 (“transmitting the new note to the
second user’s computing device”) provide improvements to the underlying
technology or technical field, namely, dual currency. See MPEP
§ 2106.05(a) or, alternatively, § 2106.05(e) “Other Meaningful Limitations.”
In particular, “the inventor has used the public-key cryptography tool in a
particularly recited novel way to create an analogue of cash in a machine-
implemented system that provides privacy and security, and that is fast,
inexpensive, and easy to use” (Appeal Br. 23), and “the Specification
defines dual currency as ‘electronically created, stored, and exchanged and
further for which there is a secret key such that the following two conditions
are satisfied: (1) An entity that does possess the secret key creates notes of
the currency by generating data strings of a predefined structure and
encrypting them with the secret key; and (2) An entity that does not possess
the secret key cannot, in practice, create notes of the currency.’” Reply Br. 5
(citing Spec. 17).
With respect to these other meaningful limitations, we find guidance
in MPEP § 2106.05(e), which summarizes and relies upon the Supreme
Court’s holding in Diehr, cited supra, and our reviewing court’s holdings in
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (decision on remand from the Supreme Court, which had vacated the
lower court’s prior holding of ineligibility in view of Bilski v. Kappos).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use
of the (abstract idea) mathematical equation to the practical application of
molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at
184, 187).
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In Classen, the Federal Circuit held that, although the analysis step
was an abstract mental process that collected and compared known
information, the (practical application) immunization step was meaningful
because it integrated the results of the analysis into a specific and tangible
method that resulted in the method “moving from abstract scientific
principle to specific application.” MPEP § 2106.05(e) (citing Classen, 659
F.3d at 1066–68).
We find these other meaningful limitations L5, L7, and L8 identified
above provide a technological improvement to dual currency systems, which
previously did not allow replacement of notes in massless currency systems.
Accordingly, we conclude, when the claim is considered as a whole, the
recited judicial exception is integrated into a practical application as
determined under either MPEP sections 2106.06(a) or 2106.05(e) cited
above, such that the claim is patent-eligible.
Because the claims are directed to a patent-eligible concept, this
concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claim 17 and grouped claims 19, 20, 22–26,
44, 49, 52–54,and 57–61 which stand therewith. See Claim Grouping,
supra.
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2. § 112(a) Written Description Rejection R2: Claims 17, 19, 20, 22–26,
44, 49, 52–54, 57–61
Appellant argues (Appeal Br. 25–30; Reply Br. 6–11) the Examiner’s
rejection of claims 17, 49, 53, and 54 under 35 U.S.C. § 112(a) as lacking
written description support is in error. These contentions present us with the
following Issues 1(a) through 1(e):
Issue 1
(a) Claim 17
Did the Examiner err in finding “determining . . . that the first data
string is a note previously distributed by a computing device of the note
generating authority . . . and is not a destroyed note in a list of destroyed
notes maintained by a computing device of the note generating authority”
lacks written description support in the context of claim 17, and thus
constitutes new matter?
(b) Claims 17, 44, 49, 57–60
Did the Examiner err in finding the recitation of “apply a single public
key” lacks written description support in the context of claims 17, 44, 49,
and 57–60?
(c) Claim 49
Did the Examiner err in finding “the computer program instruction
which, when executed by at least one computing device processor of a
computing device of the note generating authority[] causes the computing
device to [encrypt and transmit]” lacks written description support in the
context of claim 49?
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(d) Claim 52
Did the Examiner err in finding “without requiring an endorsement by
the first user’s . . . or the second user’s” lacks written description support in
the context of claim 52?
(e) Claims 53–54
Did the Examiner err in finding “wherein the first data string is itself
devoid of identifying information for the first user’s computing device and
the second user’s computing device” lacks written description support in the
context of representative claim 53?
Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id.; cf. U.S. v. Telectronics, Inc., 857 F.2d 778,
785 (Fed. Cir. 1988).
Further, the Specification “need not describe the claimed subject
matter in exactly the same terms as used in the claims.” Eiselstein v. Frank,
52 F.3d 1035, 1038 (Fed. Cir. 1995). “If . . . the specification contains a
description of the claimed invention, albeit not in ipsis verbis (in the
identical words), then the examiner . . . must provide reasons why one of
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ordinary skill in the art would not consider the description sufficient.” In re
Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Analysis
(a) Claim 17
With respect to claim 17, the Examiner finds the limitation
“determining . . . that the first data string is a note previously distributed by a
computing device of the note generating authority . . . and is not a destroyed
note in a list of destroyed notes maintained by a computing device of the
note generating authority” lacks written description support.
In response, Appellant contends:
The note generating authority recited in the claims may
correspond to the dual currency authority described in the
specification. The specification describes that the dual currency
authority may include a plurality of computing devices that can
operate to provide its functionality.
Appeal Br. 25–26.
We are persuaded by Appellant that the Examiner erred because the
Specification states “[e]ach of the entities, dual currency authority 102, user
110, and user 112, includes one or more specially configured computer
device processing systems.” Spec. 8. We find this disclosure provides
adequate written description support for the disputed limitation.
Therefore, on this basis, we do not sustain the written description
Rejection R2 of claim 17.
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(b) Claims 17, 44, 49, 57–60
The Examiner finds “the specification is silent to a single public key”
which lacks written description support, as recited in each of claims 17, 44,
49, and 57–60. Final Act. 9.
With respect to these claims, Appellant contends:
FIG. 11 (reproduced below) illustrates the authentication
of a dual currency note using a single public key of the note
generating authority as the only key used for decrypting the
note during authentication.
Appeal Br. 27. Appellant’s Figure 11 is reproduced below.
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“FIG. 11 is a flowchart illustrating a machine-implemented method
for authenticating a dual currency note, in accordance with one or more
embodiments.” Spec. 4:1–3.
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We disagree with the Examiner because Figure 11 shows that after
“the key,” i.e., a “single public key,” is found in step 1106, then that “single
public key” is applied to the note j to obtain output g in step 1108.
Therefore, on this basis, we do not sustain the written description
Rejection R2 of claims 17, 44, 49, and 57–60.
(c) Claim 49
With respect to claim 49, the Examiner finds “the claim recites ‘. . .
the computer program instruction which, when executed by at least one
computing device processor of a computing device of the note generating
authority, causes the computing device to . . .’, without clearly defining how
the instructions cause the computing device to perform the operations
encrypt, transmit, etc.” Final Act. 10.
It appears that the Examiner has conflated the requirements for
enablement with those for written description. Appellant contends, “[t]he
‘encrypt, transmit, etc.’ operations identified [by] the Examiner in the claims
are well known to persons skilled in the art.” Appeal Br. 29.
We disagree with the Examiner that an algorithm for encrypting and
transmitting must be described in the specification to ensure that the
specification “reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” See
Ariad Pharm., 598 F.3d at 1351. Because of the varying level of detail
required to satisfy the written description requirement, in this circumstance,
we are persuaded by Appellant’s argument that encryption and transmission
algorithms are “well known to persons skilled in the art.” Appeal Br. 29.
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(d) Claim 52
With respect to claim 52, the Examiner finds, “the claim recites ‘. . .
without requiring an endorsement by the first user or the second user . . . ,”
However, the specification is silent to generating (or authenticating) a note
without requiring user endorsement.” Final Act. 10.
In response, Appellant argues:
FIG. 11 (reproduced above) explicitly illustrates authentication
without requiring a user endorsement. More specifically, FIG.
11 illustrates the complete example embodiment process for
authentication of a note, and, as anyone can plainly see, no
decisions therein are based on endorsements. FIGs. 12A-B
illustrate generating/replacing a note – and also illustrate that
the process is completed without requiring endorsements.
Appeal Br. 30.
We agree with the Examiner that “the fact that a process does not
include an action or a step is not an evidence sufficient to claim that the
process is performed without that step.” Ans. 8. Moreover, with respect to
the disputed negative limitation, we see no evidence of record that the
“specification describes a reason to exclude the relevant limitation.”
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
Accordingly, on this basis, we sustain the written description
Rejection R2 of claim 52.
(e) Claims 53–54
With respect to claims 53 and 54, the Examiner finds, “the claim
recites ‘. . . wherein the first data string [new note transmitted] . . . is itself
devoid of identifying information for the first user’s computing device and
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the second user's computing device,’ However, the specification is silent to a
data string/note being devoid of user's device identification.” Final Act. 10.
With respect to these claims, Appellant contends:
[T]he note shown in FIG. 4 includes driver license information,
at page 17 lines 11–16, the specification makes clear that driver
license information and any other user identifying information
is not essential: “Note that in the above described structure,
many of the specific fields may be more informational rather
than being essential for the operation of the dual currency
system. For example, while the face value field, or a
representation of the face value, may be essential for the
operation of the dual currency system, issuer identity, user’s
driver license etc., may not be essential.
Appeal Br. 30.
We agree with the Examiner that the “Specification does not imply
that a data string (or a note) is devoid of identifying information. Nowhere
does the Specification explicitly state[] that a data string or note is devoid of
identifying information.” Ans. 9–10. Further, the Specification discloses
the note is devoid of a “user’s driver license.” Spec 17:16. We determine
that drivers’ licenses do not represent the full scope of user identity
information. The reason that a driver’s license may be excluded is that the
information “may not be essential.” Id. We determine that this reasoning
does not apply to all user identification information. We further find that the
scope of what is disclosed in the Specification and what is claimed are not
commensurate. Therefore, we find the negative claim limitation is not
adequately described.
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3. § 112(b) Indefiniteness Rejection R3 of Claims 44, 49, and 57–61
Issue 3
Appellant argues (Appeal Br. 31, 32; Reply Br. 11–13) the
Examiner’s rejection of claims 44, 49 and 57–61 under 35 U.S.C. § 112(b)
as being indefinite is in error. These contentions present us with the
following issues:
Did the Examiner err in finding each of the rejected claims is
indefinite in the context of claims 44, 49, and 57–61?
Principles of Law
We apply the indefiniteness test approved by In re Packard, 751 F.3d
1307 (Fed. Cir. 2014) (per curiam): “A claim is indefinite when it contains
words or phrases whose meaning is unclear,” and “claims are required to be
cast in clear—as opposed to ambiguous, vague, indefinite—terms.” See
Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015-
006416, 2017 WL 3669566, at *8–11 (PTAB Aug. 25, 2017) (precedential)
(explaining because of different approaches to indefiniteness before the
PTAB and the courts, the PTAB continues to follow Packard after the
Supreme Court’s Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898
(2014) decision).
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
Packard, 751 F.3d at 1311.
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Analysis
(a) Claims 44 and 57–59
The Examiner concludes “[w]ith respect to claims 44, 49, 57, and 58,
the claims are directed to a product. However, the claims also recite method
steps- e.g. ‘. . . destroyed notes . . . ,’ and ‘ . . . maintained by . . .’ that are
not attributed to an element of the product. Claims 44, 49, 57, and 58 are
therefore hybrid claims.” Final Act. 11.
Appellant responds:
In the present claims, the term “destroyed notes” describe
a characteristic of certain notes of the dual currency. The term
“maintained by” is used in claim 44 (and also claims 49, 57 and
58) in the context of “. . . and is not a destroyed note in a list of
destroyed notes maintained by a computing device of the note
generating authority in a memory of the computing device” and
thus clearly describes a characteristic of the recited list of
destroyed notes. For similar reasons, the term “. . . previously
distributed . . .” in claims 49, 57, 58, and 59 also describes a
characteristic of a recited note.
Appeal Br. 31–32.
We agree with the Examiner’s finding that claims 44 and 57–59,
recite a system or machine followed by a series of method steps. For
instance, claim 44 is directed to a “processor for,” and then without any
linking words like “configured to” or “performing,” the claim proceeds with
a series of method steps. Claim 57 is directed to a “computing device” in
the preamble that is followed directly by a list of method steps. Claim 58
recites a “computer of a note generating authority,” i.e., a machine, that is
followed by disconnected method steps. Claim 59 suffers the same
deficiency. We conclude, as a matter of claim construction, the preamble
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cannot recite a system, and then further recite, in the body of the claim, a
series of unconnected method steps, because it causes confusion as to what
Appellant seeks to patent. Our reviewing court similarly holds such claims
are indefinite under§ 112, second paragraph, now § 112(b). See Rembrandt
Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011)
(holding an apparatus claim reciting an active transmitting step to be
indefinite). Therefore, we sustain the 112(b) rejection of hybrid claims 44
and 57–59.
(b) Claims 49 and 60–61
However, with respect to claims 49 and 60–61, we disagree with the
Examiner. In claim 49 for example, the claim is directed to an article of
manufacture containing computer instructions which, when executed on a
computing device, causes the “computing device to: encrypt . . . transmit,”
etc. We conclude the claim is clear in its intent, and is not indefinite.
With respect to claims 60 and 61, the Examiner concludes these
claims are indefinite because of a the purported recitation of “‘the received
previously distributed note’ [and therefore t]here is insufficient antecedent
basis for these limitations in the claims.” Final Act. 12.
We disagree with the Examiner because we see no such recitation or
similar claim language in either of claims 60 or 61.
Accordingly, we sustain the § 112(b) rejection for hybrid claims 44
and 57–59, and we reverse the § 112(b) rejection for article of manufacture
claim 49 and method (process) claims 60–61.
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4. § 102(a)(1)/102(a)(2) Rejection R4 of Claim 49
Issue 4
Appellant argues (Appeal Br. 32–35; Reply Br. 13–16) the
Examiner’s rejection of claim 49 under 35 U.S.C. § 102(a)(1)/(a)(2) as being
anticipated by Billingsley is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior discloses “[a] non-
transitory computer readable medium storing computer program code . . .
which, when executed by [a processor], causes the computing device to,”
inter alia, “encrypt, with a secret key of the note generating authority, at
least a portion of each of plural data strings,” as recited in claim 49?
Principles of Law
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim “if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference.” Schering Corp. v. Geneva Pharms., Inc., 339 F.3d
1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing
Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991)).
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Analysis
The Examiner finds “the recitation ‘for enabling transactions using
. . .’ [in claim 49] indicates intended use and does not have patentable
weight. . . . In addition, the recitation ‘causes the computing device to . . . []’
[i]ndicates functional language and does not have patentable weight.” Final
Act. 13.
Appellant contends:
The Examiner has rejected the claims by erroneously not giving
patentable weight to the limitations defined as “for enabling
transactions using . . .” and “causes the computing device to
. . .” etc.
Appeal Br. 32.
We disagree with the Examiner because we determine the Examiner
has erroneously found that the preamble does not give patentable weight to
the rest of the claimed elements.
As our reviewing court has held, “[g]enerally,” we have said, “the
preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus.,
Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Nonetheless, the preamble may
be construed as limiting “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),
quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999). As in this case, however, the preamble is not regarded as
limiting, “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.” Catalina, 289 F.3d at 809.
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We are persuaded by Appellant’s argument that “the Examiner has
failed to specify a basis, and there is no basis, for not according patentable
weight to claim limitation merely because 112(f) is not invoked.’” Appeal
Br. 31.
We are further persuaded by Appellant’s argument because claim 49
recites a complete invention in the body of the claim, even if the preamble is
not considered to be limiting, and we further find that Billingsley does not
disclose each limitation of the claim as argued by Appellant. See Appeal
Br. 33–35.
Accordingly, we do not sustain the anticipation Rejection R4 of
claim 49 over Billingsley.
5. § 103 Rejection R5 of Claims 17, 19, 22–24, 26, 44, 49, 53, 54, 57–60
Issue 5
Appellant argues (Appeal Br. 35–40; Reply Br. 16–18) the
Examiner’s rejection of claims 17, 19, 22–24, 26, 44, 49, 53, 54, and 57–60
under 35 U.S.C. § 103 as being obvious over the combination of Billingsley
and Wheeler is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the step of “applying a single
public key of the note generating authority to decrypt the first data string and
produce a second data string,” as recited in representative claim 17, and as
commensurately recited in each of independent claims 44, 49, and 57–60?
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Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
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Analysis
The Examiner finds Billingsley teaches or suggests the disputed
limitation of claim 17, as well as claims 44, 49, and 57–60. Final Act. 14.
With respect to claims 17, 44, 49, and 57–60, the claims require
“applying a single public key,” and that limitation is described in the
Specification in a way that makes it clear that only a single public key is
applied to the note. See § 112(a), Rejection R2 above.
Appellant contends that this disputed limitation is not taught by
Billingsley (see Appeal Br. 35 et seq.) because Billingsley teaches that two
keys are required for decryption — both the bearer’s public key and the
bank’s public key — and the Examiner did not respond to that contention.
See Ans. 11–12.
As mentioned above, Billingsley applies several keys to the note, see
step 82 in Figure 8 where a “public key information 22” (Billingsley 16:44)
is used to verify the buyer’s signature information matches the information
in the endorsed value note; and then again in step 84 where the “bank’s
public key” is used to validate the “original bank signature.” Therefore,
Billingsley clearly applies more than one single public key, and there is no
evidence of record that the secondary reference, Wheeler, solves this
deficiency.
Accordingly, we reverse the § 103 rejection of claims 17, 44, 49, and
57–60.
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6. § 103 Rejection R5 of Claim 61
Issue 6
Appellant argues (Appeal Br. 35–40; Reply Br.16–18) the Examiner’s
rejection of claim 61 under 35 U.S.C. § 103 as being obvious over the
combination of Billingsley and Wheeler is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the limitation of “applying a
public key of the note generating authority to decrypt the first data string and
produce a second data string,” as recited in claim 61?
Analysis
We first note Appellant does not separately argue independent
claim 61, but instead argues claim 17 is representative, and recites “applying
a single public key.” Appeal Br. 40 (emphasis added); and see generally
Appeal Br. 35 et seq.
Claim 61 does not recite “a single public key,” and thus we do not
construe claim 61 the same as claims 17, 44, 49, and 57–60. Claim 61
recites “applying a public key of the note generating authority to decrypt the
first data string and produce a second data string.” We find that, under the
broadest reasonable interpretation standard, this claim does not preclude
multiple public keys being applied, only that at least one key is applied to
decrypt a first data string to produce a second data string.
The Examiner points out that Billingsley applies a public key to a data
string. Final Act. 14 (citing Billingsley 5:30-42, 6:26-33, 16:30 and 17:9).
Specifically, the “bank computer performs a number of verification tests
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upon the endorsed valued note.” Billingsley 16:30. The note is decrypted to
ensure its authenticity, see Billingsley 5:35–42 (“only the true bearer will be
able to supply an authentic public key which matches the public-key-related
information in the value note. If a fraudulent bearer attempts to vary the
public-key-related information in the value note, then this will be readily
apparent since the value note information will no longer match the original
issuer’s signature (based on the public-key-related information.”).
Billingsley, therefore, applies a public key to decrypt the note and
authenticate the banks note, which we determine discloses Appellant’s
recited step of “applying a public key of the note generating authority to
decrypt the first data string,” as in claim 61.
The Examiner, then finds that Wheeler applies a key to a first data
string to produce a second data string. Final Act. 16 (citing Wheeler
Abstract and ¶ 15). Appellant argues: “(1) the note generating authority, of
which the secret key is used to encrypt the first data string, uses its own
public key to produce the second data string, and (2) that the first data string
(to which the single public key is applied) is a previously distributed note.”
Appeal Br. 38. We are not persuaded that Examiner erred here because
(1) Wheeler was not used to teach a note generating authority using its own
public key; and (2) the claim language doesn’t require that the first data is a
previously distributed note.
Appellant argues the “Examiner fails to describe why a person of
ordinary skill in the art would modify the digital signatures already in
Billingsley in accordance with Wheeler.” Appeal Br. 40. The Examiner
does not respond to this contention, however, we are unpersuaded as we
determine that encryption as claimed and described was well known by a
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person having ordinary skill in the art. See Appeal Br. 29 (“the manner in
which computer code that causes a computing device to perform such
‘encrypt, transmit, etc.’ operations are also well known to persons of skill in
the art.”).
Therefore, in agreement with the Examiner, we find that it would have
been obvious to a person having ordinary skill in the art to use the
encryption scheme in Wheeler to carry out the validation step of Billingsley.
Accordingly, we sustain the § 103 Rejection R5 of claim 61.
7. § 103(a) Rejection R6 of Claim 52
In light of our reversal of the Rejection R5 of independent claim 17,
supra, we also reverse obviousness Rejection R6 under § 103 of claim 52,
which depends from claim 17. On this record, the Examiner has not shown
how the additionally cited tertiary Talker reference overcomes the
aforementioned deficiencies with Billingsley and Wheeler, as discussed
above regarding claim 17.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer,
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which
Appellant has not shown.
CONCLUSION
We AFFIRM IN PART the Examiner’s rejections.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis Affirmed Reversed
17, 19, 20,
22–26, 44, 49,
52–54, 57–61
101 Eligibility
17, 19, 20, 22–26,
44, 49, 52–54,
57–61
17, 19, 20,
22–26, 44, 49,
52–54, 57–61
112(a) Written Description 52–54
17, 19, 20, 22–26,
44, 49, 57–61
44, 49, 57–61 112(b) Indefiniteness 44, 57–59 49, 60, 61
49 102(a)(1)/102(a)2) Billingsley 49
17, 19, 22–24,
26, 44, 49, 53,
54, 57–61
103 Billingsley, Wheeler 61
17, 19, 22–24, 26,
44, 49, 53, 54,
57–60
52 103
Billingsley,
Wheeler,
Talker
52
Overall
Outcome
44, 52–54,
57–59, 61
17, 19, 20, 22–26,
49, 60
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART