Elementum, LLCDownload PDFPatent Trials and Appeals BoardJun 30, 20212020003964 (P.T.A.B. Jun. 30, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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. Appeal 2020-003964 Application 14/526,136 2 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). Appeal 2020-003964 Application 14/526,136 3 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. Appeal 2020-003964 Application 14/526,136 4 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 Appeal 2020-003964 Application 14/526,136 5 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). Appeal 2020-003964 Application 14/526,136 6 (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? Appeal 2020-003964 Application 14/526,136 7 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. Appeal 2020-003964 Application 14/526,136 8 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 Appeal 2020-003964 Application 14/526,136 9 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)). Appeal 2020-003964 Application 14/526,136 10 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. Appeal 2020-003964 Application 14/526,136 11 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 Appeal 2020-003964 Application 14/526,136 12 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. Appeal 2020-003964 Application 14/526,136 13 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. Appeal 2020-003964 Application 14/526,136 14 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). Appeal 2020-003964 Application 14/526,136 15 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). Appeal 2020-003964 Application 14/526,136 16 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 Appeal 2020-003964 Application 14/526,136 17 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 Appeal 2020-003964 Application 14/526,136 18 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. Appeal 2020-003964 Application 14/526,136 19 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). Appeal 2020-003964 Application 14/526,136 20 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 Appeal 2020-003964 Application 14/526,136 21 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.” Appeal 2020-003964 Application 14/526,136 22 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). Appeal 2020-003964 Application 14/526,136 23 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. Appeal 2020-003964 Application 14/526,136 24 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? Appeal 2020-003964 Application 14/526,136 25 (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 Appeal 2020-003964 Application 14/526,136 26 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. Appeal 2020-003964 Application 14/526,136 27 (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. Appeal 2020-003964 Application 14/526,136 28 “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. Appeal 2020-003964 Application 14/526,136 29 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. Appeal 2020-003964 Application 14/526,136 30 (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 Appeal 2020-003964 Application 14/526,136 31 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. Appeal 2020-003964 Application 14/526,136 32 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. Appeal 2020-003964 Application 14/526,136 33 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 Appeal 2020-003964 Application 14/526,136 34 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. Appeal 2020-003964 Application 14/526,136 35 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)). Appeal 2020-003964 Application 14/526,136 36 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. Appeal 2020-003964 Application 14/526,136 37 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? Appeal 2020-003964 Application 14/526,136 38 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). Appeal 2020-003964 Application 14/526,136 39 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. Appeal 2020-003964 Application 14/526,136 40 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 Appeal 2020-003964 Application 14/526,136 41 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 Appeal 2020-003964 Application 14/526,136 42 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. Appeal 2020-003964 Application 14/526,136 43 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 Copy with citationCopy as parenthetical citation