ENTIT SOFTWARE LLC

Patent Trials and Appeals Board

Mar 29, 2021

2020005780 (P.T.A.B. Mar. 29, 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.
14/060,186 10/22/2013 Terence Spies 90146615 5250
146568 7590 03/29/2021
MICRO FOCUS LLC
500 Westover Drive
#12603
Sanford, NC 27330
EXAMINER
LEFFALL-ALLEN, NAKIA
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERENCE SPIES and
RICHARD T. MINNER
___________

Appeal 2020-005780
Application 14/060,186
Technology Center 3600
____________

Before ALLEN R. MACDONALD, CARL W. WHITEHEAD JR. and
JASON V. MORGAN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1−14 under
35 U.S.C. § 134(a). See Appeal Brief 5. Claims 1 and 8 are independent.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed January 16, 2020), the
Reply Brief (August 7, 2020), the Final Action (mailed July 29, 2019) and
the Answer (mailed June 10, 2020), for the respective details.

2 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies MICRO FOCUS LLC as the real party in
interest. Appeal Brief 2.
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Introduction
According to Appellant, the invention is, “A token generating
organization [that] may include distributed tokenization systems for
generating tokens corresponding to sensitive information.” Abstract.

Representative Claim3
Claim 1 is reproduced below for reference (emphasis, formatting, and
bracketed step lettering added):
1. A method for protecting sensitive information using
distributed tokenization systems, wherein each tokenization
system includes a tokenization server and a local database, and
wherein each of the local databases stores a fractional token
table, the method comprising:
[a.] with the tokenization systems, receiving token
requests from token requestors, wherein each of the token
requests includes a string of sensitive information; and
[b.] with the tokenization servers, generating tokens
corresponding to the sensitive information in the token requests,
[i.] wherein generating each token comprises a
tokenization system running the string from a token
request through a plurality of rounds of a Feistel network
using the fractional token table stored at that tokenization
system,
[ii.] wherein the fractional token table maps partial
tokens to string portions.

3 Appellant argues the claims 1−14 together. See Appeal Brief 6. We select
independent claim 1 as the representative claim focusing on subject matter
common to independent claims 1 and 8. See 37 C.F.R. § 41.37(c)(1)(iv).

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Rejections on Appeal4
Claims 1−14 are rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant regards as the invention. Final Action 9.
Claims 1−14 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final
Action 4–7.

4 The Examiner withdrew one of the grounds for the 35 U.S.C. § 112,
second paragraph, rejection of claim 1, as well as, the 35 U.S.C. § 103(a)
rejection of claims 1–14. Answer 6. However, the Examiner maintains the
35 U.S.C. § 112, second paragraph, rejection of claims 1–14. See Final
Action 9. The Examiner states, “Every ground of rejection set forth in the
Office action dated 29 Jul[y] 2019 from which the appeal is taken is being
maintained by the examiner except for the grounds of rejection (if any) listed
under the subheading ‘WITHDRAWN REJECTIONS.’” Answer 3.
However, we find that claims 7 and 14 were rejected under “35 U.S.C.
112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement” and the rejection is not listed as
withdrawn by the Examiner. Final Action 8, see Answer 3. Appellant does
not address the written description requirement. See Appeal Brief 6–18;
Reply Brief 2–5. Appellant states under “Withdrawn Rejections” that “The
Answer indicated that the obviousness rejections of claims 1–14 and one of
the indefiniteness rejections of claim 1 were withdrawn.” Reply Brief 5.
However, Appellant does not argue the validity of the Written Description
rejection. See Appeal Brief 6–18; Reply Brief 2–5. Accordingly, we are
constrained by the record because the status of the Written Description
rejection of claims 7 and 14 is still pending according to the Examiner. See
Answer 3. We summarily sustain the Examiner’s Written Description
rejection of claims 7 and 14. We note the Reply Brief does not include page
numbers. For reference convenience, we designate the cover page of the
Reply Brief as page 1 and number the pages consecutively.

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35 U.S.C. § 112 Rejection
The Examiner determines in regard to claim 1 that “it is unclear
whether the claim scope is limited to a method performed only by the
tokenization system comprising a tokenization server, a local database, and a
fractional token table, or whether the scope of claim also includes the
functionality of the Feistal network.” Answer 5. The Examiner further
determines in regard to independent claim 8, that “Claim 8 recites (in part),
‘A tokenization system comprising a server . . . through . . . a Feistel
network using a fractional token table.’ The Feistel network is not part of
the claimed system.” Answer 5. Appellant contends, the “rejection is based
on an improper interpretation of the term ‘Feistel network.’ Specifically, as
used in the relevant art and in the specification, the term ‘Feistel network’
does not refer to a physical component, but rather refers to an encryption
algorithm that is executed by the tokenization system.” Reply Brief 4. We
find Appellant’s argument persuasive. We do not sustain the Examiner
indefinite rejection of independent claims 1 and 8, as well as, dependent
claims 2–7, 9 and 11–14.
The Examiner determines that claim 10 is indefinite because “Claim
10 recites (in part), ‘receive a recovery request from the token requestor . . .’.
The claim recites the limitation to include those of ‘a requestor.’” Answer 5.
Appellant contends, “as discussed in the Appeal Brief, claim 10 includes a
functional capability of the system of claim 8 (i.e., ‘the server to: receive a
recovery request from the token requestor’).” Reply Brief 5. We find
Appellant’s argument persuasive. We do not sustain the Examiner indefinite
rejection of independent claim 10.

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35 U.S.C. § 101 Rejection
USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.”
2019 Revised Guidance at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 10.2019, June 2020)) (“Step 2A, Prong Two”).6

2019 Revised Guidance at 52–55.

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, 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 (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

2019 Revised Guidance at 52–56.

ANALYSIS
The Examiner determines claims 1–14 are patent ineligible under
35 U.S.C. § 101. Final Action 5; Alice, 573 U.S. 208, 217 (2014)
(describing the two-step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the 2019 Revised Guidance.

Step 2A—Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines claims 1–14 are patent ineligible under
35 U.S.C. § 101 “because the claimed invention recites the mental process of
which is no more than receiving a request and creating a token without
significantly more.” Final Action 5
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The Specification discloses:
An entity may protect sensitive information such as a
sensitive number without storing the sensitive information by
storing a token that corresponds to the sensitive information. The
token corresponding to the sensitive information may be
acquired by sending a token request that includes the sensitive
information from the entity to a token generating organization.
Specification 3.
A tokenization server may generate a full token
corresponding to sensitive information such as a full sensitive
number based on the fractional token table. For example, the
tokenization server may perform a predetermined number of
rounds of a Feistel network to generate a full token
corresponding to a full sensitive number using partial tokens and
a partial sensitive numbers stored in the fractional token table. A
fractional token table may, for example, be a half-token table
(i.e., a table having half-tokens and uniquely corresponding half-
sensitive-numbers).
Specification 4, 5.

Claim 1 recites a “method for protecting sensitive information using
distributed tokenization systems.” Claim 1 further recites receiving token
requests for tokens that include a string of sensitive information in limitation
[a]. Claim 1 also recites generating tokens from a string ran through
multiple rounds of a Feistel network wherein the fractional token table maps
partial tokens to string portions in limitation [b].
These steps recite mathematical relationships, mathematical formulas
or equations, mathematical calculations, as well as, “concepts performed in
the human mind[7] (including an observation, evaluation, judgment, opinion)

7 “If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
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and thus, the claim recites the judicial exceptions of “[m]athematical
concepts” and “[m]ental processes” under the Guidance. See 2019 Revised
Guidance at 52.
Further, our reviewing court has found claims to recite abstract ideas
when they recited similar subject matter. See Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“The concept of hedging . . . reduced to a mathematical
formula . . . is an unpatentable abstract idea[.]”); Diamond v. Diehr, 450
U.S. 175, 191 (1981) (“A mathematical formula as such is not accorded the
protection of our patent laws”) (citing Benson, 409 U.S. 63); Parker v.
Flook, 437 U.S. 584, 594 (1978) (“[T]he discovery of [a mathematical
formula] cannot support a patent unless there is some other inventive
concept in its application.”); Benson, 409 U.S. at 71–72 (concluding that
permitting a patent on the claimed invention “would wholly pre-empt the
mathematical formula and in practical effect would be a patent on the
algorithm itself”); Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S.
86, 94 (1939) (“[A] scientific truth, or the mathematical expression of it, is
not patentable invention.”); SAP Am., 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);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (holding that claims to a “process of organizing information
through mathematical correlations” are directed to an abstract idea).

components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” 2019 Revised Guidance at 52
n.14.
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Furthermore, our reviewing court has found claims to recite judicial
exceptions when they recited similar subject matter in regard to mental
processes. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer–
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (holding that computer–implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the incidental use of
“computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible); id. at 1376
(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), as directed to inventions that “could not, as a practical
matter, be performed entirely in a human’s mind”).
Therefore, we conclude the claims recite judicial exceptions pursuant
to Step 2A, Prong One, of the 2019 Revised Guidance at 54.

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Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” 2019 Revised Guidance at 54.
We note that a “claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
2019 Revised Guidance at 54.
Appellant argues, “the rejection failed to specifically discuss these
additional elements, much less analyze whether these additional elements
would integrate a mental process into a practical application.” Appeal Brief
8.
The Examiner determines:
The claims do not include additional elements that are sufficient
to amount to significantly more than the abstract idea.
Additionally, although Claims 1, 4, 6, 8 and 11 recite functions
performed by a Feistel network (“ . . . running the string . . .
through . . . a Feistel network. . .” and “process . . . through . . . a
Feistel network using . . .”), this only involves the use of
computer elements and or software as tools to automate and/or
implement the abstract idea and does not improve the functioning
of the processor/computer.
Final Action 6.
Claim 1 recite a generic tokenization system that includes a generic
tokenization server and a local database. Claim 1 further recites that with
the tokenization servers, generating the tokens “wherein generating each
token comprises a tokenization system running the string from a token
request through a plurality of rounds of a Feistel network using the fractional
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token table stored at that tokenization system.” Therefore, claim 1 requires
that the fractional token table is stored on a generic database and the rounds
of a Feistel network, a well-known algorithm, be ran on a server that is part
of the tokenization system. See Specification 5. Accordingly, we do not
find Appellant’s argument persuasive of Examiner error and agree with the
Examiner’s determination that the additional elements do not integrate the
recited judicial exception into a practical application pursuant to 2019
Revised Guidance at 54, 55.
Appellant further argues8:
[T]hat the claims are directed to improving tokenization
systems for protecting sensitive information, which is clearly
a computer-related technology. See, e.g., Spec., par. [0030]
(“A token generating organization may generate tokens
corresponding to sensitive information in order to protect the
sensitive information for online transactions”) and par. [0038]-
[0041] (“In the event that a portion of a global communications
network such as network 16D fails, processing of payment
transactions in large portions of the world may be disrupted or
halted due to lack of access to common database 20. It may be
desirable to distribute list 22 to regional databases for regional
access that is not dependent on communications network 16.
However, regional databases having local copies of list 22 may
be problematic. [ . . . ] It may therefore be desirable to provide
multiple distributed tokenization systems with a pre-populated
fractional token table containing partial tokens and partial
sensitive numbers along with equipment configured to generate
a unique full token corresponding to any full sensitive number
using the pre-populated fractional token table”) (emphasis
added). Accordingly, the claims are clearly directed to

8 The Specification paragraphs of the instant application are not numbered.
Appellant appears to cite from US Patent Publication 2014/0046853 A1,
published February 13, 2014.
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improving computer-related technology, and therefore should
be patent eligible under Prong 2 of Step 2A.
Appeal Brief 9.
We find Appellant’s claims are distinguished from those claims that
our reviewing court has found to be patent eligible by virtue of reciting
technological improvements to a computer system because Appellant’s
claims merely employ a generic server that runs a well-known algorithm and
a database within a nondescript computer system to implement the abstract
idea wherein there is no improvement to the processor itself. See
Specification 11–13; Figures 3, 4and 8; see also, e.g., DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1249, 1257 (Fed. Cir. 2014) (holding
that claims reciting computer processor for serving “composite web page”
were patent eligible because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks”); Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to “an
improved computer memory system” having many benefits were patent
eligible); see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016) (distinguishing between “claims are directed to an improvement
to computer functionality versus being directed to an abstract idea” or
whether “the focus of the claims is on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.”); see also
Alice, 573 U.S. at 222 (“In holding that the process was patent ineligible, we
rejected the argument that ‘implement[ing] a principle in some specific
fashion’ will ‘automatically fal[l] within the patentable subject matter of
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§ 101.’” (Alterations in original) (quoting Parker v. Flook, 437 U.S. 584,
593 (1978))).
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional elements
(e.g., computer system, database, servers) do not: (1) improve the
functioning of a computer or other technology; (2) is not applied with any
particular machine (except for generic devices); (3) does not effect a
transformation of a particular article to a different state; and (4) is not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine claim 1 does not integrate the recited
judicial exception into a practical application pursuant to Step 2A, prong 2.
See 2019 Revised Guidance at 54–55.

Step 2B identified in the 2019 Revised Guidance
In Step 2B, we consider whether an additional or combination of
elements, “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.”
2019 Revised Guidance at 56.
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Appellant contends the “the present claims are directed to an
improvement in computer technology, namely improved tokenization
systems for protecting sensitive information. Therefore, the present claims
are patent eligible under Step 2B.” Appeal Brief 10. We do not find
Appellant’s argument to be persuasive of Examiner error because, as we
stated above, we find there is no improvement to the computer technology as
Appellant contends.
We further note in Bascom, our reviewing court found that while the
claims of the patent were directed to an abstract idea, the patentee alleged an
“inventive concept can be found in the ordered combination of the claim
limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” Bascom Global
Internet Services, Inc., v. AT&T Mobility LLC 827 F.3d 1341, 1352 (Fed. Cir.
2016). In particular, the patent in Bascom claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
Bascom at 1351.
Claim 1 is distinguishable from the claims in Bascom, as it recites a
solution based on an abstract-idea, that is, a method of running a well-known
algorithm via conventional additional elements (e.g., computer system,
servers, database) that does not rely on an ordered combination to improve
the technology on which the algorithm is executed. See generally
Specification. Therefore, we are not persuaded that ordered combination of
limitations in representative claim 1 provides an inventive concept, and we
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find the claims simply appends a well-understood, routine and conventional
activity to the judicial exception. See 2019 Revised Guidance at 56.
Accordingly, we conclude claims 1−14 are directed to judicial
exceptions of “[m]athematical concepts” and “[m]ental processes” under the
Guidance. See 2019 Revised Guidance at 52. We sustain the Examiner’s
§ 101 rejection of claims 1−14.

CONCLUSION

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
7, 14 112 Written Description 7, 14
1–14 112 Indefiniteness 1–14
1–14 101 Eligibility 1–14
Overall
Outcome
1–14

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED