Ex Parte Alsina et al

Patent Trial and Appeal Board

Mar 9, 2018

14170360 (P.T.A.B. Mar. 9, 2018)

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.
14/170,360 01/31/2014 Thomas Alsina P20994US1 3715
62579 7590
APPLE INC.
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
patentdocket @ bhfs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ALSINA,
FARMAN A. SYED,
MICHAEL K. CHU,
CYRUS D. IRANI,
IVAN ZADRO,
and SEAN B. KELLY
Appeal 2016-003614
Application 14/170,360
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-003614
Application 14/170,360
STATEMENT OF THE CASE1
Thomas Alsina, Farman A. Syed, Michael K. Chu, Cyrus D. Irani, Ivan
Zadro, and Sean B. Kelly (Appellants) seek review under 35 U.S.C. § 134 of
a final rejection of claims 1—29, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of using biometric images to authorize or
permit an action or task. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for a first user to complete a purchase on an online
store, the method comprising:
[1] receiving, at a processing device, a first biometric image
associated with a second user;
[2] countersigning an online account token with user identifier
data associated with the first user
when the first biometric image associated with the
second user matches a first reference biometric image
associated with the second user,
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 29, 2015) and Reply Brief (“Reply Br.,” filed February 17,
2016), and the Examiner’s Answer (“Ans.,” mailed December 17, 2015),
and Final Action (“Final Act.,” mailed January 26, 2015).
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wherein the online account token is associated with an
account of the first user on the online store
and
wherein the countersigned online account token indicates
the purchase on the online store is to be completed;
and
[3] transmitting the countersigned account token to the online
store.
The Examiner relies upon the following prior art:
Uberti US 2003/0046237 A1 Mar. 6, 2003
Pawar US 2013/0124416 A1 May 16, 2003
Siegal US 2007/0198435 A1 Aug. 23, 2007
Fuerstenberg US 2011/0166922 A1 July 7, 2011
Castell US 8,060,413 B2 Nov. 15,2011
Dryer US 2012/0290376 A1 Nov. 15,2012
Claims 1—29 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.2
Claims 1—5, 8—10, 12—14, 17—22, and 24—26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Pawar and Siegal.
2 The Examiner presents findings and analysis to the rejection under 35
U.S.C. § 101 in the Non-Final Action mailed March 21, 2014. Subsequent
Office Actions and the Answer refer back to that Action rather than repeat
the findings and analysis.
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Claims 6, 7, and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, and Uberti.
Claims 11 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, and Fuerstenberg.
Claims 15 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, and Castell.
Claims 16 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, Dryer.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness turn primarily on whether the art describes
using biometric data from one user to authorize an online transaction by
another user.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“countersign.”
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Facts Related to Appellants ’ Disclosure
02. In the only exemplary embodiment of countersigning, the
Specification describes countersigning an online account token
with the hash of the DSID (directory services identification).
Spec. para. 56. This only describes data used during
countersigning, not how it is used. The Specification does not
describe any implementation or embodiment of how such
countersigning is performed, and does not describe in what form,
or even whether, some physical evidence of the countersigning
remains after countersigning. None of the referrals to
countersigning describes doing so on media that would inherently
leave such evidence, such as paper.
Facts Related to the Prior Art
Pawar
03. Pawar is directed to authenticating secure funds transfer using
biometric data. Pawar para. 3.
Siegal
04. Siegal is directed to providing secure authentication of
customers seeking to access secure information and financial
services. Siegal para. 2.
05. Siegal describes securely authenticating a user for the purpose
of accessing online financial information and other online
personal information using a biometric sensor device. Siegal
para. 10.
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06. Siegal describes creating federated identity tokens comprising
identity data and biometric data. Siegal paras. 24 and 28.
ANALYSIS
Claims 1—29 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. While the Court in Alice made a
direct finding as to what the claims were directed to, we find that this case’s
claims themselves and the Specification provide enough information to
inform one as to what they are directed to.
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The preamble to claim 1 recites that it is a method for a first user to
complete a purchase on an online store. The steps in claim 1 result in
transmitting a countersigned account token to an online store. The
Specification at paragraph 1 recites that the invention relates to the use of
one or more biometric images to authorize or permit an action or task. Thus,
all this evidence shows that claim 1 is directed to using an account token
with some other data as part of a purchase, i.e. making a purchase
transaction secure.
It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of making a
purchase transaction secure is a fundamental business practice long
prevalent in our system of commerce. The use of making a purchase
transaction secure is also a building block of fraud protection. Thus, making
a purchase transaction secure, like hedging, is an “abstract idea” beyond the
scope of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of making a
purchase transaction secure at issue here. Both are squarely within the realm
of “abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd.
at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
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1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed.
Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases,
uses generic computer technology to perform data reception, analysis3, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to the abstract idea of entering, analyzing, and
transmitting data.
The remaining claims merely describe various parameters for such
purchase transactions. We conclude that the claims at issue are directed to a
patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
3 Claim 1 uses the term “countersigning” instead of analysis, but does not
recite any particular implementation. Thus, such countersigning is no more
than some form of analysis of the data followed by some data storage
indicative of the attribute of being countersigned.
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not enough for patent eligibility. Nor is limiting the use of an
abstract idea ‘“to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, and transmit data amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of making a purchase transaction secure as
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performed by a generic computer. To be sure, the claims recite doing so by
advising one to create some indicia representing countersignature based on
some biometric image data and transmit a token indicative of such indicia.
But this is no more than abstract conceptual advice on the parameters for
such making a purchase transaction secure and the generic computer
processes necessary to process those parameters, and does not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 24 pages of specification spell
out different generic equipment and parameters that might be applied using
this concept, and the particular steps such conventional processing would
entail based on the concept of making a purchase transaction secure under
different scenarios. They do not describe any particular improvement in the
manner a computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of making a
purchase transaction secure using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
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Alice Corp. Pty. Ltd. at 2360.
As to Appellants’ arguments at App. Br. 5—9, we adopt the Examiner’s
findings and analysis from Ans. 3—12 and reach similar legal conclusions.
We now turn to the Reply Br.
We are not persuaded by Appellants’ argument that
The Supreme Court has not ruled that patent-ineligible concepts
include any form of “fundamental economic practice” or
“conventional activity previously known in the industry.”
Rather, to the extent that such concepts are not patent-eligible
under § 101 it is because they are “laws of nature, natural
phenomena, and abstract ideas”. The Examiner is applying a
test that does not exist to reach a tautological conclusion.
Further, even if the Examiner is correct in his assertion that
“authorizing an online transaction using a fingerprint sensing
device” is ineligible for patent protection under § 101, the
Appellant respectfully submits that a second user authorizing or
indicating with biometric data that a purchase by a first user on
an online store is to be completed is not. The Appellant
respectfully submits that the prevalence of “authentication” and
“fingerprint sensing devices” as a whole do not preclude
particular types of authentication from being patent-eligible
subject matter. Put another way, ineligibility of a genus for
patent protection does not render a particular species within the
genus ineligible. Using the Examiner’s logic, no advance in a
specific-purpose computer, processor, or new computer chip
architecture could ever be patentable because a generic
computer system is well-known and not, in and of itself,
patentable.
Reply Br. 3.
As to whether testing for a fundamental practice as a test of abstraction
is tautological, Appellants do not appear to recognize that the test for an
abstract concept was initially laid out in Bilski. The Supreme Court held that
claims that explained the basic concept of an activity would allow the
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Appellants to pre-empt the use of this approach in all fields, and would
effectively grant a monopoly over an abstract idea. Bilski v. Kappos, 561
U.S. 593, 611—612 (June 2010). Alice took notice of a fundamental practice
as an example of abstract conceptual advice. Alice, id. What Appellants
opine as a tautology, is so, but properly so. The tautology is simply that to
say B includes A is identical to saying that A is a form of B. Appellants’
argument is analogous to contending that it is improper to conclude that just
because every square is a rectangle, the domain of rectangles includes any
form of squares. When so viewed, the error in Appellants’ logic is
immediately apparent.
More properly, because the claims are directed to making a purchase
transaction secure rather than to some technically significant structure or
technique, and the concept of making a purchase transaction secure is
notoriously old. To have a claim so directed is no more than a direction to
somehow invoke making a purchase transaction secure, which is so old as to
be an abstract concept in itself.
Appellants then conflate the Alice steps by referring to the limitations
reciting how a purchase transaction is made secure. This is the second step
of Alice, after finding that the claims are directed to an abstract idea. And
here, as we find supra, the claims recite generic computer processing that
does not provide some technical advantage such as improving the computer
processing itself. “Adding one abstract idea ... to another abstract idea . . .
does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo
Co., Ltd., 855 F.3d 1322, 1327 (2017).
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Instead, the limitations are further abstract conceptual advice to transmit
some pieces of data in a way that the human mind might interpret as some
form of countersigning. But no particular technical implementation for such
countersigning is recited and how the human mind interprets data is
undeserving of patentable weight, as we find supra. The referral to a
biometric device is only to using it for its intended purpose, as a source of
data, and so its invocation in the claim is again abstract conceptual advice.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated
the eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were
patent eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258—59 (citing Ultramercial, 772 F.3d at 715-
lb). As noted there, the Ultramercial claims were “directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before.” Id. at 1258
(quoting Ultramercial, 772 F.3d at 715—16). Nevertheless, those claims
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were patent ineligible because they “merely recite[d] the abstract idea of
‘offering media content in exchange for viewing an advertisement,’ along
with ‘routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet.’” Id.
Appellants’ asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” Ultramercial, 772 F.3d at 712. Similarly, Appellants’ asserted
claims recite reception, analysis, and transmission. This is precisely the
type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that the claims do not
need to recite an improvement. Reply Br. 5—6. This may be so when the
claims are directed to a specific structure rather than some functional result a
general purpose computer is expected to achieve. But, as we find supra, the
claims recite using a general purpose computer to use widely known
primitive data operations of reception, analysis, and transmission.
Appellants contend that that the claimed subject matter in the present
application improves the manner in which online transactions are conducted.
Id. But all manner of abstract conceptual advice improves the manner in
which life transpires. For example, the advice that a stitch in time saves nine
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forms the basis of the entire preventive maintenance industry and has saved
astounding amounts, but remains abstract conceptual advice.
We are not persuaded by Appellants’ argument that the claimed
invention solves a technical problem. Reply Br. 6—7. The claims solve a
long-standing problem of allowing one party to pay for another that predates
computer technology. To the extent the claims recite doing so with shuttling
data across computer networks, the claims provide no more than abstract
conceptual advice as to an approach, but do not recite any implementation
details. As we find supra, this does no more than advise one as to what a
computer is to do without reciting how to do so.
Claims 1—5, 8—10, 12—14, 17—22, and 24—26 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pawar and Siegal
The Examiner finds that Pawar describes authenticating each of a payer
as user and a payee as user with biometric data. Once both are
authenticated, payment is made. Ans. 14 citing Pawar paras. 62 and 64. The
Examiner then finds that Siegal describes using biometric data to retrieve the
federated identity of the use applying the biometric data, and adding that
federated identifier to a message to a merchant. Ans. 15—16 citing Siegel
paras. 28—29. The Examiner analogizes the federated identifier retrieval
based on biometric data and the subsequent placement of the federated
identifier into a message as a signature and counter-signature. Ans. 17.
We are persuaded by Appellants’ argument that neither reference teaches
or suggests using biometric data from one user to authorize an online
transaction by another user. App. Br. 11. The actual limitation is
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“countersigning an online account token with user identifier data associated
with the first user when the first biometric image associated with the second
user matches a first reference biometric image associated with the second
user, wherein the online account token is associated with an account of the
first user.” Claim 1. This does use biometric data from one user to
countersign an online transaction by another user. Whether the
countersignature is an authorization per se is not at issue.
The Examiner does not find that either reference describes this. Instead,
the Examiner’s findings support a single user perhaps countersigning his
own account based on his own biometric data. As to the recited second user,
the Examiner finds that “Siegal discloses that there are a plurality of
biometric templates (more than user, akin to the ‘second user’) stored in the
database.” Ans. 17. This is no more than a finding that one piece of data is
akin to another piece of data because each is stored in the same place. This
finding does not support a conclusion that the references anticipate or render
obvious using biometric data from one user to authorize an online
transaction by another user.
Claims 6, 7, and 27 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pawar, Siegal, and Uberti
These claims depend from claims 1, 14, and 25.
Claims 11 and 23 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pawar, Siegal, and Fuerstenberg
These claims depend from claims 1, 14, and 25.
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Claims 15 and 28 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pawar, Siegal, and Castell
These claims depend from claims 1, 14, and 25.
Claims 16 and 29 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pawar, Siegal, Dryer
These claims depend from claims 1, 14, and 25.
CONCLUSIONS OF LAW
The rejection of claims 1—29 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1—5, 8—10, 12—14, 17—22, and 24—26 under 35
U.S.C. § 103(a) as unpatentable over Pawar and Siegal is improper.
The rejection of claims 6, 7, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, and Uberti is improper.
The rejection of claims 11 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, and Fuerstenberg is improper.
The rejection of claims 15 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, and Castell is improper.
The rejection of claims 16 and 29 under 35 U.S.C. § 103(a) as
unpatentable over Pawar, Siegal, Dryer is improper.
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DECISION
The rejection of claims 1—29 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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