Ex Parte Amancherla

Patent Trials and Appeals Board

Mar 29, 2019

14538188 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/538,188 11/11/2014
67362 7590 04/02/2019
MLO
12707 High Bluff Drive, Suite 200
San Diego, CA 92130
FIRST NAMED INVENTOR
Praveen Amancherla
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BUCKP019Cl 1032
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
MLOPAIR@mlo-ip.com
heather@mlo-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Praveen Amancherla
Appeal 2017-011429
Application 14/538,188
Technology Center 3600
Before STEPHEN C. SIU, JENNIFER S. BISK, and
JENNIFER L. McKEOWN,
Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6.
We reverse.
1 According to Appellant, the real party in interest is Quisk, Inc. App. Br. 3.
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Application 14/538,188
STATEMENT OF THE CASE
Appellant's disclosed and claimed invention is directed to a
Methods of and systems for securely monitoring a balance of a
payment account include storing, in a first database, ledger data
and storing, in a second database, wallet data. Wall et data
includes a wallet balance value for the payment account. When
a transaction is initiated using the payment account, an access
operation is performed on the wallet table. Illicit or improper
modifications can be detected by deriving a ledger comparison
value from the ledger data and comparing the derived ledger
comparison value to a wallet comparison value from the wallet
data.
Abstract.
Claims 1 is illustrative of the claimed invention and reads as follows:
1. (Original) A computer-implemented method of
securely monitoring a balance of a payment account, the method
compnsmg:
encrypting, by a request processor, ledger data, the ledger
data including ledger transaction information for the payment
account, whereby the encrypting produces encrypted ledger data;
storing, in a first database by the request processor, a
ledger table comprising the encrypted ledger data;
storing, in a second database by the request processor, a
wallet table comprising nonencrypted wallet data, the wallet data
including a wallet balance value for the payment account;
detecting, by the request processor during a detection
operation, whether at least one of the ledger table or the wallet
table has been improperly modified by an illicit event
occurrence, wherein the detecting includes:
decrypting the ledger data, thereby obtaining
decrypted ledger data;
deriving a ledger comparison value from the
decrypted ledger data; and
comparing the ledger comparison value to a wallet
comparison value; and
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performing, by the request processor during a transaction
operation using the payment account, an access operation on the
wallet table;
wherein the access operation comprises reading the wallet
balance value from the wallet data in the wallet table; and
wherein the transaction operation is initiated and approved
without accessing the ledger table.
THE REJECTIONS
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Final Act. 2-5.
The Examiner rejected claims 1---6 and 8-20 under 35 U.S.C. § 103 as
unpatentable over Jacobs (US 2003/0046230 Al; Mar. 6, 2003), Nakano,
and Belamant (US(US 2010/0088227 Al; Apr. 8, 2010). Final Act. 6-12.
The Examiner rejected claim 7 under 35 U.S.C. § 103 as unpatentable
over Jacobs, Nakano, Belamant, and Hayashida (US 2002/0060242 Al; May
23, 2002). Final Act. 13-14.
ANALYSIS
THE REJECTION UNDER 35 U.S.C. § 101
Claims 1-20
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-20 as directed to patent ineligible subject matter.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
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. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014).
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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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("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
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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. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum 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. (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.
The PTO recently published revised guidance on the application of
section 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, 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); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev. 08.2017, Jan. 2018)).
See Memorandum at 52, 55-56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
See Memorandum at 56.
Examiner's Findings and Conclusion
Under step one of the Alice analysis, the Examiner determines that the
claims are directed to an abstract idea because certain of the recited
limitations, such as encrypting ledger data, storing the encrypted ledger data,
storing non-encrypted wallet data, detecting that one of the data has been
improperly modified by an illicit event, and performing an transaction
operation without accessing the ledger data, can be performed mentally or
by a human using a pen and paper. Final Act. 3--4. The Examiner also
identifies allegedly similar concepts that have been identified as abstract
ideas including "using categories to store information for transmission
(Cyberfone )," "comparing new and stored information and using rules to
identify options (SmartGene )," "collecting and comparing known
information (Classen)," and "obtaining and comparing intangible data
(Cybersoure )." Final Act. 4. The Examiner additional determines that
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"claim 1 uses a conventional, general purpose computer to perform generic
computer functions, i.e., encrypting, storing, detecting, decrypting, deriving,
comparing, reading, performing, imitating & approving transactions/data
related to payment accounts." Ans. 4; see also Ans. 5---6.
Appellant's Contentions
Appellant, on the other hand, argues that the claims are not directed to
an abstract idea but instead "are directed to initiating and approving a
transaction operation with an access operation on the wallet table to read the
wallet balance, without accessing the ledger table, after ensuring that neither
the ledger table nor the wallet table has been improperly modified by an
illicit event occurrence." App. Br. 6, 12. Specifically, Appellant alleges that
the claimed invention address internet-centric challenges, namely the ability
"to quickly and securely handle an online transaction and maintain an online
payment account, while preventing online identity fraud and other types of
computer hacking and computerized theft or fraud." App. Br. 6-7.
Appellant explains that the claimed invention "cover a specific technological
approach in the technical fields of electronic/computer payment account
services and computerized account management systems" and "are directed
to a specific implementation of a solution to a problem in the software arts,
i.e., mitigating risks uniquely associated with online or computerized fraud
or theft." App. Br. 10-11.
Analysis - Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claims here recite encrypting
ledger data and storing the encrypted ledger data in a ledger table, storing
non-encrypted wallet data in a wallet table, detecting improper modification
in either table by an illicit event wherein the detecting includes comparing a
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ledger comparison value derived from decrypted ledger data with a wallet
comparison value, and performing a transaction operation wherein the
transaction operation is initiated and approved without accessing the ledger
table. The Examiner determines that these recited steps are a mental process
or can be performed by a human with a pen and paper. Final Act. 4.
We disagree. While monitoring an account balance generally can be a
mental process, i.e. comparing account data or information, we disagree that
these recited limitations can practically be a mental process. Rather, the
claims here "necessarily and explicitly require the use of, and only make
sense within the context of, computerized and networked communication
technology for an online payment system." App. Br. 8. As Appellant
explain, the nature of the issues address by the invention
could have arisen only within the field of computerized financial
transactions and computerized payment accounts, wherein the
various parties to the transaction (buyer, seller and financial
institution) are typically widely separated physically, yet
transactions must be handled quickly, smoothly and securely,
while preventing computer-based attacks on an online financial
system that exploit automated account management to
improperly transfer money out of the system. Thus, the problems
addressed by the present invention and the solution provided by
the claim limitations are inextricably tied to computer and
Internet-based technology, wherein the point-of-entry
exclusively enabled by the Internet provides computer-based
access to the financial system.
App. Br. 8; see also App. Br. 10 ( explaining that "the claims are limited to a
specific method that is needed in a computerized automated environment in
which certain transactions are continually conducted in an automated fashion
and the risks of online identity fraud and other types of computer hacking,
fraud, and theft are ever present.") As such, we are persuaded that the
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Examiner erred in determining that the claimed invention is directed to an
abstract idea.
Analysis - Step 2B
Furthermore, the Examiner alleges the additional elements, namely a
"request processor for encrypting, storing in a first and second database,
detecting, decrypting, deriving, comparing and performing," are well-
known, routine, and conventional. Final Act. 4--5. The Examiner, however,
has not set forth sufficient evidence to support the ordered combination is
well-known, routine, and conventional. See Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018).
Accordingly, we reverse the Examiner's decision to reject claims 1-
20 as directed to patent ineligible subject matter.
THE § 103 REJECTIONS
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-20 as unpatentable over the cited combinations of
prior art.
Appellant argues that the cited combination of Jacobs, Nakano, and
Belamant fails to teach or suggest a ledger table comprising encrypted ledger
data and a wallet table comprising non-encrypted wallet data, as recited in
independent claims 1 and 17. See, e.g., App Br. 21-22; Reply Br. 7. The
Examiner points to Jacobs' "transaction history" as the ledger data and the
stored local copy, along with Nakano's disclosure of an electronic purse, as
the recited wallet data. Final Act. 7-8. Appellant points out, though, that "it
is clear that the local cache of Jacobs contains a mirror of a portion of the
main database" or, in other words, there is no distinction between the
transaction history in the database and the copy stored in the local cache.
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App. Br. 21. Appellant further explains that Belamant "simply describes 'an
encrypted financial transaction number,' rather than encryption of ledger-
type transaction information in one database and non-encryption of wallet-
type data in another database." App. Br. 22; see also Belamant ,r 20. As
such, according to Appellant, the cited combinations fails to teach the
claimed ledger and wallet data tables.
We agree. Jacobs describes a system where each client or server
reads a data item from a database and stores a local copy. Jacobs ,r,r 26, 31,
Fig. 2. The Examiner fails to identify any teaching or suggestion in Jacobs
that the database transaction history is stored in a different manner from the
local copy. While Belamant generally discloses encrypting account
information, this teaching together with Jacobs does not sufficiently teach or
suggest encrypting transaction history stored within the database but not
encrypting the stored local copy. As Appellant explain, "[a] particular
distinction of the present application is that the wallet data is not subject to
the same security restrictions as the ledger data." App. Br. 21. As such,
based on the record before us, we are persuaded that the Examiner erred in
determining that the combination of Jacobs, Nakano, and Belamant teaches
or suggest the claimed ledger table comprising encrypted ledger data and
wallet table comprising non-encrypted wallet data.
Accordingly, we reverse the Examiner's decision to reject claims 1-
20 as unpatentable over the cited combinations of prior art.
DECISION
We reverse the Examiner's decision to reject claims 1-20.
REVERSED
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