Ex Parte CHAPA et al

Patent Trials and Appeals BoardJan 30, 2019

14481714 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/481,714 09/09/2014 20995 7590 02/01/2019 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 FIRST NAMED INVENTOR Isaac CHAPA 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. EXP.830Pl 9142 EXAMINER MCCORMICK, GABRIELLE A ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 02/01/2019 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): j ayna.cartee@knobbe.com efiling@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ISAAC CHAP A, STEVEN HATLEY, and JOE ROSS Appeal2017-003691 Application 14/481,714 1 Technology Center 3600 Before, JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and BRUCE T. WIEDER, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify CSIDENTITY CORPORATION as the real party in interest. Br. 3. 1 Appeal2017-003691 Application 14/481,714 THE INVENTION Appellants' claims relate generally to computer processing and to authentication systems and methods for on-demand products. (Spec. [0002]). Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method comprising, by a computer system: receiving, from a requestor, a request for an on-demand identity product in relation to an identity of a consumer, the request comprising personally identifying information (PII) of the consumer; executing, using the PII, a partial registration of the consumer for the on-demand identity product, the partial registration omitting satisfaction of at least one security requirement; wherein the at least one security requirement comprises a requirement that the requestor be authenticated as having an asserted identity; determining whether delayed authentication is enabled for the on- demand identity product; responsive to a determination that delayed authentication is enabled for the on-demand identity product: conditionally suspending the at least one security requirement; initiating provision of the on-demand identity product to the requestor, the provision comprising processing data related to the identity of the consumer; and restricting the requestor' s access to determined sensitive data resulting from the initiated provision at least until the at least one security requirement is satisfied; and before the at least one security requirement is satisfied, determining whether electronic delivery of the on-demand identity product to the requestor is successful based, at least in part, on an evaluation of one or more stored product-delivery factors that are specific to a type of the on- demand identity product; wherein the determining whether electronic delivery of the on-demand identity product to the requestor is successful comprises determining 2 Appeal2017-003691 Application 14/481,714 whether the consumer has been added to receive a service provided by a computer system; responsive to a determination that electronic delivery of the on- demand identity product to the requestor is successful, automatically electronically billing the requestor; and responsive to a determination that electronic delivery of the on-demand identity product to the requestor is not successful, automatically delaying billing the requestor for the on-demand identity product at least until successful electronic delivery of the on-demand identity product to the requestor can be confirmed. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Middeljans Dupray Redlich US 2002/0091544 Al US 2009/0106846 Al US 2009/0254572 Al The following rejections are before us for review. Claims 1-20 are rejected under 35 U.S.C. Â§ 101. July 11, 2002 Apr. 23, 2009 Oct. 8, 2009 Claims 1--4, 7-13 2 and 15-20 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Dupray and in view of Middeljans. Claims 5, 6, 14, and 15 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Dupray, in view of Middeljans and in further view of Redlich. 2 Although the Final Action and Answer do not list claim 13 in the specific rejection, we note it is still pending and its not being listed in the rejection is considered an inadvertent mistake. 3 Appeal2017-003691 Application 14/481,714 FINDINGS OF FACT 1. We adopt the Examiner's findings as set forth on pages 2-5 of the Final Action and on pages 2--4 of the Answer concerning only the rejection made under 35 U.S.C. Â§ 101. ANALYSIS 35 U.S.C. Â§ 101 REJECTION We will affirm the rejection of claims 1-20 under 35 U.S.C. Â§ 101. An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). 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 4 Appeal2017-003691 Application 14/481,714 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 ( Gottschalk v. 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 (1854))); 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 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 5 Appeal2017-003691 Application 14/481,714 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 (quotation marks 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 Â§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance ("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 interactions such as a fundamental economic practice, or mental processes); and 6 Appeal2017-003691 Application 14/481,714 (2) additional elements that integrate the judicial exception into a practical application, i.e., that "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 Memorandum at 18; see also MPEP Â§ 2106.05(a}- ( C ), ( e }-(h). 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 is not "well-understood, routine, conventional" in the field (see MPEP Â§ 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 2019 Memorandum. The Federal Circuit has explained that "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether 'their character as a whole is directed to excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement 7 Appeal2017-003691 Application 14/481,714 in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. In so doing, as indicated above, we apply a "directed to" two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "appl[ies ], rel[ies] on, or use[ s] 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." See January 2019 Memorandum. The Examiner found that the claims are "directed to determining whether delayed authentication is enabled which is a mental step that merely comprises the comparison of inputs with rules to make the determination and an abstract idea." (Final Act. 2). We agree that the claims are directed to a mental process i.e., responding to a request for an on-demand product by determining whether delayed authentication is enabled, a concept of delaying action performed in the human mind. That is, we find the steps: â€¢ determining whether delayed authentication is enabled for the on- demand identity product; â€¢ conditionally suspending the at least one security requirement; initiating provision of the on-demand identity product to the requestor, the provision comprising processing data related to the identity of the consumer; â€¢ restricting the requestor's access to determined sensitive data resulting from the initiated provision at least until the at least one security requirement is satisfied; 8 Appeal2017-003691 Application 14/481,714 â€¢ restricting the requestor's access to determined sensitive data resulting from the initiated provision at least until the at least one security requirement is satisfied; and â€¢ determining whether electronic delivery of the on-demand identity product to the requestor is successful based, at least in part, on an evaluation of one or more stored product-delivery factors that are specific to a type of the on-demand identity product; constitute "analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). In addition, the claims are directed to a commercial transaction which is more broadly a method of organizing human activity. Thus, we agree with the Examiner's findings that the claims recite a judicial exception of at least a mental process; additionally we find the claims are also directed to a fundamental economic principle by virtue of the underlying claimed transaction. Turning to the second prong of the "directed to" test, claim 1 merely requires a "computer system" and recites it only in the preamble, not even subsequently incorporated into the body of the claim. We fail to see how this single recitation of a computer system so integrates the judicial exception as to "impose a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." 2019 Memorandum at 18. Thus, we find that the claims recite the judicial exceptions of a mental 9 Appeal2017-003691 Application 14/481,714 process and a fundamental economic principle. That the claims do not preempt all forms of the abstraction or may be limited to an on demand product, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) ("And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an "inventive concept" in order to be patent-eligible, i.e., there must be an element or combination of elements that sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs., 566 U.S. at 72-73). Concerning this step the Examiner found, Generic processors/ computing systems routinely provide data access by displaying the data. These are well-known, routine and conventional practices that require no more than a generic computer to perform generic computer functions. (Please refer to July 2015 Update: Subject Matter Eligibility; page 7 for a listing of computer functions found by the courts to be well-understood, routine and conventional.) (Final Act. 3). We agree with the Examiner. "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to 10 Appeal2017-003691 Application 14/481,714 implement the abstract idea ... on a generic computer." Alice, 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 retrieve, select, and apply decision criteria to data and affect an IF /THEN result 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 trading industry. See Elec. Power Grp., 830 F.3d 1354; see also In re Katz Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be achieved by any general purpose computer without special programming"). 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' claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 11 Appeal2017-003691 Application 14/481,714 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The 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 Specification spells 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 information access and determination under different scenarios. See, e.g., Spec. ,r,r 13, 14, 22. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. We have reviewed all the arguments (Br. 7-16) Appellants have submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. Â§ 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. 12 Appeal2017-003691 Application 14/481,714 Appellants argue, the Examiner "has not established a prima facie case of the claims being directed to non-statutory subject matter under 35 U.S.C. Â§ 101." (Br. 8). We disagree with Appellants. To the extent Appellants argue that the Examiner erred in adequately supporting this determination by not providing evidence, we are unpersuaded. In this regard, there is no requirement that Examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. See, e.g., Manual of Patent Examining ProcedureÂ§ 2106.07(a)(III) (2018) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Thus, the court does not require 'evidence' that a claimed concept is a judicial exception, and generally decides the legal conclusion of eligibility without resolving any factual issues." (citations omitted.)) All that is required of the USPTO to meet its prima facie burden of production is that the Examiner set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of 35 U.S.C. Â§ 132. As the statute itself instructs, the Examiner must "notify the applicant," "stating the reasons for such rejection," "together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. Â§ 132; see also In re Jung, 637 13 Appeal2017-003691 Application 14/481,714 F.3d 1356, 1363 (Fed. Cir. 2011) (declining "to impose a heightened burden on examiners beyond the notice requirement ofÂ§ 132"). Here, as we found above, the Examiner has made these findings as required by the statute. See Final Act. 2----4. Specifically, in rejecting the pending claims underÂ§ 101, the Examiner notified Appellants that the claims are broadly "directed to determining whether delayed authentication is enabled" (Final Act. 2), and that "[t]he claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception" (id. at 3). For the reasons identified above, we determine there are no deficiencies in the Examiner's primafacie case of patent ineligibility of the rejected claims based on the record before us. Concerning Appellants' contention that "such nonprecedential opinions [ as SmartGene] should not be cited, considered, or regarded as precedent within the U.S. Patent and Trademark Office" (Br. 8), we note that the November 2, 2016 Memorandum does not expressly prohibit reliance on non-precedential decisions, but on page 4 only states, "examiners should avoid" "relying upon or citing" them. See Robert W. Bahr, Recent Subject Matter Eligibility Decisions, USPTO 1-4 (2016), https://www. uspto. gov/ sites/ default/files/ documents/Mc Ro-Bascom- Memo. pdf. Notwithstanding, our Decision above cites to the precedential decision of Elec. Power Grp. in support of data collection, analysis, and display being abstract ideas. 14 Appeal2017-003691 Application 14/481,714 Appellants argue that "[t]he claimed embodiments address a technical problem specifically arising out of how to automatically bill for on-demand products, i.e., products that are provided in real-time or in near real-time." (Br. 9). We disagree with Appellants that the problem solved is a technical problem. In fact, the problem addressed is one of avoidance of legal implications in billing practices involving "consumer protection laws and regulations." Spec. i-f4. That fact that the product purchased is said to be deliverable in real time, e.g., in a particular technological environment, does not make a claim less abstract. See Alice Corp., 134 S. Ct. at 2358. Appellants further argue, "[t]he present claims address this problem by leveraging technology to delay authentication and specify and evaluate stored product-delivery factors, configurable for particular on-demand products." (Br. 11, 14). We disagree with Appellants that the claims reflect technology sufficient to support its contention that the claims leverage technology. As found above, representative claim 1 at best requires a "computer system" which is only recited in the preamble, and therefore claim 1 is devoid of any device which could support an ordered combination of computer components contention. Likewise we fail to see the similarities asserted by Appellants (Br. 14-- 15) between the claims on appeal here and those adjudicated in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). Br. 15 Appeal2017-003691 Application 14/481,714 16-17. 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. Claim 1 at best requires a "computer system" which is only recited in the preamble. Thus, there can be no comparison to the claimed hyperlink computer feature in DDR and any such claimed feature in claim 1 before us, because there simply is none. 35 U.S.C. Â§ 103(a) REJECTION Each of claims 1, 10, and 19 requires in pertinent part, before the at least one security requirement is satisfied, determining whether electronic delivery of the on-demand identity product to the requestor is successful based, at least in part, on an evaluation of one or more stored product-delivery factors that are specific to a type of the on- demand identity product. The Examiner, citing to paragraphs 117 and 118 of Dupray, takes the position that "claim language appears to define the determining process ( and thus the evaluation of stored product-delivery factors) as determining 16 Appeal2017-003691 Application 14/481,714 whether the consumer has been added to receive a service provided by a computer system." (Answer 4). Appellants argue, (Br. 18). Even if the "on-demand identity product" of claim 1 is assumed, solely for the sake of argument, to be met by Dupray' s "identity theft detection services", Dupray does not disclose evaluating "the predetermined time" as part of a determination whether electronic delivery of Dupray's "identity theft detection services" is successful as required by claim 1. Again, the Examiner does not identify what "evaluation" with regard to electronic delivery is believed to occurred, and Appellant is unable to identify such an evaluation in the disclosure of Dupray. We agree with Appellants. Our review of Dupray at paragraphs 117 and 118 reveals that at paragraph 11 7 Dupray at best discloses: The provisional client may be given notifications such as whether the present identity theft detention and mitigation system/ service detects a likelihood of identity theft, and, e.g., variations in the provisional client's name, address, etc. found in publicly available databases. Dupray ,r 117. The Specification describes product-delivery factors in terms of "for a non-credit product, the delayed-billing settings 212 may require, as a delivery-verification factor, that the consumer has been successfully added to receive a service such as, for example, an identity-monitoring service, 17 Appeal2017-003691 Application 14/481,714 coordinated by the fulfillment module 214(1 )." Spec. ,r 55. But, it is not apparent and the Examiner does not explain how the notification detecting a likelihood of identity theft, and, e.g., variations in the provisional client's name, address, etc. found in publicly available databases translates to meeting the claimed, an evaluation of one or more stored product-delivery factors that are specific to a type of the on-demand identity product. At best, Dupray discloses notification which does give a publicly known name and address, but nothing is disclosed about this data being used as a factor to evaluate the factor specific to a type of the on-demand identity product. Therefore we do not sustain the rejection of independent claims 1, 10, and 19. Since claims 2-9, 11-18, and 20 depend from claims 1, 10, and 19, and since we cannot sustain the rejection of independent claims 1, 10, and 19, the rejection of the dependent claims 2-9, 11-18, and 20 likewise cannot be sustained. We note that the additional reference to Redlich fails to cure the deficiency noted above concerning Dupray as applied to claims 5, 6, 14, and 15. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-20 under 35 U.S.C. Â§ 101. We conclude the Examiner erred in rejecting claims 1-20 under 35 U.S.C. Â§ 103. 18 Appeal2017-003691 Application 14/481,714 DECISION The decision of the Examiner to reject claims 1-20 is affirmed. AFFIRMED 19