Ex Parte CROWLEY et al

Patent Trial and Appeal Board

Sep 18, 2018

13719949 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/719,949 12/19/2012
23117 7590 09/20/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Brian CROWLEY
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.
AC-4010-254 6529
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN CROWLEY, VALERIE BANNERT-THURNER, and
JASON TIMMES
Appeal2017-006253
Application 13/719,949
Technology Center 3600
Before ALLEN R. MACDONALD, ERIC B. CHEN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4, 6, 7, 10-12, 14, 15, 18-20, 22-
27, and 29. Claims 3, 5, 8, 9, 13, 16, 17, 21, 28, and 30 have been canceled.
See Appeal Br. 24--32 (Claims App'x). We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real parties in interest are FTEN, Inc. and
Nasdaq, Inc. Appeal Br. 3.
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Application 13/719,949
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "aggregate[ing], stor[ing],
and preferably selectively process[ing] private data, e.g., private financial
data, from disparate sources to provide enhanced management, storage, and
directed delivery of such data for users." Spec. ,r 2. Claim 1, which is
illustrative, reads as follows with some paragraphing added:
1. A method implemented on a distributed computing
platform that includes a provider computing system and a cloud-
based computing and storage system, the provider computing
system including multiple processors and a first storage system,
the cloud-based computing and storage system including a
plurality of hardware processors and a second storage system that
includes write once, read many (WORM) data storage, the
method comprising:
maintaining multiple electronic participant accounts
which are programmed for access to only selected portions of
enriched data stored in the second storage system, where each
participant account is associated with a corresponding entity that
accesses second storage system via an electronic
communications network;
receiving, by the provider computing system, a plurality
of first type data messages that each include private data, the
private data of each of the plurality of first type data messages
related to data transaction request( s) performed on at least one of
multiple different computing systems, the multiple different
computing systems including (a) one or more publically-
accessible data transaction computing systems that are accessible
by the general public via a data communications network, and
(b) one or more computer transaction networks that are private
and exclusively accessible by only a set of entitled entities
associated with the private data or data transaction requests
involving the private data, where the private data included in the
plurality of first type data messages are in multiple different data
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formats, the data format for each private data based upon which
one of the multiple different computing systems sent the
corresponding first type data message over the electronic
communications network to the information processing system
for reception thereby;
storing, at the second storage system, a plurality of second
type data messages that each include public data, where the
public data included in the plurality second type data messages
is in multiple different formats;
normalizing, by using at least one of the multiple
processors of the provider computing system, the private data
that is in the multiple different data formats into a normalized
data format by at least mapping data fields of each one of the
multiple different data formats into a common data structure to
thereby provide normalized private data;
transmitting, to the second storage system of the cloud-
based computing and storage system, the normalized private data
for storage therein, where at least some of the normalized private
data or the private data that is in the multiple different data
formats is stored in the WORM data storage;
accessing, by using the provider computing system, public
data stored in the second storage system of the cloud-based
computing and storage system;
generating, via the provider computing system, enriched
and normalized private data by processing at least some of the
normalized private data in combination with the public data;
encrypting, via the provider computing system, the
enriched and normalized private data;
transmitting, to the second storage system of the cloud-
based computing and storage system, the encrypted, enriched,
and normalized private data for storage therein, where at least
some of the encrypted, enriched, and normalized private data is
stored in the WORM data storage of the second storage system;
selecting based on a data request received in association
with one of the maintained multiple electronic participant
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accounts, a portion of the encrypted, enriched, and normalized
private data stored in the WORM data storage; and
causing the selected portion of the encrypted, enriched,
and normalized private data to be delivered to the one of the
maintained multiple electronic participant accounts or another
computing destination indicated in the data request.
Rejection
Claims 1, 2, 4, 6, 7, 10-12, 14, 15, 18-20, 22-27, and 29 stand
rejected under 35 U.S.C. § 101 because the claimed subject matter is
judicially-excepted from patent eligibility under § 101. Final Act. 2-6.
ANALYSIS 2
Rejection under 35 U.S.C. § 1 OJ
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
2 Appellants do not argue the claims separately with particularity, but,
instead, rely on the same arguments for all claims. See Appeal Br. 12-22;
Reply Br. 2-8. We select claim 1 as representative. Accordingly, claims 2,
4, 6, 7, 10-12, 14, 15, 18-20, 22-27, and 29 stand or fall with claim 1.
37 C.F.R. § 4I.37(c)(l)(iv).
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566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S.Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id. The
inquiry often is whether the claims are directed to "a specific means or
method" for improving technology or whether they are simply directed to an
abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Circ. 2016). If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step, where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S.Ct. at 2355 ( quoting Mayo, 566 U.S. at 78-79).
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F .3d
1327, 1336 (Fed. Cir. 2016).
Step 1
In the Final Office Action, the Examiner finds claim 1 is directed to
an abstract idea because:
"maintaining multiple electronic participant accounts
which are programmed for access to only selected portions of
enriched data stored in the second storage system, where each
participant account is associated with a corresponding entity that
accesses second storage system via an electronic
communications network" is similar to the basic concept of using
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the selected portions of enriched data stored in the second storage
system category to organize/maintaining multiple electronic
participant accounts information, where each participant account
is associated with a corresponding entity that accesses second
storage system via an electronic communications network which
have been identified to be one of the abstract idea examples by
the courts including "An Idea "Of Itself';
"normalizing . . . the private-data that is in the multiple
different data formats into a normalized data format to thereby
provide normalized private data by at least mapping data fields
of each one of the multiple different data formats into a common
data structure to thereby provide normalized private data" and
"transmitting to the second storage system of the cloud-based
computing and storage system, the normalized private data for
storage therein, where at least some of the normalized private
data or the private data that is in the multiple different data
formats is stored in the WORM data storages" are similar to the
basic concept of using a normalized data format and at least
mapping data fields of each one of the multiple different data
formats into a common data structure categories to
organize/normalize the private data that is in the multiple
different data formats, and transmitting the normalized private
data information for storage therein, where at least some of the
normalized private data or the private data that is in the multiple
different data formats is stored in the WORM data storages
which have been identified to be one of the abstract idea
examples by the courts including "An Idea "Of Itself';
"generating ... enriched and normalized private data by
processing at least some of the normalized private data in
combination with the normalized public data" is similar to the
basic concept of using the normalized private data in
combination with the normalized public data category to
organize/generate the enriched and normalized private data
which have been identified to be one of the abstract idea
examples by the courts including "An Idea "Of Itself;
"encrypting ... enriched and normalized private data" is
similar to the basic concept of the enriched and normalized
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private Data recognition/encrypting which have been identified
to be one of the abstract idea examples by the courts including
"An Idea "Of Itself'.
Final Act. 3--4. The Examiner finds the remaining limitations "are just
receiving, processing data, and storing data; extracting/accessing/
selecting data, and receiving or transmitting/to be delivered over a
network, e.g., using the Internet to gather data which do not amount to
significantly more than abstract ideas" and "the claims as a whole amount[]
to nothing more than generic computer functions merely used to implement
an abstract idea, such as an idea that could be done by a human analog (i.e.,
by hand or by merely thinking)." Final Act. 5.
Appellants contend the Examiner's finding regarding the claims being
directed to an abstract idea is improper because "there is no finding by the
[Examiner] that the claims are 'directed to' [X] and [X] is an abstract idea."
Appeal Br. 14 ( second and third brackets in original). Appellants argue the
Examiner fails to "consider the character of the claims 'as a whole' and
whether that character is directed to [] excluded subject matter" but, instead,
the Examiner "merely dissects the claims into separate individual elements
and analyzes those elements in isolation from one another." Appeal Br. 15.
In response, the Examiner finds the claims are directed to the abstract
idea of "using categories to organize, store and transmit information."
Ans. 7-8 ( citing Cyberfone Systems, LLC v. CNN Interactive Group, Inc.,
558 Fed. Appx. 988 (2014) (unpublished)).
Appellants argue the Examiner's reliance on Cyberfone is insufficient
to show the claims are directed to an abstract idea because Cyberfone is a
non-precedential decision that should not be relied upon unless there is an
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in-depth comparison of the facts of that case to the facts of this case and the
Examiner failed to provide the required analysis. Reply Br. 2.
We find Appellants' arguments unpersuasive. We agree with the
Examiner that the claims are directed to the abstract idea of "using
categories to organize, store and transmit information." Ans. 7-8. All of the
steps recited in Appellants' independent claim 1 are abstract processes of
collecting, storing, and analyzing information of a specific content and
outputting a result of the collection and analysis. Information, as such, is
intangible. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12
(2007). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
We are not persuaded by Appellants' argument that the claims are
similar to the claims in Pnc Bank, Nat 'l Ass 'n, U.S. Bank, Nat 'l Ass 'n, &
U.S. Bancorp, Petitioner, CBM2014-00100, 2014 WL 4537440, (PTAB
2014) because the claims "set forth transforming received data." Appeal
Br. 16-17. In particular, Appellants argue the claims transform received
data in two different ways: "the differently formatted data messages that
contain private data are normalized into a common format;" and "the
normalized private data is then enriched with additional public data before
being delivered." Appeal Br. 17. However, claim 1 recites that the private
data is normalized "by at least mapping data fields of one of the multiple
different data formats into a common data structure." The normalized
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private data is enriched "by processing at least some of the normalized
private data in combination with the public data." Organizing information
( e.g., mapping data fields into a common data structure) and processing data,
as broadly recited, do not go beyond generic functions, and the claims do not
recite any technical means for performing the claimed steps that are arguably
an advance over conventional computer technology. Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016). Moreover, claims
directed to providing information collected from various sources have been
found to be abstract. See Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341--42 (Fed. Cir. 2017) (holding claims which
recited creating a "dynamic document" using content from multiple
electronic records ineligible under § 101 ).
Step 2
Turning to the second step of the analysis, we agree with the
Examiner that the claim limitations, when viewed individually and as a
whole, do not transform the claim to something significantly more than an
abstract idea. Final Act. 4---6; Ans. 10-12.
Appellants argue the Examiner fails to consider the ordered
combination of elements and that
[T]he claims set forth features of 1) generating enriched and
normalized private data by processing at least some of the
normalized private data in combination with the public data, 2)
storing that generated enriched and normalized private data to
WORM data storage (i.e., a particular type of data storage), and
3) delivering the stored enriched data (a combination of
normalized private data and public data) based on a request. The
generation of enriched data, how that generated is stored (i.e., in
WORM data storage), and the delivery of a selected portion of
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that stored enriched data is significantly more than [the
Examiner's] asserted abstract idea(s).
Appeal Br. 18-19. Appellants further argue the Examiner "appears to
completely ignore the use of WORM data storage in Applicant's claims" and
"WORM data storage is not 'generic' data storage" "[b]ut is instead a
specific technical feature that is expressly required by the claims." Appeal
Br. 19.
We do not find Appellants' arguments persuasive. Generating
enriched and normalized private data by processing at least some of the
normalized private data in combination with the public data; storing the
generated enriched and normalized private data to a data storage; and
delivering a combination of normalized private data and public data based
on a request are all steps directed to the abstract ideas of obtaining, storing,
analyzing, and transmitting data of a particular content. That the claims
require the data storage to be WORM data storage fails to cause the claims
to recite significantly more than the abstract concepts to which the claims
are directed. Appellants do not argue that the claims are directed to an
improvement related to the operation of WORM data storage device or that
the use and implementation of the WORM data storage, as claimed, are not
well-understood, routine and conventional. Instead, the Specification
indicates that WORM data storage is a conventional means for
implementing secure, regulated data storage in encrypted format. See Spec.
Figs. 6-8; ,r,r 11, 53, 54. If a claim's only "inventive concept" is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea. See, e.g., Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (holding a claim
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lacked an inventive concept because it "simply recites the use of generic
features ... as well as routine functions ... to implement the underlying
idea").
We are also not persuaded by Appellants' argument that "there is no
risk of preempting every way of delivering private data to remote computer
systems." Appeal Br. 19. Claims that are otherwise directed to patent-
ineligible subject matter cannot be saved by arguing the absence of complete
preemption. Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370
(Fed. Cir. 2017). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Id.
We disagree with Appellants that the claims are similar to the claims
in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016). Appeal Br. 21-22; Reply Br. 5. The claims inMcRO were directed
to the creation of something physical-namely, the display of "lip
synchronization and facial expressions" of animated characters on screens
for viewing by human eyes. McRO, 837 F.3d at 1313. The claimed
improvement was to how the physical display operated (to produce better
quality images), unlike ( what is present here) a claimed improvement in a
technique for acquiring, normalizing, and enriching private data obtained
from multiple sources and distributing enriched data to one or more
authorized entities. See Spec. ,r 4.
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We also disagree with Appellants' that the claims are similar to the
claims in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300
(Fed. Cir. 2016). Reply Br. 6-8. For the reasons we have already given
supra, the claims recite limitations at a high level of generality and
conventional, and are not the kinds of limitations that have been found to
"solve a technology-based problem, even with conventional, generic
components, combined in an unconventional manner." Amdocs, 841 F.3d at
1300.
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of claims 1,
2, 4, 6, 7, 10-12, 14, 15, 18-20, 22-27, and 29 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1, 2, 4, 6, 7, 10-12, 14,
15, 18-20, 22-27, and 29 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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