Ex Parte CROWLEY et alDownload PDFPatent Trial and Appeal BoardSep 18, 201813719949 (P.T.A.B. Sep. 18, 2018) Copy Citation 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. Appeal2017-006253 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 2 Appeal2017-006253 Application 13/719,949 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 3 Appeal2017-006253 Application 13/719,949 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). 4 Appeal2017-006253 Application 13/719,949 566 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 5 Appeal2017-006253 Application 13/719,949 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 6 Appeal2017-006253 Application 13/719,949 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 7 Appeal2017-006253 Application 13/719,949 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 8 Appeal2017-006253 Application 13/719,949 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 9 Appeal2017-006253 Application 13/719,949 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 10 Appeal2017-006253 Application 13/719,949 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. 11 Appeal2017-006253 Application 13/719,949 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 12 Copy with citationCopy as parenthetical citation