Ex Parte Das et al

Patent Trial and Appeal BoardMar 28, 2019

13009053 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/009,053 01/19/2011 Pradeep K. Das 919 7590 04/01/2019 PITNEY BOWES INC. INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT. 27 W aterview Drive Shelton, CT 06484 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. F-833-02 1020 EXAMINER RAVETTI, DANTE ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): iptl@pb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRADEEP K. DAS, DAIVD W. SPENCER, ROBERT A. CORDERY, and FREDERICK W. RYAN JR. 1 Appeal 2018-002948 Application 13/009,053 Technology Center 3600 Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and SCOTT RAEVSKY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claim 2, the only pending claim in the present application (see Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. 1Appellants name Pitney Bowes Inc. as the real party in interest (App. Br. 2). Appeal 2018-002948 Application 13/009,053 The present invention relates generally to facilitating a transaction between a camera-phone user and a business entity using a printed medium (see Abstract). Claim 2 is illustrative: 2. A method for facilitating a transaction with a business entity from a printed medium using a mobile communications device, the method comprising: receiving data pertaining to the business entity and a proposed transaction at a trusted third party; verifying the data, including verifying the source of the data as the business entity, at the trusted third party and recording such verification; generating a digital signature for the data using a private encryption key at the trusted third party; providing an authentication means to the mobile communications device whereby barcode information printed by the business entity can be authenticated, wherein the authentication means is a public encryption key for authenticating the digital signature encrypted with the private encryption key; generating the barcode including the data and the digital signature; and authenticating the barcode information printed by the business entity by receiving scanned barcode information from the mobile device and verifying the encrypted digital signature with the public encryption key. Appellants appeal the following rejections: 2 Rl. Claim 2 is rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to patent-ineligible subject matter (Final Act. 4-8); and R2. Claim 2 is rejected under 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, as being indefinite (Final Act. 9-10). 2 The Examiner withdrew the 35 U.S.C. Â§ 103(a) rejection (see Ans. 4). 2 Appeal 2018-002948 Application 13/009,053 We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Rejection underÂ§ 1 OJ 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 the 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."). For example, 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, 3 Appeal 2018-002948 Application 13/009,053 594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). 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 22l(quotations 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 require[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 ("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 (2) additional elements that integrate the judicial exception into a practical application (see 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: 4 Appeal 2018-002948 Application 13/009,053 (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 Memorandum. With respect to the sole independent method claim 2, the Examiner determines that the claims are at least directed to the abstract idea of "authenticating barcode information" (Final Act. 6) ( emphasis omitted), which we conclude is one of certain methods of organizing human activity- a fundamental economic practice (see claim 2). Claim 2 recites, inter alia, (1) "receiving data pertaining to the business entity and a proposed transaction," (2) "verifying the data," (3) "providing an authentication means," (3) "generating the barcode," and (4) "authenticating the barcode" (see claim 2). These limitations, under their broadest reasonable interpretation, recite the fundamental economic practice of facilitating a transaction with a business entity because such steps would ordinary take place in a business transaction. For example, at least the following decisions from our reviewing court have found many similar types of fundamental commercial practices patent ineligible: OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (mem.) (2015) (offer-based price optimization); buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction guaranty); Personalized Media Communications, L.L.C. v. Amazon, Inc., 671 F. App'x. 777 (mem.) (Fed. Cir. 2016) (receiving 5 Appeal 2018-002948 Application 13/009,053 instructions for ordering); Macropoint, LLC v. Fourkites, Inc., 671 F. App'x. 780 (mem.) (Fed. Cir. 2016) (tracking freight); Wireless Media Innovations, LLC v. Maher Terminals, LLC, 636 F. Appx. 1014 (mem.) (Fed. Cir. 2016) (monitoring shipping containers); America's Collectibles Network Inc. v. Jewelry Channel, Inc. USA, 672 F. App'x. 997 (mem.) (Fed. Cir. 2017) ( conducting reverse auction by adjusting price and inventory); and Easy Web Innovations, LLC v. Twitter, Inc., 689 F. App'x. 969 (Fed. Cir. 2017) (receiving, authenticating, and publishing data). In this light, the method for facilitating a transaction with a business entity, as recited in claim 2 on appeal (i.e., "receiving data ... and a proposed transaction," "verifying the data," "generating a digital signature," "providing an authentication means," "generating the barcode," and "authenticating the barcode" (see claim 2)) is a commercial practice that is economic and fundamental in nature. As noted supra, similar steps were shown in Easy Web Innovations, for example. In any case, Appellants do not directly challenge whether claim 2 is directed to an abstract idea, but instead argued that "claim 2 is narrowly directed to a specific technological solution ... [which] does not preempt" (App. Br. 3). Such arguments shall be addressed below with regard to our "practical application" analysis. Therefore, for at least the aforementioned reasons, we agree with the Examiner that claim 2 is directed to an abstract idea, which we conclude is "a fundamental economic practice." Under the Memorandum, we now must determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP Â§ 2106.0S(a)-(c), (e)-(h)). 6 Appeal 2018-002948 Application 13/009,053 Appellants contend that "[g]enerating barcodes, use of encryption keys and digital signatures are all elements that are technical in nature, and provide an improvement in functionality of the system. . .. directed to the technological problem of providing a secure transaction" (App. Br. 3). We disagree that Appellants have identified a technological improvement. For example, in McRO, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a "technological improvement over the existing, manual 3-D animation techniques" through the "use of limited rules specifically designed to achieve an improved technological result in conventional industry practice." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and the rules are limiting because they define morph weight sets as a function of phoneme sub-sequences. Id. at 1313 ( citations omitted). In contrast, here, Appellants have not identified any analogous improvement attributable to the claimed invention. Although generating a digital signature, generating a barcode, and authenticating the barcode may insure identification of a business entity, Appellants point to no improvement in the functionality of generating signatures and/or authenticating the same. Also, in Enfzsh, for example, the court noted that "[ s ]oftware can make non-abstract improvements to computer technology just as hardware improvements can[.]" See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 7 Appeal 2018-002948 Application 13/009,053 1335 (Fed. Cir. 2016). The court put the question as being "whether the focus of the claims is on [a] specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Id. at 1335-36. In Enfzsh, the court found that the "plain focus of the claims" there was on "an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity." Id. at 1336. Here, Appellants have not adequately explained or directed our attention to anything in claim 2 that resembles the inventive self-referential data structure at issue in Enfzsh, i.e., an improvement to computer functionality itself. Appellants also do not point to anything in the Specification to indicate that the invention provides an improvement in the mobile device's computer technical functionality. Instead, it appears that claim 2 is merely a process that qualifies as an "abstract idea" for which a computer in the mobile device is invoked merely as a tool to authenticate information, i.e, authenticate the barcode. We agree with the Examiner that "Appellant[s'] use of the 'mobile device' seems to use only[] generic computer function[ s] of providing scanned barcode information" (Ans. 7). As recognized by the Supreme Court, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention." See Alice, 134 S. Ct. at 2358, 2359 ( concluding claims "simply instruct[ing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer" not patent eligible). Regarding Appellants' contention that claim 2 "does not preempt any or all other methods that might attempt to achieve similar goals" (App. Br. 3), we highlight that "the absence of complete preemption does not 8 Appeal 2018-002948 Application 13/009,053 demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, because we find the claimed subject matter covers patent-ineligible subject matter, the pre- emption concern is necessarily addressed. For at least the reason noted supra, we determine that claim 2 (1) recites a judicial exception and (2) does not integrate that exception into a practical application. We now look to whether claim 2 adds specific limitations beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)). Regarding scanning and authenticating the scanned barcode, we note that Appellants' Specification describes generic computer components, performing generic computer functions that are routine and conventional, Le., the normal and bask functions of a computer. See, e.g., Spec. 6: 10- 11 ("by using existing and available technology"); Spec. 7: 12-17 ("the invention utilizes a software module included in the software suite supplied with [the] cell phone ... [having] the capability of decoding a bar code ... such as Maxicode, Aztec, etc"). Accordingly, Appellants have not adequately explained how claim 2 is performed such that it is not a routine and conventional function of a generic computer. Because Appellants' independent claim 2 is directed to a patent- ineligible abstract concept, does not include additional elements that integrate the judicial exception into a practical application, and does not add a specific limitation beyond the judicial exception that is not "well- understood, routine, and conventional," we sustain the Examiner's rejection of this claim under 35 U.S.C. Â§ 101 as being directed to non-statutory 9 Appeal 2018-002948 Application 13/009,053 subject matter in light of Alice, its progeny, and the Revised 101 Guidance (Memorandum). Accordingly, Appellants' contentions are unpersuasive as to error in the rejection under 35 U.S.C. Â§ 101. Rejection under 35 U.S. C. Â§ 112, second paragraph The Examiner finds that Appellants' claim 2 "seems to be missing the essential steps of 'transmitting' the 'generated' digital signature from the 'TTP' [ trusted third party] to the 'business entity' and subsequently, performing the essential step of 'receiving' by the 'business entity' the 'transmitted' digital signature" (Final Act. 10). In essence, the Examiner finds that it is unclear how the "business entity" acquires the generated digital signature. For example, although claim 2 recites "generating a digital signature for the data using a private encryption key at the trusted third party" (see claim 2), it is not apparently clear in claim 2 what entity is generating the digital signature. In addition, claim 2 recites "generating the barcode including the data and the digital signature" (id.), again without specifying what entity performs this act. Claim 2 further recites "barcode information printed by the business entity" (id.). Appellants' Specification states "[t]he TTP then uses a private key to provide a digital signature to be included in the bar code" (Spec. 31 :8-9). As a result, the Examiner concludes that getting the "digital signature" from the TTP to the business entity is an essential step in generating the barcode, which includes the data and the digital signature. 10 Appeal 2018-002948 Application 13/009,053 However, Appellants contend, and we agree, that "the step of generating the barcode does not include any limitation on where the 'generating' step occurs ... [and] [t]he specification does not give any indication that it is essential that the barcode generation occur at any particular location" (App. Br. 4). Appellants further point out, and we again agree, that there are "other instances in the specification and drawings, where the step of generating the barcode is carried out by someone other than the business entity" (id. (citing Fig. 2, steps 201, 202)). In other words, Figure 2, steps 201 and 202 suggest that another entity creates the barcode because it is later "released to [the business] entity" (see step 202). Furthermore, claim 2 merely states that the "barcode information [is] printed by the business entity" (see claim 2), not necessarily created by the business entity as apparently concluded by the Examiner. As a result, we determine that the Examiner has not shown that an essential step is missing in claim 2, therefore, the rejection underÂ§ 112, second paragraph is reversed. DECISION We affirm the Examiner's Â§ 101 rejection of claim 2. We reverse the Examiner'sÂ§ 112, second paragraph rejection of claim 2. Because at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is affirmed. 11 Appeal 2018-002948 Application 13/009,053 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 12