Ex Parte Goldman

Patent Trials and Appeals BoardMar 29, 2019

12190460 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/190,460 08/12/2008 121363 7590 04/02/2019 Shook, Hardy & Bacon L.L.P. (Adobe Inc.) Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 FIRST NAMED INVENTOR Oliver Goldman 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. P851/ADBS.208484 8860 EXAMINER DEGA, MURALI K ART UNIT PAPER NUMBER 3696 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM nhensley@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVER GOLDMAN Appeal2018-003135 Application 12/190,460 1 Technology Center 3600 Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-27. Claims 28-36 have been withdrawn from consideration. Br. 44--55 (Claims App'x). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 2 1 According to Appellant, Adobe Systems Incorporated is the real party in interest. Br. 3. 2 Our Decision refers to Appellant's Appeal Brief filed June 28, 2017 ("Br."); Examiner's Answer mailed November 16, 2017 ("Ans."); Final Office Action mailed February 9, 2017 ("Final Act."); and original Specification filed August 12, 2008 ("Spec."). Appeal2018-003135 Application 12/190,460 STATEMENT OF THE CASE Appellant's invention relates to methods and systems for "updating applications using migration signatures" in installation files. Title ( capitalization altered); Abstract. Appellant's invention determines whether a received installation file ( digitally signed with a second signature that certifies a new application publisher) includes a valid update for an installed software application. Spec. ,r,r 32-33; Abstract. The invention determines whether the installation file includes a valid update by determining whether the installation file includes a migration signature matching an old signature associated with the software application, where the old signature certifies a previous application publisher. Spec. ,r 33; Abstract. The software application is updated from the installation file when the matching migration signature is detected. Abstract. Claims 1, 10, and 19 are independent. Claim 1 is illustrative of the claimed subject matter, as reproduced below: 1. A computer-implemented method for improving security by securely changing certificate information of an installed software application, the method comprising: receiving an installation file to update the installed software application, wherein the installed software application is digitally signed with a first signature that certifies a previous application publisher, and further includes certificate information that identifies the previous application publisher, and wherein the installation file is digitally signed with at least a second signature that certifies a new application publisher; determining that the received installation file digitally signed with at least the second signature is further digitally signed with a migration signature that matches the first signature to confirm that the received installation file includes a valid update signed by the previous application publisher; 2 Appeal2018-003135 Application 12/190,460 updating the installed software application based on the determination that the received installation file is digitally signed with the migration signature that matches the first signature, wherein the updated software application is digitally signed with at least the second signature that certifies the new application publisher; and changing the certificate information that identifies the previous application publisher to updated certificate information that identifies the new application publisher, based on the determination that the received installation file is digitally signed with the migration signature that matches the first signature, such that valid updates to the updated software application can only be signed by the new application publisher. Br. 44--52 (Claims App'x). EXAMINER'S REJECTION3 Claims 1-27 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to an abstract idea without significantly more. Final Act. 3-7. DISCUSSION To determine whether claims are patent eligible underÂ§ 101, we apply the Supreme Court's two-step framework articulated in Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208 (2014). First, we determine whether the 3 The Examiner also finally rejected claims 1-27 under 35 U.S.C. Â§ I03(a) as being obvious over Sunder et al. (US 2003/0188160 Al; published Oct. 2, 2003; "Sunder"), Kocher et al. (US 8,055,910 B2; issued Nov. 8, 2011; "Kocher"), Whitehead (US 2006/0101454 Al; published May 11, 2006), and Calligaro et al. (US 7,017,004 B 1; issued Mar. 21, 2006; "Calligaro"). Br. 11-21; see also Final Act. 8-25. However, this obviousness rejection was withdrawn in the Examiner's Answer and, as such, is no longer on appeal. Ans. 3. 3 Appeal2018-003135 Application 12/190,460 claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the second step to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. In other words, the second step is to "search for an 'inventive concept'- i. e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. at 217-18 ( alteration in original) ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). The Federal Circuit has described the Alice step-I inquiry as looking at the "focus" of the claims, their "character as a whole," and the Alice step- two inquiry as looking more precisely at what the claim elements add- whether they identify an "inventive concept" in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Because there is no single definition of an "abstract idea" under Alice step 1, the Federal Circuit (1) has adopted the common law, analogy-driven approach (a.k.a. "analogous claim" test) to determine whether a claim is directed to an abstract idea, and (2) has instructed us "to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing 4 Appeal2018-003135 Application 12/190,460 Elec. Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, July 2015 Update: Subject Matter Eligibility, 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/documents/ieg-july-2015- update.pdf (instructing examiners that "a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea"). The PTO has acknowledged that the Federal Circuit's common law, analogy-driven approach (a.k.a. "analogous claim" test) was effective soon after Alice, but recently concluded that approach has since become impractical as the growing body of Federal Circuit precedent has become increasing more difficult for the Office and Examiners to apply in a predictable manner. In particular, the PTO has issued a new Â§ 101 Memorandum that governs all patent-eligibility analysis under Alice and Â§ 101 effective as of January 7, 2019. In that Â§ 101 Memorandum, the PTO has synthesized, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the "abstract idea" exception includes the following three groupings: 1) Mathematical mathematical calculations; concepts-mathematical formulas or equations, relationships, mathematical 2) Mental processes- concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and 3) Certain methods of organizing human activity-fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or 5 Appeal2018-003135 Application 12/190,460 relationships or interactions between people (including social activities, teaching, and following rules or instructions). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("PTOÂ§ 101 Memorandum"), which is effective on January 7, 2019. According to the PTOÂ§ 101 Memorandum, "[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas," except in rare circumstances. PTOÂ§ 101 Memorandum, 84 Fed. Reg. at 53. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not "directed to" a judicial exception (abstract idea) and, thus, are "patent-eligible" if "the claim as a whole integrates the recited judicial exception into a practical application of that uudicial] exception." PTO Â§ 101 Memorandum, 84 Fed. Reg. at 53. "Integration into a practical application" requires an additional element or a combination of additional elements in the claim to 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 exception. PTOÂ§ 101 Memorandum, 84 Fed. Reg. at 53. For example, limitations that are indicative of "integration into a practical application" include: 1) Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP Â§ 2106.05(a); 2) Applying the judicial exception with, or by use of, a particular machine-see MPEP Â§ 2106.05(b); 3) Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP Â§ 2106.05( c ); and 4) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the 6 Appeal2018-003135 Application 12/190,460 judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP Â§ 2106.05(e). In contrast, limitations that are not indicative of "integration into a practical application" include: 1) Adding the words "apply it" ( or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea-see MPEP Â§ 2106.05(Â±); 2) Adding insignificant extra-solution activity to the judicial exception-see MPEP Â§ 2106.05(g); and 3) Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP Â§ 2106.05(h). See PTOÂ§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two"). Examiner's Determination of Patent-Ineligibility In rejecting claims 1-27 under 35 U.S.C. Â§ 101, the Examiner determines these claims are directed to an abstract idea of "facilitating updating an existing installed application by matching the digital signatures for improving security," which is analogous or similar to (1) using categories to organize, store, and transmit information as discussed in Cyberfone; (2) concepts of collecting and comparing known information as discussed in Classen; (3) concepts of data recognition and storage as discussed in Content Extraction; and (4) concepts of using rules to identify options as discussed in SmartGene. Ans. 4--5, 7; Final Act. 4, 6, 27; see Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding claims directed to "data collection, recognition, and storage" are not patent-eligible); Cyberfone Sys., 7 Appeal2018-003135 Application 12/190,460 LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011); SmartGene, Inc. v Advanced Biological Labs., SA, 852 F. Supp. 2d 42 (D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014). The Examiner also determines the claims fail to amount to "significantly more" than the "judicial exception" or contain an "inventive concept" because the additional elements recited (1) are "generic computer systems" performing "generic functionalities which are well-understood, routine and conventional" and (2) "do not effect an improvement to another technology or technical field," do not improve "the functioning of a computer itself," and "do not move beyond a general link of the use of an abstract idea to a particular technological environment." Final Act. 5---6; Ans. 6, 11-12. Appellant argues all independent claims 1, 10, and 19 together (Br. 24--25, 27-28, 35-36). We select claim 1 as representative. Claims 2-27 stand or fall with claim 1 (see 37 C.F.R. Â§ 4I.37(c)(l)(iv)). Alice/Mayo--Step 1 (Abstract Idea) Turning to the first step of the Alice inquiry, Appellant argues claim 1 is not directed to an abstract idea because the claim's "steps are not merely a simple comparison of known information, nor just a collection, recognition, or storage of information" as in the cited court decisions. Br. 26-28. Appellant contends at least the following steps of claim 1 are distinct from the Examiner's cited "simple comparisons, recognitions, and storage": ( 1) the claimed step of "determining that the received installation file digitally signed with at least the second signature is further digitally signed with a migration signature that matches the first signature"; and (2) the claimed 8 Appeal2018-003135 Application 12/190,460 step of "changing the certificate information that identifies the previous application publisher to updated certificate information that identifies the new application publisher, based on the determination that the received installation file is digitally signed with the migration signature that matches the first signature" to achieve an effect that "valid updates to the updated software application can only be signed by the new application publisher." Br. 27-28. Appellant argues the claimed steps are also distinct from the Examiner's generalization of ''facilitating updating an existing installed application by matching the digital signatures for improving security." Br. 24--25. In addition, Appellant argues claim 1 is patent-eligible because the claim improves a computer science field with a method for updating software applications whose publishers have changed, without "necessitat[ing] a complete uninstallation of the old [application] version and a complete reinstallation of the new version of the application." Br. 30, 35, 37. We are persuaded by Appellant's arguments. Claim 1 recites a method for securely changing certificate information of an installed software application that has been digitally signed with a (first) signature and certificate of a previous application publisher. The certificate information of the software application is changed concomitant with an application update via a specially configured installation file. Particularly, the installation file is digitally signed with a second signature that certifies a new application publisher and a migration signature "that matches the first signature to confirm that the received installation file includes a valid update signed by the previous application publisher." Br. 44 (Claims App'x). The installation file enables both (i) application updating and (ii) associating the 9 Appeal2018-003135 Application 12/190,460 application with the new application publisher. The result is an updated software application that is (i) digitally signed with the second signature that certifies the new application publisher, and (ii) includes updated certificate information identifying the new application publisher such that "valid updates to the updated software application can only be signed by the new application publisher." Br. 44--45 (Claims App'x). We characterize the claimed subject matter as describing a technique for authorizing applications to recognize new publishers, using installation files linking old (recognized) and new (unrecognized) publishers. Here, we are unable to determine from the Examiner's analysis whether such technique for authorizing applications to recognize new publishers recites any one of these three groupings of abstract ideas identified by the PTOÂ§ 101 Memorandum, i.e., subject matter that recites (1) a mathematical concept, (2) a method of organizing human activity, or (3) a mental process. We are also unable to agree with the Examiner's characterization that the claimed concept is similar to other concepts found to be abstract ideas by our reviewing courts. For example, the Examiner analogized the claim to Content Extraction. Final Act. 6; Ans. 5. However, the Examiner's reliance is misplaced because the claims in Content Extraction "merely recite the use of this existing scanning and processing technology to recognize and store data from specific data fields such as amounts, addresses, and dates," which was held to be ineligible subject matter because "humans have always performed these functions" and "'the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."' Content Extraction, 776 F.3d at 1347--48 (quoting Alice, 134 S. Ct. at 2358). In contrast, Appellant's claim does not merely recite a process 10 Appeal2018-003135 Application 12/190,460 performable by a human being, or basic data collection, recognition, and storage as in Content Extraction. Even if Appellant's claim 1 were considered to recite an abstract idea, we are persuaded by Appellant's arguments that the claim integrates an abstract idea into a practical application. Br. 28-31, 35-37. Specifically, the claimed method explains "how to migrate certificate information of an already-installed software application." Br. 37. "Because the installation file is doubly-signed, the installation file can be validated by the already- installed software application to facilitate a migration of the certificate information." Br. 30-31, 37. Appellant's Specification describes in further detail the technological practical application of Appellant's claim: Implementations consistent with this disclosure can facilitate updating an application to reflect a change in an association between the application and a publisher. In particular, an application can be migrated from having one particular application-publisher association to having another, different application-publisher association. In some examples, the publisher is the same before and after migration but identified by different digital certificates. In some examples, the application can be migrated from one publisher to another, different publisher. Implementations consistent with this disclosure can provide a mechanism to securely update an application from one type of code signing certificate to another, where the certificates can identify different publishers. Thus, for example, application publishers (e.g., software developers) can switch code signing certificates (or otherwise modify applications) using auto-update features and without requiring end users to uninstall/re-install different versions of the applications. An application publisher can be acquired by another publisher, and/or an application can be purchased by a new publisher. In both of these situations, implementations consistent with this disclosure can facilitate migration of the application to a new certificate, which can also identify a new publisher. 11 Appeal2018-003135 Application 12/190,460 Spec. ,r,r 16-17 (emphasis added). See also Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018) (claim to a virus scan that generates a security profile identifying both hostile and potentially hostile operations is patent eligible); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259---60 (Fed. Cir. 2017) (patent-eligible claims were "directed to a technological improvement: an enhanced computer memory system" with "programmable operational characteristics ... configurable based on the type of processor," and "the specification discusses the advantages offered by the technological improvement"). Because claim 1, and similar claims 10 and 19 are not directed to an abstract idea under Alice step 1, we need not determine if "the claim as a whole integrates the recited judicial exception into a practical application of that uudicial] exception" under the PTOÂ§ 101 Memorandum (84 Fed. Reg. at 53) and, likewise, need not reach Alice step 2 (inventive concept). As such, we do not sustain the Examiner's rejection of claims 1-27, argued together, as directed to non-statutory subject matter under 35 U.S.C. Â§ 101. CONCLUSION On the record before us, we conclude Appellant has demonstrated the Examiner erred in rejecting claims 1-27 under 35 U.S.C. Â§ 101. DECISION As such, we REVERSE the Examiner's rejection of claims 1-27 under 35 U.S.C. Â§ 101. REVERSED 12