Ex Parte SinghalDownload PDFPatent Trial and Appeal BoardDec 27, 201713942651 (P.T.A.B. Dec. 27, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/942,651 07/15/2013 Tara Chand Singhal 11195. 33C5 1027 103550 7590 Tara Chand Sighal P.O. Box 5075 Torrance, CA 90510 EXAMINER QAYYUM, ZESHAN ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 12/27/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TARA CHAND SINGHAL Appeal 2017-008565 Application 13/942,6511 Technology Center 3600 Before: HUBERT C. LORIN, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tara Chand Singhal (Appellant) seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1—3, 5—9, 11, and 12. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 The Appellant identifies Tara Chand Singhal as the real party in interest. App. Br. 4. Appeal 2017-008565 Application 13/942,651 THE INVENTION THE REJECTIONS Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of securing storage of bankcard data in a payment processing computer system, comprising the steps of: a. receiving in the payment processing computer system that has a central processing unit, a memory, and a storage system with multiple databases an original bankcard data and creating in the central processing unit a sequence number as a unique reference number for this original bankcard data; b. transforming by the central processing unit of the payment processing computer system the original bankcard data, using a forward transform logic, into an encrypted bankcard data, the forward transform logic stored in the memory and executing there from uses a substitution algorithm without an encryption key; c. storing in the storage system by the central processing unit of the computer system the encrypted bankcard data referenced by the sequence number in a database that is separate from databases that store customer data. The Examiner relies upon the following as evidence of unpatentability: Tomko US 5,790,668 Aug. 4, 1998 Franklin et al. US 5,883,810 Mar. 16, 1999 “Franklin” Schneir, Bruce, Applied Cryptography, 2ndEd., Protocols, Algorithms, and Source Code in C„ Chapter 1, Foundations; 1.3 Substitution Ciphers and Transposition Ciphers, 10-13, (1996) (“Schneir”). 2 Appeal 2017-008565 Application 13/942,651 The following rejections are before us for review: 1. Claims 1—3, 5—9, 11, and 12 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. Final Act. 4—7. 2. Claims 1—3, 5—9, 11, and 12 are rejected under 35 U.S.C. § 112(a), first paragraph, as failing to comply with the written description. Id. at 7—10. 3. Claims 1—3, 5—9, 11, and 12 are rejected under 35 U.S.C. § 112(b), second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. Id. at 10-11. 4. Claims 1—3, 5—9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tomko, Franklin and Schneier. Id. at 11—14. ISSUES Did the Examiner err in rejecting claims 1—3, 5—9, 11, and 12 under 35 U.S.C. §101 as being directed to non-statutory subject matter? Did the Examiner err in rejecting claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 112(a), first paragraph, as failing to comply with the written description? Did the Examiner err in rejecting claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention? 3 Appeal 2017-008565 Application 13/942,651 Did the Examiner err in rejecting claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Tomko, Franklin and Schneier? FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANAFYSIS The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. §101 as being directed to non-statutory subject matter. Except for claims 1 and 7, the Appellant argued these claims as a group. See Reply Br. 3—8. We select claim 1 as the representative claim for this group, and the remaining claims 2, 3, 5, 6, 8, 9, 11, and 12 stand or fall with claim 1. We will concomitantly also address claim 7. See 37 C.F.R. § 41.37(c)(l)(iv). Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent-eligibility under 35 U.S.C. § 101. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner determined that claim 1 “is directed to receiving data, transform[ing] the data and storing] [the data] in [a] database which is considered to be an abstract idea inasmuch as such 4 Appeal 2017-008565 Application 13/942,651 activity is considered both a method of organizing human activity and an [i]dea [o]f [ijtself by receiving data, encrypting] the data and storing] data in [a] database.” Final Act. 5. The Appellant begins with a “Summary” (App. Br. 10) that discusses the Appellant’s view of Alice and the USPTO’s corresponding guidelines. We see nothing here we need to respond to. This section does not address the Examiner’s determination relative to step one of the Alice framework. The Appellant follows with “DETAILED ARGUMENTS:” (App. Br. 12). The Appellant argues that independent claims 1 and 7 do not set forth or describe an abstract idea. Instead the claimed subject matter is necessarily rooted in computer technology and communication interfaces between computers on the global computer network to overcome a problem specifically arising in storing and backing up data in mobile wireless devices to wireless accessible servers on a global computer network. App. Br. 12-13. The argument is unpersuasive as to error in the Examiner’s determination relative to step one of the Alice framework. Neither claim 1 nor claim 7 mentions communication interfaces between computers on a global computer network. Nor are they directed to storing and backing up data in mobile wireless devices to wireless accessible servers on a global computer network. The argument is not commensurate in scope with what is claimed. The claims are much broader than the solution the Appellant is arguing the claimed subject matter defines and the problem the claimed subject matter is said to overcome. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). See also In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994) (“The problem with 5 Appeal 2017-008565 Application 13/942,651 Warmerdam’s argument is that the claims here do not have that [argued- over] effect. It is the claims which define the metes and bounds of the invention entitled to the protection of the patent system.”). The Appellant also argues that “the claims are not directed to abstract subject matter because they are directed to logic and steps of the logic in the method claim in the mobile wireless devices and no element of the claimed subject matter is performed mentally or even capable of being performed mentally.” App. Br. 13. Again, the claims are not limited to mobile wireless devices. That basis for arguing that the claims are not directed to an abstract idea is not a persuasive one. Regarding that no element of the claimed subject matter is performed mentally or even capable of being performed mentally, that is not the test for determining if a concept to which claims are directed is an abstract idea. Certainly if claimed subject matter is directed to mental steps, it would not be patent eligible. See Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (emphasis added) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). But claimed subject matter that is not directed to mental steps, would not necessarily be patent eligible. For example, and similar to what is instantly claimed, the court stated in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014) that “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory” are drawn to an abstract idea, even though said combination of steps is arguably incapable of being performed mentally. See also FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 6 Appeal 2017-008565 Application 13/942,651 1089, 1098 (Fed. Cir. 2016) (“[W]e note that, in viewing the facts in FairWaming’s favor, the inability for the human mind to perform each claim step does not alone confer patentability. As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’ Bancorp Servs., 687 F.3d at 1278.”). We are unpersuaded as to error in the Examiner’s step one determination. Step two is “a 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.’” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72— 73). In that regard, the Examiner determined that [t]he elements of the instant processor, when taken alone, each execute in a manner routinely and conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. That is, the elements involved in the recited process undertake their roles in performance of their activities according to their generic functionalities which are well-understood, routine and conventional. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry. Final Act. 6. We do not see that the Appellant has addressed the Examiner’s position. The Appellant only argues that “Alice . . . requires all the method 7 Appeal 2017-008565 Application 13/942,651 steps to be done by mental [sic] or being capable of being done mentally” and that that is not possible to do in practicing the subject matter as claimed. App. Br. 13 (emphasis added). But that alone is not a persuasive argument — for the reasons discussed. Accordingly, we are unpersuaded as to error in the Examiner’s step two determination. The Appeal Brief continues with reproductions of claims 1 and 7. See App. Br. 14, 16. The arguments attached to these claims are the same. App. Br. 14—18. And the arguments appear to be the same as the ones we have already addressed above. Accordingly, we do not see in the remaining discussion a persuasive argument as to error in the Examiner’s determinations. We have considered all of the Appellant’s remaining arguments both in the Appeal and Reply Briefs and have found them unpersuasive. Accordingly, we find no error in the Examiner’s determinations that the subject matter of claims 1 and 7 — as well as claims 2, 3, 5, 6, 8, 9, 11, and 12 depending therefrom — are directed to an abstract idea and do not present an “inventive concept.” Accordingly, we sustain the Examiner’s determination that they are directed to ineligible subject matter under 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x. 991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s remaining arguments and have found them unpersuasive. Accordingly, because the asserted claims of the patents in suit are directed to an abstract idea and do not present an ‘inventive concept,’ we hold that they are directed to ineligible subject matter under 35 U.S.C. § 101.”). 8 Appeal 2017-008565 Application 13/942,651 The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 112(a), first paragraph, as failing to comply with the written description. The Examiner’s position is that claim 1 recites a “payment processing computer system that has a central processing unit, a memory, and a storage system” and claims 1 and 7 recite “executing there from uses a substitution algorithm without an encryption key” which, according to the Examiner, the Specification does not disclose. The Examiner finds the same for the claim limitations “using the sequence number by the central processing unit for retrieving of the encrypted bankcard data from the storage system” (claims 2 and 8) and “storing not the original bankcard data in the central processing unit after the payment transaction processing and thereby discarding by the central processing unit the original bankcard data after completion of the payment transaction processing” (claims 5 and 11). Final Act. 8—9. The Appellant’s response does not adequately address the Examiner’s position. The Appellant appears to rely on common knowledge. E.g., “POSITA [] knows that data is stored securely in storage systems of the computer system using the science of encryption using an encryption algorithm and an encryption key.” App. Br. 20, see also id. at 22 (“[A]ll that knowledge related to use of computers and computer networks and the operation of them except as claimed in the claims is in the purview of a person of ordinary skill in the art related to computers and computer systems and is being relied upon in the [Specification.”). But the Examiner’s concern is over particular limitations, not on the general use of computers and encrypting data. For example, the Examiner raised a concern over whether there was adequate written descriptive support in the Specification for “executing there from uses a substitution algorithm without an 9 Appeal 2017-008565 Application 13/942,651 encryption key” (claims 1 and 7), not encryption per se. The Appellant does not point to any disclosure in the Specification to overcome that concern. The Appellant states that “[t]hese specific limitations are indeed find [sic] support in the [Specification to a POSITA.” App. Br. 21. But nothing from the Specification is cited. The question of written descriptive support under 35 U.S.C. § 112 is a question of fact. In that regard, the Appellant has not come forward with facts and/or evidence to rebut the Examiner’s position. Without more by way of facts and/or evidence, a general argument that a person of ordinary skill in the art would have known all that is claimed is not an adequate rebuttal. It amounts to attorney argument. As such, the argument is unpersuasive as to error in the Examiner’s position. Accordingly, the rejection is sustained. The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. According to the Examiner, the claim limitation “that is separate from databases that store customer data” (claims 1 and 7) “is unclear to one of the ordinary skill what the difference is between bankcard data and customer data.” Final Act. 10. According to the Examiner, it is unclear .. . because bankcard data [can] also belong to a customer, [in which case] bankcard data also is a customer data. (In re Zletz, 13 USPQ2d 1320 (Fed. Cir. 1989)).” Final Act. 10. The claim limitation at issue is “storing in the storage system by the central processing unit of the computer system the encrypted bankcard data referenced by the sequence number in a database that is separate from databases that store customer data.” App. Br. 26, Claims App. 10 Appeal 2017-008565 Application 13/942,651 The Appellant argues that it “would be clear to a POSITA[] what the difference is between bankcard data and customer data.” App. Br. 23. We agree. One of ordinary skill in the art would understand the difference between bankcard data and customer data. They are different types of information that describe the bankcard and customer, respectively, notwithstanding bankcard data “can also belong to a customer.” Final Act. 10. The rejection is not sustained. The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Tomko, Franklin and Schneier. The Examiner’s position is that Tomko discloses all that is claimed but for the claim limitations (a) “creating in the central processing unit a sequence number as a unique reference number for the original bankcard data” for which Franklin is relied upon and (b) “the forward logic uses a substitution algorithm without an encryption key” for which Schneier is relied upon. Final Act. 11—12. According to the Examiner, it would have been obvious to one of the ordinary skill in the art before the effective filling date of the claimed invention to modify the Tomko reference with the Franklin reference in order to provide extra data security and.... it would have been obvious to one of the ordinary skill in the art at the time invention was made to modify the combination of Tomko and Franklin references with the known technique of substitution algorithm disclosed by Schneier in order to yield a predictable result. Final Act. 12. The Examiner also finds that 11 Appeal 2017-008565 Application 13/942,651 Tomoko in view of Franklin and further view of Schneier does not explicitly disclose storing data on two separate databases. However, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Therefore, one of the ordinary skill art can store data on two separate database as it involves only routine skill in the art. (In re Dulberg, 129 USPQ 348, (CCPA 1961)). Final Act. 12—13. The Appellant’s only substantive argument is that “the claimed subject matter is directed to solving an entirely different problem [from Tomko and Franklin] related to theft of bankcard data from card-issuing bank’s data storage systems.” App. Br. 25. But the question is not whether the prior art solves a different problem but whether the claimed subject matter would have been obvious to one of ordinary skill in the art given the disclosures of the cited prior art references. After all, the Supreme Court found an error “lay in [the] assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. We have reviewed the remaining arguments (see App. Br. 25) but find them unpersuasive as to error in the rejection. CONCLUSIONS The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. §101 as being directed to non-statutory subject matter is affirmed. 12 Appeal 2017-008565 Application 13/942,651 The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description is affirmed. The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 112 or 35 U.S.C. § 112 (pre-AIA), second paragraph, for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention is reversed. The rejection of claims 1—3, 5—9, 11, and 12 under 35 U.S.C. § 103(a) as being unpatentable over Tomko, Franklin and Schneier is affirmed. DECISION The decision of the Examiner to reject claims 1—3, 5—9, 11, and 12 is affirmed. 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 13 Copy with citationCopy as parenthetical citation