Ex Parte Singhal

Patent Trial and Appeal Board

Dec 27, 2017

13942651 (P.T.A.B. Dec. 27, 2017)

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.
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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”).
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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?
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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
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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
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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
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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
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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.”).
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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
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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.
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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
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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.
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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
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