Ex Parte Vasconi et al

Patent Trial and Appeal Board

Aug 15, 2017

13179908 (P.T.A.B. Aug. 15, 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.
13/179,908 07/11/2011 Kevin Vasconi 15245C-000006/US/COA 1430
27572 7590 08/17/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN VASCONI, WILLIAM PENN,
and DAVID MCGUFFIE
Appeal 2016-000316
Application 13/119,90S1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Vasconi et al. (the Appellants) seek our review under 35 U.S.C.
§ 134(a) from the Examiner’s Final Rejection of claims 25, 26, 29, 30, and
45^49. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
1 The Appellants identify Covisint Corporation as the real party in interest.
App. Br. 3.
Appeal 2016-000316
Application 13/179,908
THE INVENTION
Claim 25, reproduced below with bracketed numerals added, is
illustrative of the subject matter on appeal.
25. A method for operating an information exchange system,
comprising:
[1] providing an interface for accessing the information
exchange system, wherein the information exchange system
interconnects two or more computer systems via a data
communication network, each computer system being
controlled by a different business entity;
[2] granting access, via the interface, to data owned by a first
business entity, where access is granted by the first business
entity to a second business entity and the first business entity is
separated and distinct from the second business entity;
[3] receiving, by the interface, a request to access the data
from the second business entity;
[4] authorizing, by the interface, the second business entity
to access the data owned by the first business entity;
[5] granting access, via the interface, to the data to an
individual user, where the access is granted by the second
business entity and the individual user is associated with the
second business entity;
[6] receiving, by the interface, a request to access the data
from the individual user;
[7] authenticating, by the interface, the individual user as
being associated with the second business entity; and
[8] authorizing, by the interface, the individual user to access
the data when authenticated by the information exchange
system, where the data resides in a computer system controlled
by the first business entity and the interface is implemented by
computer-readable instructions executed by a computer
processor.
2
Appeal 2016-000316
Application 13/179,908
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Viets et al. US 6,357,010 B1 Mar. 12, 2002
(“Viets”)
Howard et al. US 6,584,505 B1 June 24, 2003
(“Howard”)
Cornelius et al. US 6,629,081 B1 Sept. 30, 2003
(“Cornelius”)
The following rejection is before us for review:
Claims 25, 26, 29, 30, and 45^49 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Viets, Cornelius, and Howard.
ANALYSIS
The rejection of claims 25, 26, 29, 30, and 45—49 under 35 U.S.C. § 103(a)
as being unpatentable over Viets, Cornelius, and Howard.
Independent claim 25, in limitations [2] and [5] requires “granting
access, via the interface,” to data owned by a first business entity to a second
business entity, and by the second business entity to an individual user,
respectively (App. Br. 17, Claims Appendix). Taken together, these
limitations recite a transitive grant of access from a first entity to a second
and from the second to a third, namely “an individual user.”
The Examiner finds limitation [2] disclosed in Viets at column 3,
line 45 to column 4, line 11 (Final Act. 3) and limitation [5] in Viets at
column 4, lines 12—20 and column 3, lines 33—53 {id. at 4).
We agree with the Appellants that the Examiner has not shown how
Viets discloses limitations [2] and [5] (App. Br. 11—12; Reply Br. 2).
3
Appeal 2016-000316
Application 13/179,908
Viets discloses that a data owner can allow controlled access to
“specified external users,” i.e., Business Partners (Viets col. 3,11. 6—16). A
data owner can use a graphical user interface to grant access to specific data
to selected business partners (Viets col. 8,1. 31 — col. 12,1. 14). We agree
with the Examiner that this disclosure in Viets meets what is claimed in
limitation [2], However, we do not see how, and the Examiner has not
explained how, a Business Partner having been granted access by a data
owner can use the interface to grant access to an individual user (or any
other third entity), as required by limitation [5]. On the contrary, Viets
discloses that a Business Partner’s interaction with the interface is limited to
entering a user ID and password before being presented with a list of
accessible URLs (Viets col. 12,11. 60-64).
In the Answer, the Examiner elaborates:
Viets teaches granting access, via the interface, to data owned
by a first business entity, where access is granted by the first
business entity to a second business entity; (col 3 In 45—col 4
In 11). Note, firstly, that Viets, teaches multiple business
entities (col 1 In 65—col 3 In 15 “corporations” at col 2 In 62,
firms working as partners and allowing access to data thereby).
Secondly, Cornelius teaches the individual user as being
associated with the second business entity, (col 188 In 22—28
“one set of personal information for many websites”; also
col 186 In 10-32, col 156 In 1—34, col 155 In 28—67). Howard
teaches multiple distinct businesses registering as affiliates of
an authentication server (col 5 In 63—col 6 In 22 “each
individual affiliate server can establish its own authentication
requirements”) where each affiliate business has different
authentication requirements.
Ans. 3.
We have carefully reviewed these passages and the Examiner’s
discussion of them. We are unable to discern from these passages what the
4
Appeal 2016-000316
Application 13/179,908
Examiner has identified as disclosing “granting access, via the interface, to
the data to an individual user, where the access is granted by the second
business entity” as required by limitation [5]. The above discussion in the
Answer of Viets disclosing “access is granted by the first business entity to a
second business entity” relates to limitation [2], not limitation [5]. We also
note that the Examiner relies on Cornelius as disclosing limitation [7], not
limitation [5] (Final Act. 4). In any event, the cited disclosure in Cornelius
of “one set of personal information for many websites” (i.e., Single Logon)
does not disclose granting access from one entity to another. The cited
disclosure in Howard of “affiliate business has different authentication
requirements” also does not disclose granting access from one entity to
another. The Examiner’s discussion does not aid us.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claims 25 and 45. For the same reasons, we also do
not sustain the rejection of dependent claims 26, 29, 30, and 46-49. Cf. In
reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are
nonobvious if the independent claims from which they depend are
nonob vious”).
NEW GROUND OF REJECTION
Claims 25, 26, 29, 30, and 45^49 are rejected under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter.
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
5
Appeal 2016-000316
Application 13/179,908
claimed subject matter is judicially-excepted from patent eligibility under
§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.
Taking claim 25 as representative of the claims on appeal, the claimed
subject matter is directed to sharing information. Sharing information is a
fundamental building block of research, not to mention fundamental to
human behavior for, among many goals, to attain knowledge. The abstract
idea category of judicially-excepted subject matter broadly covers building
blocks of human ingenuity, like fundamental economic practices {see Alice).
Information sharing is such a building block and thus properly categorized
as an abstract idea.
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.’” Id. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of information sharing into an inventive concept.
Claim 25 calls for “[a] method for operating an information exchange
system” and recites eight steps, including: (1) providing an interface,
(2) granting access to the data to a “business entity,” (3) receiving a request
to access the data, (4) authorizing access to the data, (5) granting access to
the data to a user associated with the business entity, (6) receiving a request
to access the data from the user, (7) authenticating the user, and
6
Appeal 2016-000316
Application 13/179,908
(8) authorizing the user to access the data. Each of these steps involves
information (“data”). An interface is provided, access to the information is
granted, requested, and authorized by different entities (“a first business
entity,” “a second business entity,” “an individual user”), and a user is
authenticated.
None of these individual steps, viewed “both individually and ‘as an
ordered combination,”’ transforms the nature of the claim into patent-
eligible subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo,
132 S. Ct. at 1297, 1298). Storing, accessing, requesting, and authorizing
access to information are known operations for gathering information and,
thus, do not patentably transform the abstract idea of information sharing
into patent-eligible subject matter. The different entities recited in the
claims reflect real-world contractual agreements. See, e.g., Spec. 14, lines
19—22 (“contractual relationships between people and groups and
organizations”). Regarding the claimed “interface,” the Specification
discloses a conventional web interface. See Spec. 7, line 12 (“interfaces that
are appropriated for an Internet or private virtual network connection”).
Regarding the step of “authenticating,” no details of the authentication are
recited in the claims. The Specification does not disclose a new method or
system for authenticating users. The relevant disclosure in the Specification
merely teaches that “data [are] separated and secured by company and the
owner of the person who is a user [] manages the identification or
authentication of that user and the owner of the data manages the access to
that data” (Spec. 15, lines 12—14). Cf. Prism Techs. LLC v. T-Mobile USA,
Inc., No. 2016-2031, 2017 WL 2705338, at *2 (Fed. Cir. June 23, 2017)
(claimed “authentication server,” “access server,” “Internet Protocol
7
Appeal 2016-000316
Application 13/179,908
network,” “client computer device,” and “database” amounted to
“indisputably generic computer components.”)
Claim 25 calls for “the information exchange system interconnects
two or more computer systems via a data communication network.” But any
general-purpose computer and conventional computer network available at
the time the application was filed would have satisfied these limitations.
The Specification supports that view. See, e.g., Spec. 10, lines 2—3 (“the
Internet or other high performance networks, such as ANX or a VPN
(410)”); Spec. 11, lines 8—10 (“connecting back end legacy systems to
applications of a business to business exchange”).
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at at 2360 (citing Mayo, 132 S. Ct. at 1298).
For the foregoing reasons, we find that claim 25 covers subject matter
that is judicially-excepted from patent eligibility under § 101. The other
independent claim — method claim 45, which parallels claim 25 —
similarly covers subject matter that is judicially-excepted from patent
eligibility under §101. The dependent claims add various information
management schemes that do little to patentably transform the abstract idea
into a patent-eligible application.
Therefore, we enter a new ground of rejection of claims 25, 26, 29,
30, and 45^49 under 35 U.S.C. § 101.
CONCLUSION
The Appellants have shown that the Examiner erred in rejecting
claims 25, 26, 29, 30, and 45^49 under 35 U.S.C. § 103(a).
8
Appeal 2016-000316
Application 13/179,908
Claims 25, 26, 29, 30, and 45^49 are newly rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
DECISION
The decision of the Examiner to reject claims 25, 26, 29, 30, and 45—
49 is reversed.
Claims 25, 26, 29, 30, and 45^49 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).
REVERSED: 37 C.F.R, $ 41,501b)
9