Gail-Joon Ahn

Patent Trials and Appeals Board

Jul 18, 2019

14168240 - (D) (P.T.A.B. Jul. 18, 2019)

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.
14/168,240 01/30/2014 Gail-Joon Ahn AzTE0113 5935
84646 7590 07/18/2019
Proactive Patents LLC
955 Garden Park Drive
Ste 230
Allen, TX 75013
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
eofficeaction@appcoll.com
mzarinelli@proactivepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GAIL-JOON AHN
____________________

Appeal 2018-004377
Application 14/168,2401
Technology Center 3600
____________________

Before HUNG H. BUI, ADAM J. PYONIN, and MICHAEL M. BARRY,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3–8, 10–15 and 17–20, which are all
the claims pending in the application. App. Br. 60–64 (Claims App.). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 According to Appellant, Open Invention Network LLC is the real party in
interest. App. Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed October 20, 2017
(“App. Br.”); Reply Brief filed March 22, 2018 (“Reply Br.”); Examiner’s
Answer mailed February 21, 2018 (“Ans.”); Final Office Action mailed July
19, 2017 (“Final Act.”); and original Specification filed January 30, 2014
(“Spec.”).
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STATEMENT OF THE CASE
Existing user-centric identity management systems enable “users to
maintain control over their own digital identities,” but “do not provide
adequate user awareness of the consequences of their behavior and other
relevant information.” Spec. ¶¶ 9, 38.
Appellant’s invention seeks to provide methods for “managing an
online user transaction and applying known user information to a risk
analysis procedure prior to conducting the transaction.” Spec. ¶ 2.
According to Appellant, by utilizing “ontology-based evaluation operations
and privacy preference evaluation operations” where potential risks are
evaluated by an ontology server that calculates risks in releasing the
identified attributes (e.g., user information, billing information, product
information, etc.) before submitting the identity information in an online
transaction, Appellant’s invention can “assist the user with identifying a
relative degree of risk of exposure when performing an identity disclosure.”
Spec. ¶¶ 39, 61.
Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the
claimed subject matter:
1. A method comprising:
accessing an online service hosted by a service provider
server from a user device;
receiving a product selection at the service provider
server;
creating a request for user identity attributes;
transmitting the request for user identity attributes to an
identity provider server;
identifying at least one class associated with the user
identity attributes stored in the identity provider server;
receiving an updated set of user identity attributes
responsive to the transmitted request;
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evaluating the user identity attributes to identify at least
one relevant attribute that satisfies the request;
transmitting the user identity attributes to an ontology
server configured to calculate at least one risk factor;
evaluating the at least one risk factor associated with
releasing the at least one relevant attribute by determining a
numerical risk score based on a numerical personality risk value
assigned to the at least one class; and
releasing the at least one relevant attribute when the at
least one risk factor is below a threshold risk level.

App. Br. 60 (Claims App.).

EXAMINER’S REJECTION
Claims 1, 3–8, 10–15 and 17–20 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 7–10.

DISCUSSION
In support of the § 101 rejection of claims 1, 3–8, 10–15 and 17–20,
the Examiner determines the claims are directed to “transaction
management, a business plan enhanced by common generic hardware, which
is a fundamental economic practice” and includes limitations that are similar
to (1) concepts of generating menus on a computer as discussed in
Ameranth; (2) concepts of collecting information, analyzing it, and
displaying certain results of the collection and analysis as discussed in
Electric Power Group; and (3) concepts of organizing information through
mathematical correlations as discussed in Digitech. Final Act. 8–9; see
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (citation
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omitted) (holding claims directed to “generating a second menu from a first
menu and sending the second menu to another location” are patent-ineligible
under § 101); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014) (holding claims directed to “a process of
organizing information through mathematical correlations” are patent-
ineligible under § 101); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (holding that claims directed to “gathering and
analyzing information of a specified content, then displaying the results” are
patent-ineligible under § 101).
The Examiner also determines the claims fail to amount to
“significantly more than the judicial exception” because the additional
elements recited (e.g., receiver, user device, processor, and transmitter) (1)
are generic computer elements that perform generic computer functions that
are “well-understood, routine, and conventional activities previously known
to the pertinent industry”; and (2) do not improve the functioning of a
computer or improve any other technology. Final Act. 9–10; Ans. 6–11.
Appellant argues independent claims 1, 8, and 15 with the same
arguments and supporting authorities (App. Br. 11–58). We select claim 1
as representative; thus, claims 3–7, 10–14, and 17–20 stand or fall with
claim 1 (see 37 C.F.R. § 41.37(c)(1)(iv)).
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the
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
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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. (citation omitted). 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-one 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); Enfish, 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 has adopted the common law, analogy-driven
approach (i.e., the “analogous claim” test) to determine whether a claim is
directed to an abstract idea, and 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 Elec.
Power Grp., 830 F.3d at 1353–54).
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The Office recently published revised guidance interpreting governing
case law and establishing a framework to govern all patent-eligibility
analysis under Alice and § 101 effective as of January 7, 2019. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57
(Jan. 7, 2019) (“Revised Guidance”).
Revised Guidance
Under the Revised Guidance, we first look under Alice step 1 or “Step
2A” to whether:
(1) Prong One: the claim recites any judicial exceptions,
including certain groupings of abstract ideas (i.e., [i]
mathematical concepts, [ii] mental processes, or [iii] certain
methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or
relationships or interactions between people); and

(2) Prong Two: if a judicial exception is recited, whether the
claim recites additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).3
See Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong
One (Judicial Exception) and Prong Two (Integration into a Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 (i.e.,
Step 2B of the Revised Guidance). See 2019 84 Fed. Reg. at 56; Alice, 573
U.S. at 217–18. Specifically, we look to whether the claim:

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Turning to the first step of the Alice inquiry, Appellant argues the
claims are not directed to an abstract idea because the Examiner (1) “does
not consider the operations and the results included in the various
operations” and (2) “result[s] of the claims [are] a decision to release
sensitive ‘attribute’ information, a tangible and utility-based result stemming
from calculations corresponding to risk.” App. Br. 13, 14; see also Reply
Br. 2–3.
Appellant’s arguments are unpersuasive. Contrary to Appellant’s
arguments, Appellant’s Specification and claims describe evaluating risk
factors associated with releasing at least one attribute to enable a user to “be
informed of the risks involved in disclosing their identity attributes when
online.” Spec. ¶ 38. For example, Appellant’s representative claim 1 defines
a computer-implemented method comprising (numbering added):
[1] accessing an online service hosted by a service
provider server from a user device;
[2] receiving a product selection at the service provider
server;
[3] creating a request for user identity attributes;
[4] transmitting the request for user identity attributes
to an identity provider server;
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[5] identifying at least one class associated with the
user identity attributes stored in the identity provider server;
[6] receiving an updated set of user identity attributes
responsive to the transmitted request;
[7] evaluating the user identity attributes to identify at
least one relevant attribute that satisfies the request;
[8] transmitting the user identity attributes to an
ontology server configured to calculate at least one risk factor;
[9] evaluating the at least one risk factor associated
with releasing the at least one relevant attribute by determining a
numerical risk score based on a numerical personality risk value
assigned to the at least one class; and
[10] releasing the at least one relevant attribute when the
at least one risk factor is below a threshold risk level.

App. Br. 60 (Claims App.).
As correctly recognized by the Examiner (see Ans. 6–7), steps (1)–(7)
and (9)–(10) of Appellant’s representative claim 1 are descriptive of
operations that would ordinarily take place between a user (purchaser) and a
service provider during an online transaction.
For example, limitations (1)–(2) characterize an online transaction
where a purchaser is browsing to purchase, e.g., a product. After selecting
the product, the purchaser is required to input identity attributes to finish the
check-out and, in doing so, the person determines which identity attributes
are required in steps (3)–(7). Lastly, the purchaser determines whether there
is risk associated with giving such identity attributes in steps (9)–(10). In
addition, step (8) encompasses consulting an expert for numerical data.
These are steps that online purchasers go through when conducting a
business transaction online, and thus, these steps are nothing more than a
series of “fundamental economic practices and methods of organizing
human activities” identified in the Revised Guidance, and thus an abstract
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idea. See Alice, 573 U.S. at 217–19 (intermediated settlement of traded or
exchanged financial obligations to mitigate the risk that one party will not
perform); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010) (risk
hedging); buySAFE Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir.
2014) (creating a contractual relationship and guaranteeing transactions);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
(citations omitted) (“[the] concept of ‘offer based pricing’ is similar to other
‘fundamental economic concepts’ found to be abstract ideas by the Supreme
Court and this court.”).
Alternatively, steps (1)–(10), highlighted with steps (7) “evaluating
the user identity attributes to identify at least one relevant attribute that
satisfies the request” and (9) “evaluating the at least one risk factor
associated with releasing the at least one relevant attribute by determining a
numerical risk score based on a numerical personality risk value assigned to
the at least one class,” describe a series of “mental processes” that could be
performed in the human mind or by a human using a pen and paper—a
subject matter that falls within the three types of abstract ideas identified by
Revised Guidance.
For example, steps of evaluating attributes and risk factors associated
with selecting a particular attribute based on risk score can be performed by
a person who is conducting online transaction to determine, e.g., which
credit card to use in view of the transaction type. Therefore, we conclude
steps (1)–(10) recite “mental processes” identified in the Revised Guidance
and, thus, claim 1 recites an abstract idea. See Revised Guidance (Revised
Step 2A, Prong One), 84 Fed. Reg. at 52, 54.
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Thus, under Step 2A, Prong One, we agree with the Examiner that the
claims recite a judicial exception, i.e., an abstract idea.
Step 2A, Prong Two (Integration into a Practical Application)
Under Prong Two of the Revised Guidance, we must determine if the
claims integrate the judicial exception into a practical application. That is,
we identify any additional claim limitations beyond the judicial exception
and evaluate the additional limitations individually and in combination for
determining whether these limitations integrate the judicial exception into a
practical application.
However, we discern no additional elements (or combination of
elements) recited in Appellant’s claims 1, 8, and 15 (e.g., one or more server
systems and mobile device) that integrate the judicial exceptions into a
practical application. See Revised Guidance, Revised Step 2A, Prong Two.
For example, Appellant’s claimed additional elements (e.g., a user device
and one or more server systems, which inherently include a processor,
transmitter, receiver) recited in claim 1 do not: (1) improve the functioning
of a computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the 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 §§ 2106.05(a)–(c), (e)–(h).
Appellant argues that claim 1 “provides a particular solution to a
technological problem” by improving computer-related technology through
(1) computer-authorized security; (2) “risk control features” that “provides
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data organization in an elevated and unprecedented model not found in
conventional user attribute selection and risk assessment approaches”; and
(3) consolidating attributes from various different places when determining
risk factors instead of identifying attributes from various different places to
assess risk factors. App. Br. 14, 20, 22; Reply Br. 3–5.
As recognized by the Examiner (see Ans. 9), the claim is focused on
“collecting information, analyzing it, and releasing information,” rather than
improving computer-related security. Further, Appellant’s claim 1 does not
recite any feature necessary to improve any computer-related technology. In
particular, Appellant’s method of “evaluating the at least one risk factor
associated with releasing the at least one relevant attribute by determining a
numerical risk score based on a numerical personality risk value assigned to
the at least one class” does not provide a technical solution to a technical
problem. The focus of Appellant’s invention is not to improve the
performance of computers or any underlying technology, but to use
computers as a tool to gather “a numerical risk score based on a numerical
personality risk value assigned to the at least one class” so as to provide risk
analysis of user attributes to the user (see Spec. ¶¶ 60–62). That is, while
Appellant’s methods may improve the user’s process of making an informed
decision about releasing user attributes, it is not an improvement to another
technology or technical field.
Thus, under Step 2A, Prong Two, we determine the judicial exception
is not integrated into a practical application under the Revised Guidance.
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Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
In the second step of the Alice inquiry, Appellant argues claims 1, 3–
8, 10–15 and 17–20 recite “significantly more” than the alleged abstract idea
because (1) like the claims in Diamond v. Diehr, 450 U.S. 175 (1981),
Appellant’s claims “improve an existing technological process and relate to
conventional industry, in this case, online user submitted actions” (App. Br.
14); and (2) like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014), Appellant’s claims are “necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks.” App. Br. 13–14, 22–23.
Appellant’s arguments are not persuasive because (1) Appellant has
not demonstrated or directed us to any such “technical improvements” and
(2) Appellant has also not demonstrated the claimed generic processors,
servers, receivers, and transmitter are able, alone or in combination, to
perform functions that are not merely generic, as the claims in DDR. See
DDR Holdings, 773 F.3d at 1258. As discussed supra, Appellant’s claims
merely recite computation steps performable by conventional computers, or
even manually by persons performing online transactions: steps that are
well-understood, routine, and conventional.
As previously discussed, Appellant’s Specification and claims
describe techniques that provide numerical risk value of user attributes
enabling the evaluation of releasing of the relevant attributes to complete an
online transaction—a fundamental economic practice long prevalent in our
system of commerce. See Spec. ¶¶ 60–62. Appellant’s evaluating technique
based on received numerical risk score does not provide a technical solution
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to a technical problem unique to the Internet, i.e., a “solution . . . necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” DDR, 773 F.3d at 1257.
Rather, the solution proposed by Appellant is a business solution that utilizes
a general purpose computer rather than a technological solution.
We find no element or combination of elements recited in Appellant’s
claims 1, 8, and 15 that contain any “inventive concept” or add anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. 208 at 221. Nor do the claims provide any
technical solution to a technical problem as required by DDR Holdings or
entail an unconventional technological solution to a technological problem
as required by Amdocs. Moreover, Appellant has not shown any specific
limitation in claims 1, 8, and 15 beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field. See MPEP
§ 2106.05(d).
Because Appellant’s independent claims 1, 8, and 15 are directed to a
patent-ineligible abstract concept and do not recite an “inventive concept”
by providing a solution to a technical problem under the second step of the
Alice analysis, we sustain the Examiner’s § 101 rejection of independent
claims 1, 8, and 15, and their dependent claims 3–7, 10–14, and 17–20 not
separately argued.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1, 3–8, 10–15 and 17–20 under
35 U.S.C. § 101.
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DECISION
As such, we affirm the Examiner’s rejection of claims 1, 3–8, 10–15
and 17–20 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED