Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Jul 10, 2020

2019002622 (P.T.A.B. Jul. 10, 2020)

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.
15/304,825 10/17/2016 Matthew D GAUBATZ 84546268 6279
22879 7590 07/10/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
BALI, VIKKRAM
ART UNIT PAPER NUMBER
2663
NOTIFICATION DATE DELIVERY MODE
07/10/2020 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW D. GAUBATZ,
STEVEN J. SIMSKE, and ROBERT ULICHNEY
____________

Appeal 2019-002622
Application 15/304,825
Technology Center 2600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Hewlett-Packard Development
Company, L.P. as the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to authentication methods for confirming
that a product is associated with an expected source. Spec. ¶ 1. “For
example, a package may include a barcode, steganographic halftone, grid
code, or other printed image that may include authentication data used to
verify that the package is associated with the expected source. If the
authentication data is found unlikely to be authentic, counterfeiting may be
suspected.” Id.
Claims 1, 6, and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal:
1. A computer system, comprising:
a storage storing a data partition key and an authentication data;
and
a processor in communication with the storage to:
determine partition authentication information related to
partitions of the authentication data by comparing the partitions
to the data partition key to determine a degree of similarity;
determine content authentication information related to
the content of the authentication data, wherein the partition
authentication information and the content authentication
information are independent and of different lengths, and
wherein content authentication information is determined in
portions of data determined to have a higher likelihood of
authenticity based on the degree of similarity associated with
particular portions;
determine a likelihood of authenticity of the authentication
data based on the partition authentication information and the
content authentication information using at least one of an error
rate of the amount of data per partition and a distribution of
Hamming distances of the data partition key and the
authentication data; and
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output binary information related to the likelihood of
authenticity based on a threshold.
Appeal Br. 14 (Claims App.).
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 4–8.
OPINION
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the U.S. Supreme Court
has long interpreted § 101 to “contain[] an important implicit exception:
Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012) “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
step in this analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id.
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (id.
at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental
processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined
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that the claims are directed to a patent-ineligible concept, the second step of
the analysis requires consideration of 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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 78, 79). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. at 221 (alterations in original) (quoting
Mayo, 566 U.S. at 77). In other words, the claims must contain an
“inventive concept,” or some element or combination of elements “sufficient
to ensure that the patent in practice amounts to significantly more than a
patent upon the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566
U.S. at 72–73). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
at 221.
In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 “All
USPTO personnel are, as a matter of internal agency management, expected

2 In October 2019, in response to received public comments, the PTO issued
a further memorandum clarifying the Revised Guidance. USPTO
Memorandum, October 2019 Update: Subject Matter Eligibility (Oct. 17,
2019), available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“October 2019 Update”).
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to follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Consistent with that guidance,3 we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as fundamental economic
practices, or mental processes) (“Step 2A, Prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong 2”).4
See Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then (under “Step
2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, and conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.

3 Our reviewing court has explained that the Revised Guidance “cannot
modify or supplant the Supreme Court’s law regarding patent eligibility, or
[our reviewing court’s] interpretation and application thereof.” In re Rudy,
956 F.3d 1379, 1383 (Fed. Cir. 2020). Our decision is based upon
applicable statutory authority and precedent of the United States Supreme
Court and Court of Appeals for the Federal Circuit and applies the analytical
framework set forth in the Revised Guidance in a manner consistent with
authority and precedent.
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (Section
III.A.2).
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See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determines that the claims are directed to an abstract
idea. Final Act. 7. Specifically, the Examiner finds that the claims recite
analyzing data using mathematical formulas and outputting results of the
analysis, as well as mental processes. Id.; Ans. 7–8. The Examiner further
determines that the claims do not include additional elements that are
sufficient to amount to significantly more than the abstract idea. Final
Act. 7–8; Ans. 8. For example, the Examiner finds that the claims recite
generic computing components and do not reflect an improvement in
computers or a technical field. Final Act. 7–8.
Appellant argues that the claims are not directed to an abstract idea
because they are directed to an improvement in computer-related
technology, specifically providing “an additional level of security designed
around a payload . . . of individual data-carrying partitions of an
authentication string” without preempting all ways of doing so. Reply
Br. 11; Appeal Br. 11. Appellant further argues that the claims amount to
significantly more than an abstract idea because they define improvements
to computer functionality and “describe a specific solution to authentication
problems when operating under limited authentication space by providing a
natural and integrated multi-factor approach to authentication.” Reply
Br. 20–21; see Appeal Br. 8, 11. According to Appellant, the Examiner’s
determinations are conclusory and without adequate support, and the
Examiner has not considered the claims as a whole. Appeal Br. 5; Reply
Br. 22.
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Step 2A, Prong 1
We agree with the Examiner that the claims recite a judicial
exception, i.e., an abstract idea. See Ans. 8. In particular, we agree that the
claims recite mental processes. See id.
For example, independent claim 1 recites:
determine partition authentication information related to
partitions of the authentication data by comparing the partitions
to the data partition key to determine a degree of similarity;
determine content authentication information related to
the content of the authentication data, wherein the partition
authentication information and the content authentication
information are independent and of different lengths, and
wherein content authentication information is determined in
portions of data determined to have a higher likelihood of
authenticity based on the degree of similarity associated with
particular portions;
determine a likelihood of authenticity of the authentication
data based on the partition authentication information and the
content authentication information using at least one of an error
rate of the amount of data per partition and a distribution of
Hamming distances of the data partition key and the
authentication data
Under their broadest reasonable interpretation, these “determine” limitations
cover performance of the limitations in the mind (as do corresponding
limitations in independent claims 6 and 12), but for the recitation of generic
components. That is, other than the “computer system,” “storage,” and
“processor in communication with the storage” recited in claim 1 (and
“processor reading and executing instructions from a machine-readable
storage medium” recited in claim 6, and “machine-readable non-transitory
storage medium comprising instructions executable by a processor” recited
in claim 12) as performing the recited steps, nothing in the claims precludes
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those steps from being performed in the human mind. For example, but for
the recitation of the “computer system,” “storage,” and “processor,” claim 1
encompasses mentally determining the partition authentication information
by mentally comparing the partitions to the data partition key to mentally
determine a degree of similarity; mentally determining the content
authentication information independently of the partition authentication
information determination, in portions of data having a higher likelihood of
authenticity based on the degree of similarity associated with particular
portions; and mentally determining a likelihood of authenticity of the
authentication data based on the partition authentication information and the
content authentication information using an error rate of the amount of data
per partition or a distribution of Hamming distances of the data partition key
and the authentication data.
The October 2019 Update cautions that in evaluating patentability, we
should keep in mind that “[c]laims do not recite a mental process when they
do not contain limitations that can practically be performed in the human
mind, for instance when the human mind is not equipped to perform the
claim limitations.” October 2019 Update 7. “In contrast,” however, “claims
do recite a mental process when they contain limitations that can practically
be performed in the human mind, including for example, observations,
evaluations, judgments, and opinions.” Id. at 7–8. While Appellant argues
that certain steps “cannot be performed mentally owing to the level of
analysis and processing that [they] require[],” Appellant provides no
evidence or explanation as to why those steps cannot be performed in the
mind. Reply Br. 14–17. For example, Appellant argues that the step of
“determin[ing] partition authentication information related to partitions of
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the authentication data by comparing the partitions to the data partition key
to determine a degree of similarity” cannot be performed mentally. Id. at
14–15. However, on the present record, it appears that this limitation
encompasses comparisons which could be performed mentally. See
Spec. ¶¶ 23–24, Fig. 3. Appellant also provides portions of the Specification
in support of the argument (Reply Br. 15–16), but these portions of the
Specification do not support a finding that the limitations could not be
practically performed in the human mind. Paragraph 26 of the Specification
notes that information “may be used in any suitable manner and in any
suitable combination to determine the likelihood of authenticity.” Spec. ¶ 26
(quoted at Reply Br. 16). Additionally, while Appellant cites a paragraph
relating to the distribution of Hamming distances, we note that this
calculation is one alternative to be used in the limitation relating to the
determination of a likelihood of authenticity. See Reply Br. 16 (quoting
Spec. ¶ 38). Thus, even if we found that the calculation of such a
distribution could not be practically performed in the human mind, the
limitation as a whole might still be performed mentally. We agree with the
Examiner, therefore, that these limitations recite mental processes. See
Answer 8.
Accordingly, the claims recite mental processes and, thus, an abstract
idea.
Step 2A, Prong 2
Because the claims recite an abstract idea, we next look to whether the
claims recite additional elements that integrate the abstract idea into a
practical application. Revised Guidance, 84 Fed. Reg. at 54. Claim
limitations that indicate integration into a practical application include
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additional elements that reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field. Id. at
55. When a claim recites a judicial exception and fails to integrate the
judicial exception into a practical application, the claim is “directed to” the
judicial exception. Id. at 51.
We determine that the additional limitations recited in the claims do
not integrate the recited judicial exception into a practical application. For
example, claim 1 additionally recites “output[ting] binary information
related to the likelihood of authenticity based on a threshold.” This “output”
step is recited at a high level of generality (i.e., as general means of
outputting a result based on the likelihood of authenticity determination) and
amounts to insignificant post-solution activity. See Revised Guidance,
84 Fed. Reg. at 55; MPEP § 2106.05(g).
We agree with the Examiner that the claims otherwise merely recite
generic computer components that similarly fail to integrate the recited
abstract idea into a practical application. See Final Act. 8.5 For example,

5 Appellant contends that the Examiner has not provided “support for the
assertion that the claim elements are a recitation of generic conventional
computer functions,” citing the PTO’s Berkheimer Memorandum, which
clarifies that an examiner’s conclusion that an element represents well-
understood, routine, conventional activity must be based upon a factual
determination supported in writing. Reply Br. 21–22; see “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (Apr. 19,
2018), https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.pdf. Appellant’s contention that the Examiner has not
provided adequate support under Berkheimer is inapposite because the
Examiner has not made a finding that any claim elements are well-
understood, routine, and conventional. We, however, make such a finding
as discussed below in Step 2B.
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claim 1 recites a “computer system,” “storage,” and “processor.” These
limitations are recited at a high level of generality, i.e., as generic
components performing generic computer functions of computer processing,
data storage (i.e., storing the data partition key and authentication data), and
communication. These generic limitations merely apply the abstract idea
using generic computer components. See Revised Guidance, 84 Fed. Reg.
at 55; MPEP § 2106.05(f). The claim limitations do not include any
particular machine that is integral to the claim. See Revised Guidance,
84 Fed. Reg. at 55; MPEP § 2106.05(b).
Appellant argues that the claims are not directed to an abstract idea,
but rather to “a specific improvement to the technical field of product
authentication” (Appeal Br. 10), providing “an additional level of security
designed around a payload . . . of individual data-carrying partitions of an
authentication string” (Reply Br. 11). We are unpersuaded by Appellant’s
argument because the claims do not reflect a technological improvement in
addition to the abstract idea. As discussed above, the recited “computer
system,” “storage,” and “processor” are merely generic computer
components performing generic functions of computer processing, data
storage, and communication. The additionally recited elements “do not
require an arguably inventive set of components or methods, such as
measurement devices or techniques, that would generate new data. They do
not invoke any assertedly inventive programming.” Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). Although Appellant
argues that “the claimed techniques evaluate the degree to which the
partitions representing the data express the appropriate amount of data,
thereby creating an additional channel of information” (Reply Br. 11), this
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“additional channel of information” results from the step of “determin[ing]
partition authentication information,” which, as discussed in the above
analysis under Step 2A, Prong 1, is a mental process and, thus, an abstract
idea. The claims simply recite the abstract idea with the benefit of generic
computer technology. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (finding that automation of an abstract idea and
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible”). Thus, the
claims do not reflect an improvement in computer functionality or to any
other technology or technical field. See Revised Guidance, 84 Fed. Reg. at
55; MPEP § 2106.05(a).
Even in combination, the additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea. Accordingly, we agree
with the Examiner that the claims are directed to an abstract idea.
Step 2B
Turning to Step 2B of the Revised Guidance, we determine that there
are no specific limitations beyond the judicial exception, i.e., the abstract
idea, that are not “well-understood, routine, and conventional” in the field.
See Alice, 573 U.S. at 225. For example, the “computer system,” “storage,”
and “processor” recited in claim 1 are mere recitations of generic computer
structures performing generic computer functions that are well-understood,
routine, and conventional, and thus do not amount to significantly more than
the abstract idea. See Spec. ¶¶ 13 (“The computing system 100 may include
a processor 101 and a machine-readable storage medium 102.”), 14 (“The
processor 101 may be a central processing unit (CPU), a semiconductor-
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based microprocessor, or any other device suitable for retrieval and
execution of instructions.”), 15 (disclosing that “machine-readable storage
medium 102 may be any suitable machine readable medium” and listing
various examples). Those additional elements relate to no more than
implementation of the abstract idea using generic computer components and
do not provide an inventive concept to transform the abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 223–24.
In Step 2B, we further reevaluate the extra-solution activity of
“output[ting] binary information related to the likelihood of authenticity
based on a threshold.” See Revised Guidance, 84 Fed. Reg. at 56. Although
Appellant argues that “the claims are directed to a tangible termination
(‘yes’, ‘no’) of whether a product is authentic or not” (Reply Br. 18
(emphasis omitted)), we find nothing unconventional in this step of
outputting a result based on the likelihood of authenticity determination.
Although Appellant argues that the claims amount to significantly
more than the abstract idea by “describ[ing] a specific solution to
authentication problems when operating under limited authentication space
by providing a natural and integrated multi-factor approach to
authentication” (Reply Br. 21), Appellant has not shown that the claims on
appeal add any specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field. The “multi-factor
approach to authentication” results from the “determine” steps, which, as
discussed above in Step 2A, Prong 1, recite an abstract idea. Appellant also
provides no evidence of how the ordered combination is unconventional or
amounts to significantly more than the abstract idea to which the claims are
otherwise directed.
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Appellant further argues that the claimed features are recited in a
“high degree of detail” (Reply Br. 16) and that the claims do not “preempt
all ways of enabling an additional level of security designed around the
payload . . . of individual data-carrying partitions of an authentication string”
(Appeal Br. 11). This argument is unavailing, as the absence of complete
preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”); Ultramercial, Inc. v.
Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court
has stated that, even if a claim does not wholly pre-empt an abstract idea, it
still will not be limited meaningfully if it contains only insignificant or token
pre- or post-solution activity—such as identifying a relevant audience, a
category of use, field of use, or technological environment.”) (citations
omitted), vacated and remanded, WildTangent, Inc. v. Ultramercial, LLC,
573 U.S. 942 (2014) (remanding for further consideration in light of Alice).
Thus, even if the claims do not preempt the abstract idea, that alone is
insufficient to render the claims patent-eligible.
While Appellant argues that the Examiner’s determinations are
conclusory and that the Examiner has not considered the claims as a whole
(Appeal Br. 5), we have reviewed the record and, considering the claim
elements individually and as an ordered combination, we agree with the
Examiner that there are no meaningful claim limitations that represent
sufficiently inventive concepts to transform the nature of the claims into a
patent-eligible application of the abstract idea.
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For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–20 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is
affirmed.
DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
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

Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20