Marc Joye

Patent Trials and Appeals Board

Dec 27, 2019

14735099 - (D) (P.T.A.B. Dec. 27, 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.
14/735,099 06/09/2015 Marc JOYE PF130143 1287
24498 7590 12/27/2019
Vincent E. Duffy
THOMSON Licensing
19868 Collins Road
CANYON COUNTRY, CA 91351
EXAMINER
ALMAMUN, ABDULLAH
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
Patricia.Verlangieri@InterDigital.com
mike.pugel@eurekovation.com
vincent.duffy@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC JOYE
Appeal 2019-000021
Application 14/735,099
Technology Center 2400
Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) from the
Examiner’s non-final rejection of claims 1–11. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.

1 Appellant identifies the real party in interest as Thomson Licensing.
Appeal Brief 3, filed May 14, 2018 (“Appeal Br.”).
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BACKGROUND
This patent application concerns password authentication. See
Specification 2:27–4:20, filed June 9, 2015 (“Spec.”). Claims 1, 5, 6, 10, and
11 are independent. Claims 5 and 10 illustrate the claimed subject matter:
5. A method for processing a password entry comprising:
receiving by an interface circuit a password entry
comprising a string of characters;
generating by a processor circuit L sub-entries from the
password entry, wherein each sub-entry is an L-1 character string
equal to the string of characters less a different character; and
generating by the processor circuit password verifiers by
respectively using a function on each sub-entry.
10. A method for authentication of a password entry input by
a user comprising:
obtaining by a processor circuit N obtained password
verifiers representative of the password entry, each obtained
password verifier generated from a N-1 character string equal to
a N-character password less a different character;
comparing by the processor circuit the obtained password
verifiers with M stored password verifiers, each stored password
verifier generated from a M-1 character string equal to a M-
character password less a different character; and
authenticating by the processor circuit the password entry
upon determination that at least one obtained password verifier
matches a stored password verifier.
Appeal Br. 21–22, 23.

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REJECTION
Claims 35 U.S.C. §
1–11 101

DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments. We disagree with Appellant that the Examiner erred in rejecting
claims 1–5 and 11 under § 101. For these claims, as consistent with the
discussion below, we adopt the Examiner’s reasoning, findings, and
conclusions on pages 2–9 of the Non-Final Office Action mailed December
22, 2017 (“Non-Final Act.”) and pages 3–7 and 9–14 of the Examiner’s
Answer mailed July 25, 2018 (“Ans.”). But we agree with Appellant that the
Examiner erred in rejecting claims 6–10 under § 101. We address the
Examiner’s rejection of claims 1–11 under § 101 below.
Section 101 Rejection
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“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)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
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[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
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Claim 5
The Revised Guidance explains that the abstract idea exception
includes “mental processes,” that is, acts that people can perform in their
minds or using pen and paper. See Revised Guidance, 84 Fed. Reg. at 52 &
nn. 14–15. The Examiner determined that claim 5 recites subject matter that
falls within this abstract idea grouping. See, e.g., Non-Final Act. 8
(determining that claim 5 is directed to an abstract idea because the claim is
drawn to collecting and analyzing information like the patent-ineligible
claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016)); see also USPTO, October 2019 Update: Subject Matter
Eligibility at 7, https://www.uspto.gov/sites/default/files/documents
/peg_oct_2019_update.pdf (“October 2019 Update”) (explaining that an
example of a claim that recites mental processes is “a claim to ‘collecting
information, analyzing it, and displaying certain results of the collection and
analysis,’ where the data analysis steps are recited at a high level of
generality such that they could practically be performed in the human mind,
Electric Power Group, LLC v. Alstom, S.A.”).
We agree. Claim 5 recites (1) receiving a password entry comprising a
string of characters; (2) generating L sub-entries from the password entry,
each sub-entry an L-1 character string equal to the string of characters less a
different character; and (3) generating password verifiers by using a function
on each sub-entry. See Appeal Br. 21–22. People can perform each of these
steps in their minds or using pen and paper. People can receive a password
entry comprising a string of characters by, for example, reading the
password entry from a database. Cf. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (determining that a limitation that
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“requires ‘obtaining information about other transactions that have utilized
an Internet address that is identified with the [ ] credit card transaction’—can
be performed by a human who simply reads records of Internet credit card
transactions from a preexisting database” (alteration in original)); Elec.
Power Grp., 830 F.3d at 1353 (“Accordingly, we have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”).
Even if this step did not encompass mental processes, the step would not
make claim 5 patent eligible because the step merely collects data. See
CyberSource, 654 F.3d at 1372 (“[E]ven if some physical steps are required
to obtain information from the database (e.g., entering a query via a
keyboard, clicking a mouse), such data-gathering steps cannot alone confer
patentability.”).
As for the generating L sub-entries limitation, this limitation recites
generating L sub-entries from the password entry so that “each sub-entry is
an L-1 character string equal to the string of characters less a different
character.” Appeal Br. 21. This limitation encompasses generating sub-
entries by omitting a different character from the password entry for each
sub-entry. See Spec. 6:14–7:3, 7:10–12 (disclosing exemplary sub-entries).
People can generate these sub-entries by, for instance, writing down a list of
sub-entries that each omits a different character from the password entry or
mentally identifying these sub-entries. See CyberSource, 654 F.3d at 1372
(determining that “a person may ‘construct[ ] a map of credit card numbers’
as required by step (b) by writing down a list of credit card transactions
made from a particular IP address” (alteration in original)); Elec. Power
Grp., 830 F.3d at 1354 (“In a similar vein, we have treated analyzing
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information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.”).
Finally, for the generating password verifiers limitation, this limitation
recites generating password verifiers “by respectively using a function on
each sub-entry” but does not specify the function that the claimed method
uses. Appeal Br. 22. The written description describes various exemplary
functions, see, e.g., Spec. 5:20–6:13, but does not limit the claimed method
to a particular function. This limitation is thus so broadly drawn that it
encompasses people using functions that they can solve in their minds or
using pen and paper to generate password verifiers. See CyberSource, 654
F.3d at 1373 (determining that a claim limitation “is so broadly worded” that
the limitation “encompasses literally any method” for performing the
limitation, including “even logical reasoning that can be performed entirely
in the human mind”); Elec. Power Grp., 830 F.3d at 1354.
Because each of the limitations recited in claim 5 encompasses an act
that people can perform in their minds or using pen and paper, claim 5
recites mental processes. See CyberSource, 654 F.3d at 1372 (“It is clear that
unpatentable mental processes are the subject matter of claim 3. All of claim
3’s method steps can be performed in the human mind, or by a human using
a pen and paper.”). Claim 5 recites mental processes even though the
claimed method calls for computer components to perform the recited steps.
See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335
(Fed. Cir. 2015) (“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”);
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CyberSource, 654 F.3d at 1375 (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”); Revised Guidance,
84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”).
Claim 5 thus recites an abstract idea. See Revised Guidance, 84 Fed. Reg. at
52 (listing mental processes among the enumerated groupings of abstract
ideas).
Other aspects of claim 5 confirm that the claim recites an abstract
idea. Claim 5 is largely functional in nature. The claim recites receiving a
password entry and generating particular L sub-entries from the password
entry but does not recite how the claimed method performs these steps. See
Appeal Br. 21. And although claim 5 recites using a function to generate a
password verifier from each sub-entry, the claim does not specify what that
function is. See Appeal Br. 22. The functional nature of claim 5 confirms
that the claim recites an abstract idea. See Affinity Labs of Tex., LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) (“The purely
functional nature of the claim confirms that it is directed to an abstract idea,
not to a concrete embodiment of that idea.”). In addition, claim 5 essentially
converts collected data into a new form of data. See Appeal Br. 21–22. The
Federal Circuit has explained that processes that simply convert data from
one form to another generally recite an abstract idea. See, e.g., Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014) (“Without additional limitations, a process that employs
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mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.”).
Appellant contends that claim 5 does not recite an abstract idea
because the claim is distinguishable from the patent-ineligible claims in
Electric Power Group. See Appeal Br. 11–12. According to Appellant,
unlike the claims in Electric Power Group, claim 5 “does not involve
‘collecting information’ but rather” recites limitations that involve “the
transforming of a received password by generating sub-entries from the
password and further transforming the obtained sub-entries into password
verifiers by using a function on each sub-entry.” Appeal Br. 11–12
(emphases altered). Appellant argues that claim 5 also differs from the
claims in Electric Power Group because “the password of claim 5 . . . is
entered and the entered password is received by an interface circuit” and “is
not available information to be collected or gathered such as ‘events on an
interconnected electric power grid . . . over a wide area’” as in Electric
Power Group. Appeal Br. 12.
We find these arguments unpersuasive. The generating sub-entries
and generating password verifiers limitations referenced by Appellant are
similar to the limitations in Electric Power Group not because the generating
sub-entries and generating password verifiers limitations involve collecting
information but rather because they recite analytical steps that people can
perform in their minds. See Elec. Power Grp., 830 F.3d at 1354 (explaining
that the Federal Circuit has “treated analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category” and
determining that the claims at issue involve such steps). As discussed above,
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people can perform these steps by mentally identifying sub-entries that each
omits a different character from the password entry and mentally solving
functions to generate password verifiers. For this reason—not because the
limitations involve collecting information—the generating sub-entries and
generating password verifiers limitations are analogous to the limitations in
Electric Power Group.
As for the recited password entry, even if the password entry is not
“available” to the same extent or in the same way as the information in
Electric Power Group, that does not change that claim 5 collects the
password entry. Collecting information, without more, usually falls within
the mental processes category of abstract ideas. See, e.g., Elec. Power Grp.,
830 F.3d at 1353 (“[W]e have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.”); CyberSource, 654 F.3d
at 1372 (explaining that a step that “requires ‘obtaining information about
other transactions that have utilized an Internet address that is identified with
the [ ] credit card transaction’—can be performed by a human who simply
reads records of Internet credit card transactions from a preexisting
database” (alteration in original)); see also October 2019 Update 7
(explaining that an example of a claim that recites mental processes is “a
claim to ‘collecting information, analyzing it, and displaying certain results
of the collection and analysis,’ where the data analysis steps are recited at a
high level of generality such that they could practically be performed in the
human mind, Electric Power Group, LLC v. Alstom, S.A.”). That is the case
here. Claim 5 recites that an interface circuit receives (that is, collects) a
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password entry comprising a string of characters without further meaningful
detail or restriction.
Because we determine that claim 5 recites an abstract idea, we next
consider whether claim 5 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract idea] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.”
Revised Guidance, 84 Fed. Reg. at 55; see also October 2019 Update 12
(discussing the practical application analysis). That is, we consider any
additional elements recited in the claim along with the limitations that recite
an abstract idea to determine whether the claim integrates the abstract idea
into a practical application. See October 2019 Update 12.
The additional elements recited in claim 5 include “an interface
circuit” and “a processor circuit.” Appeal Br. 21–22. The written description
indicates that these elements are generic computer components. For
example, the written description discloses that user interface 113 and
processor 111 form part of computer 110 and that computer 110 “can be any
kind of suitable computer or device capable of performing calculations, such
as a standard Personal Computer (PC) or workstation.” Spec. 5:5–6; see also
Appeal Br. 5 (mapping the “receiving by an interface circuit a password
entry” limitation to page 7, lines 18–19 of the written description, which
describe a user inputting a password entry using user interface 113). This
disclosure suggests that the recited “interface circuit” and “processor circuit”
are generic computer components. In addition, the written description
describes user interface 113 and processor 111 in largely functional terms
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with few technical details. The lack of details about these elements also
indicates that the “interface circuit” and “processor circuit” are generic
computer components. See Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so
lacking in implementation details that it amounts to merely a generic
component (software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.”).
The additional elements also perform generic computer functions.
Claim 5 recites that the interface circuit receives a password entry
comprising a string of characters. See Appeal Br. 21. Receiving this type of
information is a generic computer function. See, e.g., buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). Claim 5 recites that the
processor circuit generates particular L sub-entries and password verifiers.
See Appeal Br. 21–22. These steps respectively involve data manipulation
(generating sub-entries by deleting different characters from a password
entry) and mathematical computation (generating password verifiers by
using a function on sub-entries). See Appeal Br. 21–22; Spec. 6:14–7:3,
7:10–12. Data manipulation and mathematical computation are generic
computer functions. See, e.g., Glasswall Sols. Ltd. v. Clearswift Ltd., 754 F.
App’x 996, 998 (Fed. Cir. 2018) (determining that “‘parsing the content data
in accordance with a predetermined data format’ and determining
nonconforming data . . . . [involves] the conventional manipulation of
information by a computer”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co.
of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer
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required by some of Bancorp’s claims is employed only for its most basic
function, the performance of repetitive calculations, and as such does not
impose meaningful limits on the scope of those claims.”); see also Spec.
1:28–30 (explaining that a prior art tool “builds a file with all possible
variations on the password, emulating up to three typos such as missed
characters, duplicated characters, extra characters, wrong order and wrong
case” (emphasis added)).
Considering claim 5 as a whole, the claim recites using generic
computer components that perform generic computer functions to implement
an abstract idea. See Appeal Br. 21–22. Using generic computer components
in this way does not integrate the abstract idea into a practical application.
See, e.g., Alice, 573 U.S. at 223–24 (“Given the ubiquity of computers . . .
wholly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (second and third alterations in original) (quoting Mayo, 566 U.S. at
77)); Revised Guidance, 84 Fed. Reg. at 55 (explaining the courts have
identified merely using a computer as a tool to perform an abstract idea as an
example of when a judicial exception has not been integrated into a practical
application).
Appellant’s arguments have not persuaded us otherwise. Appellant
argues that the generating sub-entries and generating password verifiers
limitations recited in claim 5 “indicate” that claim 5 “make[s] non-abstract
improvements to computer technology.” Appeal Br. 15. According to
Appellant, these limitations allow the claimed method to “solve the long-
standing problem of providing a solution that can allow an authentication
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system to allow mistyped passwords without the drawbacks of prior
solutions and, therefore, improve computer functionality.” Appeal Br. 15.
For largely similar reasons, Appellant argues that claim 5 provides a
“solution to a technical problem in conventional industry practice” and is
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks” like the patent-
eligible claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014). Appeal Br. 19 (emphases omitted).
We disagree. Claim 5 recites a “method for processing a password
entry” that generates password verifiers. See Appeal Br. 21–22. The claim
does not recite using these verifiers to “allow an authentication system to
allow mistyped passwords” as argued by Appellant. In fact, the claimed
method does not use the password verifiers; the claimed method merely
generates them. See Appeal Br. 21–22. Although Appellant asserts that a
claim does not need to recite the solution that allegedly makes the claim
patent eligible, see Reply Br. 10, the Federal Circuit has stated otherwise.
See, e.g., Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355,
1363 (Fed. Cir. 2019) (“The problem with AAM’s argument is that the
solution to these desired results is not claimed in the patent. We have
repeatedly held that features that are not claimed are irrelevant as to step 1 or
step 2 of the Mayo/Alice analysis.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus
on the language of the Asserted Claims themselves.”). Nor do the alleged
benefits of the invention necessarily flow from the generated password
verifiers alone as argued by Appellant. See Reply Br. 16. Generating the
password verifiers, without additional steps such as comparing the generated
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verifiers to stored password verifiers and authenticating the password entry
if there is a match, does not “allow an authentication system to allow
mistyped passwords.” Because claim 5 does not recite the solution that
Appellant asserts makes claim 5 patent eligible, we find these arguments
unpersuasive.
Appellant argues for the first time in the Reply Brief that claim 5 is
patent eligible because claim 5 is similar to the claims at issue in the McRO,2
Core Wireless,3 Visual Memory,4 Thales,5 BASCOM,6 and Amdocs7
decisions. See Reply Br. 11–12, 15–16. Appellant forfeited these arguments
by failing to raise them in the Appeal Brief. See 37 C.F.R. §§ 41.37(c)(1)(iv)
(explaining that with exceptions inapplicable here, “any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal”), 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief . . . will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
Even if Appellant had timely raised these arguments, we would have
found them unpersuasive. In McRO, the claims incorporated “specific,”
“limited” rules that improved computer animation. McRO, 837 F.3d at

2 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
3 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed.
Cir. 2018).
4 Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).
5 Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).
6 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
7 Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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1314–16. Similarly, in Core Wireless, the claims were “directed to a
particular manner of summarizing and presenting information in electronic
devices” and “disclose[d] a specific manner of displaying a limited set of
information to the user.” Core Wireless, 880 F.3d at 1363 (emphases added).
In contrast, claim 5 recites a series of broadly worded functions without
meaningfully limiting how the method performs the functions. See Appeal
Br. 21–22. And in Visual Memory, the claims were directed to “an enhanced
computer memory system” that “outperform[ed] a prior art memory system
that [was] armed with ‘a cache many times larger than the cumulative size of
the subject caches.’” Visual Memory, 867 F.3d at 1259. Here, as discussed
above, claim 5 uses generic computer components that perform generic
functions to produce password verifiers. See Appeal Br. 21–22. Appellant
has not shown that the computer components recited in claim 5 function
differently than generic computer components, let alone function in an
improved manner.
As for Thales, BASCOM, and Amdocs, these cases involved the
unconventional use or arrangement of elements. See Thales, 850 F.3d at
1348–49 (“Rather, the claims are directed to systems and methods that use
inertial sensors in a non-conventional manner to reduce errors in measuring
the relative position and orientation of a moving object on a moving
reference frame.”); BASCOM, 827 F.3d at 1350 (“As is the case here, an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.”); Amdocs, 841 F.3d at 1301
(“[T]he claim’s enhancing limitation necessarily requires that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality.”). Although Appellant asserts that
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the claim elements “are arranged in a non-conventional and non-generic
way,” Reply Br. 16, Appellant has presented no persuasive evidence or
reasoning to support this argument. As discussed below, the claimed
elements are conventional and perform conventional functions. Claim 5 is
therefore distinguishable from the claims in Thales, BASCOM, and Amdocs.
Finally, we consider whether claim 5 has an inventive concept, that is,
whether the claim has 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). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The additional elements recited in claim 5 add well-understood,
routine, and conventional activities. As discussed above, the additional
elements include the recited interface and processor circuits. The written
description provides little detail about these elements, which shows that the
elements are well understood, routine, and conventional. See Hybritech Inc.
v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A]
patent need not teach, and preferably omits, what is well known in the art.”);
see also USPTO, Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
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elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
These elements perform steps that include receiving information, omitting
characters from a password entry to produce sub-entries, and solving a
function to generate password verifiers. See Appeal Br. 21–22; Spec. 5:20–
7:3, 7:10–12. These steps, at the high level of generality recited in claim 5,
encompass well-understood, routine, and conventional computer activities.
See, e.g., buySAFE, 765 F.3d at 1355; Glasswall, 754 F. App’x at 998;
Bancorp, 687 F.3d at 1278; see also Spec. 1:28–30; cf. SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“Indeed, we think it
fair to say that an invocation of already-available computers that are not
themselves plausibly asserted to be an advance, for use in carrying out
improved mathematical calculations, amounts to a recitation of what is
‘well-understood, routine, [and] conventional.’” (quoting Mayo, 566 U.S. at
73)).
Whether we consider these additional elements individually or as an
ordered combination, these elements do not transform the nature of claim 5
into a patent-eligible application. These elements are largely recited at a high
level of generality, and there is no indication that these elements override the
conventional use of known features or involve an unconventional
arrangement or combination of elements. At bottom, claim 5 recites
conventional computer components employed in a customary manner, which
is not enough to provide an inventive concept. Alice, 573 U.S. at 223 (“[T]he
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mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”).
Summary
For the above reasons, we determine that claim 5 is directed to an
abstract idea and does not have an inventive concept. We thus sustain the
Examiner’s rejection of claim 5 under § 101.
Claim 10
Claim 10 recites a “method for authentication of a password entry
input by a user” that (1) obtains N password verifiers representative of the
password entry, (2) compares the obtained password verifiers with M stored
password verifiers, and (3) authenticates the password entry upon
determining that at least one obtained password verifier matches a stored
password verifier. See Appeal Br. 23. Claim 10 recites that the obtained
password verifiers are “generated from a N-1 character string equal to a N-
character password less a different character” and that the stored password
verifiers are “generated from a M-1 character string equal to a M-character
password less a different character.” Appeal Br. 23.
The Examiner found that claim 10, like claim 5, recites subject matter
that falls within the mental processes category of abstract ideas. See, e.g.,
Non-Final Act. 8–9 (determining that claim 10 is directed to an abstract idea
because the claim is drawn to collecting and analyzing information like the
patent-ineligible claims in Electric Power Group and collecting and
comparing information like the patent-ineligible claims in Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)); see
also October 2019 Update 7–8 (explaining that examples of claims that
recite mental processes include “a claim to ‘collecting information,
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analyzing it, and displaying certain results of the collection and analysis,’
where the data analysis steps are recited at a high level of generality such
that they could practically be performed in the human mind, Electric Power
Group, LLC v. Alstom, S.A.” and “a claim to collecting and comparing
known information (claim 1), which are steps that can be practically
performed in the human mind, Classen Immunotherapies, Inc. v. Biogen
IDEC”).
As with claim 5, Appellant argues that claim 10 is patent eligible
because claim 10 “make[s] non-abstract improvements to computer
technology” because the claim “solve[s] the long-standing problem of
providing a solution that can allow an authentication system to allow
mistyped passwords without the drawbacks of prior solutions and, therefore,
improve computer functionality” and “computer related technology.” Appeal
Br. 15, 17. According to Appellant, the benefits provided by the claimed
invention include “decreased reduction of password strength, decreased
complexity and increased efficiency of implementation, and increased
security and resistance to hacker attacks.” Appeal Br. 19.
We agree with Appellant. Even assuming that, like claim 5, claim 10
recites mental processes, claim 10 integrates the mental processes into a
practical application. Unlike claim 5, claim 10 not only recites that a
processor circuit obtains password verifiers generated in a particular manner
but also recites that a processor circuit uses the obtained password verifiers
in a particular way to authenticate a password entry. See Appeal Br. 23. The
written description explains that a processor circuit using the obtained
password verifiers to authenticate a password entry in the claimed manner
provides “a solution that can allow an authentication system to allow
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mistyped passwords without having the drawbacks of the prior art solutions”
such as “requir[ing] a comparison of the plaintext versions of the password”
and removing “any control of the addition of the mistyped passwords.” Spec.
2:9–29. The claimed method thus reflects an improvement to technology or
a technical field. Accordingly, claim 10 integrates the recited mental
processes into a practical application and is therefore patent eligible. See
Revised Guidance, 84 Fed. Reg. at 55.
Remaining Claims
Independent claim 5 is substantially similar to independent claims 1
and 11. Because Appellant does not present separate, persuasive arguments
for claim 1, the claims that depend from claim 1 (claims 2–4), or claim 11,
we sustain the Examiner’s rejection of these claims.
Independent claim 10 is substantially similar to independent claim 6,
and the Examiner’s rejection of claim 6 suffers from the same deficiencies
as the Examiner’s rejection of claim 10. We thus do not sustain the
Examiner’s rejection of claim 6 or its dependent claims (claims 7–9).
CONCLUSION
Claims
Rejected
35 U.S.C. § Affirmed Reversed
1–11 101 1–5, 11 6–10

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART