Ex Parte Lee et al

Patent Trial and Appeal Board

Nov 8, 2018

14738006 (P.T.A.B. Nov. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/738,006 06/12/2015
71247 7590 11/13/2018
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Asheley S. Lee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
170111-1081 7270
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
11/13/2018 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):
uspatents@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASHELEY S. LEE, SAFFET G. OZDEMIR,
CHRISTOPHER A. WEISS, MARK G. MADEJ,
and DAVID B. BAILEY
Appeal2017-009929 1
Application 14/738,006
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-20. App. Br. 4. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 "The real party in interest is Zappos IP, Inc., a Nevada corporation, the
assignee of record, which is a subsidiary of Amazon.com, Inc." App. Br. 2.
Appeal2017-009929
Application 14/738,006
STATEMENT OF THE CASE
Appellants' disclosure relates to an "an end-to-end encryption
scheme" protecting "sensitive form data." Spec. ,r 12. Claims 1, 8, and 15
are independent. Claim 1 is reproduced below for reference:
1. A non-transitory computer-readable medium embodying
a program executable in at least one computing device, wherein
when executed the program causes the at least one computing
device to at least:
send a network page to a client, the network page
including executable encryption code configured to encrypt a
form data item when executed by a browser,
wherein the client is configured to receive the form data
item via a form field of the network page;
in response to receiving the form data item from the
client over a separately encrypted channel, determine whether
the form data item that has been received has been encrypted in
the client by the executable encryption code executed by the
browser; and
encrypt the form data item in response to determining
that the form data item that has been received has not been
encrypted in the client by the executable encryption code,
wherein the program is configured to refrain from encrypting
the form data item in response to determining that the form data
item that has been received has been encrypted in the client by
the executable encryption code executed by the browser so that
the form data item continues to be encrypted.
The Examiner's Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception to patent eligibility. Final Act. 7.
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Application 14/738,006
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We adopt the Examiner's findings
and conclusions as our own, to the extent consistent with our analysis herein.
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S.Ct. at 2355. In the
second step of the Alice analysis, we "consider the elements of each 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, 134 S.Ct. at 2355 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). 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. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73).
Regarding step one of the Alice framework, the Examiner determines
the claims are abstract, as they are directed to "the concept of analyzing
storing data in the form of digital data, comparing/categorizing data, and
displaying the data." Ans. 6. Regarding step two of the Alice framework,
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Application 14/738,006
the Examiner determines that taking the claim elements separately or
considered as an ordered combination, the "claims simply recite the concept
of analyzing storing data in the form of digital data, comparing/categorizing
data, and displaying the data" as the claims comprise "an instruction to apply
the abstract idea of organizing and analyzing data using some unspecified,
generic computer." Ans. 6.
Appellants argue that the claims are not directed to "the abstract idea
of 'protecting sensitive information,'" because the Examiner "oversimplifies
the claims and ignores meaningful claim elements." App. Br. 9, citing Alice
at 2354 and Diamond v. Diehr, 450 U.S. 175, 189 n.12 (1981).
We agree with the Examiner that the claims are directed to an abstract
concept. See Final Act. 9, Ans. 6. The claims require "executable
encryption code configured to encrypt a form data item when executed by a
browser" with a backup encryption of the form data item "in response to
determining that the form data item that has been received has not been
encrypted in the client by the executable encryption code." We are not
persuaded the Examiner errs in determining the claims "collect, store,
display, and compare data to optimize an encryption objective on a generic
computer." Final Act. 5. Further, data encryption or decryption is an
abstract mathematical algorithm. See, e.g., Personalized Media Commc 'ns,
LLC v. Amazon.com, Inc., 161 F.Supp.3d 325, 337 (D. Del. 2015), aff d, 671
Fed.Appx. 777 (Mem) (Fed. Cir. 2016) ("decryption" is an abstract idea).
The claims are, thus, comparable to claims found to be directed to abstract
ideas. "Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible." Digitech Image Techs., LLC v. Elecs. for
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Application 14/738,006
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)("collecting
information, analyzing it, and displaying certain results of the collection and
analysis" are "abstract-idea processes").
We are unpersuaded by Appellants' argument that "Enfzsh [Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] is applicable"
because the "present claims are directed to a technological improvement in
the security of computer systems" (Reply Br. 5) with a similar argument
made with respect to Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Reply Br. 8-9). We agree
with the Examiner that "the focus of the claims is not on the improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools." Ans. 7.
We further agree with the Examiner that the claims do not resemble
those of McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016), because the claims "simply us[e] existing technology to
encrypt data, which was ubiquitous at the time the invention was filed."
Ans. 7. The Examiner's findings are supported by Appellants' disclosure,
which states that "network page server 124," "encryption application 127,"
"encryption code 133," and "decryption application 148" are "commercially
available." See Spec. ,r,r 18, 19, 27. The claims address a problem which
does not specifically arise in the operation of computer software, nor does
the invention amount to an improvement to technology. See, e.g., Spec. ,r 2
("Safeguarding payment data is of paramount importance to network sites
that accept payment online"); cf Fair Warning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1095 (Fed. Cir. 2016) ("These are the same questions
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Application 14/738,006
(though perhaps phrased with different words) that humans in analogous
situations detecting fraud have asked for decades, if not centuries.");
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ( the abstract idea of verifying credit card transactions).
Accordingly, we are not persuaded the Examiner errs. We sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 1-20.
DECISION
The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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