Ex Parte Haeuser et al

Patent Trial and Appeal Board

Jan 25, 2018

11457309 (P.T.A.B. Jan. 25, 2018)

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.
11/457,309 07/13/2006 ANTHONY HAEUSER 20103/IP1023 6972
83417 7590 01/26/2018
AT&T Legal Department - HFZ
ATTN. Patent Docketing
One AT&T Way
Room 2A-207
Bedminster, NJ 07921
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
01/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ANTHONY HAEUSER, MARY McCARTHY, SCOTT PETTIT,
CHRISTOPHER LEE, and ROLAND NOLL
____________

Appeal 2016-001735
Application 11/457,3091
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 99–119. Claims 1–98 have been
cancelled. Br. 20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify AT&T Intellectual Property I, L.P., as the real party in
interest. Br. 2.

Appeal 2016-001735
Application 11/457,309
THE INVENTION
Appellants claims relate generally to media systems and, more particularly,
to methods and apparatus to distribute media content.

Claim 99 reproduced below, is representative of the subject matter
on appeal.
99. A method comprising:
determining if media is associated with a trigger;
presenting an indicator based on the determination, the
indicator overlaid on a presentation of the media; and
in response to receiving a request to activate the trigger,
transmitting a request to subscribe to a first media distribution
package that is upgraded from a second media distribution
package to which a media presentation location is currently
subscribed.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Boortz
Rowe et al.
US 8, 291, 453 B2
US 8,621,508 B2
Oct. 16, 2012
Dec. 31, 2013

The following rejections are before us for review.
Claims 99–119 are rejected under 35 U.S.C. § 103 over Rowe in view
of Boortz.
Claims 99–119 are rejected under 35 U.S.C. §101.

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Application 11/457,309
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 2–6 of the
Answer.
2. Boortz discloses,
a trigger is selected and embedded within or associated with the
promotion. For example, when a Cable Select trigger is
embedded in a network promotion, the "select" icon 421
appears in the upper right corner (FIG. 4a ). The placement of
all of the Cable Select elements is in the illustrated embodiment
designed to be minimally intrusive on the video and traditional
placement of graphic elements… Alternatively, separate
windows (e.g., popups or embedded "PIP" windows) can be
used.
Next, by selecting the "select" icon 421, the viewer is given an
option 422 to set a reminder, schedule the actual tuning to the
program being promoted, or "subscribe" and get a reminder
each time an episode of the series or set of events (or a related
series) airs; see FIG. 4b.
Boortz col. 25, ll. 29–47.

3. Boortz discloses
For each promotion other content with which the trigger is to be
associated, a metadata file is generated that specifies which
events are associated with that promotion. For example, a
simple "one-association" promotion would include metadata
that associates the promotion with one subsequent event (e.g., a
movie). The basic metadata might specify the date, GMT or
other start time reference, duration, and channel, and can be
rendered in human-readable form if desired.
Id. at col. 14, ll. 5–13.

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Application 11/457,309
4. Rowe discloses
It should be understood that, although this embodiment
illustrates the multi-window screen display as a two-
dimensional display for purposes of clarity, in an interactive
television embodiment, the multi-window display, is a three-
dimensional display with the ability to view additional
programming as selected and driven by the viewer. The viewer
may manipulate a screen cursor 61 though a remote control
device to select objects 63, 65, 67, 69 in the multiwindow
display to obtain more information about that object or view
any additional programming associated with that object. For
example, the WeatherPLUS logo 67 may be selected by the
cursor 61 whereupon a graphic or video clip may "pop up" (not
shown) or appear in a portion of the screen to explain and
describe to the viewer more about WeatherPLUS and who or
what WeatherPLUS is. The pop up may offer still further
choices about accessing more information such as a web page
or contacting the company. The DopplerPLUS logo 63 may be
selected and an informational video clip describing what
Doppler Radar is and its significance is may be run.
Rowe col. 13, ll. 35–54.

5. Rowe discloses a system transaction processing system 200 “to
manage the various sales and business aspects of the system.” Rowe col. 20,
ll. 11–14.
6. The Examiner found,
Rowe teaches a "pop up", "scroll bar" and/or "multiple
windows" overlaid on current presentation media. Viewers
ability to select and the system of Rowe's ability to present
alternate programing including a plurality of programming
schedules is taken as providing a second media distribution
package to viewer. Rowe also teaches subscribers of services
(R: Col 22, Lines 57-67), "packaged" media that is distributed
to viewers (R: Col 26, Lines 26-34) and a fee and billing
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component to its system. (R: Col 20, Lines 44-67; Col 21, Lines
1-3).
(Answer 4).
ANALYSIS
35 U.S.C. § 103(a) REJECTION
The Appellants argued independent claims 99, 106, 113 as a group.
Appellants select claim 99 as the representative claim for this group (Appeal
Br. 12 ), and the remaining independent claims stand or fall with claim 99.
See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
Appellants argue,
The Examiner cited FIGS. 4A-4E and column 4, lines 12-63 of
Boortz as allegedly describing a "First media distribution
package that is upgraded from a second media distribution
package to which a media presentation location is currently
subscribed." (Id.). This allegation is in error. In FIGS. 4A-4E of
Boortz, a "Subscribe" button is illustrated. In describing these
figures, Boortz states "the viewer is given an option 422 to ...
'subscribe' and get a reminder each time an episode of the series
or set of events (or a related series) airs." (Boortz, col. 25, lines
43-47). Boortz also describes "selection of [the subscribe]
option may cause the system to switch to this channel each time
the particular instantiation of the event begins." (Boortz, col. 19,
lines 17-19). Therefore, Boortz has nothing to do with a’"first
media distribution package that is upgraded from a second
media distribution package.’”
(Appeal Br. 8).
We disagree with Appellants. Appellants’ argument that, “Boortz has
nothing to do with a ‘first media distribution package that is upgraded from a
second media distribution package’” (Appeal Br. 8), is not well taken
because Appellants are attacking the reference individually when the
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rejection is based on a combination of references and the Examiner found
that Rowe (Answer 4, 6), and not Boortz, discloses media distribution
packages in the form of programming with indicator overlaid on the
presentation of the media. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757–58 (CCPA 1968). The Examiner
only relies on Boortz to disclose the upgrade feature. (Final Act. 4). But, we
find no distinction in a claim requirement that specifies an “upgrade”,
because an upgraded media distribution package is a non-functional
descriptive material characteristic in that what it describes is useful and
intelligible only to the human mind, and thus is given no patentable weight.
See also, In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Moreover, Appellants’ Specification does not specifically define
“media distribution package”, nor does it utilize the term contrary to its
customary meaning. The Specification gives an example for the term, “a
pay-per-view television program”. Specification ¶12. The Specification
states that the trigger “caus[es] the present media content to change”. Id.
Thus, we construe the media first distribution package to mean media which
is changed from the second media distribution package as the result of a
trigger activation. We find that Rowe alone meets this definition of the first
media distribution package in the disclosed, WeatherPLUS programming
triggered by the WeatherPLUS icon from the current media location
subscribed in Rowe. (FF. 4).
We are not persuaded by Appellants’ argument
[t]he Examiner has merely repeated the example rationales that
may support a conclusion of non-obviousness identified in the
MPEP1 without providing any application of those rationale's
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Application 11/457,309
to the claims. For example, the Examiner has made no attempt
to explain why one of skill in the art would even desire to make
such a combination.
(Appeal Br. 13).
We disagree with Appellants. To the extent Appellants seek an
explicit suggestion or motivation in the reference itself, this is no longer the
law in view of the Supreme Court’s holding in KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007). We find that the Examiner has provided
some articulated reasoning with some rational underpinning for why a
person with ordinary skill in the art would “combine the triggers and
promotion packages of Boortz in the media switching invention of Rowe
[because] each [is] a combination of elements, and in the combination [of]
each element merely would have performed the same function as it did
separately, and of ordinary skill in the art would have recognized that the
results of the combination were predictable.” (Answer 5). This weighs true
in that each of Rowe and Boortz uses a trigger to effect a change in current
programming. (FF. 2-4).
Dependent claim 101 recites in pertinent part, “transmitting the
request to a billing application executing on an application server identified
by the trigger and associated with a service provider that provides the
service.”
Appellants argue, “Rowe and Boortz do no teach or suggest that such
a request to subscribe is sent to a billing application executing on an
application server.” (Appeal Br. 15).
The Examiner found Rowe discloses “a fee and billing component to
its system. (R: Col 20, Lines 44-67; Col 21, Lines 1-3).” (Answer 4).
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We agree with the Examiner. Our review of Rowe reveals the system
includes a system transaction processing system 200 “to manage the various
sales and business aspects of the system” (FF. 6). We find that one of
ordinary skill in the art would understand that content purchased as part of a
trigger option would be paid for by the payment system which is integrated
into the same system through which the content is presented.
Dependent claims 108 and 115 recite substantially similar limitations
as found in claim 101, and thus we affirm the rejection of these claims for
the same reasons given for claim 101.
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 99–119 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . 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. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)).
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Application 11/457,309
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in: transmitting a request to subscribe to a
first media distribution package that is upgraded from a second media
distribution package to which a media presentation location is currently
subscribed.
The Specification states: “[i]nteractive television services enable
consumers to be more closely involved in the television consumption
experience. In general, interactive television services enable two-way
communication between a service provider and a consumer location (e.g., a
household, a business, etc.).” Specification ¶2. The Specification also
states, “the example methods and apparatus described herein may be used to
present media content to consumers.” Specification ¶12. Claim 45 of the
Specification as originally filed recited “transmitting the request to a billing
application executing on an application server associated with the service
provider.” Thus, all this evidence shows that claim 1 is directed to
upgrading a media distribution package based on a response by a viewer to
an invitation trigger to upgrade. It follows from prior Supreme Court cases,
and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at
issue here are directed to an abstract idea. Upselling is a fundamental
economic practice of a transaction because it increases gross revenues. The
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Application 11/457,309
patent-ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental
economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355–1257.
Also, matching consumers with a given product or service “has been
practiced as long as markets have been in operation.” Tuxis Technologies,
LLC v. Amazon.com, Inc., No. CV 13–1771–RGA, 2014 WL 4382446, at *5
(D. Del. Sept. 3, 2014); see also OpenTV, Inc. v. Netflix Inc., 76 F.Supp.3d
886, 893 (N.D. Cal. 2014) Thus, upgrading a media distribution package
based on a response by a viewer to an invitation trigger to upgrade is an
“abstract idea” beyond the scope of § 101.2
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of upgrading a media distribution package based on a response by a viewer
to an invitation trigger to upgrade, at issue here. Both are squarely within
the realm of “abstract ideas” as the Court has used that term. That the
claims do not preempt all forms of the abstraction or may be limited to

2 We find no error with the Examiner’s finding that the claims are directed to
“the concept of a plan or scheme or mental process (thinking) that ‘can be
performed in the human mind . . . [].’” (Answer 2–3) because this finding
constitutes “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.” Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Nor do we find that the
Examiner’s finding here conflicts with our finding above of a fundamental
economic principle because “[a]n abstract idea can generally be described at
different levels of abstraction.” See Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
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electronic content, does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360–61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval—some of the most basic
functions of a computer. All of these computer functions are well-
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understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ claims simply
recite the concept of upgrading a media distribution package based on a
response by a viewer to an invitation trigger to upgrade. The claims do not,
for example, purport to improve the functioning of the computer itself. Nor
do they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than
instructions to upgrade a media distribution package based on a response by
a viewer to an invitation trigger to upgrade. Under our precedents, that is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original).
Here, apparatus claim 106 only generically recites a processor and a
memory. Such generically claimed elements fail to qualify the claims as
adding significantly more to the abstraction found supra. See Ultramercial,
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Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“[T]he addition of
merely novel or non-routine components to the claimed idea [does not]
necessarily turn[] an abstraction into something concrete.”).
We have reviewed all the arguments (Reply Br. 4–24) Appellants
have submitted concerning the patent eligibility of the claims before us
which stand rejected under 35 U.S.C. § 101. We find that our analysis
above substantially covers the substance of all the arguments which have
been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue,
Like DDR, claim 99 is clearly tied to a solution rooted in
computer technology and overcomes a problem specifically
arising in the realm of computer networks and computer
networked media distribution systems, namely, interacting with
a subscription network distributed media (e.g., an internet
protocol television network distribution system as shown in
FIG. 1 of the application on appeal) to transmit a subscriber's
indication for upgrading a media distribution package.
(Reply Br. 5).
In light of the breadth of the claim, the Appellants’ argument is not
persuasive as to error in the rejection because first, claim 99 does not even
require a computer system or network, let alone an internet connection.
Second, in DDR, the claims at issue involved, inter alia, “web pages displays
[with] at least one active link associated with a commerce object associated
with a buying opportunity of a selected one of a plurality of merchants”
(claim 1 of US 7,818,399). There is no such claim element with this degree
of detail here before us. All that is required by the claims before us here is a
generically recited “trigger”, which could be anything, including human
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interaction.
Appellants next argue,
claim 99 sets forth presenting an indicator based on the
determination, the indicator overlaid on a presentation of the
media and, in response to receiving a request to activate a
trigger, transmitting a request to subscribe to a first media
distribution package that is upgraded from a second media
distribution package to which a media presentation location is
currently subscribed.
(Reply Br. 6).
We find Appellants’ argument unpersuasive because the trigger is not
claimed as associated with the indicator; only the indicator is recited as
“overlaid on a presentation of the media.” Thus, any argument which
Appellants attempt, tying the trigger being overlaid on a media presentation,
is a mischaracterization of what the claims actually recite. But, even if the
trigger was claimed as “overlaid on a presentation of the media”, this
language is so broad as to encompass for example, a promotional sticker
attached to the front page of a newspaper. If a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
Appellants argue, “[w]ithin this context, it is clear that the Examiner's
assertions, without any citation for support, that the claim recites well-
understood, routine, and conventional activities previously known to the
industry are totally divorced from the actual claim language as the recited
operations are collectively in no way conventional or routine.” (Reply Br.
15).
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We disagree with Appellants. First, “‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188–89 (1981). Second, the Examiner in the 35 U.S.C. § 101
rejection does not make the assertion that the “claim recites well-understood,
routine, and conventional activities previously known to the industry”.
Examiner only finds what the claim recites, that it “simply [is] a generic
recitation of a computer and a computer network performing their basic
functions.” (Answer 3).
Appellants also argue,
the claim at issue is directed to a specific real world method,
with real world effects (a particular method of presenting an
indicator based on a trigger associated with (e.g., inserted in)
the media and transmitting a request to upgrade a media
distribution package by presenting an overlay on the media) not
heretofore known in science, economics, or industry.
(Reply Br. 18).
We disagree with Appellants. The question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case,
the claims as a whole are focused on upselling media content, which we find
is an abstract idea.

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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 99–119
under 35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 99–119
under 35 U.S.C. § 101.

DECISION
The decision of the Examiner to reject claims 99–119 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED