Ex Parte Haeuser et alDownload PDFPatent Trial and Appeal BoardJan 25, 201811457309 (P.T.A.B. Jan. 25, 2018) Copy Citation 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. Appeal 2016-001735 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. Appeal 2016-001735 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 Appeal 2016-001735 Application 11/457,309 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 Appeal 2016-001735 Application 11/457,309 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 Appeal 2016-001735 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). Appeal 2016-001735 Application 11/457,309 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)). Appeal 2016-001735 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 Appeal 2016-001735 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). Appeal 2016-001735 Application 11/457,309 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- Appeal 2016-001735 Application 11/457,309 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, Appeal 2016-001735 Application 11/457,309 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 Appeal 2016-001735 Application 11/457,309 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). Appeal 2016-001735 Application 11/457,309 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. Appeal 2016-001735 Application 11/457,309 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 Copy with citationCopy as parenthetical citation