Ex Parte RIGBY

Patent Trial and Appeal Board

Jul 27, 2018

13012002 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/012,002 01/24/2011 MARTIN PAUL RIGBY
39083 7590 07/31/2018
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 310
Washington, DC 20007
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.
5039-0017 5895
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN PAUL RIGBY
Appeal2016-007094
Application 13/012,002 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Paul Rigby (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1-9, 12-14, 16-23, 25-27, 29-32
and 34. We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held on March 29, 2018.
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies PSONAR LIMITED as the real party in interest.
App. Br. 3.
Appeal2016-007094
Application 13/012,002
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method of distributing media content
within a computer network that includes a communications system; an
account database associating users with account data; a content
database storing a plurality of media files; and a user terminal, the
method comprising:
receiving a download request via the communications system
from a user via the user terminal for purchase of a media file stored in
the content database, wherein the media file requires purchase
according to one of limited play status that allows a finite number of
plays of the media file and unlimited play status that allows an
unlimited number of plays of the media file, wherein said download
request includes data identifying a media file stored in the content
database and status data indicative of either limited play status or
unlimited play status when the media file is purchased;
updating the account data within the account database
associated with a user making the request via the user terminal on the
basis of the status information included in the request by
decrementing the account data by a first amount if a download request
includes data indicative of the media file purchased with limited play
status and decrementing the account data by a second amount if a
download request includes data indicative of the media file purchased
with unlimited play status wherein the second amount is greater than
the first amount;
transmitting, via the computer network, data corresponding to
the media file identified in the received request to the user terminal,
such that complete media files are transmitted and associated with a
set number of plays, including limited or unlimited play status, which
enables utilization of the media files without connecting to the content
database and thereby reduces data transfer that would otherwise be
required;
inhibiting, via the computer network, the utilization of the
transmitted media file more than a predetermined number of times
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Application 13/012,002
without updating the account database if the download request
includes status data indicative of limited play status; and
permitting utilization, via the computer network, of the
transmitted media file more than a predetermined number of times
without updating the account database if the download request
includes status data indicative of unlimited play status.
THE REJECTION
The following rejection is before us for review:
1. Claims 1-9, 12-14, 16-23, 25-27, 29-32 and 34 are rejected under 35
U.S.C. § 101 as being directed to judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1-9, 12-14, 16-23, 25-27,
29-32 and 34 under 35 U.S.C. § 101 as being directed to judicially-excepted
subject matter.
ANALYSIS
The Appellant argued these claims as a group. See App. Br. 14--21.
We select claim 1 as the representative claim for this group, and the
remaining claims 2-9, 12-14, 16-23, 25-27, 29-32 and 34 stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
Alice Corp. Party. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
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Application 13/012,002
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that "[t]he claim(s) is/are
directed to the abstract idea of a fundamental economic practice of
distributing media content within a computer network." Final Rej. 5.
The Appellant does not dispute that distributing media content within
a computer network is an abstract idea. Rather, the Appellant argues that
"the claimed subject matter is not directed to merely implementing a basic
economic practice with a computer, and instead includes elements that
address issues and solve problems 'specifically arising in the realm of
computer networks."' App. Br. 20. In other words, the Appellant disagrees
with the Examiner's characterization of what the claims are directed to.
Rather, according to the Appellant, the claims recite an improvement to the
functioning of a computer itself. App. Br. 21.
The Appellant contends that the claims recite an improvement to the
functioning of a computer itself because it recites "'complete media files are
transmitted and associated with a set number of plays, including
limited or unlimited play status, which enables utilization of the media files
without connecting to the content database and thereby reduces data transfer
that would otherwise be required."' App. Br. 21 (reproducing the claim
limitation in claim 1; the same limitation appears in the other independent
claims- claims 14, 16, 25 and 30).
The difficulty with this contention is that the subject matter as claimed
does not necessarily lead to the argued-over improvement to the functioning
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Application 13/012,002
of the computer. Although the claims include the phrase "reduc[ing] data
transfer that would otherwise be required" which, in practice, is arguably
indicative of an improvement to the functioning of a computer, the data-
reduction in data transfer is ( according to the claims) a consequence of the
"utilization of the media files without connecting to the content database"
( claim 1 ). In other words, only when the media files are utilized "without
connecting to the content database" does one achieve the "reduc[ing] data
transfer that would otherwise be required" computer-functioning
improvement. Put another way, there is no "reduc[ing] data transfer that
would otherwise be required" computer-functioning improvement unless the
media files are utilized "without connecting to the content database."
However, the claims currently only require the "utilization of the media files
without connecting to the content database and thereby reduces data transfer
that would otherwise be required" be enabled.
Accordingly, the Appellant's argument that the claims recite an
improvement to the functioning of a computer itself (i.e., "reduc[ing] data
transfer that would otherwise be required") is not commensurate in scope
with what is claimed. The claims are not limited to necessarily achieve that
result. This point was made during the hearing. See Record of Oral
Hearing, mailed April 18, 2018. During said hearing, counsel agreed that
the claims simply call for "enabl[ing] utilization of the media files without
connecting to the content database and thereby reduces data transfer that
would otherwise be required." Claim 1 (emphasis added). Because the
process as claimed does not actually require "utilization of the media files
without connecting to the content database" and thus does not actually yield
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the "reduc[ing] data transfer that would otherwise be required" computer-
functioning improvement, the Appellant's argument challenging the
Examiner's determination under step one is unpersuasive.
We make no comment on the patent-eligibility of claims were they to
reflect the argued-over inventive improvement.
Step two is "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."' Id. ( alteration in original) ( quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
In that regard, the Examiner determined, inter alia, that
[ t ]he additional element( s) or combination of elements in the claim( s)
other than the abstract idea per se amount(s) to no more than: (i) mere
instructions to implement the idea on a computer, and/or (ii) recitation
of generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry. Viewed as a whole, these
additional claim element( s) do not provide meaningful limitation( s) to
transform the abstract idea into a patent eligible application of the
abstract idea such that the claim(s) amounts to significantly more than
the abstract idea itself. The claim limitations in addition to the abstract
idea include a computer implemented method of distributing media
content within computer network. This is simply a generic recitation
of a computer and a computer network performing their basic functions.
The claim amounts to no more than stating process of a user's download
request for purchase of a media file over the network, transmitting data
corresponding to the media file over the network and utilizing the
transmitted data file via the network. These generic computing
elements alone do not amount to significantly more than the judicial
exception.
Final Rej. 5---6.
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Here, again, the Appellant challenges said determination by arguing
that "[ t ]he claims now specifically recite a structure that 'reduces data
transfer that would otherwise be required."' App. Br. 14. However, for the
reasons discussed, the claims are not in fact limited to achieving said result.
Accordingly, the Appellant's argument challenging the Examiner's
determination under step two because "[t]he claims now specifically recite a
structure that 'reduces data transfer that would otherwise be required'" is
unpersuasive.
As we stated, we make no comment on the patent-eligibility of claims
were they to reflect the argued-over inventive improvement.
For the foregoing reasons, the Appellant's argument is unpersuasive
as to error in the Examiner's determination that claim 1 does not include an
element or combination of elements sufficient to ensure that the claimed
subject matter in practice amounts to significantly more than to be upon the
abstract idea itself.
We have considered all of the Appellant's remaining arguments and
have found them unpersuasive. Accordingly, we find the Examiner's
determination that representative claim 1, and claims 2-9, 12-14, 16-23,
25-27, 29-32, which stand or fall with claim 1, are directed to ineligible
subject matter under 35 U.S.C. § 101 has not been shown to be in error. Cf
LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997 (Fed. Cir. 2016)
("We have considered all of Lending Tree's remaining arguments and have
found them unpersuasive. Accordingly, because the asserted claims of the
patents in suit are directed to an abstract idea and do not present an
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Application 13/012,002
'inventive concept,' we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101.").
DECISION
The decision of the Examiner to reject claims 1-9, 12-14, 16-23, 25-
27, 29-32 and 34 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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