Ex Parte Schonfeld et al

Patent Trials and Appeals Board

Jun 6, 2019

12459163 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/459, 163 06/26/2009
63649 7590 06/10/2019
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Robert Schonfeld
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.
0260226 7985
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCHONFELD and ARNAUD ROBERT
Appeal2017-010728
Application 12/459,163 1
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, 34--36, 48, 49, and 58---61. Claims 9-33, 37--47, and
50-57 have been canceled (see Final Act. 2). We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm the Examiner's rejection of claims 1-8, 34--36, 48, 49, and
58-61 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
1 As noted by Appellants in the Appeal Brief (App. Br. 2), the real party in
interest is Disney Enterprises, Inc., a wholly owned subsidiary of The Walt
Disney Company.
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Application 12/459,163
matter, without significantly more. We reverse the Examiner's obviousness
rejections of claims 1-8, 34--36, 48, 49, and 58---61.
Disclosed Invention and Illustrative Claim
Appellants' disclosed invention relates to the computer mediated
distribution and rental of digital media content (Title; Spec. 2:7-5:6;
Abstract. The focus of Appellants' disclosed invention is to allocate access
to digital media content by: (i) relinquishing user access rights so as to
make media content available to other users; (ii) promoting shared
enjoyment of creative content; and (iii) protecting valid commercial interests
of content creators and producers (see Spec. 4: 17-5:6, 11: 1-12:3, 15: 14--
16:3; see also Abstract).
Independent claims 1 and 58 recite methods for use by a media server
for allocating access to a movie file or portions of a movie file to a user,
including issuing licenses to users for such access. Remaining independent
claim 34 recites a system for allocating access to portions of a movie file
using a method commensurate in scope with claim 1. Independent claims 1
and 58, reproduced below with emphases and bracketed lettering added, are
illustrative of the claimed subject matter:
Claim 1 : A method for use by a media server for allocating
access to a first portion of a movie file to a first user and a second
portion of the movie file to a second user, where the first portion
includes a first number of frames from the movie file, the second
portion includes a second number of frames from the movie file,
and the first number of frames of the first portion and the second
number of frames of the second portion of the movie file are
mutually exclusive, the method comprising:
obtaining, using a hardware processor of the media server,
the movie file and an associated primary license authorizing a
number of secondary licenses from an originating license server;
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rece1vmg, using the hardware processor of the media
server, a first request for access to the movie file from the first
user;
determining, using the hardware processor of the media
server, a first secondary license based on the primary license and
the first request for the first portion of the movie file to the first
user;
providing, using the hardware processor of the media
server, a first temporary license key to the first user for making
use of the first secondary license, the first temporary license key
providing access to the first portion of the movie file;
storing, using the hardware processor of the media server,
first data corresponding to the first secondary license in an
assignment database of a non-transitory memory of the media
server;
receiving, using the hardware processor of the media
server, a second request for access to the movie file from the
second user;
[A] determining, using the hardware processor of the
media server and in response to the second request, the number
of secondary licenses is reached;2
[BJ requesting, using the hardware processor of the media
server, a second primary license for the media file from the
originating license server, in response to determining that the
number of secondary licenses is reached;
obtaining, using the hardware processor of the media
server, the second primary license from the originating license
2 Limitation A always determines the number of secondary licenses is
reached. Therefore, should there be further prosecution of the instant
application, Appellants and the Examiner should consider whether this
limitation should be amended to more properly read "determining, ... " if or
whether "the number of secondary licenses is reached" in view of the
Specification's description of requesting a second primary license only when
the number of secondary licenses allowed has been reached (see Spec.
15:14--16:3; see also App. Br. 3--4, Summary of Claimed Subject Matter).
This same issue is present in each of independent claims 1, 34, and 58 on
appeal.
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server, in response to requesting the second primary license from
the originating license server:
determining, using the hardware processor of the media
server, the second secondary license3 based on the second
primary license and the second request for the second portion of
the movie file to the second user, wherein the first number of
frames of the first portion and the second number of frames of
the second portion of the movie file are mutually exclusive; 4
providing, using the hardware processor of the media
server, a second temporary license key to the second user for
making use of the second secondary license, the
second temporary license key providing access to the second
portion of the movie file concurrent with the first temporary
license key providing access to the first portion of the movie
file; and
storing, using the hardware processor of the media server,
second data corresponding to the second secondary license in the
assignment database of the non-transitory memory of the media
server.
Claim 58: A method for use by a media server having a
hardware processor, the method comprising:
obtaining, using the hardware processor, a movie file and
an associated first primary license authorizing a number of
secondary licenses from an originating license server;
receiving, using the hardware processor, a request for
access to the movie file from a user;
[A] determining, using the hardware processor and in
response to the request, that the number of secondary licenses
authorized to be granted is reached;
3 This limitation lacks antecedent basis, as no second secondary license has
been recited, only "a number of secondary licenses," "a first secondary
license," and "a second primary license." This same issue is also present in
claim 34 on appeal.
4 This italicized "wherein" clause is repetitive of the commensurate
limitation recited in the preamble, and therefore, not further limiting. This
same issue is also present in claim 34 on appeal.
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[BJ requesting, using the hardware processor, a second
primary license for the movie file from the originating license
server, in response to determining that the number of secondary
licenses authorized to be granted is reached;
obtaining, using the hardware processor, the second
primary license from the originating license server, in response
to requesting the second primary license from the originating
license server; and
providing, using the hardware processor, a temporary
license key to the user for making use of a secondary license
authorized based on the second primary license for the movie
file, the second temporary license key5 providing access to the
movie file.
App. Br. 25-26, 30-31 (Claims Appendix).
REJECTIONS
The Examiner made the following rejections:
(1) The Examiner rejected claims 58---61 under 35 U.S.C. § 112(b), as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention (Final Act. 2-3).
The Examiner states in the Advisory Action mailed January 9, 2017 (p. 1,
box 5) that Appellants' amendment filed after the final rejection has
overcome the indefiniteness rejection. Therefore, the indefiniteness
rejection has been withdrawn, and is not before us on appeal.
(2) Claims 1-8, 34--36, 48, 49, and 58-61 stand rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter (Final Act. 3-
9; Ans. 2-7.
5 This limitation lacks antecedent basis, as no second temporary license key
has been recited, only "a temporary license key."
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(3) Claims 1-8, 34--36, 48, and 49 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Gilliam (US 2004/0267552 Al;
published Dec. 30, 2004), Li (US 2006/0050697 Al; published Mar. 9,
2006), Tabet (US 8,620,817 B2; issued Dec. 31, 2013 and filed Sept. 14,
2006), and Zhang (US 7,624,415 Bl; issued Nov. 24, 2009) (Final Act. 9-
16; Ans. 8-9).
(4) Claims 58, 59, and 61 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Gilliam and Tabet (Final Act. 16-19).
(5) Claim 60 under 35 U.S.C. § I03(a) as being unpatentable over the
combination of Gillam, Tabet, and Li (Final Act. 19-20).
ISSUES
Based on Appellants' arguments in the briefs (App. Br. 9-24; Reply
Br. 2--4), the disputed issues on appeal are whether or not the Examiner
erred in rejecting:
(1) claims 1-8, 34--36, 48, 49, and 58-61 under 35 U.S.C. § 101 as
being directed to a judicial exception, i.e., an abstract idea, without
significantly more, and thus are patent-ineligible under§ 101; and
(2) claims 1-8, 34--36, 48, 49, and 58-61 under 35 U.S.C. § I03(a) as
being obvious over the base combination of Gilliam and Tabet, 6 because
Tabet fails to teach or suggest requesting a second primary license as set
6 The Examiner rejected: (a) claims 1-8, 34--36, 48, and 49 under 35 U.S.C
§ I03(a) as being obvious over Gilliam, Tabet, Zhang, and Li; (b) claims 58,
59, and 61 under 35 U.S.C § I03(a) as being obvious over Gilliam and
Tabet; and (c) claim 60 under 35 U.S.C § I03(a) as being obvious over
Gilliam, Tabet, and Li, over the same base combination of Gilliam and
Tabet.
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forth in limitation B as set forth in claim 1 (see supra claim 1 ), after
determining a number of secondary licenses has been reached as set forth in
limitation A as set forth in claim 1 (see supra claim 1 ), as well as the
commensurate limitations set forth in claims 34, and in limitations A and B
as set forth in claim 58 (see supra claim 58)?
Issue (1 ): Patent Eligibilty
PRINCIPLES OF LAW
We first note "[ w ]hether a [patent] claim is drawn to patent-eligible
subject matter is an issue of law that [is] review[ed] de nova." SiRF Tech.,
Inc. v. Int'! Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.7
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int'!, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
7 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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first determine what concept the claim is "directed to." See Alice, at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter,
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, after determining that a claim falls
within one of the statutory categories under § 101 (hereinafter, "Step l"), we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human activity such as a fundamental economic
practice, or mental processes); 8 and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 9
See Revised Guidance, 51-52, 54--55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. 10
See Revised Guidance, 56.
Step 2A(i) -Abstract Idea
Informed by our judicial precedent, the recent Revised Guidance
extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes the following
groupings of subject matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
8 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter, "Step 2A(i)").
9 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter, "Step 2A(ii)").
10 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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(b) Certain methods of organizing human activity -
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 11
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
11 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Revised Guidance for analyzing the claim should be followed. See
Revised Guidance, Section III.C.
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exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 12
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning ofa
Computer or To Any Other Technology or Technical Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B ~ "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
12 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 13 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 14 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself). 15
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
13 See, e.g., Diehr, 450 U.S. at 187.
14 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
15 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 16
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature
of the additional element( s ).
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05( d)(II) as noting the well-understood, routine,
conventional nature of the additional element( s ).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element( s ).
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s).
See Berkheimer Memo.
16 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be
present; or
(b) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Under Step 1 in the patent-eligibility inquiry under § 101, in
accordance with the Revised Guidance, we determine whether a claim is
directed to one of the four statutory categories of invention, i.e., a process,
machine, manufacture, or composition of matter.
Each of independent claims 1 and 58 recite "[a] method for use by a
media server ... using a hardware processor." Therefore, claims 1 and 58,
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as well as claims 2-8 and 59---61 depending respectively therefrom, as
method claims, recite at least one of the enumerated categories ( e.g., a
process) of eligible subject matter in 35 U.S.C. § 101.
Independent claim 34 recites "[a] system ... comprising ... a media
server ... [ and] a hardware processor." Therefore, claim 34, as well as
claims 35, 36, 48, and 49 depending therefrom, as system claims, recite at
least one of the enumerated categories (e.g., machine and/or manufacture) of
eligible subject matter in 35 U.S.C. § 101.
Therefore, as to claims 1-8, 34--36, 48, 49, and 58---61, we continue
our analysis under Step 2A(i) of the Revised Guidance to determine whether
the claims (1) recite a judicial exception ( a law of nature, natural
phenomenon, or subject matter within the enumerated groupings of abstract
ideas above); and (2) the claims are patent-eligible.
For the reasons that follow, we conclude that claim 1 and claims 2-8,
34--36, 48, 49, and 58-61 grouped therewith, 17 are directed to a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), because the recited claim
limitations (i) fall within the enumerated groupings of abstract ideas -
namely mathematical concepts, certain methods of organizing human
activity ( e.g., fundamental economic principles or practices; commercial or
legal interactions; managing personal behavior or relationships or
interactions between people, and mental processes----concepts performed in
17 See infra at 17 (selecting claim 1 as representative for the group of claims
rejected under 35 U.S.C. § 101, claims 1-8, 34--36, 48, 49, and 58---61).
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the human mind), and (ii) do not contain additional elements that integrate
the judicial exception into a practical application.
Based on Appellants' arguments in the briefs (see App. Br. 9-17;
Reply Br. 2), 18 (i) we select claim 1 as representative of the group of claims
(claims 1-8, 34--36, 48, 49, and 58---61), pursuant to our authority under
37 C.F.R. § 4I.37(c)(iv); and (ii) the issue before us is whether claim 1 is
"directed to" 19 a judicial exception (Steps 2A(i) and 2A(ii)) without
significantly more (Step 2B), and is therefore patent-ineligible.
Step 2A(i): Does Representative Claim 1 Recite a Judicial Exception?
We have reviewed the Examiner's subject matter eligibility rejection
of claims 1-8, 34--36, 48, 49, and 58---61 (Final Act. 3-9) in light of
Appellants' contentions that the Examiner has erred (App. Br. 9-17; Reply
Br. 2). Further, we have reviewed the Examiner's response to Appellants'
arguments (Ans. 2-7). We disagree with Appellants' contentions that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 101. More
specifically, we disagree with Appellants' contentions that claim 1 does not
recite an abstract idea or combination of abstract ideas.
The Examiner finds claim 1 recites the abstract idea of "licensing
portions of a file to different users" (Final Act. 4; Ans. 3), which the
18 Appellants primarily argue claim 1 (see App. Br. 12-16; Reply Br. 2), and
rely on the arguments presented for claim 1 for the patent eligibility of
claims 2-8, 34--36, 48, 49, and 58---61 (see App. Br. 17).
19 The issue of whether claim 1 is directed to a judicial exception turns on
whether claim 1 (i) recites a judicial exception (Step 2A(i)) and (ii) does not
contain additional limitations that integrate the exception into a practical
application (Step 2A(ii)).
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Examiner determines is an idea of itself ( e.g., a mental process performed in
the human mind, such as evaluating and judging if a license limit has been
reached, and if so, requesting another license), 20 and a method of
organization human activity ( e.g., a fundamental economic practice,
commercial/legal interaction, and/or business relation between people, such
as licensing)21 (see Final Act. 4--5 analyzing each of the twelve limitations in
claim 1, ad seriatim ). We agree.
Claim 1 (see supra) recites a method for allocating access to portions
of a movie file by a media server by (i) obtaining the movie file and
associated licenses from a license server, (ii) providing a license key to a
user to allow access to a portion of the movie file, (iii) storing data in a
database, and based on determining a license availability, (iv) requesting and
obtaining another license if needed, (v) providing another license key to
another user, and (vi) storing more data in a database. Essentially, claim 1
recites a method of allocating data access by managing licenses and license
keys.
The focus of Appellants' disclosed invention is "the computer
mediated distribution of digital media content" (Spec. 2:8-9) in "a manner
that both promotes shared enjoyment of creative content in its traditional
sense, and protects the valid commercial interests of content creators and
producers" (Spec. 5:4--6) by "prohibiting concurrent access to digital media
[] by [second] user" when "sell[ing], rent[ing], or lend[ing] access rights for
digital media content[] to a [first] user" (Spec. 10:20-21). Appellants'
disclosed invention also serves to license only a portion of a movie file such
20 See Final Act. 8.
21 See Final Act. 9.
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as a scene or a number of frames, such that said portion of the movie file can
be "re-available for licensing, more rapidly" (Spec. 17: 13), and operating
overhead can be reduced "while avoiding unlicensed overuse of digital
media content" (Spec. 17: 16-17).
Claim 1 at issue here only recites "[a] method for use by a media
server for allocating access" to different portions of a movie file by
managing licenses and license keys, determining if a license limit has been
reached, and storing data pertaining thereto in a memory of the media server.
Although Appellants disclose that (i) digital media content 112 "may
comprise an entire digital media file, which may be a streamable media file"
(Spec. 15: 11) ( emphasis added); and (ii) in some embodiments, "providing
access to digital media content 212 may comprise streaming the digital
media content to client system 230 over network communication link 228b"
(Spec. 18:21-19:2) (emphasis added), claim 1 is silent as to (i) how access to
the movie file portions is provided to the users (i.e., client system); or (ii)
how and/or whether digital media content is sold, rented, or lent to the first
user. And, although Appellants disclose that "in some embodiments,
providing access to digital media content 212 may comprise copying digital
media content 212 received from originating license server 202, and sending
the copied digital media content to the user, e.g., as digital media content
212 residing in client memory 23 6" (Spec. 18: 17-21 ), the client system 23 0,
client processor 232, and client memory 236 shown in Appellants' Figure 2
are not recited in claim 1.
The remaining limitations of claim 1 merely define the relationship
between and among the recited first and second portions of the movie file,
licenses, and license keys used to store first and second data in "an
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assignment database of a non-transitory memory of the media server." And,
claim 1 does not further define the "first data corresponding to the first
secondary license" and/or the "second data corresponding to the second
secondary license."22
Appellants do not specifically contest the existence of, or the
Examiner's characterization of, the abstract idea( s) recited in the claims
(e.g., licensing); instead, Appellants contend (see App. Br. 9-17; Reply Br.
2) that the claims (i) contain additional limitations that cannot be equated
with the Examiner's identified abstract idea (e.g., licensing portions of a file
to different users), and (ii) are not directed to that idea, but instead are
directed to "a specific implementation of a solution to a problem in
providing access to one media file based on a primary license authorizing a
number of secondary licenses" (App. Br. 12).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds (see Final Act. 4; Ans. 3), and we agree, that claims 1-8, 34--36, 48, 49,
and 58-61 recite licensing portions of a file to different users, which is a
method of organizing human activity such as a fundamental economic
practice, a commercial/legal transaction, and/or a business relation between
people ( e.g., licensing), therefore, an abstract idea or a combination of
abstract ideas. We also find that claim 1 recites (i) a method of organizing
human activity of following rules or instructions ( e.g., requesting a second
primary license when the number of allowed secondary licenses has been
22 As a result, under the broadest reasonable interpretation of claim 1 in light
of the Specification, the first and second data (recited as being stored in
claim 1) could be (i) metadata about the first and second secondary licenses
or other license data, (ii) movie file data, (iii) temporary license key data,
(iv) a data management rights wrapper (DMR), and/or (v) assignment data.
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reached), and (ii) a mental process (e.g., determining if the allowed number
of secondary licenses has been reached, and if so, requesting a new second
primary license as in limitations A and B of claim 1 ), which are both abstract
ideas which are judicially excepted.
Therefore, the limitations positively recited in claim 1 ( e.g., the media
server, hardware processor, originating license server, and the assignment
database in the non-transitory memory of the media server), fall within the
enumerated groupings of abstract ideas - namely (i) certain methods of
organizing human activity----commercial/legal transactions, licensing, and
business relations between people, and (ii) mental processes----concepts
performed in the human mind like evaluation. As a result, claim 1 is
directed to a judicial exception ( a law of nature, natural phenomenon, or
subject matter within the enumerated groupings of abstract ideas above).
At least the following decisions from our reviewing court support our
determination that the licensing and licensing-related determinations are the
type of fundamental commercial practices patent ineligible: OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 701 (mem) (2015) (offer-based price optimization);
buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction
guaranty); Personalized Media Communications, L.L.C. v. Amazon, Inc., 671
F. App'x. 777 (mem) (Fed. Cir. 2016) (receiving instructions for ordering);
Macropoint, LLC v. Fourkites, Inc., 671 F. App'x 780 (mem) (Fed. Cir.
2016) (tracking freight); Wireless Media Innovations, LLC v. Maher
Terminals, LLC, 636 F. Appx. 1014 (mem) (Fed. Cir. 2016) (monitoring
shipping containers); America's Collectibles Network Inc. v. Jewelry
Channel, Inc. USA, 672 F. App'x 997 (mem) (Fed. Cir. 2017) (conducting
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reverse auction by adjusting price and inventory); and Easy Web Innovations,
LLC v. Twitter, Inc., No. 2016-2066, 2017 WL 1969492 (Fed. Cir. 2017)
(receiving, authenticating, and publishing data). The Supreme Court
additionally guides that contractual relations, like licenses and licensing,
constitute "a fundamental economic practice long prevalent in our system of
commerce." Bilski v. Kappas, 561 U.S. 593, 611 (2010); see also Alice, 573
U.S. 221-22, as cited in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354
(Fed. Cir. 2014). Applying this guidance here, we observe independent
claim 1 is directed to licensing and business relations between people
( commercial/legal interactions), and judging whether or not a license limit
has been reached (i.e., mental process). Thus, claim 1 is directed to a
combination of abstract ideas, including fundamental economic practices
and mental processes.
Claim 1 also "allocates access" to portions of a movie file. This
limitation merely provides further detail of the licensing procedure. See
Spec. 10: 17-19 ("configured to allocate access ... by partitioning the
assignment of license rights in time or through usage"). As disclosed by
Appellants, the purpose of the disclosed invention is to sell, rent, or lend the
movie file to a user23 by streaming it via network to the client's computer. 24
Our reviewing court has provided support for concluding such steps in a
commercial setting may form part of an abstract idea. See Two-Way Media
23 See Spec. 10:20-21.
24 Appellants disclose that (i) digital media content 112 "may comprise an
entire digital media file, which may be a streamable media file" (Spec.
15: 11) ( emphasis added); and (ii) in some embodiments, "providing access
to digital media content 212 may comprise streaming the digital media
content to client system 230 over network communication link 228b" (Spec.
18:21-19:2).
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Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017) (finding abstract the monitoring of the delivery of real-time
information to users or measuring such delivery for commercial purposes);
Ultramercial v. Hulu, 772 F.3d 709, 715 (Fed. Cir. 2014) (determining that
"allowing the consumer access to the media" was part of the abstract idea of
showing an advertisement before delivering free content over the Internet).
Our determination that Claim 1 recites steps for licensing and
determinations in service thereof as being abstract ideas of organizing
human activity and mental processes is supported by case law. Claim 1
recites component steps recited for licensing and licensing determinations in
the form of collecting data (e.g., "the movie file and an associated primary
license"), recognizing certain data (e.g., first and second portions of the
movie file that are "mutually exclusive," that a number of secondary licenses
has been reached, "a second primary license," and first and second
temporary license keys), and storing data in a memory ( e.g., "storing ...
first/second data corresponding to the first/second secondary license in an
assignment database of a non-transitory memory"). Our reviewing court has
also concluded that abstract ideas include the concepts of collecting data,
recognizing certain data within the collected data set, and storing the data in
memory. Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations,
LLC v. Chi. Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding
"claims directed to the collection, storage, and recognition of data are
directed to an abstract idea"). Therefore, claim 1, which recites collecting
data, recognizing certain data, and storing data, sets forth concepts
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recognized by our reviewing court to be a judicially excepted abstract idea
that is patent ineligible.
Moreover, the further-recited acts of parsing, comparing, storing, and
editing data are ideas also taken in service of the licensing and licensing-
related determinations. Here, the method of claim 1 allocates access by
recognizing and modifying data, and storing data corresponding to licenses.
In other words, no streaming, copying, presentation, or access is performed
on the movie file portions in claim 1. Our conclusion that these acts are part
of an abstract mental process and/or method of organizing human activity is
further supported by case law. See Berkheimer v. HP Inc., 881 F.3d 1360,
13 66 (Fed. Cir. 2018) ( concluding that acts of parsing, comparing, storing,
and editing data are abstract ideas); SAP Am., Inc. v. Investpic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018)) ("merely presenting the results of abstract
processes of collecting and analyzing information ... is abstract as an
ancillary part of such collection and analysis."); Digitech Image Techs., LLC
v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (holding
that a process that starts with data, applies an algorithm, and ends with a
new form of data is directed to an abstract idea).
Further, merely combining several abstract ideas (such as a method of
organizing human activity in the field of media servers and computer
systems providing users with the ability to access movie files and a
fundamental business practice of licensing portions of a movie file or a
whole movie file to different users) does not render the combination any less
abstract. RecogniCorp, 855 F.3d at 1327 ("Adding one abstract idea ... to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. latric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
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2016) ( determining the pending claims were directed to a combination of
abstract ideas).
In this light, the provision of licensing portions of a file to different
users, including requesting a second primary license when a number of
allowed secondary licenses has been reached, recited in claim 1 on appeal is
"a fundamental economic practice long prevalent in our system of
commerce" (Bilski, 561 U.S. at 611), combined with a method of organizing
human activity and mental processes. Thus, claim 1 recites a combination of
abstract ideas. Claims 2-8, 34--36, 48, 49, and 58---61 grouped with claim 1
contain similar subject matter, and similarly recite combinations of abstract
ideas.
In view of the foregoing, we conclude claim 1 recites (i) a method of
licensing portions of movie files to different users, which is method of
organizing human activity, a commercial/legal interaction, business relation
between people; and (ii) managing transactions between media and
originating license servers and first and second users (i.e., determining when
a number of allowed secondary licenses has been reached in order to request
a new primary license), which is a mental process including making an
observation/judgment performed in the human mind. Because we conclude
independent claim 1 recites a combination of abstract ideas, we proceed to
Step 2A(ii) to determine whether the claims are "directed to" the judicial
exception.
Step 2A(ii)-Practical Application
If a claim recites a judicial exception, in Prong Two of Step 2A we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
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additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, claim 1 merely recites the additional elements of a "media
server" having a "hardware processor" for obtaining a movie file and an
"associated primary license" from an "originating license server" and storing
data corresponding to licenses in an "assignment database of a non-
transitory memory of the media server." Considering claim 1 as a whole,
none of the additional elements applies or uses the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
For the reasons set forth by the Examiner (Final Act. 3-9; Ans. 5-7),
we are not persuaded by Appellants' arguments (see App. Br. 15-16) that
claim 1 improves the functioning of the computer itself or any other
technology or technical field by "'providing ... a second temporary license
key to the second user for making use of the second secondary license, the
second temporary license key providing access to the second portion of the
movie file concurrent with the first temporary license key providing access
to the first portion of the movie file"' (App. Br. 15).
Claim 1, when taken as a whole, describes obtaining a primary license
and generating a secondary license and a key, and provides access to two
users using two different portions of the same movie file. Therefore, claim 1
only goes beyond the concept of obtaining a license and generating a key by
(i) retrieving license and movie file data from an originating license server,
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and (ii) storing the keys and data in a database (i.e., the assignment database
of the memory of the media server). See MPEP §§ 2106.05(a),
Improvements to the Functioning of a Computer or To Any Other
Technology or Technical Field; MPEP § 2106.05(g), Insignificant Extra-
Solution Activity. In reviewing the record, we find claim 1 on appeal to be
silent regarding specific limitations directed to an improved media server,
processor, memory, or database. Therefore, we find Appellants' claimed
invention does not provide a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," such as considered by the court in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
For the reasons discussed above, we conclude Appellants' claim 1
invokes generic computer components merely as a tool in which the media
server performs a method of allocating access to portions of a movie file that
applies the judicial exception and, thus, the abstract idea( s) is( are) not
integrated into a practical application.
Because representative claim 1 recites a judicial exception (i.e., the
abstract ideas of a mental process and method of organizing human activity)
that is not integrated into a practical application, in accordance with the
Revised Guidance, we conclude claim 1 and claims 2-8, 34--36, 48, 49, and
58-61 grouped therewith are directed to a combination of abstract ideas
under Step 2A(i), and the eligibility analysis with regard to claim 1 proceeds
to Step 2B.
Step 2B - Inventive Concept
Having determined independent claim 1 is directed to an abstract idea
that is not integrated into a practical application, we now evaluate whether
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the additional elements add a specific limitation that is not well-understood,
routine, or 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, to the abstract idea. See
2019 Guidance. Thus, we determine whether the claims "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).
Here, the Examiner determines, and we agree, that the only elements
beyond the abstract idea are generic computer components used to perform
generic computer functions (Final Act. 7; Ans. 5-7) - a determination that
is supported by Appellants' Figures 1 and 2 and the accompanying
description found in the Specification (see, e.g., Figs. 1, 2; Spec. 10:3-
14: 17). Appellants' Specification, for example, describes a media server
110/210, server [i.e., the recited hardware] processor 216, originating license
server 102/202, and assignment database 218 of a memory as including the
broad categories of volatile and nonvolatile memory, without describing the
particulars (see Spec. 11: 1-8, 12:4--14: 17; see also Ans. 6). The volatile and
non-volatile memory media described at page 14, lines 5-17 of the
Specification are all commonly known media types, such as CD-ROM,
DVD, Blu-ray, optical disc, RAM, programmable read-only memory
(PROM), erasable PROM, and FLASH memory.
More specifically, Appellants' Specification describes (i) some
embodiments of media server 110 as being "a PC, or other home computer
platform, for example, rather than a dedicated network media server as
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shown in Figure 1" (Spec. 11:3-5); and (ii) other embodiments of the media
server 110 as being "a portable device, such as a mobile telephone, a digital
media player, a personal digital assistant (PDA), a portable computer, or a
gaming console, for example" (Spec. 11 :6-8). Thus, Appellants'
Specification only describes well-understood, routine, conventional
computer components ( e.g., server, processor, memory) in a manner that
indicates the components and the functions they perform were well known in
the art. See Hybritech Inc., 802 F.2d at 1384 (explaining that "a patent need
not teach, and preferably omits, what is well known in the art"); see
also Intellectual Ventures I LLC, 850 F.3d at 1331 ("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."). We further note that, when generically claimed, storing and
retrieving information in memory are computer functions that have been
recognized as either insignificant extra-solution activity or well-understood,
routine, conventional functions. MPEP 2106.05( d)(II)(i) ( citing Versata
Dev. Grp. v. SAP Am., 793 F.3d 1306, 1334 (Fed. Cir. 2015)).
The Federal Circuit, in accordance with Alice, has "repeatedly
recognized the absence of a genuine dispute as to eligibility" where claims
have been defended as involving an inventive concept based "merely on the
idea of using existing computers or the Internet to carry out conventional
processes, with no alteration of computer functionality." Berkheimer v. HP
Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring). As seen
from the discussion above, Appellants' claim 1, as well as claims 2-8, 34--
36, 48, 49, and 58---61 grouped therewith, recite nothing more than the
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implementation of a combination of abstract ideas using existing
computers/servers and components with no alteration of computer
functionality.
The Examiner finds that the claim limitations in claim 1 other than the
abstract idea merely recite well-understood, routine, and conventional
activities (Final Act. 7; Ans. 5-7). We agree. Appellants' Specification in
Figures 1 and 2 and pages 10, line 3 through page 14, line 17 identifies the
server and computer components generically and identify that the algorithm
of the invention shown in Figure 3 can be performed by the a media server
to allocate access the media content (Spec. 7 :9-10, 14: 18-21 ), thus showing
that the use of computers to implement the abstract idea is merely using
known computers. The written description thus describes the server,
processor, memory, and database) in a manner that indicates the components
and the functions they perform were well known in the art. See Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
( explaining that "a patent need not teach, and preferably omits, what is well
known in the art"); see also 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.").
As a result, we are not persuaded that the operation in claim 1 is an
improvement to any technology as opposed to an improvement to a
fundamental economic practice and/or method of organizing human activity.
Considering the claims elements individually and as an ordered
combination, claim 1 does no more than simply instruct the practitioner to
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implement the abstract idea on a generic computer or processer. Id. at 2359;
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.").
We additionally find Appellants' reasoning unpersuasive of Examiner
error, as claim 1 does not recite limitations that "integrat[ e] with an
inventive process that provides access to the media file" (App. Br. 13) by
"providing access to one media file based on a primary license authorizing a
number of secondary licenses, such that the need for storing multiple copies
of the same media file is also eliminated, thereby reducing the need for
additional storage space" (App. Br. 12).
Thus, we are not persuaded by Appellants' arguments (App. Br. 9-12)
that claim 1 is rooted in computer technology, rather, claim 1 merely recites
the use of a server or computer as a tool to implement a method of
organizing human activity involving a fundamental economic principle and a
mental process or evaluation (i.e., an abstract idea). See, e.g., RecogniCorp
LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Unlike
Enfish, [the claim] does not claim a method that improves the functioning of
a computer ... [but] claims a 'process that qualifies as an "abstract idea" for
which computers are invoked merely as a tool."').
Appellants' contentions (App. Br. 12-15) that claim 1 recites
significantly more than the abstract idea because claim 1 is directed to
"improving a media server for providing access to a media file" by
"provid[ing] a new approach to improving access of by multiple users to a
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media file" by eliminating the need for additional storage space to store
multiple copies of the same media file (App. Br. 12), are unpersuasive.
As discussed supra, claim 1 does neither explicitly recites (i)
improving the efficiency or speed of the media server and/or databases, or
(ii) reducing needed database and/or memory storage space. Instead, claim 1
merely recites allocating access to portions of movie files to users based on
licensing determinations used to provide licensing keys, and then storing
data in a memory in response. Furthermore, claim 1 is silent as to actually
providing the movie file to the users ( e.g., by streaming/sending through the
Internet or other network). Thus, the method recited in Appellants' claim 1
does not exhibit the type of activity that distinguishes inventions having
significantly more than the abstract idea from those claims that do no more
than generically link the use of the method to a particular technological
environment, that is, by computers/servers. Alice, 573 U.S. at 226.
For these reasons, we determine claim 1 does not recite an inventive
concept because it simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the abstract idea(s).
Summary
Therefore, under the US PTO' s Revised Patent Eligibility Guidance,
informed by our governing case law concerning 35 U.S.C. § 101, the
Examiner did not err (see supra Issue (1)) in concluding claim 1 ( and claims
2-8, 34--36, 48, 49, and 58---61 grouped therewith) is directed to a judicial
exception, i.e., an abstract idea or combination of abstract ideas, without
significantly more, and thus is patent-ineligible under§ 101. In view of the
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foregoing, we sustain the Examiner's§ 101 rejection of claims 1-8, 34--36,
48, 49, and 58-61 as being directed to patent-ineligible subject matter.
Issue (2 ): Obviousness
We concur with Appellants' arguments (App. Br. 18-23; Reply Br. 3)
that the Examiner erred in finding that Tabet discloses, teaches, or suggests
limitation A as recited in claims 1 and 58, and commensurately recited in
claim 34. Specifically, Tabet's overdraft license ( described at Tabet col. 6,
11. 37--43 and col. 7, 11. 52-59) is not equivalent to the recited "second
primary license" (see claims 1, 34, 58). Instead, we find Tabet's overdraft
license functions as an extra secondary license associated with the first
primary license, and not as the recited second primary license. 25 As a result,
we agree with Appellants' contentions (App. Br. 18-21; Reply Br. 3) that
Tabet, and thus the base combination of Tabet and Gilliam, fails to teach or
suggest limitation A as recited in independent claims 1, 34, and 58,
especially the feature of "requesting ... a second primary license."
Accordingly, we do not sustain the Examiner's obviousness rejection
of independent claims 1, 34, and 58, as well as dependent claims 2-8, 35,
36, 48, and 49, and 59-61 depending respectively therefrom. For similar
reasons, we also do not sustain the Examiner's obviousness rejections of
claims 58---61, which rely on the same base combination of Gilliam and
Tabet discussed supra with respect claims 1 and 34.
25 See e.g., claim 1, "an associated primary license authorizing a number of
secondary licenses."
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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-8, 34--36, 48, 49,
and 58-61 under 35 U.S.C § 101 as being directed to patent-ineligible
subject matter without significantly more.
(2) The Examiner erred in rejecting claims 1-8, 34--36, 48, 49, and
58---61 under 35 U.S.C § 103(a) as being obvious over the base combination
of Gilliam and Tabet, because Tabet fails to teach or suggest requesting a
second primary license as set forth in limitation B as set forth in claim 1 (see
supra claim 1 ), after determining a number of secondary licenses has been
reached as set forth in limitation A as set forth in claim 1 (see supra claim
1 ), as well as the commensurate limitations set forth in claims 34, and in
limitations A and B as set forth in claim 58 (see supra claim 58).
DECISION
For the above reasons, the Examiner's decision rejecting claims 1-30
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
affirmed. And, the Examiner's obviousness rejections of claims 1-8, 34--36,
48, 49, and 58---61 are reversed.
Therefore, we affirm the Examiner's decision to reject claims 1-8,
34--36, 48, 49, and 58---61, because at least one ground of rejection has been
affirmed for each claim. See 37 C.F.R. § 4I.50(a)(l) ("The affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim, except as to any
ground specifically reversed").
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).
34
Appeal2017-010728
Application 12/459,163
AFFIRMED
35