Ex Parte Spurgat et al

Patent Trial and Appeal Board

Jul 27, 2017

13019783 (P.T.A.B. Jul. 27, 2017)

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.
13/019,783 02/02/2011 Jeffrey Jonathan SPURGAT 19487.195.1 1089
107193 7590 07/31/2017
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
OB AID, FATEH M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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@kjpip.com
gj olley @ kj pip. com
tkusitor@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY JONATHAN SPURGAT,
STEPHEN CHRISTOPHER GLADWIN,
and HO YET HARRISON ANDREWS, III
Appeal 2015-005450
Application 13/019,783
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Jeffrey Jonathan Spurgat, Stephen Christopher Gladwin, and Hoyet
Harrison Andrews, III (Appellants) seek review under 35 U.S.C. § 134 of a
Final Rejection of claims 2, 3, 8—13, and 17—20, the only claims pending in
1 Our Decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed October 22, 2014) and Reply Brief (“Reply Br.,” filed April 28,
2015), and the Examiner’s Answer (“Ans.,” mailed March 13, 2015), and
Final Office Action (“Final Act.,” mailed June 13, 2014).
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Application 13/019,783
the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented an audio gateway device. Spec. para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 2, which is reproduced below (bracketed matter and some
paragraphing added).
2. A method comprising:
[1] detecting a connection by a mobile player to a computer
system by way of a wireless communications link;
[2] detecting content collection information stored on the mobile
player;
and
[3] transmitting,
based on the detected content collection information
stored on the mobile player,
the content collection information to at least one other
player that is connected to the computer system by way of
a wireless communication link.
The Examiner relies upon the following prior art:
Janik US 2002/0013852 A1 Jan. 31,2002
Claims 2, 3, 8—13, and 17—20 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 2, 3, 8—13, and 17—20 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Janik.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims are directed to more than the conceptual idea of transcribing
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information. The issues of novelty turn primarily on whether Janik
describes receiving and transmitting content information from one wireless
device to another via a personal computer.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Janik
01. Janik is directed to providing user specified channels for moving
content from the Internet and local storage device to one or more
networked devices for access by end users. Janik para. 2.
02. Janik describes content and data delivered to a variety of devices
via a caching gateway device and a local area network. Software
residing on a PC or PC in combination with a storage gateway
device provides content distribution, management, and interaction
functions. Janik para. 2.
03. Janik describes delivering content, data, and application services
to a variety of thin client devices. Janik allows end users to
program preference-based content for delivery at various client
devices, and then to automatically or under the control of the user,
send the content to client devices for presentation to the end user.
Janik para. 27.
04. Janik describes the high-speed LAN connection 70 between PC
34, storage gateway 38, and devices 78, as a HomeRF wireless
network. Janik para. 73.
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05. Janik describes content 10 on Internet 8 being arranged for
delivery to local client devices 78a, b, c, and d, by a system that
allows for graphical icons, referred to in this disclosure as content
objects 20 that exist on content selection web page 22, to be
dragged and dropped onto content editors on a PC 34. Drag and
droppable content object 20 is a graphical representation of a file
system path that points to a digital content file stored locally on
hard disk drive 30 on PC 34 or on storage gateway 38, or on a
server on Internet 8, or is the graphical designation of a URL or IP
address and port number of a digital content stream originating on
a server on Internet 8. The purpose of the portal is to simplify and
facilitate the discovery and selection of content 10 from Internet 8
for later use on client devices 78. Janik para. 74.
06. Janik describes an audio playback device as an example of its
client devices. Janik paras. 108 and 117. The audio playback
device uses a wireless data connection. Janik para. 118.
07. Janik describes providing content and other information services
to thin client devices implemented with just PC 34. LAN 70 is
established by the use of a HomeRF wireless LAN access point
54. Janik para. 186.
08. Janik describes content 10 being automatically accessed,
downloaded and cached on PC 34, and then automatically
streamed to client devices 78. Janik para. 187.
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ANALYSIS
Claims 2, 3, 8—13, and 17—20 rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter
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 Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
While 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 preambles to claims 2 and 11 do not recite what the method is
directed to, but the steps in claims 2 and 11 result in copying content. The
Specification at page 1 recites that the invention relates to synchronizing the
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digital audio content and playlists between the digital audio playback
devices. Thus, all this evidence shows that claims 2 and 11 are directed to
copying content, i.e., transcription.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of transcription is a fundamental business
practice long prevalent in our system of commerce. The use of transcription
is also a building block of any literate society. To the extent the content is
audio or video content, this practice is at least as old as tape recorders, which
were routinely used to copy audio from long playing records back in the
1950’s and 1960’s. In the more general context of content including written
words, this practice is as old as the employment of scriveners. Thus,
transcription like hedging, is an “abstract idea” beyond the scope of § 101.
See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
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 collecting and storing data, which has previously
been determined to be an abstract idea (see Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d 1343, 1346—
47 (Fed. Cir. 2014)) and the concept of transcription at issue here. Both are
squarely within the realm of “abstract ideas” as the Court has used that term.
See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing
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it, and displaying certain results of the collection and analysis” are “a
familiar class of claims ‘directed to’ a patent ineligible concept”); see also In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 2, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 2 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
The remaining claims merely describe the type of content and devices.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
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 if” 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 pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers . . . , wholly generic computer
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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 (internal 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 detect connections and content are among the most primitive
operations, and to receive and transmit data amounts to electronic data query
and retrieval—one of the most basic functions of a computer. All of these
computer functions are well-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’ method claims
simply recite the concept of transcription as performed by a generic
computer. To be sure, the claims recite doing so by advising one to transmit
certain data based on the type of connection and content. But, this is no
more than abstract conceptual advice on the parameters for such
transmission and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
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any other technology or technical field. The 34 pages of written description
in the Specification spell out different generic equipment and parameters
that might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of transmitting
data under different criteria. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of transcription using some unspecified, generic computer.
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.
We are not persuaded by Appellants' argument that the claims are
directed towards a computer system for use in a wireless network that
includes detecting a connection by a mobile player to the computer system,
detecting or otherwise receiving content collection information stored on the
mobile player, and transmitting the content collection information to at least
one other player based on the detected/received content collection
information stored on the mobile player. Reply Br. 3—A. Again, this is no
more than transcription. Simply using a communication device as it is
designed adds nothing concrete to the claim. See In re TLI Commc ’ns, 823
F.3d at 612—13 (Using a generic telephone for its intended purpose was a
well-established “basic concept” sufficient to fall under Alice step 1.)
Claims 2, 3, 8—13, and 17—20 rejected under 35 U.S.C. § 102(e) as
anticipated by Janik
Claims 2 and 11, the only independent claims, are both method claims
and are similar, but phrased slightly different. The first step in claim 2
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detects a connection by a mobile player to a computer system. The first two
steps in claim 11 recite steps inherent in forming that connection, viz.
detecting the wireless device (inherent in the basic input/output connection
protocol) and then establishing the wireless communication link (inherent in
the wireless network protocol). Neither claim recites nor narrows the
implementation for detecting or the time frame for that relative to the
remaining steps. Although claim 2 recites a mobile player, this is not further
narrowed or structurally defined, and so any player that may be moved, such
as because it uses a wireless connection, is within the scope. In particular,
Janik’s wireless storage gateway, which is simply a hard drive connected by
a wireless link, is small enough to be considered portable, given the sizes of
stand-alone commercial hard drives for use by personal computers.
The second step in claim 2 then detects content on the mobile player,
whereas the comparable step, the third, in claim 11 receives information
about that content. Again, implementations are neither recited nor narrowed.
The content detection in claim 2 is a necessarily inherent step of receiving
the content in claim 11, as any file system tests for data presence prior to file
access.
The final steps in each claim transmit that content to another device.
And again, implementations are neither recited nor narrowed. The claims
actually refer to content information, rather than just content, but content
information itself is content, so the nature of the content or content
information is immaterial.
Thus, both claims see whether there is content to be copied, and if so,
copy the content. Because the claims do not recite how the detection occurs,
detection as a result of human commands is within the scope.
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Janik describes content received from a wireless storage gateway that
is transmitted to wireless audio playback devices by a PC. Thus, Janik
describes both claims 2 and 11.
We are not persuaded by Appellants' argument that Janik does not
disclose "detecting content collection information stored on the mobile
player," as recited in independent claim 2. App. Br. 8. Again, this is an
inherent aspect of the file access Janik describes on its storage gateway. To
the extent Appellants contend that Janik requires human intervention by
selecting content, this is within the scope of the claims as drafted because no
implementation is recited.
We are not persuaded by Appellants' argument that Janik does not
disclose transmitting, based on the detected content collection information
stored on the mobile device, the content collection information to at least
one other player that is connected to the computer system by way of a
wireless communication link. App. Br. 9. Janik describes transmitting the
selected (detected) content from its storage gateway to its audio playback
device. As this is based on the selected content, the transmission is based on
the detected content collection information stored on the mobile device.
We are not persuaded by Appellants' argument as to claim 11 that
Janik does not disclose transmitting, based on the received information about
the content collection stored on the second device, the information about the
content collection to a third device for the same reasons supra with respect to
claim 2. App. Br. 11.
We are not persuaded by Appellants' argument that in regards to claim
3, Janik does not disclose detecting and transmitting content collection
information where the content collection information includes an
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identification of a multimedia content sequence on the mobile player and a
position in the multimedia sequence that is currently playing on the mobile
player. App. Br. 12. No manner of identification is recited. Thus, Janik’s
content transmission itself is a sequence and that sequence itself identifies
the content. Further, as the content is played on the playback device, the
position of playback is also necessarily inherent.
We are persuaded by Appellants' argument that in regards to claim 8,
Janik does not disclose that content collection information is received as part
of a broadcast message by the mobile player. App. Br. 13. The Examiner
cites the AM/FM tuner in Janik’s playback device. Final Act. 3. Such
signals are not part of the content information received from a mobile
device.
CONCLUSIONS OF LAW
The rejection of claims 2, 3, 8—13, and 17—20 under 35 U.S.C. § 101
as directed to non-statutory subject matter is proper.
The rejection of claims 2, 3, 9-13, and 17—20 under 35 U.S.C.
§ 102(e) as anticipated by Janik is proper.
The rejection of claim 8 under 35 U.S.C. § 102(e) as anticipated by
Janik is improper.
DECISION
The rejections of claims 2, 3, 8—13, and 17—20 are affirmed.
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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)(l)(iv).
AFFIRMED
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