Jack Chung

Patent Trials and Appeals Board

Sep 11, 2019

13912989 - (D) (P.T.A.B. Sep. 11, 2019)

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.
13/912,989 06/07/2013 Jack Chung 100110-000120US 1047
37490 7590 09/11/2019
Trellis Intellectual Property Law Group, PC
1900 EMBARCADERO ROAD
SUITE 109
PALO ALTO, CA 94303
EXAMINER
MAI, KEVIN S
ART UNIT PAPER NUMBER
2456
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
docket@trellislaw.com
effei@trellislaw.com
megan@trellislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JACK CHUNG
____________________

Appeal 2018-008451
Application 13/912,989
Technology Center 2400
____________________

Before: CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.

LENTIVECH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
48–56. Claims 1–47 have been cancelled. Br. 20 (Claims Appendix). We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 According to Appellant, the real party in interest is Matrixstream
Technologies. Br. 3.
Appeal 2018-008451
Application 13/912,989

2

STATEMENT OF CASE
The claims are directed to “transferring information, such as video
content, via a network.” Spec. ¶ 2. Claim 48, reproduced below, is
illustrative of the claimed subject matter:
48. A method for downloading digital content to a user of a
client system from a server system in response to a request by the
user for the digital content, the method comprising:
authenticating the user; and
initiating download of the digital content from the server
system to the client system via a best-effort network using a TCP
protocol determined by a protocol handling module within the
client system, the protocol comprising:
initializing a plurality of communication streams from the
server system through the network to the client system, the
plurality of communication streams including a control stream, a
chapter stream and a plurality of data content streams, the data
content streams being configured to carry the requested digital
content;
monitoring at least one of network performance, network
latency, and transmission progress of the requested digital
content; and
adjusting, via the control stream, download parameters of
the data content streams in response to the monitoring;
wherein the best-effort network, to which the client system
and the server system are directly connected, is the internet.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hendricks US 5,990,927 Nov. 23, 1999
Hameleers
Jain
Li
US 2005/0021804 A1
US 2005/0183120 A1
US 2005/0275752 A1
Jan. 27, 2005
Aug. 18, 2005
Dec. 15, 2005
Appeal 2018-008451
Application 13/912,989

3

REJECTIONS
The Examiner made the following rejections:
Claims 48–56 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Final Act. 6.
Claims 48–51, 53, 55, and 56 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Hameleers, Jain, and Li.
Final Act. 6–16.
Claims 52 and 54 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hameleers, Jain, Li, and Hendricks.
Final Act. 16–18.
ANALYSIS
Rejection under 35 U.S.C. § 101
Regarding the rejection of claims 48–56 under 35 U.S.C. § 101,
Appellant does not substantively argue the claims separately with
particularity, but relies on the same arguments for all claims. See Br. 11–
12. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select independent
claim 48 as the representative claim. Remaining claims 49–56 stand or fall
together with claim 48.

PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
Appeal 2018-008451
Application 13/912,989

4
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. 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. Kappos, 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 (Gottschalk v. 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 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
Appeal 2018-008451
Application 13/912,989

5
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“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
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 turn 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 (internal citation 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 on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we first look
to whether the claim recites:
Appeal 2018-008451
Application 13/912,989

6
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 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
is 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.
See Memorandum, 84 Fed. Reg. at 56.

OUR REVIEW
STEP 1
Under “Step 1” of the analysis, we determine whether the claimed
subject matter falls within the four categories of patentable subject matter
identified by 35 U.S.C. § 101. Memorandum, 84 Fed. Reg. at 53–54. Claim
48 is directed to a method and, therefore, falls within the four categories of
patentable subject matter—a process.

Appeal 2018-008451
Application 13/912,989

7
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance

Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
Under “Step 2A, Prong One” of the analysis, we determine whether
the claim recites a judicial exception. Memorandum, 84 Fed. Reg. at 54.
Claim 48 recites, among other things, the limitation “authenticating the
user.” This limitation, as drafted, is a process that, under its broadest
reasonable interpretation, is an observation, evaluation, or judgment that can
be performed in the human mind. For example, a person can authenticate
another person based on determining that a person looks like the person
pictured on a government issued identification card. Thus, this limitation
recites a mental process and, therefore, an abstract idea. Memorandum, 84
Fed. Reg. at 52.
Claim 48 also recites “monitoring at least one of network
performance, network latency, and transmission progress of the requested
digital content.” This limitation, as drafted, is a process that, under its
broadest reasonable interpretation, can be performed in the human mind.
For example, a person can use an application executing on a computer to
download digital content from a server. The application may display an icon
indicating a current percentage of the content that has been downloaded to
the computer. The user may monitor a transmission progress of the digital
content by observing the icon. Thus, this limitation recites a mental process
and, therefore, an abstract idea. Memorandum, 84 Fed. Reg. at 52.

Appeal 2018-008451
Application 13/912,989

8
Step 2A—Prong 2 (integration into Practical Application)2
Under “Step 2A, Prong Two,” we determine whether the claim as a
whole integrates the recited judicial exception into a practical application of
the exception. Memorandum, 84 Fed. Reg. at 54. Claim 48 recites the
following additional limitations:
initiating download of the digital content from the server
system to the client system via a best-effort network using a TCP
protocol determined by a protocol handling module within the
client system, the protocol comprising:
initializing a plurality of communication streams from the
server system through the network to the client system, the
plurality of communication streams including a control stream, a
chapter stream and a plurality of data content streams, the data
content streams being configured to carry the requested digital
content;
. . . and
adjusting, via the control stream, download parameters of
the data content streams in response to the monitoring;
wherein the best-effort network, to which the client system
and the server system are directly connected, is the internet.
Br. 20 (Claims Appendix).
With respect to these additional limitations, the Examiner finds “the
steps of setting up the download . . . is a generic function since any data
transfer on the internet is comprised of uploading and downloading” and “it
does not appear that initiating a download on the internet is beyond a generic
function.” Ans. 2. The Examiner further finds the additional limitations

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum, 84 Fed. Reg. at 55 n 25, 27–32.

Appeal 2018-008451
Application 13/912,989

9
“appear to be related to the identified abstract idea ‘delivering user-selected
media content to portable devices’” and “the steps regarding monitoring and
adjusting . . . appear to be directed to ‘comparing new and stored
information and using rules to identify options’” and, therefore, “are directed
toward an abstract idea.” Ans. 2–3.
Appellant argues the additional limitations “recite not simply the
downloading of digital content in response to [a] user request, but also the
steps necessary to carry out the downloading” and the additional limitations
“go[] well beyond what would have been understood at the time of filing as
‘generic functions.’” Br. 11. Appellant further argues the claimed
“initiating download of the digital content” “details a specific technological
method that results in the desired download [of digital content]” and
provides the technological benefit of “providing highly efficient transfer of
large [data] files without requiring QOS [Quality of Service] network
functionality.” Br. 11.
We find Appellant’s arguments persuasive. Although each of the
additional limitations analyzed individually may be viewed as mere extra-
solution activity, the claim as a whole is directed to a particular
improvement in downloading content from a server. Appellant’s
Specification provides that “existing file transfer and download-scheduling
techniques employ relatively inefficient protocols characterized by slow
download times and network-traffic bottlenecks” and that “[s]uch inefficient
data-transfer protocols limit VOD [Video-On-Demand] quality and
functionality.” Spec. ¶ 4. With respect to addressing these problems, the
Specification provides:
Appeal 2018-008451
Application 13/912,989

10
Use of plural data streams significantly improves delivery of
bandwidth-intensive content, such as video, over best-effort
networks, which lack Quality Of Service (QOS) guarantees. Use
of plural data streams helps to stabilize content-transfer rates and
to increase acceptable content transfer rates. Furthermore,
auxiliary data streams provide auxiliary information that enables
embodiments of the present invention to offer greatly enhanced
functionality over conventional network-based content-delivery
systems, such as conventional VOD systems.
Spec. ¶ 8. As such, we find the additional limitations recited in claim 48
improve the functioning of a computer and, therefore, integrate the recited
judicial exception into a practical application. See Memorandum, 84 Fed.
Reg. at 54–55. Thus, claim 48 recites patent eligible subject matter because
it is not directed to the recited judicial exception. Id. Claims 49–56 recite
corresponding limitations and, therefore, recite patent eligible subject matter
for the reasons discussed above with respect to claim 48.

Rejections under 35 U.S.C. § 103(a)
Issue: Did the Examiner err by finding the combination of Hameleers, Jain,
and Li teaches or suggests “initiating download of the digital content from
the server system to the client system via a best-effort network using a TCP
protocol determined by a protocol handling module within the client
system,” as recited in claim 48?
Appellant contends the cited references fail to teach or suggest the
disputed limitations because Li, upon which the Examiner relies, does not
teach “the use of a TCP protocol determined by a protocol handling
module within the client system to initiate download of digital content
from a server to a client system,” as required by claim 48. Br. 14.
Appellant argues “all the teachings in the cited passage [of Li] concern the
Appeal 2018-008451
Application 13/912,989

11
operation of the server sending data into the channel which eventually leads
to the client system, and adjusting the number of connections as desired.”
Br. 14.
We find Appellant’s argument persuasive. Regarding the claimed
“TCP protocol,” the Examiner finds:
Paragraph [0003] of Li discloses enabling a streaming server to
perform minimal real-time processing and rate control when
outputting a very large number of simultaneous unicast (on-
demand) streams. Paragraph [0008] discloses typically, RTP
[Real-time Transport Protocol] runs on top of the UDP [User
Datagram Protocol] protocol, although the specification is
general enough to support other transport protocols. The User
Datagram Protocol is a connectionless protocol that, like TCP,
runs on top of IP networks.
Final Act. 8–9. Additionally, the Examiner finds Li teaches an architectural
framework for streaming scalable coded video over IP networks that allows
a server to create multiple RTP connections to accommodate each sub-layer
of a layered video stream which allows for the desired adaptation based on
client preference. Ans. 5; Final Act. 2–3 (citing Li ¶ 25). The Examiner
concludes Li teaches or suggests “a TCP protocol determined by a protocol
handling module within the client system” because Li’s teaching regarding
allowing for adaptation based on client preference “indicates client
involvement in the scalable connections” and “Li’s disclosure of using TCP
requires that both the server and the client have appropriate TCP handling
modules in order to use TCP to communicate.” Ans. 5.
The Examiner’s findings fail to show how “indicat[ing] client
involvement in the scalable connections” teaches or suggests that the TCP
protocol is determined by a protocol handling module within a client system,
as required by claim 48. Instead, Li explicitly teaches that the architectural
Appeal 2018-008451
Application 13/912,989

12
framework “allow[s] a server to create multiple RTP connections to
accommodate each sub-layer of a layered video stream which allows for the
desired adaptation to channel characteristics, complexity, client preference,
etc.” Li ¶ 25 (emphasis added). Thus, we find one of ordinary skill in the
art would understand Li as teaching that the server creates multiple RTP
connections (e.g., determines a protocol for streaming scalable coded video
over an IP network) based on client preferences.
Accordingly, we do not sustain the Examiner’s rejection of claim 48;
independent claims 55 and 56, which recite similar limitations; and claims
49–51 and 53, which depend from claim 48.
Claims 52 and 54 depend from claim 48. Br. 21 (Claims Appendix).
Claims 52 and 54 are rejected under 35 U.S.C. § 103(a) based on Hameleers,
Jian, Li, and Hendricks. Final Act. 16–18. The Examiner does not find the
teachings of Hendricks cures the deficiencies in the teachings of Li
discussed above with respect to claim 48. See id. Accordingly, we also do
not sustain the rejection of claims 52 and 54.
Because we find this issue to be dispositive as to the obviousness
rejection of all the pending claims, we do not reach the issues raised by
Appellant’s remaining arguments.
DECISION
We reverse the Examiner’s rejection of claims 48–56 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejections of claims 48–56 under 35
U.S.C. § 103(a).

REVERSED