James O. Boggs et al.

Patent Trials and Appeals Board

Jul 23, 2019

14162595 - (D) (P.T.A.B. Jul. 23, 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.
14/162,595 01/23/2014 James O. Boggs 535009 (P20883US1) 4334
77970 7590 07/23/2019
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1661 Page Mill Road
Suite A
Palo Alto, CA 94304
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES O. BOGGS, RYAN GRIGGS, and SAM
GHARABALLY1
____________________

Appeal 2018-006279
Application 14/162,595
Technology Center 3600
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 14 through 20, 22, 23, 26 and 27. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellants, Apple Inc. is the real party in interest. App.
Br. 3.
Appeal 2018-006279
Application 14/162,595

2
INVENTION
The invention is directed to a technique for inserting dynamic content
into podcast episodes. Abstract. Claim 14 is illustrative of the invention and
is reproduced below.
14. A system comprising:
a processor; and
a computer-readable storage medium having stored
therein instructions which, when executed by the processor,
cause the processor to perform operations comprising:
receiving, from a podcast provider, a podcast
episode comprising at least one media item and one or
more break tags that each define an available insertion
point for a media item within the podcast episode;
inserting the media item in a selected insertion
point within the podcast episode;
publishing the podcast episode to a platform for
transmitting the podcast episode to a plurality of user
devices in a distributed network of user devices;
receiving, from the plurality of user devices in a
distributed network of user devices, playcount
information for the podcast episode, the playcount
information including a number of times the media item
was previously inserted into the selected insertion point
in the podcast episode and consumed by one or more
client devices in the plurality of user devices in the
distributed network of client devices;
modifying, based on the playcount information, a
selection of the insertion point to define an additional
selected insertion point;
transmitting the podcast episode with the
additional selected insertion point to an additional client
device for playback;
during playback of the podcast episode at the
additional client device, dynamically inserting the media
item into the additional selected insertion point of the
podcast episode when playback of the podcast episode
reaches the additional selected insertion point by:
Appeal 2018-006279
Application 14/162,595

3
determining segments of the podcast
episode, a respective segment of the segments
corresponding to the additional selected insertion
point; and
inserting the media item into the respective
segment of the podcast episode.

EXAMINER’S REJECTIONS2
The Examiner rejected claims 14 through 20, 22, 23, 26 and 27 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Final
Act. 2–4.
The Examiner rejected claims 14, 15, 17 through 19, 22, 23, 26 and 27
under 35 U.S.C. § 103 as being unpatentable over Reisner et al. (US
2014/0344852 A1, published Nov. 20 2014) (“Reisner”), and Kitchen et al.
(US 2010/0131355 A1, published May 27, 2010) (“Kitchen”). Final Act. 5–
20.
The Examiner rejected claims 16 and 20 under 35 U.S.C. § 103 as
being unpatentable over Reisner, Kitchen and Pitkow et al. (US
2006/0167749 A1, published July 27, 2006) (“Pitkow”). Final Act. 20–22.

ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have persuaded us of error in the
Examiner’s rejection of claims 14 through 20, 22, 23, 26 and 27 under

2 Throughout this Decision we refer to the Appeal Brief filed December 28,
2017 (“App. Br.”); the Reply Brief filed May 29, 2018 (“Reply Br.”); Final
Office Action mailed May 26, 2017 (“Final Act.”); and the Examiner’s
Answer mailed March 27, 2018 (“Ans.”).
Appeal 2018-006279
Application 14/162,595

4
35 U.S.C. § 101 and 35 U.S.C. § 103.

Rejection under 35 U.S.C. § 101
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.

There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
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, 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
Appeal 2018-006279
Application 14/162,595

5
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, 67 (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 that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; 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
Appeal 2018-006279
Application 14/162,595

6
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 (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. (alternations in original) (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 United States Patent and Trademark Office “USPTO” recently
published revised guidance on the application of § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Memorandum”). Under that guidance, we first determine
whether the claim recites:
(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)).
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:
Appeal 2018-006279
Application 14/162,595

7
(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.
ANALYSIS
The Examiner determines the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 2–4. Specifically, the Examiner determines the claims are directed to
an abstract idea stating the claims:
are directed to collecting and analyzing information in order to
produce a desirable information-based result, which is similar
to the concept identified as abstract by the court in Electric
Power Group; the overall purpose and effect, that of inserting
content within other content, is similar in terms of use of
technology with the dynamic replacement of data with other
data in Chicago Board Options Exch.

Final Act. 2–3 (citing Elec. Power Grp., LLC. v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016)).
Appellants argue that the claims are rooted in computer technology,
solving a problem found in podcasts. App Br 10–12 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). Further,
Appellants argue the Examiner overgeneralized the claims and has not
adequately analyzed what the claims are directed to and that when
considered as a whole are directed to a patent eligible process. App Br. 12–
15 (citing Enfish, LLC v Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
Appeal 2018-006279
Application 14/162,595

8
and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)). Finally, Appellants argue that the Examiner’s reliance on Electric
Power Group is improper as the claims in Electric Power Group were
directed to collecting, analyzing and displaying data, whereas the current
claims include limitations directed to a specific solution, modifying insertion
points in a podcast. App. Br. 15–18.
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of independent claims 14, 18, and 22 under 35 U.S.C. § 101. As
discussed above, the USPTO has published recently revised guidance for the
application of § 101 and under that guidance we first determine whether the
claims recite a judicial exception including certain abstract ideas. Here the
Examiner has found that the claims recite an abstract idea, analogizing
Appellants’ claims to the claims at issue in Electric Power Group, LLC. v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 2–3; Answer 7–8.
Further, the Examiner has found that the term podcast broadly interpreted
can include a text file and that the claims recite a process a person could
perform by hand with a pencil. Answer 4.
Initially, we note that we disagree with Appellants’ arguments on
page 1 and 2 of the Reply Brief, that the Examiner’s interpretation that a
podcast broadly includes a text file is improper. Appellants’ Specification in
paragraph 48 identifies that a podcast can be text. Nonetheless, we agree
that the Examiner erred in finding the claims are directed to an abstract idea.
The revised guidance identifies as abstract: 1) mathematical concepts; 2)
certain methods of organizing human activity, such as fundamental
economic principles or practices (including hedging, insurance, mitigating
risk), commercial or legal interactions (including contracts, legal obligations,
Appeal 2018-006279
Application 14/162,595

9
advertising, marketing or sales activities or behaviors, business relations),
and managing personal behavior or relationships or interactions between
people; and 3) mental processes as concepts performed in the human mind
(including observations, evaluations, judgments, and opinions).
The Examiner has not identified the claims as reciting abstract ideas
in one of these categories. By citing Electric Power Group and finding that
the claims recite a process that could be performed by hand, it appears the
Examiner is finding the claims recite a mental process.
We disagree as the Examiner has not sufficiently demonstrated that
the claims recite a mental process. Each of independent claims 14, 18, and
22 recite a limitation directed to collecting information (podcast episode and
play count) as identified by the Examiner. Final Act. 3. However, the
claims recite more than merely analyzing or displaying the information as in
Electric Power Group. The claims include “inserting the media item in a
selected insertion point within the podcast episode” and “publishing the
podcast episode” thereafter the claim also recites receiving the playcount
and “modifying, based on the playcount information, a selection of the
insertion point to define an additional selected insertion point” and “during
playback of the podcast episode at the additional client device, dynamically
inserting the media item into the additional selected insertion point of the
podcast episode when playback of the podcast episode reaches the additional
selected insertion.” The Examiner has merely stated these features are
similar to Electric Power Group without explaining how they are similar.
The claims at issue in Electric Power Group recite several steps of
receiving data from various sources, detecting and analyzing the data and
displaying the data. Elec. Power Grp., 830 F.3d at 1351–52. The court
Appeal 2018-006279
Application 14/162,595

10
identified “we have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.” Id. at 1353 (Fed. Cir. 2016) (collecting
cases). Further, the court stated “that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.” Id. at 1354 (citing Content
Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014)). However, the instant claims are unlike those at issue
in Electric Power Group in that they do not merely recite displaying the
results, but rather recite modifying a selection of insertion point which is
part of a transmitted podcast i.e. the claim recites modifying a podcast.
Further, while we concur with the Examiner that the podcast can be a text
file we fail to see how this demonstrates that the claimed concepts of
changing the insertion point based upon playcount as claimed recites a
mental processes, concepts performed in the human mind (observations,
evaluations, judgments and opinions). Thus, we do not find that the
Examiner has provided sufficient explanation to demonstrate the claims are
directed to abstract idea. Accordingly, we do not sustain the Examiner’s
rejection of claims 14 through 20, 22, 23, 26, and 27 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

Rejections under 35 U.S.C. § 103
Appellants argue the Examiner’s rejection of independent claims 14,
18 and 24 is in error as the combination of Reisner and Kitchen do not teach
modifying based upon a playcount, a selection of an insertion point to define
Appeal 2018-006279
Application 14/162,595

11
an additional selected insertion point as recited in the claims. App. Br. 25–
28. Specifically, Appellants argue that Reisner teaches inserting an
advertisement into a stream of videos by clipping (removing) a portion of
the stream. App. Br. 26 (citing Reisner para. 38, 22, 64, and 67). Appellants
argue that Reisner does not teach modification of an insertion point to define
an additional insertion point. App. Br. 26–27; Reply Br 12.
The Examiner in the Final Rejection cites Reisner as teaching the
limitation directed to modifying the insertion point to define an additional
insertion point. Final Act 6 (citing Reisner para. 37 and 39). The Examiner
responds to Appellants’ argument stating:
Looking for example at ¶ 0065 [of Appellants’ Specification], a
“break tag” is a specific example of an “insertion point”, and a
“break tag” can indicate the start time “and/or” end time of a
break, so using “or” from “and/or”, it is explicit that an
“insertion point” can be the start time of a break, and another
“insertion point” can be the end time of a break, and this is
precisely what the Reisner reference provides for in the cited
paragraphs: selecting a point at which to begin inserting
content, and then based on a numeric value (in his case the
length of the inserted content) selecting another point at which
to end the inserting, and explicitly modifies these, for example
in the case where performing the insertion at the originally-
proposed point might cause buffering or other undesirable
characteristics because of being too near the beginning or end
of a segment.
Answer 12.
While we agree with the Examiner that the break tag can be an
insertion point, we do not find that the teachings are sufficient to meet the
claims. The independent claims recite an insertion point for inserting the
media object into the podcast and publishing that podcast. Further, the
claims recite modifying the insertion point (of the previously published
Appeal 2018-006279
Application 14/162,595

12
podcast) to define an additional insertion point and transmitting the podcast
with the additional insertion point. Thus, there are two insertion points
claimed for different podcasts, an initial insertion point and an additional
insertion point. The paragraphs of Reisner cited by the Examiner discuss
how to create an insertion point, but not for creating an additional insertion
point in a subsequently transmitted podcast (with the additional insertion
point). The Examiner’s statement above concerning the start time of the
break point and the end point being the two insertion points does not meet
this as they are for the same podcast. Thus, the Examiner has not shown that
the combination of Reisner and Kitchen teach the limitations of independent
claims 14, 18, and 24. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claims 14, 15, 17 through 19, 22, 23, 26, and 27
under 35 U.S.C. § 103.
The Examiner has not shown that the additional teachings of Pitkow
make up for the deficiencies in the rejection of independent claims 14 and
18. Accordingly we do not sustain the Examiners obviousness rejection of
claims 16 and 20 for the same reasons as claim 14 and 18.

DECISION
We reverse the Examiner’s rejection of claims 14 through 20, 22, 23,
26 and 27 under 35 U.S.C. § 101 and 35 U.S.C. § 103.

REVERSED