Milne, James R. et al.Download PDFPatent Trials and Appeals BoardDec 9, 201915066792 - (D) (P.T.A.B. Dec. 9, 2019) Copy Citation 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. 15/066,792 03/10/2016 James R. Milne 201405341.10 9388 36738 7590 12/09/2019 ROGITZ & ASSOCIATES 4420 Hotel Circle Court SUITE 230 SAN DIEGO, CA 92108 EXAMINER HUYNH, AN SON PHI ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 12/09/2019 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): John@rogitz.com Noelle@rogitz.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES R. MILNE, FRED ANSFIELD, and FREDERICK J. ZUSTAK Appeal 2018-001757 Application 15/066,792 Technology Center 2400 ____________ Before ERIC S. FRAHM, BETH Z. SHAW, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1–7 and 17–20. Claims 8–16 are withdrawn. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We affirm in part and enter NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sony Corp. (Appeal Br. 2.) Appeal 2018-001757 Application 15/066,792 2 THE INVENTION Appellant’s disclosed and claimed invention is directed to sharing of video content among customers in a multiple systems operator (MSO) video network. (Abstract.) Independent claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. An apparatus comprising: at least one computer memory that is not a transitory signal and that comprises instructions executable by at least one processor to: receive a request from a first digital video recorder (DVR) in an establishment of a first customer in a multiple systems operator (MSO) video network to access the MSO video network; responsive to the request to access the MSO video network, rendering content on the first DVR available for access by other devices in the MSO video network; receive a request for content from the first DVR, the MSO video network including at least a second DVR in an establishment of a second customer, the establishment of the first customer being remote from the establishment of the second customer; responsive to the request for content, query the MSO video network for content satisfying the request; responsive to identifying the content satisfying the request on the second DVR, copy the content satisfying the request from the second DVR to the first DVR; and present a message to inform the first customer that by accessing content on the MSO network, the customer agrees to share content on first DVR with other members of the MSO network. Appeal 2018-001757 Application 15/066,792 3 REJECTIONS The Examiner rejected claims 17–20 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Non-Final Act. 11–12.) The Examiner rejected claims 17–20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. (Non-Final Act. 12–14.) The Examiner rejected claims 1–7 and 17–20 under 35 U.S.C. § 103, as being unpatentable over Ellis et al. (US 2007/0157281 A1, pub. July 5, 2007 (“Ellis”)). (Non-Final Act. 14–24.) ISSUES ON APPEAL Appellant’s arguments present the following issues:2 Issue One: Whether the Examiner erred in finding claims 17–20 fail to comply with the written description requirement. (Appeal Br. 4.) Issue Two: Whether the Examiner erred in concluding claims 17–20 are directed to non-statutory subject matter. (Appeal Br. 4–10.) Issue Three: Whether Ellis teaches or suggests the independent claim 1 limitations: responsive to the request to access the MSO video network, rendering content on the first DVR available for access by other devices in the MSO video network; and present a message to inform the first customer that by accessing content on the MSO network, the customer agrees to share content on first DVR with other members of the MSO network, 2 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed Sept. 12, 2017; suppl. Oct. 5, 2017); the Reply Brief (filed Dec. 4, 2017); the Non-Final Office Action (mailed July 19, 2017); and the Examiner’s Answer (mailed Nov. 3, 2017) for the respective details. Appeal 2018-001757 Application 15/066,792 4 and the commensurate limitations of independent claim 17. (Appeal Br. 10– 11.) ANALYSIS Issue One — Written Description The Examiner finds that the “selector . . . adjacent the message” requirement of claim 17 does not comply with the written description requirement. (Non-Final Act. 12 (emphasis omitted).) The Examiner focuses on Figure 24 of the Specification, set forth below. Id. Figure 24 is a screen shot of an exemplary user interface, showing a message 2414 and a selector 2410. (Spec. 4, 38–39.) The Examiner finds that the illustrated selector is not adjacent to the message in this figure, and therefore the Specification does not support the limitation at issue. Id. Appellant argues that this same Figure 24 supports the “adjacent” requirement. (Appeal Br. 4.) We agree because both the “Stream” and “No thanks” selectors (2410, 2412) are reasonably characterized as “adjacent” to message 2414. The Examiner appears to apply an unduly narrow meaning Appeal 2018-001757 Application 15/066,792 5 to the word “adjacent,” which is not in accord with the broader range of meanings of the word and which in this context is not reasonable.3 Accordingly, we do not sustain the Examiner’s written description rejection. Issue Two — Eligibility The Examiner concludes claims 17–20 are patent-ineligible under 35 U.S.C. § 101 because the claims are directed to “the abstract idea of receiving a request for content/service, searching [for] and providing the requested content.” (Non-Final Act. 13.) The Examiner further concludes that there is nothing in the claims that is significantly more than this abstract idea, given that the additional elements are “basic computer components (DVRs, MSO) [that] perform purely generic computer functions.” (Non- Final Act. 14.) Appellant argues the Examiner’s characterization of the claimed subject matter is improperly “boiled down,” and that the actual claim 17 limitations (on which Appellant bases its arguments) are directed to a “specifically recited MSO network,” and do not “‘pre-empt use of’ the alleged abstract idea ‘in all fields.’” (Appeal Br. 5–6 (citing Bilski v. Kappos, 561 U.S. 593, 611–12 (2010)).) Appellant further argues the claimed subject matter “improve[s] computer functionality by providing specifically enumerated MSO network use.” (Appeal Br. 7 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).) In addition, Appellant argues the Examiner has failed to provide adequate support for the conclusion that the additional elements included in the claims are generic or routine. (Appeal Br. 9.) For the reasons set forth below, we are not persuaded the Examiner erred. 3 E.g., “lying near” (dictionary.com.) Appeal 2018-001757 Application 15/066,792 6 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S. C. § 101. Here, independent claim 17 and its dependent claims relate to a method — i.e., a process. However, the Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 598–99 (2013)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice, 573 U.S. at 216–217. In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 217. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. 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 v. Kappos, 561 U.S. 593, 611 (2010); mathematical concepts (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. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2018-001757 Application 15/066,792 7 If the claims are directed to a patent-ineligible concept, the second step in the Alice/Mayo analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the second step is to “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.’” 573 U.S. at 217–218 (alteration in original, internal quotation marks omitted) (quoting Mayo, 566 U.S. at 72–73). 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. 573 U.S. at 221. A transformation into a patent-eligible application requires more than simply stating the abstract idea while adding the words “apply it.” Id. Further to the Alice/Mayo analytical framework, after the mailing of the Answer and the filing of the Briefs in this case, the USPTO published revised guidance on the application of Section 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised Guidance”). Under the Revised Guidance, 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 organizing human activity such as a fundamental economic practice, or mental processes); and Appeal 2018-001757 Application 15/066,792 8 (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office 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 Revised Guidance. In evaluating the claims at issue, we consider claim 17 as representative, consistent with how Appellant and the Examiner analyze the claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2016). Omitting the portions of the claim invoking use of generic technology (which are discussed separately below), the remaining limitations of claim 17 elaborate on a method of sharing recorded video content, via the steps of: (i) “receiving . . . a request for content”; (ii) “accessing a [source of content] to search for the content”; (iii) “responsive to locating the content on a [remote source], enabling access to the content . . .”; (iv) “presenting a message to inform that by accessing content on the [source], a user agrees to share content . . . with other members . . .”; (v) “[receiving] the content from the [source] responsive to selection of a first selector presented to a user . . . adjacent the message”; and (vi) “not [receiving] the content from the [source] responsive Appeal 2018-001757 Application 15/066,792 9 to selection of a second selector presented to a user . . . .” (Suppl. Appeal Br. 3–4.)4 Apart from the use of generic technology (discussed further below), each of these limitations describes the steps taken by two or more persons sharing content: (i) make a request for content; (ii) search for the content; (iii) enable access to the content; (iv) provide a message regarding agreement to share content; (v) select to receive the content; or (vi) select to not receive the content. As stated in the Revised Guidance, one method of organizing human activity considered an abstract idea is “managing personal behavior or relationships or interactions between people.” (Revised Guidance, 84 Fed. Reg. at 52). The method of sharing content among two or more persons that is the subject matter of claim 17 falls under this description. See, e.g., Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (“[P]roviding out-of-region access to regional broadcast content is an abstract idea . . . . [It] can be implemented in myriad ways . . . , such as by mailing copies of a local newspaper to an out-of-state subscriber.”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016) (drawn to the abstract idea of classifying an image and storing the image based on its classification); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from 4 The Examiner appropriately paraphrased these elements: “receiving a request for content/service, searching [for] and providing the requested content.” (Non-Final Act. 13.) Appeal 2018-001757 Application 15/066,792 10 the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.”). Therefore, we agree with the Examiner that the subject matter of claim 17 recites an abstract idea, as do the remaining claims. Further pursuant to the Revised Guidance, we consider whether there are additional elements set forth in claim 17 that integrate the judicial exception into a practical application. Revised Guidance, 84 Fed. Reg. at 54–55. Here, the abstract idea of claim 17 is carried out using generic technology to facilitate sharing content: streaming the content between digital video recorders (DVRs) operating in a “multiple systems operator (MSO) community network.” (Suppl. Appeal Br. 3–4.) These additional elements do not integrate the judicial exception into a practical application. Rather, as in Affinity Labs, they merely “confine the abstract idea to a particular technological environment.” 838 F.3d at 1358–59. Thus, the subject matter here is distinguished from Enfish, on which Appellant relies, because it does not improve the technology of an MSO network, but rather applies the preexisting technology to implement the abstract idea. “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Mayo, 566 U.S. at 77. Also, Appellant’s arguments that the claims do not preempt the abstract idea “in all fields” is unpersuasive. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Nor does the subject matter of claim 17 contain additional elements that implement the judicial exception with a “particular machine,” because Appeal 2018-001757 Application 15/066,792 11 the claims do not specify any details in regard to DVRs or the MSO network environment. See MPEP § 2106.05(b). Further, the method does not transform matter; at best it transforms information. See MPEP § 2106.05(c). Nor does claim 17 have any other meaningful limitations (MPEP § 2106.05(e)), or any of the other considerations set forth in the Revised Guidance regarding a determination of whether additional elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Accordingly, we conclude that the subject matter of claim 17 (and its dependent claims) is directed to managing personal behavior or relationships or interactions between people, which is one of the certain methods of organizing human activity, and thus an abstract idea, and the additional elements recited therein do not integrate the abstract idea into a practical application. Turning to the second step of the Alice inquiry, we do not agree with Appellant that additional elements of claim 17 add “significantly more” to the basic abstract idea encompassed by the claim sufficient to transform the claimed abstract idea into a patent-eligible application. Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention.”). As discussed above, Appellant cites the improvements that “access[] data (as opposed to merely collecting or organizing it) in a specifically recited way, namely, a specifically recited MSO network.” (Appeal Br. 6.) However, other than using generic technology, these improvements are elaborations on the basic abstract idea itself. “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself.” Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018). Moreover, “[p]atent Appeal 2018-001757 Application 15/066,792 12 law does not protect claims to an ‘asserted advance in the realm of abstract ideas ... no matter how groundbreaking the advance.’” 890 F.3d at 1359 (Fed. Cir. 2018). The record supports the Examiner’s finding that the additional elements, considered both individually and as an ordered combination — digital video recorders (DVRs) operating in a multiple systems operator (MSO) community network — are well-understood, routine, conventional, and specified at a high level of generality. Revised Guidance, 84 Fed. Reg. at 56. The Specification states “Digital video recorders (DVR) have become ubiquitous and integral components of home networks.” (Spec. 1.) The Specification generally refers throughout to MSOs without any elaboration on technical details in a manner implying that such networks were, at the time of the application, well known. (E.g., Spec. 1–2, 16, 19, 23, 28, 35.) For example, the Specification identifies Comcast as an MSO. (Spec. 39.) Other preexisting patents assigned to the real party in interest in this Appeal confirm the ubiquity of MSOs at the pertinent time. (E.g., US Patent 6,757,909, col. 1, lines 27–30, issued June 29, 2004 (“With a bi-directional set-top box, in addition to receiving broadcast signals, a subscriber can transmit messages to the digital broadcast system operator (also referred to as a Multiple System Operator, MSO)”).) Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 17. Appellant provides no arguments that would differentiate the claims that depend from claim 17. Thus, the foregoing analysis of claim 17 is exemplary of that for claims 18–20. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). Therefore, we also sustain the Examiner’s 35 U.S.C. § 101 rejection of those claims. Appeal 2018-001757 Application 15/066,792 13 New Grounds of Rejection under 35 U.S.C. § 101 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection and separately reject claims 1–7 under 35 U.S.C. § 101. Claim 1 is an apparatus counterpart to claim 17, and is directed to a “computer memory that is not a transitory signal and that comprises instructions executable by at least one processor” to perform steps comparable to those of method claim 17. (Suppl. Appeal Br. 2.) The analysis set forth above is applicable to these apparatus claims, with the additional observation that the use of computer memory to store processor instructions simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (See Spec. 5–7.) Accordingly, we also reject claims 1–7 under 35 U.S.C. § 101. Issue Three — Obviousness Appellant argues the Examiner erred in rejecting the claims as obvious because Ellis would not have taught or suggested the claim 1 limitations: responsive to the request to access the MSO video network, rendering content on the first DVR available for access by other devices in the MSO video network; [and] . . . . present a message to inform the first customer that by accessing content on the MSO network, the customer agrees to share content on first DVR with other members of the MSO network. (Appeal Br. 10–11.) Appeal 2018-001757 Application 15/066,792 14 For these limitations, the Examiner relies on menus that allow users to join a neighborhood group to share video content, and to select the content to be shared. (Non-Final Act. 16–17; Ellis Figs. 12h, 12k, 15, ¶¶ 211–212.) Appellant argues that neither this nor any other portion of Ellis renders DVR content available to others in response to access requests, or presents a message to inform customers of the resulting agreement to share content. (Appeal Br. 10–11.) We agree with Appellant. Indeed, as Appellant points out, the menu system of Ellis assumes that participating neighbors have already agreed to share content, making any messages to that effect unnecessary. Id. The Examiner does not explain sufficiently how the Ellis teaches or suggests the subject matter of the claim limitations at issue. Accordingly, the Examiner has not made out a prima facie case of obviousness, and we do not sustain the Examiner’s obviousness rejections. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 17–20 112(a) Written Description 17–20 17–20 101 Eligibility 17–20 1–7 1–7, 17– 20 103 Ellis 1–7, 17–20 Overall Outcome 17–20 1–7 1–7 37 C.F.R. § 41.50(b) provides a “new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2018-001757 Application 15/066,792 15 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record . . . TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b) Notice of References Cited Application/Control No. 15/066,792 Applicant(s)/Patent Under Patent Appeal No. 2018-001757 Examiner Art Unit 2426 Page 1 of 1 U.S. PATENT DOCUMENTS * Document NumberCountry Code-Number-Kind Code DateMM-YYYY Name CPC Classification US Classification A B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document NumberCountry Code-Number-Kind Code DateMM-YYYY Country Name CPC Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. 20170303 US- 6,757,909 B1 06-2004 Maruo et al. Copy with citationCopy as parenthetical citation