Milne, James R. et al.

Patent Trials and Appeals Board

Dec 9, 2019

15066792 - (D) (P.T.A.B. Dec. 9, 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.
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 Claims 8–16 are withdrawn.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.)
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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.

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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.
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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
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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.)
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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))).
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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
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(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
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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.)
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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
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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
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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.
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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.)
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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.”
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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
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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.