MOSQUERA, LUIS D.Download PDFPatent Trials and Appeals BoardMay 14, 20202019001260 (P.T.A.B. May. 14, 2020) 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. 13/271,131 10/11/2011 LUIS D. MOSQUERA 86244-2300 1892 105024 7590 05/14/2020 The Law Office of Michael J. Scheer 5531 Murietta Avenue Sherman Oaks, CA 91401 EXAMINER MARTINEZ-HERNAND, EDGAR R ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 05/14/2020 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): ipatent78@gmail.com mscheer@michaeljscheer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUIS D. MOSQUERA Appeal 2019-001260 Application 13/271,131 Technology Center 3600 Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and JEREMY J. CURCURI, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–8, 11–18, and 21. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We refer to the Specification, filed October 11, 2011 (“Spec.”); Final Office Action, mailed July 10, 2017 (“Final Act.”); Appeal Brief, filed January 10, 2018 (“Appeal Br.”); Examiner’s Answer, mailed September 19, 2018 (“Ans.”); and Reply Brief, filed November 19, 2018 (“Reply Br.”). 2 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 Nook Digital, LLC. Appeal Br. 2. Appeal 2019-001260 Application 13/271,131 2 Summary of the Disclosure Appellant’s claimed subject matter relates to the acquisition, downloading and opening of digital content. Spec., Title. Illustrative claims Claims 1 and 21, reproduced below with element labels added in brackets and disputed limitations emphasized in italics, are illustrative of the claimed subject matter: 1. A method for acquiring and accessing digital content on a local electronic device comprising: [(a)] receiving, on the local electronic device, an indication from a user of the local device of an item of digital content to be acquired; [(b)] transmitting, from the local electronic device, the indication of the item of digital content to a remote server; [(c)] receiving, on the local electronic device, a download of the item of digital content from the remote server; [(d)] receiving, on the local electronic device, parameters associated with the item of digital content, the parameters containing a trigger indicating an application required to access the downloaded item of digital content, wherein the parameters are contained in metadata of the downloaded item of digital content; [(e)] reading, by software in the local electronic device, the trigger contained in the metadata; [(f)] the trigger causing the software in the local electronic device to automatically launch the application on the local electronic device, the trigger containing an identification of the downloaded item of digital content; and [(g)] automatically accessing the downloaded item of digital content on the local electronic device using the launched application and the identification contained in the trigger. 21. A device for acquiring and accessing digital content on a local electronic device comprising: Appeal 2019-001260 Application 13/271,131 3 [(a)] a user interface subsystem operable on the local electronic device to receive an indication from a user of the local electronic device of an item of digital content to be acquired; [(b)] an input output subsystem operable on the local electronic device to transmit the indication of the item of digital content to a remote server, receive a download of the item of digital content from the remote server, and receive parameters associated with the item of digital content, the parameters containing a trigger indicating an application required to access the downloaded item of digital content, the trigger containing an identification of the downloaded item of digital content, the parameters being contained in metadata of the downloaded item of digital content; and [(c)] an operating system operable on the local electronic device to read the trigger and automatically launch the application and automatically access the item of digital content using the launched application and the identification contained in the trigger. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Clark US 6,704,733 B2 Mar. 9, 2004 Kontio US 2007/0112676 A1 May 17, 2007 Heyworth US 2008/0313302 A1 Dec. 18, 2008 Hendricks US 8,429,028 B2 Apr. 23, 2013 REJECTIONS Claim 21 stands rejected under 35 U.S.C. § 101 as directed to non– statutory subject matter. Final Act. 2–3. Claims 1–8, 11–18, and 21 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 4–7. Appeal 2019-001260 Application 13/271,131 4 Claims 1, 2, 4–8, 11–13, 15, 16, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clark, Kontio, and Heyworth. Id. at 8–19. Claims 3, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clark, Kontio, and Hendricks. Id. at 20–21. STANDARD OF REVIEW The Board undertakes a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). OPINION We agree with Appellant that the Examiner erred in rejecting claims 1–8, 11–18, and 21 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. However, we are not persuaded the Examiner erred in rejecting claim 21 under 35 U.S.C. § 101 as directed to software per se or in rejecting claims 1–8, 11–18, and 21 under 35 U.S.C. § 103(a). In connection with these latter rejections, we agree with and adopt the Examiner’s findings and reasoning in the Final Office Action and the Answer as our own and add any additional findings of fact appearing below for emphasis. 35 U.S.C. § 101 Rejection – Software Per Se The Examiner rejects claim 21 under 35 U.S.C. § 101 because the Examiner determines the claim encompasses software per se and, thus, is not within one of the four classes of statutory subject matter. Final Act. 2–3; Ans. 3–4. According to the Examiner, the claimed “device” recited in the Appeal 2019-001260 Application 13/271,131 5 preamble of claim 21 “does not assert the use of hardware that provides structure and that contains the interpreted software or computer code.” Final Act. 3. The Examiner explains, as follows: The device is recited to be part of the local electronic device, with performing subsystems. The interpretation of the “device” is a program or application residing in the local device, with program sub-components that could perform the respective functions. The devices recited in paragraph [22] of the Specification are describing possible devices of the local electronic device, all of them capable of running the application as recited. However, the recitations of devices as stated in the Specification can also be interpreted as software under the broadest reasonable interpretation. The claim and the Specification lack a positive recitation of the hardware that is capable of performing the claim method steps. Ans. 3–4. Appellant contends the rejection is improper because (1) claiming the invention as a device must be interpreted as requiring hardware in view of Appellant’s disclosure; (2) to receive user input, the user interface necessarily requires hardware; and (3) the input output system must also include hardware to enable it to transmit an indication of the item of digital content to a remote server as claimed. Appeal Br. 7. In particular, Appellant argues Paragraph [22] (in the application as filed) explicitly describes a device: “[l]ocal device 130 is an electronic device such as a personal computer, an eBook reader, a smart phone or other electronic device that the user 105 can use to access the digital content control server 150.” Clearly, this paragraph describes devices that are hardware based. Any interpretation of the claim term “device” that excludes these hardware embodiments is unreasonable. Id. at 7. Appeal 2019-001260 Application 13/271,131 6 Section 101 defines patentable subject matter: “[w]hoever 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.” 35 U.S.C. § 101. In issues involving claims under examination, we interpret Appellant’s claims according to their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “Generally . . . the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Nonetheless, the preamble may be construed as limiting “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A preamble is not regarded as limiting, however, “when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Catalina, 289 F.3d at 809. Furthermore, the preamble has no separate limiting effect if, for example, “the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434–35 (Fed. Cir. 2000). See also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010). Appellant’s arguments are unpersuasive of reversible Examiner error. Claim 21 labels the claimed invention a “device,” not the argued “local Appeal 2019-001260 Application 13/271,131 7 device” alleged to be disclosed as hardware. Appeal Br. 5. To the extent the “local electronic device” recited in the preamble of claim 21 corresponds to the hardware implemented local device 130, that local electronic device is not claimed. Instead, the “local electronic device” is recited only in describing an intended use of the claimed device defined by the body of the claim, i.e., “[a] device for acquiring and accessing digital content on a local electronic device, [the device] comprising . . . .” That is, although the device of claim 21 operates on the argued local electronic device, it is distinct from the local electronic device. Thus, Appellant’s reliance on paragraph 22 of the Specification as describing a hardware local device 130, which, at most, corresponds to the local electronic device of the preamble, is not evidence that the claimed device is also hardware. Furthermore, we interpret the recitation of a device in the preamble of claim 21 as not limiting. At most, the argued device moniker “merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention.” IMS Tech., 206 F.3d at 1434–35. Likewise, the recited device functionality set forth in the preamble is an intended use of the device that is not limiting. “[W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (citations omitted). Still further, even if we were to consider the term device as limiting the scope of the claim, we conclude designating an apparatus as a device does not exclude software implementations, and this interpretation of “device” is not overly broad or unreasonable in light of Appellant’s Specification. Appeal 2019-001260 Application 13/271,131 8 We are also unpersuaded by Appellant’s contention that certain constituent elements recited by the body of claim 21 necessarily include hardware. Appeal Br. 7. In particular, Appellant argues “[t]he ‘user interface subsystem’ is explicitly recited as receiving ‘an indication from a user of the local electronic device of an item of digital content to be acquired.’ As one skilled in the art understands, this interface can only receive the user’s input through a hardware device.” Id. Even if we were to accept Appellant’s contention that some hardware device is necessary to initially receive user input, such hardware need not be part of the device of claim 21 (e.g., might be part of the local electronic device) such that an output from the hardware device supplies the claimed indication from a user to a user interface subsystem that is implemented in software. In particular, the user interface subsystem does not exclude receiving the indication from a user via a hardware device nor does it require detecting user input as, for example, by detecting a touch input using a touch-sensitive display. See, e.g., Spec. ¶ 4. Likewise, we are unpersuaded the input output system necessarily includes hardware to perform the argued function of transmitting an indication of the item of digital content to a remote server. Appeal Br. 7. As in the case of the argued user interface subsystem, claim 21 does not exclude the use of any required hardware to complete the transmission nor does it necessarily include such hardware. Furthermore, to the extent hardware is required, such hardware may be part of the platform executing the software of claim 21. That is, just because the claimed software functionality is only rendered operable by hardware, e.g., executed by a computer, does not save the claim from reciting software per se. Instead, under a broad but Appeal 2019-001260 Application 13/271,131 9 reasonable interpretation, transmission may include software generation of a transmission message. Thus, in light of the arguments and evidence on the record before us, we are unpersuaded either the user interface subsystem or the input output subsystem must include hardware and cannot be implemented in software alone. Because we agree with the Examiner that the claim does not belong to any of the four patentable categories of 35 U.S.C. § 101—that is, process, machine, manufacture, or composition of matter—we sustain the Examiner’s rejection under 35 U.S.C. § 101 as directed to non-statutory subject matter. 35 U.S.C. § 101 Rejection — Judicial Exception I. 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 ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. 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) Appeal 2019-001260 Application 13/271,131 10 (“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, 67–68 (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))). 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. “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. (alterations 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. In January 2019, the USPTO published revised guidance on the application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Appeal 2019-001260 Application 13/271,131 11 Revised Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019) (notice). Under the 2019 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 activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see 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: (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 Guidance, 84 Fed. Reg. at 56. II. Step 2A, Prong One (Judicial Exception) The Examiner determines claims 1, 12, and 21 are “directed to the concept of ‘downloading and accessing digital content.’” Final Act. 5. According to the Examiner “[t]he concept as described defines a judicial Appeal 2019-001260 Application 13/271,131 12 exception, an abstract idea, similar to certain methods of organizing human activity (similar concepts were found by the courts to be abstract, such as [t]ailoring content based on information about the user.” Id. at 6 (citing Intellectual Ventures v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015)). Claim elements (a), (c), and (d) recite receiving information, i.e., selection of content to be acquired, the selected content, and parameters associated with the content. Receiving information, as claimed, is reasonably interpreted as including an observation which is considered to be a concept performed in the human mind or with pen and paper. Our Guidance recognizes mental processes including observations as constituting abstract ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52. Furthermore, Appellant’s Specification discloses that prior click-to- buy user interfaces require separate user actions to select, purchase, download (obtain), and launch software to access content. Spec. ¶¶ 3–4. To address this problem, the Specification discloses “[i]n a preferred embodiment [of the invention], the purchase, downloading and opening of digital content is ideally accomplished with a single gesture (button tap).” Id. ¶ 4. Therefore, we determine that claim 1 recites a fundamental economic practice because it broadly relates to sales activities of product selection, delivery, and presentation. For example, claim 1 recites “receiving . . . an indication from a user . . . of an item of digital content to be acquired,” “receiving . . a download of the item of digital content,” and “automatically accessing the downloaded item of digital content.” The 2019 Revised Guidance recognizes certain methods of organizing human activity, including fundamental economic principles or Appeal 2019-001260 Application 13/271,131 13 practices, as constituting abstract ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52. For these reasons, we determine that claim 1 recites subject matter reasonably characterized as mental processes and/or a fundamental economic practice, both of which are identified in the 2019 Revised Guidance as abstract ideas. See 2019 Revised Guidance, 84 Fed. Reg. 52. III. Step 2A, Prong 2 (Integration into a Practical Application) Under the Guidance, we next determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).3 Appellant contends: [T]he invention as recited in the claims contain[s] additional elements that amount to significantly more than the judicial exception. Specifically, the act of ‘reading metadata’ is actually recited in the claims as reading “the trigger contained in the metadata.” The claims further require “the trigger causing the software in the local electronic device to automatically launch the application on the local electronic device” and “automatically accessing the downloaded item of digital content on the local electronic device using the launched application.” Appeal Br. 8. According to Appellant: The functionality of the elements explicitly recited in the claims significantly improves the functionality of the local device. Users no longer have to separately and manually find and launch the application required to access the downloaded content, 3 We acknowledge that some of the considerations at Step 2A, Prong 2 may be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of the Guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32. Appeal 2019-001260 Application 13/271,131 14 navigate to the library where the downloaded content was stored, and open the content. See Specification, ¶ 7. Id. at 9. The Examiner responds, contending the argued trigger operates to automatically launch an application. Ans. 7. According to the Examiner “[A]utomatically launching” is indicative of the computer performing a function that is a ‘certain method of organizing human activity’, where the manual activity is the user of the local device tapping or clicking on the file and allowing the application to view the file load and display the file, such as clicking a pdf file and automatically launching the PDF Viewer. Thus the additional elements recited by the Appellant also fall under the concept of the abstract idea and do not provide anything more significant than the abstract idea. Id. Addressing Appellant’s argument that the recited functionalities constitute a technological improvement, the Examiner contends the functions instead are part of the underlying abstract idea. Id. According to the Examiner: Using software as a tool to automatically perform the abstract idea of “downloading and accessing digital content” does not provide significantly more than the abstract idea. MPEP 2106.05(f) and (h). As it is argued, if “Users no longer have to separately and manually find and launch the application required to access the downloaded content, navigate to the library where the downloaded content was stored, and open the content”, then the claimed invention is merely managing functions that can still be performed manually by a user at a computer or with a portable device. Therefore, the claims still recite an abstract idea without significantly more, and they remain patent ineligible. Id. at 8. Appellant’s contentions are persuasive of reversible Examiner error. The Examiner does not explain why downloading and accessing digital Appeal 2019-001260 Application 13/271,131 15 content is an abstract concept. Moreover, the Examiner improperly determines the argued additional elements are part of the underlying abstract concept because the recited actions automate manual activities. However, although recognizing mental processes (i.e., activities that can be performed in the human mind or with pen and paper) as constituting abstract ideas, the 2019 Revised Guidance does not broadly recognize activities that can be performed manually as constituting abstract ideas. C.f. 2019 Revised Guidance, 84 Fed. Reg. at 52. Likewise, the Examiner fails to explain why the disputed actions constitute methods of organizing human activity as alleged, i.e., a fundamental economic principle of practice; commercial or legal interaction; or managing personal behavior or relationships or interactions. Thus, we disagree that the argued additional elements are part of any underlying abstract idea merely because the argued functionalities automate actions that could be performed manually. Contrary to the Examiner’s determination, the argued additional elements, individually and in combination, address a technical problem arising in the context of downloading and opening of digital content by allowing both actions to be accomplished with a single user action rather than requiring multiple user actions. See Spec. ¶ 4. As claimed, and explained in the Specification, the solution to this problem is a technical one. The Specification discloses: [The digital content] download also includes appropriate flags, metadata or other triggers, which are captured by the user’s local device 130. These flags, metadata or other triggers cause the user’s local device to automatically execute the steps necessary to launch the appropriate reader application and automatically open the recently downloaded item for reading by the user 105. Id. at 41. Appeal 2019-001260 Application 13/271,131 16 Because the claims overcome a problem specifically arising in the realm of computers, “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” and, accordingly, the claims are not directed to an abstract idea. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). We, therefore, conclude these limitations integrate the recited judicial exception into a practical application. Accordingly, under the Guidance, the claims are eligible because they are not directed to the recited judicial exception. Thus, we need not reach step 2B of the Alice inquiry. We reverse the Examiner’s judicial exception rejection under § 101. Rejections under § 103 The Examiner finds that Clark teaches or suggests the majority of claim 1 except (i) reading the trigger contained in the metadata (element (e)), (ii) use of the identification of the digital content in the trigger to automatically download [sic., access]4 the item (element (g)), and (iii) the application automatically launches based on the specific indication of an application required to access the downloaded item (element (f)). Final Act. 11, 12. The Examiner explains “[a] ‘trigger’ has been interpreted under [a broadest reasonable interpretation] as specific written instructions written in the metadata, prepared by the remote server.” Final Act. 10. Accordingly, 4 Claim 1 recites automatically accessing the downloaded digital content on the local electronic device using the launched application and the identification contained in the trigger (claim element (g)) rather than automatically downloading as characterized by the Examiner. C.f. Appeal Br. 11 (referencing paragraph 20 of the Final Action). However, we determine the Examiner’s mischaracterization constitutes harmless error. Appeal 2019-001260 Application 13/271,131 17 the Examiner finds Clark’s DRM system including content identification information contained in metadata teaches or suggests the trigger of claim 1. Id. at 9–10. Furthermore, in interpreting the claim language, the Examiner takes the position that reading the trigger contained in metadata (element (e)) is a necessary action included in accomplishing the step of the trigger causing an application to launch (element (f)). Id. at 11. Addressing the identified deficiencies of Clark, the Examiner finds Kontio’s recovery of a content key responsive to the media ID of encrypted content matching a reference media ID teaches reading the instructions (i.e., trigger) in the metadata and using the digital content identifier to access the downloaded digital content (claim elements (e) and (g)). Id. at 11–12 (citing Kontio ¶ 57). According to the Examiner: It would have been obvious to a person having ordinary skill in the art at the time the invention was made to modify the teachings of Clark to include “reading the metadata and using the identifier in the metadata to access the digital content”, as taught by Kontio, where the reading of metadata is inherent and where the use of the content identifier would further secure the reader from opening faulty or infected files. Id. at 12. Addressing the trigger automatically launching an application (claim element (f)), the Examiner finds Heyworth’s launching of download management application 212 in response to receiving a payload file teaches or suggests the disputed limitation. Id. (citing Heyworth ¶ 27). According to the Examiner: It would have been obvious to a person having ordinary skill in the art at the time the invention was made to include in the teachings of Clark the “indication of the application required to access a downloaded digital item”, as taught by Heyworth, to Appeal 2019-001260 Application 13/271,131 18 provide the user with a streamlined process from purchasing the digital content to viewing the digital content. Id. Appellant contends the prior art fails to teach the claimed trigger. Appeal Br. 10. In particular, Appellant contends (i) the Examiner’s interpretation of the trigger is overly broad (id.), (ii) Clark’s DRM system itself, not the claimed trigger, launches an application and loads content (id. at 12), (iii) Kontio’s voucher file is separate from the content and is not used as a trigger to launch an application or access content (id.), (iv) Heyworth’s launching of a download management application is based on a file type, not on a trigger contained in metadata as claimed (id. at 13), and (v) the Examiner’s motivation for combining the teachings of the references is improper (id.). We address Appellant’s contentions seriatim as follows. Appellant argues the Examiner improperly ignores the recited trigger functionality in interpreting a trigger to broadly mean instructions written in metadata. Id. at 10. Thus, according to Appellant, the Examiner’s statement that Clark teaches a trigger including the required functionality is erroneous. Id. at 9 (citing paragraph 19f of the Final Action). The Examiner responds, finding “the claims are not specific about what constitutes a ‘trigger’ in the metadata, which allows for the broad interpretation.” Ans. 9. Responding to Appellant’s argument that Clark’s metadata does not perform the recited trigger functionality, the Examiner explains Kontio and Heyworth are applied for teaching the specific trigger functions claimed. Id. at 9–10. This first argument (i) of Appellant is unpersuasive of reversible Examiner error. The Examiner finds, under a broad but reasonable Appeal 2019-001260 Application 13/271,131 19 interpretation, that Clark teaches a trigger. The Examiner does not allege Clark teaches all of the recited functions of the claimed trigger, only that Clark teaches a trigger. Appellant fails to explain why Clark’s metadata does not function as a trigger other than to point out specific functions recited by claim 1 defining a specific type or configuration of trigger. That is, the disputed trigger functionalities are not shown to be necessary of all triggers absent which something (e.g., Kontio’s voucher file) would not be considered to be a trigger. Accordingly, Appellant’s argument does not address the Examiner’s findings. Further, Appellant’s argument ignores that the rejection is based, not on Clark alone, but on the combination of Clark, Kontio, and Heyworth. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In connection with argument (ii), Appellant argues “Clark is silent as what specifically causes the launching of the [reader software] application. However, . . . since it [is] the DRM system that performs all of the other functions, this would suggest it is the DRM system that launches the application.” Appeal Br. 11. Therefore, Appellant argues, Clark fails to teach a trigger launching an application as recited by claim element (f). Id. The Examiner responds, explaining it is the combination of Clark, Kontio, and Heyworth, not Clark alone, that teaches or suggests the disputed limitation. Ans. 10–12. Appellant’s argument based on the alleged deficiencies of Clark is unpersuasive for the reasons discussed above in connection with Appellant’s Appeal 2019-001260 Application 13/271,131 20 earlier argument. In particular, Appellant’s argument fails to address the Examiner’s findings that Heyworth’s (not Clark’s) launching of download management application 212 in response to receiving a payload file teaches or suggests the disputed limitation of launching of an application. See Final Act. 12. In connection with argument (iii), Appellant alleges Kontio does not discuss triggers and does not use a trigger to launch the application or access the content. In contrast to Kontio, claims 1, 12 and 21 explicitly require that the trigger is contained in the content that has already been is downloaded by the user to enable the device to automatically launch the appropriate application and access the content. Appeal Br. 12. The Examiner responds, explaining: The combination of Kontio with Clark teaches the metadata would include instructions, including a digital content identifier, that would be used by the main program to ensure the data is identified correctly and prevent external programs from launching. Heyworth is combined with Clark, in view of Kontio, to teach digital content indicating an application required to access the downloaded item, which supports the reference of Kontio to include information of the specific file or application to be launched and which is included in the metadata in order to securely launch the requested application in accordance with the indication (See Heyworth, ¶ [0027]). Ans. 11. Appellant’s argument is unpersuasive of reversible Examiner error. Launching of an appropriate application was found to be taught by Heyworth (Final Act. 12), not the argued Kontio, as explained above. In connection with using the metadata of the content to identify and access the downloaded content (see Appeal Br. 11), the Examiner finds voucher Appeal 2019-001260 Application 13/271,131 21 metadata is used to access a server and obtain encrypted content if the media ID of the encrypted content matches the reference ID in a token. Final Act. 11. Thus, because Kontio’s media ID is used to access content, under a broad but reasonable interpretation, Kontio’s media ID teaches or suggests automatically accessing digital content using the identification contained in the trigger (i.e., metadata). In connection with contention (iv) Appellant argues “Heyworth does not teach or suggest the trigger in the metadata of the downloaded digital content itself for automatically launching the appropriate application and accessing the already downloaded content.” Appeal Br. 13. According to Appellant, Heyworth launches a download management application based on a file type, not a trigger contained in metadata. Id. Appellant further argues “Heyworth does not automatically launch the application required to access the already downloaded content. It launches a download management application that simply downloads requested content and places it in the appropriate library based on user preferences. See Heyworth, ¶ [0047].” Id. Appellant’s argument is unpersuasive of reversible Examiner error. In connection with the trigger, the Examiner relies on Clark, not the argued Heyworth, for teaching a trigger as recited by claim element (d). See Final Act. 9–10. In connection with automatically launching an application based on a trigger, the Examiner finds Clark’s launching of reader software associated with a particular DRM scheme teaches the argued limitation element (f) but for automatically launching the application. Final Act. 10. The Examiner relies on Heyworth for automatically launching the application. Ans. 12. Appellant fails to persuasively explain why this Appeal 2019-001260 Application 13/271,131 22 combination is deficient. Therefore, we agree with the Examiner in finding the combination of Clark and Heyworth teaches or suggests the argued limitation. Finally, Appellant contends the combinations of Clark and Kontio and Clark and Heyworth are improper for lack of motivation for making the asserted combinations. Appeal Br. 13. In particular, Appellant argues the Examiner’s reasoning for combining Clark and Kontio to secure the reader from opening faulty or infected files is inadequate, alleging “[i]t is far from clear how the FOA arrived at this motivation as neither Clark nor Kontio teach faulty or infected files, nor is it explained how reading the metadata would prevent the reader from opening faulty or infected files.” Id. Appellant’s contention is unpersuasive because, other than alleged the references fail to support the Examiner’s reason for making the combination, Appellant fails to persuade us that the reasoning is itself erroneous. In particular, the Examiner finds “[t]he combination of Kontio with Clark teaches the metadata would include instructions, including a digital content identifier, that would be used by the main program to ensure the data is identified correctly and prevent external programs from launching.” Ans. 11. In the absence of sufficient evidence that this reasoning is faulty, the Examiner has articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). See Final Act. 12. To the extent Appellant is suggesting the Examiner’s reasoning must be set forth in the cited prior art, the motivation for combining teachings from references need not come from the references themselves. See Ball Aerosol & Specialty Container v. Ltd. Brands Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry Appeal 2019-001260 Application 13/271,131 23 set forth by the Supreme Court, the PTO must take account of “the inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ); KSR, 550 U.S. at 419 (“The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.”); see also id. at 421 (“Rigid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it.”). We are likewise unpersuaded the combination of Clark and Heyworth is improper as lacking a proper reason or motivation to combine the references. As discussed above, the Examiner determines it would have been obvious to automatically launch an application as taught by Heyworth rather than require manual intervention “to provide the user with a streamlined process from purchasing the digital content to viewing the digital content.” Final Act. 12. Appellant fails to explain why this rationale is erroneous. Furthermore, Appellant has not demonstrated that the Examiner’s proffered combination in support of the conclusion of obviousness, including automatically launching an application, would have been “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–20). See also In re Venner, 262 F.2d 91, 95, (CCPA 1958) (holding providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art). Appeal 2019-001260 Application 13/271,131 24 For the reasons discussed above, we are unpersuaded the Examiner erred and we sustain the rejection of claims 1, 2, 4–8, 11–13, 15, 16, 18, and 21 under 35 U.S.C. § 103(a) over Clark, Kontio, and Heyworth. In connection with dependent claims 3, 14, and 17, because these claim depend from claims 1 and 12, Appellant contends the rejection of the dependent claims is deficient for failure of the Examiner to reapply the Heyworth reference in rejecting the dependent claims, instead substituting and applying Hendricks. Appeal Br. 14, c.f. Final Act. 20. The Examiner responds “Hendricks is argued without any evidence from the reference in comparison to the recited claims. The rejection in view of Hendricks is supported by the responses provided . . . with respect to claims 1 and 12.” Ans. 12. Appellant fails to cite any authority requiring dependent claims be rejected based on prior art that is cumulative with that used in rejecting their base claims under 35 U.S.C. § 103(a). In the absence of substantive argument addressing the applied combination of Clark, Kontio, and Hendricks, Appellant’s contention amounts to little more than a general denial that fails to address the Examiner’s findings and is, therefore, insufficient. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Similarly, Appellant’s contention that the rejection is improper for lack of motivation for making the combination is Appeal 2019-001260 Application 13/271,131 25 unpersuasive in the absence of substantive argument. See Appeal Br. 14. Accordingly, we are unpersuaded the Examiner erred and we sustain the rejection of claims 3, 14, and 17 under 35 U.S.C. § 103(a) over Clark, Kontio, and Hendricks. DECISION We affirm the rejection of claim 21 under 35 U.S.C. § 101 as directed to non–statutory subject matter. We reverse the rejection of claims 1–8, 11–18, and 21 under 35 U.S.C. § 101 as directed to a judicial exception. We affirm the rejection of claims 1, 2, 4–8, 11–13, 15, 16, 18, and 21 under 35 U.S.C. § 103(a) over Clark, Kontio, and Heyworth. We affirm the rejection of claims 3, 14, and 17 under 35 U.S.C. § 103(a) over Clark, Kontio, and Hendricks. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21 101 Eligibility —Statutory 21 1–8, 11–18, 21 101 Eligibility – Judicial Exception 1–8, 11– 18, 21 1, 2, 4–8, 11–13, 15, 16, 18, 21 103 Clark, Kontio, Heyworth 1, 2, 4–8, 11–13, 15, 16, 18, 21 Appeal 2019-001260 Application 13/271,131 26 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3, 14, 17 103 Clark, Kontio, Hendricks 3, 14, 17 Overall Outcome 1–8, 11– 18, 21 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation