THOMSON LICENSING

Patent Trials and Appeals Board

Apr 14, 2021

2019006384 (P.T.A.B. Apr. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/894,377 11/27/2015 Oliver KAMPHENKEL PD130028 8606
129658 7590 04/14/2021
Meagher Emanuel Laks Goldberg & Liao, LLP
One Palmer Square
Suite 325
Princeton, NJ 08542
EXAMINER
PIERORAZIO, MICHAEL
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
129658-docket@meagheremanuel.com
fliao@meagheremanuel.com
molech@meagheremanuel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVER KAMPHENKEL and THOMAS BRUNE
Appeal 2019-006384
Application 14/894,377
Technology Center 2400
Before ERIC S. FRAHM, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–7, 10–14, 16, and 18. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 InterDigital CE
Patent Holding. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for visually
representing metadata of media data. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method performed by an apparatus having at least one
processing unit for visually representing metadata associated to
media data comprising a plurality of samples, each item of the
metadata being provided with at least one notation indicating a
corresponding sample of the media data, the method comprising:
visually representing, by the at least one processing unit, a
representation for each item of the metadata and for the at least
one notation of each item of the metadata, wherein the
representation for the at least one notation is associated to the
representation for the corresponding item of the metadata, and
wherein the representation is arranged according a grid, columns
of the grid represent samples of the media data and each item of
the metadata with at least one common notation is visually
represented along one of a plurality of lines at one of a plurality
of positions, each one vertical position being selected based on
characteristic of the each item of the metadata and each one
horizontal position being selected based on the corresponding
sample of the media data;
outputting the representation to a display.
REJECTION
Claims 1, 3-7, 10–14, 16, and 18 are rejected under 35 U.S.C. § 101.
OPINION
Appellant argues that the Examiner’s rejection of claims 1, 3–7, 10–
14, 16, and 18 under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter is in error. Appeal Br. 8–13. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv) (2018).
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Appellant argues the pending claims as a group. See Appeal Br. 8–13. Given
our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as
representative of claims 1, 3–7, 10–14, 16, and 18, and we decide the § 101
rejection of claims 1, 3–7, 10–14, 16, and 18 based on representative claim
1.
Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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 U.S. 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 Court’s two-part 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 Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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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 (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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second part
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 (citation omitted). “A claim that recites an abstract
idea must include ‘additional features’ to ensure ‘that the [claim] is more
than a drafting effort designed to monopolize the [abstract idea].’” Id.
(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 U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019), now
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incorporated in the Manual of Patent Examination Procedure (“MPEP”) in
sections 2103 through 2106.07(c) (“2019 Revised Guidance”).2
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); 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)) (“Step 2A, Prong Two”).3

2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.

2019 Revised Guidance, 84 Fed. Reg. at 52–56; MPEP § 2106.04.
Abstract idea
Turning to Step 2A, Prong 1, the claimed invention is for the visual
representation of metadata. Claim 1 includes the following limitations:
A method performed by an apparatus having at least one
processing unit for visually representing metadata associated to
media data comprising a plurality of samples, each item of the
metadata being provided with at least one notation indicating a
corresponding sample of the media data, the method comprising:
visually representing, by the at least one processing unit,
a representation for each item of the metadata and for the at least
one notation of each item of the metadata, wherein the
representation for the at least one notation is associated to the
representation for the corresponding item of the metadata, and
wherein the representation is arranged according a grid,
columns of the grid represent samples of the media data and each
item of the metadata with at least one common notation is
visually represented along one of a plurality of lines at one of a
plurality of positions, each one vertical position being selected
based on characteristic of the each item of the metadata and each
one horizontal position being selected based on the
corresponding sample of the media data;
outputting the representation to a display.
Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See MPEP § 2106.04 (listing mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion) as one of the “enumerated
groupings of abstract ideas”). “Mental processes” include acts that people
can perform in their minds or using pen and paper, even if the claim recites
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that a generic computer component performs the acts. Id.; see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (“[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “anonymous loan
shopping” was an abstract idea because it could be “performed by humans
without a computer”).
The method recited in claim 1 executes steps that people can
practically perform in their minds or using pen and paper. A person can
perform the “visually representing” step of claim 1 by using his or her mind
(or pen and paper) in the claimed manner. In particular, a person can
represent each “item of the metadata” and the “notation of each item”
“arranged according to a grid,” where “columns of the grid represent
samples of the media data and each item of the metadata with at least one
common notation is visually represented along one of a plurality of lines at
one of a plurality of positions,” and “each one vertical position being
selected based on characteristic of the each item of the metadata and each
one horizontal position being selected based on the corresponding sample of
the media data” using pen and paper. Accordingly, claim 1 recites a mental
process, and thus an abstract idea.
Turning to Step 2A, Prong 2, the remaining elements recited in claim
1 do not integrate the abstract idea into a practical application. In addition to
the steps discussed above, claim 1 recites a “processing unit” and a
“display.” The processing unit and display encompass generic components.
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See, e.g., Spec. 7, ll. 23–33; Fig. 2. Simply programming a general-purpose
computer to perform abstract ideas does not integrate those ideas into a
practical application. See MPEP § 2106.04 (identifying merely including
instructions to implement an abstract idea on a computer as an example of
when an abstract idea has not been integrated into a practical application).
In addition, “outputting the representation to a display” is insignificant
post-solution activity, given the display’s high level of generality and
context in the claimed invention. With its high level of generality and
context in the claimed invention, the recited display function is insignificant
post-solution activity and, therefore, does not integrate the exception into a
practical application for this additional reason.
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). We, therefore, agree with the Examiner that
claim 1 is directed to an abstract idea.
Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” The Examiner
determined claim 1 does not recite an inventive concept. See Ans. 4–5.
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We agree with the Examiner’s determination. As noted above, the
claimed invention merely uses generic computing components to implement
the recited abstract idea. The additional elements recited in the claim include
the “processing unit” and a “display.” The claim recites these elements at a
high level of generality, and the written description indicates that these
elements are generic computer components. See, e.g., Spec. 7, ll. 23–33; Fig.
2. Using generic computer components to perform abstract ideas does not
provide the necessary inventive concept. See 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.”). Thus, these elements, taken
individually or together, do not amount to “significantly more” than the
abstract ideas themselves.
Appellant contends various elements recited in the claim provide the
necessary inventive concept. See Appeal Br. 10–13. But these elements form
part of the recited abstract ideas and thus are not “additional elements” that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining the
Alice “Court only assessed whether the claim limitations other than the
invention’s use of the ineligible concept to which it was directed were well-
understood, routine and conventional” and “did not consider whether it was
well-understood, routine, and conventional to execute the claimed
intermediated settlement method on a generic computer”) (emphasis added).
Rather, the recited (1) processing unit; and (2) display are the
additional recited elements whose generic computing functionality is well-
understood, routine, and conventional. See Intellectual Ventures I LLC v.
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Capital One Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2015) (noting that
a recited user profile, database, and communication medium are generic
computer elements); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such an
“interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement). Accord Ans. 4
(Concluding that the claims’ additional generic computer components do not
add significantly more than the abstract idea.). Appellant’s arguments do not
persuade us claim 1 is “directed to” a patent-eligible concept.
Accordingly, we sustain the rejection of representative claim 1, as
well as claims 3–7, 10–14, 16, and 18 grouped therewith.
CONCLUSION
The rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 10–
14, 16, 18
101 1, 3–7, 10–
14, 16, 18

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED