THOMSON LICENSINGDownload PDFPatent Trials and Appeals BoardApr 14, 20212019006384 (P.T.A.B. Apr. 14, 2021) 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. 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. Appeal 2019-006384 Application 14/894,377 2 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). Appeal 2019-006384 Application 14/894,377 3 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.”). Appeal 2019-006384 Application 14/894,377 4 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 Appeal 2019-006384 Application 14/894,377 5 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. Appeal 2019-006384 Application 14/894,377 6 (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 Appeal 2019-006384 Application 14/894,377 7 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. Appeal 2019-006384 Application 14/894,377 8 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. Appeal 2019-006384 Application 14/894,377 9 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. Appeal 2019-006384 Application 14/894,377 10 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 Copy with citationCopy as parenthetical citation