Yruski, Andrey et al.

Patent Trials and Appeals Board

Oct 20, 2020

2018003994 (P.T.A.B. Oct. 20, 2020)

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.
11/586,958 10/25/2006 Andrey Yruski SCEA-09060 2451
15827 7590 10/20/2020
Polsinelli LLP - SIEA
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
scea_patent_docket@Playstation.Sony.com
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREY YRUSKI and MURGESH NAVAR
____________

Appeal 2018-003994
Application 11/586,958
Technology Center 3600

____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on rehearing in Appeal 2018-003994. We have
jurisdiction under 35 U.S.C. § 6(b).1
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.52. Additionally, a new argument based on a recent relevant
decision of either the Board or a Federal Court may be presented. Id.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant has identified the real party in interest as Sony
Interactive Entertainment America LLC. (Appeal Br. 3.)
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ISSUES ON REHEARING
Appellant requests reconsideration of that part of our Decision on
Appeal entered July 20, 2020, affirming the Examiner’s rejection of claims
1, 5, 6, 8–20, 22, 24, 25, 27, 31, 33, 35, 39, 44–46, 50–52, 78, 79, 81, 82, 84,
and 85 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
Appellant argues that our affirmation of the Examiner’s rejection
under § 101 “appears to have either overlooked or misapprehended certain
facts and issues in a manner that is inconsistent with guidance from the
Federal Circuit and the United States Patent and Trademark Office (USPTO)
in relation to 35 U.S.C. § 101.” (Req. Reh’g 2.) Specifically, Appellant
argues “that the USPTO recently revised the Manual of Patent Examination
and Procedure (MPEP) on June 30, 2020. As such, Appellant has not yet
had the opportunity to present its arguments regarding how the revised
MPEP applies to the present claims.” (Id.)

ANALYSIS
In a request for rehearing, “Appellant may present a new argument
based upon a recent relevant decision of either the Board or a Federal
Court.” 37 C.F.R. § 41.52(a)(2). To the extent Appellant presents new
arguments based upon the June 30, 2020 revisions to the MPEP, they do not
constitute a proper basis for a request for rehearing and will not be further
addressed.
To the extent Appellant’s arguments are based on an alleged failure to
follow the USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 Guidance”), we
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note that “[f]ailure of USPTO personnel to follow the guidance, however, is
not, in itself, a proper basis for either an appeal or a petition.” (2019
Guidance at 51.) Such arguments by Appellant will not be further
addressed.
As we stated in our Decision, “[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.
Section 101, however, “‘contains an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable.’” Alice
Corp. Pty. Ltd. 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, 589
(2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
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With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” (See 2019 Guidance at 54.)
Appellant argues that
the Board Decision overlooks that the examiner’s conclusion is
based on improperly imported teachings from the specification.
[(Decision 6)] (citing specification statements that “the invention
relates ...”).. [sic] For example the Board Decision notes that
“[‘]the Examiner determines that [t]he claims are directed to one
or more abstract ideas’ because ‘[t]he claims include selecting
and inserting advertisements according to rules and
parameters.’” Id. at 5. The Board Decision overlooks that such
statement by the Examiner is not an accurate characterization of
what is actually “recited” or “set forth or described” by the
claims.

(Req. Reh’g 3.) We do not find this argument persuasive.
As an initial matter, we note that briefing in this case was completed
in 2018, i.e., before issuance of the 2019 Guidance. Thus, one would not
expect the Examiner to have followed the not-yet-issued 2019 Guidance.
However, as we stated in our Decision, we viewed “the Examiner’s
determination under the rubric of the 2019 Guidance” (Decision 5) and
wrote that “the Examiner determines that claim 1 is directed to the abstract
idea of ‘advertising, marketing or sales activities or behaviors’ which are
certain methods of organizing human activity, and to the abstract idea of
mental processes.” (Id.)
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We then analyzed claim 1 under step one of the Alice framework
where we “look at the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)).
As we said in our Decision, claim 1 recites “[a] method of associating
one or more media content files with advertisements, the method
comprising: receiving a request,” “transmitting a plug-in module,”
“transmitting one or more advertisements,” “transmitting the one or more
media content files,” “associat[ing] at least one of the one or more
advertisements with at least one of the one or more media content files,”
“insert[ing] at least one of the one or more associated advertisements into at
least one of the one or more media content files,” “tracking the one or more
advertisements,” and “recall[ing] a previously transmitted advertisement
from the maintained history, wherein the previously transmitted
advertisement is selected by a user.” (See Decision 6–7.)
In other words, claim 1 recites steps for receiving data (a request),
transmitting data (a plug-in module), transmitting and storing data
(advertisements and media content), applying rules (associating the
transmitted data), analyzing data (tracking), and outputting data (recalling).
Receiving, transmitting, and storing data, along with applying rules to data,
and analyzing and outputting data have been determined to be directed to an
abstract idea. See, e.g., Customedia Techs., LLC v. Dish Network Corp., 951
F.3d 1359 (Fed. Cir. 2020) (automatic delivery of multimedia data products,
including advertisements, to a local receiver for processing and recording
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determined to be directed to an abstract idea); see also Bridge and Post, Inc.
v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019)
(deciding media content to provide to a user, analyzing usage data, and
displaying data based on the analysis determined to be directed to an abstract
idea).
Nonetheless, Appellant argues that
the present claims do not recite any interaction, agreement, or
exchange that can be characterized as commercial (or legal) in
nature. Rather, the claim recites ‘advertisement’ to distinguish
one type of digital content from another, as well as recites how a
digital content distribution system distributes, coordinates
metadata-based insertion, and recalls individual digital content.

(Req. Reh’g 5.) We disagree.
Claim 1 recites “[a] method of associating one or more media content
files with advertisements” as well as “transmitting one or more
advertisements . . . to [a] client device.” The Specification discloses that
“there has been increased interest in developing improved techniques to
target advertisements to users who subscribe to content. The present
invention meets this need.” (Spec. ¶ 10.) And under the heading
“SUMMARY OF THE INVENTION,” the Specification recites: “a method
is provided to associate one or more media content files with one or more
media ads.” (Id. ¶ 11.)
In view of these specific recitations of advertisements and targeting
advertisements, we are not persuaded that we erred in determining “that
claim 1 is directed to a method of selecting and inserting advertisements into
media, i.e., ‘advertising, marketing or sales activities or behaviors,’” which
falls within certain methods of organizing human activity that constitute
abstract ideas. (Decision 11 (quoting 2019 Guidance at 52).)
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Appellant argues that we “overlook[ed] the claim’s inherent technical
advantages.” (Req. Reh’g 7.) Specifically, Appellant “notes that reciting
how the operations of the improved, more efficient system are conducted
necessarily avoids the inefficiencies arising from prior system.” (Id.) And
thus, Appellant argues, we “overlook[ed] that improved efficiency achieved
by arrangements that are specifically designed to avoid certain inefficient
practices.” (Id.) Appellant, however, provides no citation to the
Specification to support this attorney argument. Moreover, claim 1 does not
recite technological implementation details or “a particular way of
programming or designing the software . . . , but instead merely claim[s] the
resulting system[].” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241
(Fed. Cir. 2016).
Appellant argues that we “overlook[ed] the claimed transformation of
separate and asynchronously distributed digital content into a single spliced
file.” (Req. Reh’g 8.) Appellant’s argument is, at its heart, that a data file is
transformed to a different state or thing by editing the file. We do not find
this argument persuasive. The file remains a data file, only its content is
changed.
Appellant argues that “[a]lthough the claims may have some relation
to a business challenge . . . , it is a challenge particular to digital content
distribution, and the claimed solution is necessarily rooted in digital content
technologies.” (Id. at 9 (citing DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014))). We do not find this argument
persuasive.
As an initial matter, we note “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” DDR Holdings, 773 F.3d
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at 1258. The claims in DDR Holdings “specify how interactions with the
Internet are manipulated to yield a desired result” and override the
conventional sequence of events ordinarily triggered by clicking on a
hyperlink. Id. Appellant does not persuasively argue how claim 1 is
analogous to overriding the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink. Nor does Appellant
persuasively argue how the invention of claim 1
improve[s] the functionality of the computer itself. Even if we
accept [Appellant’s] assertions, the claimed invention merely
improves the abstract concept of delivering targeted advertising
using a computer as a tool. This is not what the Supreme Court
meant by improving the functioning of the computer itself nor is
it consistent with [the Federal Circuit’s] precedent applying this
concept.

Customedia Techs., 951 F.3d at 1363.
Appellant’s other arguments have been considered but also do not
persuade us that we misapprehended or overlooked relevant matters in
affirming the rejection of claims 1, 5, 6, 8–20, 22, 24, 25, 27, 31, 33, 35, 39,
44–46, 50–52, 78, 79, 81, 82, 84, and 85 under 35 U.S.C. § 101.

DECISION
Nothing in Appellant’s request has convinced us that we erred as
argued by Appellant. Accordingly, we deny the request.

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Outcome of Decision on Rehearing:
Claims

35 U.S.C. § Reference(s)/Basis Granted Denied
1, 5, 6, 8–
20, 22, 24,
25, 27, 31,
33, 35, 39,
44–46, 50–
52, 78, 79,
81, 82, 84,
85
101 Eligibility 1, 5, 6, 8–20,
22, 24, 25,
27, 31, 33,
35, 39, 44–
46, 50–52,
78, 79, 81,
82, 84, 85
Final outcome of appeal after rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 5, 6, 8–20,
22, 24, 25,
27, 31, 33,
35, 39, 44–
46, 50–52,
78, 79, 81,
82, 84, 85
101 Eligibility 1, 5, 6, 8–20,
22, 24, 25,
27, 31, 33,
35, 39, 44–
46, 50–52,
78, 79, 81,
82, 84, 85

1, 5, 6, 8–20,
22, 24, 25,
27, 35, 39,
44–46, 50–
52, 78, 79,
84, 85
103(a) Chiu,
Perlmutter,
Lawton
1, 5, 6, 8–20,
22, 24, 25,
27, 35, 39,
44–46, 50–
52, 78, 79,
84, 85
31, 33 103(a) Chiu,
Perlmutter,
Lawton,
Official
Notice
31, 33
81, 82 103(a) Chiu,
Perlmutter,
Lawton,
Khoo
81, 82
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Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
Overall Outcome 1, 5, 6, 8–20,
22, 24, 25,
27, 31, 33,
35, 39, 44–
46, 50–52,
78, 79, 81,
82, 84, 85

DENIED