Apple Inc.

Patent Trials and Appeals Board

Sep 7, 2021

2021004578 (P.T.A.B. Sep. 7, 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.
14/331,176 07/14/2014 Payam Mirrashidi P3810USC2
(119-1565USC2)
4827
61947 7590 09/07/2021
Apple - Blank Rome
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
LEVINE, ADAM L
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/07/2021 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAYAM MIRRASHIDI, ELLIS M. VEROSUB,
PATRICE GAUTIER, and ANURAG PANDEY
____________

Appeal 2021-004578
Application 14/331,176
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7 and 9–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Apple Inc. as the real party in interest. Appeal
Br. 3.
Appeal 2021-004578
Application 14/331,176

2
CLAIMED INVENTION
Appellant’s claimed invention “relates to media asset groups and,
more particularly, to publishing, browsing and purchasing media asset
groups.” See Spec. ¶ 4. Claims 1, 10, and 15 are the independent claims on
appeal. Claim 1, reproduced below with bracketed notations added, is
illustrative of the claimed subject matter:
1. A computer-implemented method for creating a
group image by an online media service comprising:
[(a)] receiving, by an online media service and from a first
client device associated with a user, a playlist identifying media
assets;
[(b)] retrieving, from the online media service, a set of
graphic images, wherein each graphic image of the set of graphic
images is associated with a media asset identified by the playlist,
and wherein graphic images of the set of graphic images are
different from the identified media assets;
[(c)] determining image priorities associated with the
graphic images, wherein the image priorities are determined
automatically based on the media assets identified by the playlist
and an ordering of the playlist;
[(d)] creating a group image for the playlist by
automatically arranging the graphic images based on a fill pattern
and the image priorities;
[(e)] associating the group image with the playlist;
[(f)] receiving, by the online media service from the first
client device, a request to publish the playlist at the online media
service; and
[(g)] outputting the group image with the published
playlist.

Appeal Br. 20 (Claims Appendix).

Appeal 2021-004578
Application 14/331,176

3
REJECTION
Claims 1–7 and 9–21 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ANALYSIS
Appellant argues claims 1–7 and 9–21 as a group. See Appeal Br. 8–
9; see also Reply Br. 2–4. We select independent claim 1 as representative
of this group. Claims 2–7 and 9–21, thus, stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
Principles of Law
35 U.S.C. § 101
An invention is patent eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-part framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, “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. The first step in that
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts,” such as an abstract idea. Id. According to
Supreme Court precedent, concepts determined to be abstract ideas include
Appeal 2021-004578
Application 14/331,176

4
certain methods of organizing human activity, such as fundamental
economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
(2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
If the claims are not directed to a patent-ineligible concept, such as an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
This is “a search for an ‘inventive concept’—i.e., an element or combination
of elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
at 217–18 (alteration in original).
USPTO Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October
2019 Update: Subject Matter Eligibility (“October 2019 Update”), which
were incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. [§] 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
However, the “guidance . . . does not create any right or benefit, substantive
Appeal 2021-004578
Application 14/331,176

5
or procedural, enforceable by any party against the USPTO” and
“[r]ejections will continue to be based upon the substantive law.” Id.
Under the Guidance, the first step of the Mayo/Alice framework is a
two-prong inquiry. MPEP § 2106.04(II)(A). “Prong One asks does the
claim recite an abstract idea, law of nature, or natural phenomenon?” Id.
§ 2106.04(II)(A)(1). When determining whether a claim recites an abstract
idea, the Guidance defines enumerated groupings of abstract ideas, distilled
from precedent. Id. § 2106.04(a); see also id. § 2106.04(a)(2) (defining
abstract idea groupings). If the claim recites a judicial exception, then the
claim requires further analysis at Prong Two. Id. § 2106.04(II)(A)(1).
“Prong Two asks does the claim recite additional elements that integrate the
judicial exception into a practical application?” Id. § 2106.04(II)(A)(2); see
also id. § 2106.04(d). 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 additional elements, individually or in
combination, provide an inventive concept. See id. §§ 2106(III), 2106.05.
“An inventive concept ‘cannot be furnished by the unpatentable law
of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05(I)
(quoting Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016)). Among the considerations in determining whether the
additional elements, individually or in combination, amount to significantly
more than the exception itself, we look to whether they add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field or simply append well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. Id. § 2106.05(II).
Appeal 2021-004578
Application 14/331,176

6
Rejection
The Examiner determined that limitations (a) through (g), as recited in
claim 1, involve steps for creating a group image for a set of graphic images
associated with media assets. See Non-Final Act. 8–9. The Examiner
determined that these steps could be performed by a human mentally, using
observation, evaluation, and judgment, and, thus, cover a mental process,
i.e., an abstract idea. Id. at 9. The Examiner further determined that claim 1
does not recite additional elements that integrate the abstract idea into a
practical application or that amount to significantly more than the abstract
idea. Id. at 9–14.
Step One of the Mayo/Alice Framework (Guidance, Step 2A)
Turning to step one of the Mayo/Alice framework, we are not
persuaded by Appellant’s argument that the Examiner erred in determining
that claim 1 is directed to an abstract idea. Appeal Br. 14–17; Reply Br. 2–
5. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id.
at 1335–36. Here, it is clear from the Specification (including the claim
language) that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
Appeal 2021-004578
Application 14/331,176

7
The Specification is titled “PUBLISHING, BROWSING, RATING
AND PURCHASING OF GROUPS OF MEDIA ITEMS,” and describes in
the Background section that when a user creates a grouping of various media
assets in a playlist for the user’s personal use, there may be particular
interest in the user’s playlist if the user is well-known or noteworthy.
Spec. ¶ 6. However, playlists are not saleable groupings of media assets
according to the recording industry. Id. The Specification describes a need
“for improved techniques to facilitate sharing and purchasing of playlists.”
Id. ¶ 7.
Claim 1 recites a method for creating a group image. The method
comprises: (1) “receiving, . . . from . . . a user, a playlist identifying media
assets” (limitation (a)); (2) “retrieving . . . a set of graphic images, wherein
each graphic image of the set of graphic images is associated with a media
asset identified by the playlist, and wherein graphic images of the set of
graphic images are different from the identified media assets” (limitation
(b)); (3) “determining image priorities associated with the graphic images,
wherein the image priorities are determined . . . based on the media assets
identified by the playlist and an ordering of the playlist” (limitation (c));
(4) “creating a group image for the playlist by . . . arranging the graphic
images based on a fill pattern and the image priorities” (limitation (d));
(5) “associating the group image with the playlist” (limitation (e));
(6) “receiving . . . a request to publish the playlist” (limitation (f)); and
(7) “outputting the group image with the published playlist” (limitation (g)).

Appeal 2021-004578
Application 14/331,176

8
The Examiner determined, and we agree, that these limitations, when
given their broadest reasonable interpretation, involve steps for creating a
group image for a set of graphic images associated with media assets. See
Non-Final Act. 8–9. Another way of describing these limitations is as a
method for publishing a playlist with a group image that illustrates a set of
graphic images associated with media assets identified in the playlist. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”).
We agree with the Examiner that the recited steps could be performed
by a human mentally, including observation, evaluation, and judgment and,
thus, fall into the “abstract idea” grouping of abstract ideas. See Non-Final
Act. 9; see also Ans. 5 (determining that the use of images to represent items
is an ancient mental process and that words themselves are images
representing items); MPEP § 2106.04(a)(2)(III).
In addition, we determine that the method for publishing a playlist
with a group image, as recited by limitations (a) through (g) of claim 1,
describes a method of “managing personal behavior or . . . interactions
between people, []including social activities . . . and following rules or
instructions” and “commercial . . . interactions []including . . . advertising,
marketing[,] or sales activities or behaviors,” which are two subgroupings of
the certain methods of organizing human activity grouping of abstract ideas.
Appeal 2021-004578
Application 14/331,176

9
MPEP § 2106.04(a)(2)(II). For example, the Specification makes clear that
the objective in publishing the user’s playlist with the graphical images is to
influence a purchase of the playlist, i.e., a commercial interaction. See, e.g.,
Spec. ¶¶ 4 (describing that the claimed invention “relates . . . to publishing
. . . and purchasing media asset groups), 7 (explaining that “there is a need
for improved techniques to facilitate sharing and purchasing of playlists”),
30. In addition, limitations (a) through (g) recite rules or instructions for
managing the publishing of a user’s playlist, i.e., an interaction.
Appellant focuses on the second prong of Step 2A asserting that any
alleged abstract idea is integrated into a practical application. Appeal Br. 8–
9. In particular, Appellant asserts that claim 1 is directed to problems that
uniquely arise from publishing user created playlists, and that claim 1
improves the online media store’s ability to distribute user-created playlists.
Id. at 8. Instead of displaying a “plain playlist,” the online media service
“create[s] and display[s] a relevant group image to illustrate the
user[-]created playlist.” Id. According to Appellant, this image “provides a
technological improvement to the online media store over simply showing a
plain playlist” (id. (citing Spec. ¶ 54)) and also improves the user interface
(id. at 8–9).
However, we are not persuaded that illustrating a user’s playlist with a
group image addresses a technological problem, as opposed to an
improvement to a process that is itself the abstract idea. See SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does
not protect such claims[, i.e., claims to an asserted advance in the realm of
abstract ideas], without more, no matter how groundbreaking the advance.”).
This is particularly so, where, as here, we find no indication in the
Appeal 2021-004578
Application 14/331,176

10
Specification that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components as tools
operating in their normal and ordinary capacity.
In the Reply Brief, Appellant additionally contends that claim 1
“visibly improve[s] the user interface of the online media store” and
“necessarily improves computer technology[] or another technology,”
because it “involves computer technology.” Reply Br. 3. Appellant’s
argument is unpersuasive, at least because it not commensurate in scope
with claim 1, which does not recite a user interface, much less an improved
user interface. Further, we are not persuaded that a visual improvement is a
technological improvement, as opposed to an improvement in a process that
is itself the abstract.
The relevant question under Step 2A, Prong 2 is whether the claim
includes additional elements beyond the judicial exception that integrate the
judicial exception into a practical application as to “impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” MPEP § 2106.04(d).
Here, the only additional elements recited in claim 1 beyond the abstract
idea include a “first client device” and “an online media service,” i.e.,
generic computer components. See Non-Final Act. 8–9; see also Spec. ¶ 34.
In contrast to Appellant’s assertion that the involvement of computer
technology necessarily improves computer technology, the Supreme Court
made clear in Alice that the mere recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. See Alice, 573
Appeal 2021-004578
Application 14/331,176

11
U.S. at 223. Here, the additional elements recited in claim 1 limit the
invention to a particular technological environment involving a first client
device and an online media service, which is not sufficient for patent
eligibility. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1366 (Fed. Cir. 2015) (“An abstract idea does not become
nonabstract by limiting the invention to a particular field of use or
technological environment, such as the Internet [or] a computer.”).
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim beyond the abstract idea are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice,
573 U.S. at 223–24 (“[W]holly generic computer implementation is not
generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (alterations in original) (quoting
Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that
claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
Guidance, the second step of the Mayo/Alice framework, whether claim 1
includes additional elements or a combination of elements that provides an
“inventive concept,” i.e., whether the additional elements amount to
“significantly more” than the judicial exception itself. MPEP § 2106.05(I).
Appeal 2021-004578
Application 14/331,176

12
We agree with the Examiner that claim 1 does not include additional
elements or a combination of elements that provides an inventive concept
and adopt the Examiner’s findings on this point as our own. Non-Final
Act. 11–12. And Appellant presents no arguments to the contrary.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–7 and 9–21, which
fall with claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–7, 9–21 101 Eligibility 1–7, 9–21
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