Central Florida Educational Foundation, Inc.

Patent Trials and Appeals Board

Oct 29, 2020

2019003464 (P.T.A.B. Oct. 29, 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.
14/570,084 12/15/2014 Randy Woods 11952-009 7209
152828 7590 10/29/2020
John L. DeAngelis
WOLTER VAN DYKE DAVIS, PLLC
390 NORTH ORANGE AVENUE
SUITE 2500
ORLANDO, FL 32801
EXAMINER
RAZA, MUHAMMAD A
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
jdeangelis@savvyiplaw.com
patents@savvyiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDY WOODS
________________

Appeal 2019-003464
Application 14/570,084
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, JUSTIN BUSCH, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 48‒58 and 60‒67, which are all the claims pending in this
application. 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 Central
Florida Educational Foundation. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to a personalized internet radio. Spec.
¶¶ 3‒7. Claim 48 is illustrative of the appealed subject matter and reads as
follows with bracketed numbering added:
48. A method for listener selection of content for play back
into an internet radio data stream supplied via an internet web
site to the listener accessing the internet web site, the method
comprising:
[1] classifying a plurality of songs with a processor using
quantitative data, said quantitative data comprising at least one
of a song length, an artist, a composer, a style, a genre and a
tempo;
[2] classifying the plurality of songs with the processor
into a first plurality of music categories using qualitative data
other than the quantitative data, said qualitative data being an
indicator of a quality or popularity of a song, said qualitative
data comprising a ranking between a lowest ranking and a
highest ranking;
[3] analyzing a current time spent listening (TSL) of the
listener to the internet radio data stream, said TSL is a total
amount of time that the listener has spent listening to the
internet radio data stream;
[4] determining a music mix rotation as a function of the
TSL of the listener, wherein the music mix rotation comprises a
second plurality of the music categories, a number of the
second plurality of the music categories and the ranking of the
second plurality of the music categories; and
[5] streaming songs from the second plurality of the
music categories of the music mix rotation into the internet
radio data stream through an audio speaker;
[6] wherein the determining the music mix rotation
includes determining a first number of the second plurality of
music categories based on a first TSL and determining a second
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number of the second plurality of music categories based on a
second TSL, wherein the first number is less than the second
number and wherein the first TSL is less than the second TSL.
The Examiner’s Rejections
Claims 48‒58 and 60‒67 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. See Final Act. 4‒9.
Claims 48‒58 and 60‒67 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written-description requirement. See Final Act. 9‒
10.
Claims 48, 55‒58, and 60‒62 stand rejected under 35 U.S.C. § 103 as
unpatentable over Oppenheimer (US 2009/0056525 A1; Mar. 5, 2009),
Boulter (US 2010/0205166 A1; Aug. 12, 2010), Brownell (US
2007/0083897 A1; Apr. 12, 2007), and Kalasapur (US 2009/0055426 A1;
Feb. 26, 2009). See Final Act. 10‒18.
Claims 49‒54 and 67 stand rejected under 35 U.S.C. § 103 as
unpatentable over Oppenheimer, Boulter, Brownell, Kalasapur, and
Rosenberg (US 2008/0140717 A1; June 12, 2008). See Final Act. 18‒22.
Claims 63‒65 stand rejected under 35 U.S.C. § 103 as unpatentable
over Oppenheimer, Boulter, Brownell, Kalasapur, Rosenberg, and Rogers
(US 2006/0195462 A1; Aug. 31, 2006). See Final Act. 22‒23.
Claim 66 stands rejected under 35 U.S.C. § 103 as unpatentable over
Oppenheimer, Boulter, Brownell, Kalasapur, Rosenberg, Rogers, and Stone
(US 2007/0118861 A1; May 24, 2007). See Final Act. 23‒24.
ANALYSIS
Patent-Ineligible Subject Matter
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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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. Alice, 573 U. S. 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.”).
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, 69 (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 183 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id.
at 187 (“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
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 (quotation marks 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 PTO published revised guidance on the
application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
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Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Revised
Guidance”). Under that 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 activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
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 Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Claims 48 and 61 recite “[a]
method.” Appellant does not argue the Examiner errs in concluding claims
48 and 61 fall within the four statutory categories of patentable subject
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matter. We agree with the Examiner’s conclusion because claims 48 and 61
fall within the process category.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). See Revised Guidance.
The Examiner determines claim 48 is directed to “determining a
music mix rotation as a function of time spent listening to a data stream.”
Final Act. 4. The Examiner determines this is an “idea of itself” that can be
performed in the human mind or by a human using pen and paper, which the
Examiner determines is an abstract idea. Id. at 4‒5.
Claim 48 recites a method for listener selection of content for play
back. The method includes two classifying steps (Steps 1 and 2) that classify
a plurality of songs using quantitative and qualitative data. The method
further includes analyzing a listener’s TSL (Step 3) and determining a music
mix rotation as a function of the listener’s TSL (Steps 4 and 6). Songs from
the music mix rotation are then streamed to the user (Step 5).
The steps of the claimed method, under their broadest reasonable
interpretation, recite concepts that are performed in the human mind,
including observations, evaluations, and judgments. In particular, steps 1 and
2 classify songs based on quantitative and qualitative data, which are
evaluations or judgements. Step 3 analyzes a listener’s TSL, which is an
observation or evaluation. Steps 4 and 6 determine a music mix rotation
based on the listener’s TSL, using particular criteria related to the TSL,
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which is an evaluation or judgement. But for the generic computer
limitations discussed in more detail with respect to Prong 2, these steps may
be performed in the human mind or using pen and paper. See 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.”); Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
Accordingly, we conclude claim 48 recites concepts performed in the
human mind, which fall within the mental processes category of abstract
ideas identified in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
The “additional elements” recited in claim 48 include “an internet
radio data stream supplied via an internet web site,” “a processor,” and “an
audio speaker.” None of these additional elements constitute “additional
elements that integrate the exception into a practical application.”
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
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a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See Revised Guidance.
Appellant argues the Examiner errs in determining claim 48 is
directed to an abstract idea because the claim, as a whole, is directed to a
technological improvement over existing techniques. See Appeal Br. 5‒7. In
particular, Appellant argues claim 48 uses novel algorithm steps that
consider the user’s TSL in determining a music mix rotation. See id.
Appellant has not persuaded us of Examiner error. As argued by
Appellant (see Appeal Br. 6), claim 48 focuses on the business practice of
selecting music for a radio stream. In particular, the focus is on an improved
algorithm that considers conventional factors, such as qualitative and
quantitative data related to the potential songs, as well as the listener’s TSL.
The critical task identified by Appellant—improving music selection—is
purportedly improved by using additional data (time spent listening), not any
improvement to the underlying technology. See Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (determining that the
written description at issue demonstrated that the focus of the claimed
improvement was providing a trader with additional information to facilitate
market trades, an abstract idea).
Further, the alleged improvement does not “enable[] a computer . . . to
do things it could not do before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879
F.3d 1299, 1305 (Fed. Cir. 2018) (emphasis added). Such claims, whose
focus is “not a physical-realm improvement but an improvement in wholly
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abstract ideas,” are not eligible for patenting. SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Further, our reviewing court has “made clear that mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in Credit
Acceptance, the focus of claim 1 is on the business practice, “and the recited
generic computer elements ‘are invoked merely as a tool.’” Id. (citing
Enfish, 822 F.3d 1327); see also Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases).
Appellant argues claim 48 reflects a technological improvement like
the method that improved computer animation in McRO. See Appeal Br. 5‒6
(citing McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016)). Claim 48 does not recite a particular way of programming
or designing software, instead claiming an abstract process in functional
terms and not by what process or machinery is required to achieve those
functions. See Ubisoft Entm’t, S.A. v. Yousician Oy, 814 Fed. Appx. 588,
591 (Fed. Cir. 2020).
Regarding the claimed additional elements specifically, these
additional elements are used to achieve the claimed results and are not
focused on “a specific means or method that improves the relevant
technology.” McRO, 837 F.3d at 1314. The additional elements of claim 48,
including those identified above, comprise generic computer elements that
are invoked as a tool to implement this improved business practice. The
Specification confirms the generic nature of these additional elements. See,
e.g., Spec. ¶¶ 3‒15, 116‒123. Also, the Specification describes the use of
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time spent listening data in the music selection algorithm as a combination
of traditional processes with interactive input available from personalized
radio to create better music selections. See Spec. ¶ 75. Thus, the
Specification recognizes that the improvement comes from additional data
being used in an otherwise conventional process using generic computers.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues the Examiner fails to cite any evidence to support
the finding that Steps 1‒3 represent well-understood, routine, and
conventional activity. See Appeal Br. 9‒10. Appellant has not persuaded us
of Examiner error. The Examiner finds streaming songs from an audio
speaker was a well-understood, routine, and conventional activity. Ans. 18
(citing Spec. ¶¶ 5‒7). The Examiner also finds the Specification discloses
that streaming radio stations and personalized radio stations were well-
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understood, routine, and conventional activities. Id. Thus, Appellant’s
argument is not persuasive because the Examiner has identified evidence to
support the finding that the additional elements in claim 48 represent well-
understood, routine, and conventional activity. We further note that
additional portions of the Specification confirm that the technology for
creating a music mix rotation and playing the music was well-understood,
routine, and conventional. See, e.g., Spec. ¶¶ 3, 4, 8‒15, 116‒123.
We, therefore, sustain the patent-ineligible subject matter rejection of
claim 48. We also sustain the rejection of independent claim 61, which
Appellant argues is patent eligible for the same reasons. See Appeal Br. 5‒
11. We also sustain the rejection of dependent claims 49‒58, 60, and 62‒67,
for which Appellant relies on the same arguments. See id.
Written Description
The Examiner finds claim 48 lacks written-description support for
“first plurality of music categories,” “second plurality of music categories,”
“first number of the second plurality of music categories,” and “second
number of the second plurality of music categories.” See Final Act. 10;
Ans. 21‒22.
Appellant argues the Examiner errs because the Specification supports
these limitations in at least Figure 6 and paragraphs 83 and 85‒87. See
Appeal Br. 11‒13. Appellant argues Figure 6 depicts different music
categories and different numbers of music categories being used in
algorithms for different listeners. See id.
Appellant has persuaded us of Examiner error. The fundamental
factual inquiry is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
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possession of the invention as now claimed. See, e.g., Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991). Figure 6 shows seven
categories of music across different algorithms for each of six different TSL
ranges. The algorithms use between five and ten categories of music
(including duplicates), depending on the TSL. Although the Specification
does not explicitly use the exact words recited in the claims, we agree with
Appellant that this disclosure demonstrates that Appellant was in possession
of the claimed subject matter that includes a “first plurality of music
categories,” “second plurality of music categories,” “first number of the
second plurality of music categories,” and “second number of the second
plurality of music categories.” Accordingly, we do not sustain the
Examiner’s written description rejection of claim 48. We also do not sustain
the written description rejection of independent claim 61 or dependent
claims 49‒58, 60, and 62‒67 for the same reasons.
Obviousness
The Examiner finds the combination of Oppenheimer, Boulter,
Brownell, and Kalasapur teaches or suggests “analyzing a current time spent
listening (TSL) of the listener to the internet radio data stream, said TSL is a
total amount of time that the listener has spent listening to the internet radio
data stream,” as recited in claim 48. See Final Act. 11‒12. In particular, the
Examiner finds Brownell teaches storing the number of times content items,
such as songs, are played on a device, and calls this an item’s “play count.”
Id. at 12 (citing Brownell ¶¶ 50, 73). The Examiner finds the play count
teaches the claimed TSL.
Appellant argues the Examiner errs because none of the cited
references teach the claimed TSL, wherein “said TSL is a total amount of
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time that the listener has spent listening to the internet radio data stream.”
See Appeal Br. 14‒16. Appellant argues Brownell’s play count is a measure
of how many times a song has been played, which is different than a
measurement of the total amount of time that the listener has spent listening
to the internet radio data stream. Id. at 16.
Appellant has persuaded us of Examiner error. The cited play count
refers to the number of times a song has been played. See Brownell ¶ 73.
This is a statistic relating to a particular song, not to the duration of a
listener’s time spent listening to an internet radio data stream. The Examiner
has not identified, nor have we found, any teaching in the cited references
relating to how long a listener has spent listening to the internet radio data
stream.
For these reasons, we do not sustain the obviousness rejection of
claim 48. We also do not sustain the obviousness rejection of independent
claim 61 or dependent claims 49‒58, 60, and 62‒67 for the same reasons.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
48‒58,
60‒67
101 Eligibility 48‒58,
60‒67

48‒58,
60‒67
112(a) Written Description 48‒58,
60‒67
48, 55‒58,
60‒62
103 Oppenheimer, Boulter,
Brownell, Kalaspur
48, 55‒
58, 60‒62
49‒54, 67 103 Oppenheimer, Boulter,
Brownell, Kalaspur,
Rosenberg
49‒54, 67
63‒65 103 Oppenheimer, Boulter,
Brownell, Kalaspur,
Rosenberg, Rogers
63‒65
66 103 Oppenheimer, Boulter,
Brownell, Kalaspur,
Rosenberg, Rogers,
Stone
66
Overall
Outcome
48‒58,
60‒67

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.
§ 41.50(f).

AFFIRMED