Comcast Cable Communications LLC

Patent Trials and Appeals Board

Apr 30, 2020

15206586 - (D) (P.T.A.B. Apr. 30, 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.
15/206,586 07/11/2016 Michael A. Chen 007412.03293\US 1322
71867 7590 04/30/2020
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
CHOKSHI, PINKAL R
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte MICHAEL A. CHEN

Appeal 2019-001430
Application 15/206,586
Technology Center 2400

Before JASON J. CHUNG, MICHAEL T. CYGAN, and
STEPHEN E. BELISLE, Administrative Patent Judges.

CYGAN, 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 2–27. Appeal Br. 2, 4. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Comcast
Cable Communications, LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed invention generally relates to “advertisement supported
video downloading of the type wherein advertisements are included with
downloaded video.” Spec. ¶ 2. One problem with such video is that viewers
may fast-forward or skip past such advertisements. Id. ¶¶ 6, 14. To
overcome this problem, the claimed invention intends to require fast-
forwarding or skipping of advertisements to also result in fast-forwarding or
skipping a corresponding portion of the video. Id. ¶ 14.
Independent claim 2 is illustrative:
2. A method comprising:
receiving, by a computing device, a request indicating requested
video content, wherein the requested video content comprises a
plurality of frames each having a first aspect ratio;
determining a spatial dimension of an advertisement selected
for display with the requested video content;
generating, by the computing device, combined video content
that comprises one or more frames, each of the one or more
frames comprising:
a resized content portion having a second aspect ratio,
wherein the second aspect ratio is based on a reduction in
a spatial dimension of the first aspect ratio by at least the
determined spatial dimension of the advertisement, and
wherein the resized content portion is associated with the
requested video content; and
an advertisement portion associated with the
advertisement, wherein the advertisement portion does
not overlap the resized content portion; and sending, to a
user device, the combined video content.
Appeal Br. 14 (Claims App.).
Independent claims 9 and 18 recite methods that, although differing in
scope, contain similar limitations as claim 2. Appeal Br. 15, 17.
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Independent claim 22 recites a system having instructions for performing the
method of claim 2. Dependent claims 3–8, 10–17, 19–21, and 23–27 each
incorporate the limitations of their respective independent claims. Id. at 11–
12.

REFERENCES
Name Reference Date
Chen US 9,424,587 B2 Aug. 23, 2016

REJECTIONS
Claims 2–13, 15, 16, and 18–27 are rejected under nonstatutory
double patenting as being unpatentable over Chen.
Claims 2–27 are rejected under 35 U.S.C. § 101 as being ineligible
subject matter.

OPINION
A. Nonstatutory Double Patenting
Appellant has not contended that the Examiner erred in rejecting
claims 2–13, 15, 16, and 18–27 on the ground of nonstatutory double
patenting as being unpatentable over the claims of Chen. Appeal Br. 12.
Although Appellant has submitted a Terminal Disclaimer, the Examiner has
not made a determination that the nonstatutory double patenting rejection is
withdrawn. Accordingly, we sustain, pro forma, the rejection of claims 2–
13, 15, 16, and 18–27 on the ground of nonstatutory double patenting. See
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37 C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. Rev. 08. 2017, Jan. 2018).2
B. Subject Matter Eligibility
1. Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has

2 See MPEP 1214.06 (I) for procedures for seeking to overcome a
nonstatutory double patenting rejection following a Board decision.
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stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter 2019 Guidance). The 2019 Guidance seeks to
improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
MANUAL OF PATENT EXAMINATION PROCEDURE (hereinafter “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:
adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
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simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, passim.
2. Analysis
We have reviewed the Examiner’s subject matter eligibility rejection
(Final Act. 16–30) in light of Appellant’s contentions that the Examiner has
erred (Appeal Br. 4–12). We have further considered the Examiner’s
Answer to the Appeal Brief and Appellant’s Reply Brief. We are persuaded
by Appellant’s contention of Examiner error in rejecting claims 2–27 under
35 U.S.C. §101. We begin with claim 2.
a) “Recites an Abstract Idea”
The Examiner has determined claim 2 to be directed to “receiving a
request for video, determining dimensions of an ad selected for display with
the video, generating a combined video of resized content and ad, and
sending the combined video.” Final Act. 17; Ans. 4. The Examiner has
found these limitations to be similar to concepts previously identified by the
courts as abstract, such as Affinity Labs of Tex, LLC v. Amazon.com,
838 F.3d 1266 (Fed. Cir. 2016) (“delivering user-selected media content to
portable devices”) and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed.
Cir. 2014) (“displaying advertising in exchange for currency or access to
copyrighted media”). Ans. 4–5.
Appellant argues that the limitations described by claim 2 are not
similar to the limitations at issue in the cases identified by the Examiner.
Appeal Br. 5. Specifically, Appellant contends that the subject matter in
Affinity Labs is similar only at a high level of abstraction, in that it recites
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the display of something. Id. at 7. Appellant argues that the Federal Circuit
has cautioned against a high level of abstraction when determining the focus
of the claimed subject matter. Id.
The USPTO’s 2019 Guidance states that the abstract idea exception
includes certain methods of organizing activity “when recited as such in a
claim limitation(s) (that is when recited on their own or per se).” 2019
Guidance, 84 Fed. Reg. at 52. In particular, Updated Guidance issued by the
USPTO in October 2019 characterizes “commercial interactions” such as
“advertising” as a method of organizing activity that is an abstract idea.
October 2019 Update: Subject Matter Eligibility 4–6, accessible at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df. Claim 2 recites limitations of advertising, including “an advertisement
portion associated with the advertisement.” Under our controlling guidance,
such a recitation of advertising satisfies Step 2A, Prong 1, such that the
claim recites an abstract idea.
We further agree that Ultramercial, cited by the Examiner, supports a
finding that claim 2 recites an abstract idea. See Ultramercial, 772 F.3d at
714 (“[T]he abstract idea of showing an advertisement before delivering free
content”). Appellant’s Specification is clear that the same concept, of
requiring that an advertisement be viewed when delivering media content, is
the problem being addressed by the claimed invention. Spec. ¶ 6 (“One
problem . . . which is particularly detrimental to the advertisers paying for
the corresponding advertisements, occurs when viewers . . . fast forward[]
past, skip[], or otherwise limits viewing of the advertising frames.”)
Consequently, we agree with the Examiner’s determination that claim 2
recites an abstract idea.
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However, we circumscribe the bounds of the abstract idea more
narrowly than the Examiner. USPTO Guidance, drawing upon prior court
decisions, treats “advertising” as an abstract idea because it reflects a
commercial or legal interaction. October 2019 Update 6. For example, the
court in Ultramercial addressed a claim having eleven steps of receiving
content, selecting a sponsor message, providing content for sale on the
Internet, restricting access to the content, offering viewing of the content on
condition of viewing the sponsor message, offering viewing of the content
after an interactive message, tracking the number of times the message has
been viewed, and receiving payment from the sponsor. Ultramercial, 772
F.3d at 712. The court found the majority of these steps to “comprise the
abstract concept of offering media content in exchange for viewing an
advertisement.” Id. at 715–16. However, the steps of tracking the number
of times the message has been viewed, restricting access to the content, and
the use of the Internet were found to be additional elements apart from the
abstract idea. Id. at 716.
In view of our Guidance and the court’s treatment in Ultramercial, we
limit the abstract idea to those steps reciting the commercial interaction of
advertising, to wit:
receiving . . . a request indicating requested video content,
wherein the requested video content comprises a plurality of
frames each having a first aspect ratio, . . . an advertisement
portion associated with the advertisement, . . . and sending, to a
user . . . the combined video content.
Consequently, we treat as additional limitations those steps and
structure that do not recite offering media on the condition of viewing an
advertisement, but instead reciting the instrumentalities and manner of
processing the video images, to wit:
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a computing device . . . determining a spatial dimension of an
advertisement selected for display with the requested video
content; generating, by the computing device, combined video
content that comprises one or more frames, each of the one or
more frames comprising: a resized content portion having a
second aspect ratio, wherein the second aspect ratio is based on
a reduction in a spatial dimension of the first aspect ratio by at
least the determined spatial dimension of the advertisement, and
wherein the resized content portion is associated with the
requested video content; . . . wherein the advertisement portion
does not overlap the resized content portion; and . . . a user
device.
We note that the Examiner has, in the Answer, characterized many of these
limitations as additional limitations in Step 2B of the eligibility analysis.
Ans. 7–8.
Appellant’s above-argument that the limitations of claim 2 are not
similar to those previously identified as abstract by the courts, is not
persuasive. Under the 2019 Guidance, the relevant inquiry is whether the
claims recite an abstract idea as described in the three groupings, including
certain methods of organizing human activity, set forth therein. It is not
persuasive to show that the subject matter is unrelated (e.g., in field of art) to
a specific case identifying a particular method of organizing human activity.
2019 Guidance, 84 Fed. Reg. at 51–53.
b) “Directed to an Abstract Idea”
Having determined that claim 2 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Guidance, whether the claims
are directed to that abstract idea, or whether the claims integrate the abstract
idea into a practical application of that abstract idea. 84 Fed. Reg. at 54.
The Examiner finds claim 2 to have an element additional to those
limitations reciting an abstract idea; namely, “a computing device.” Final
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Act. 29. The Examiner further determines the involvement of the computing
device amounts to no more than executing the abstract idea using computer
functions. Id.
Appellant disagrees, arguing that claim 2 has additional elements such
as “a reduction in a spatial dimension of the first aspect ratio by at least the
determined spatial dimension of the advertisement” and “wherein the
advertisement portion does not overlap the resized content portion.” Appeal
Br. 10 (emphasis omitted); Reply Br. 5. Appellant argues that such
additional elements cause claim 2 to be eligible in the same manner as in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Id. Appellant characterizes DDR as addressing a problem by providing a
solution that is “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
Id. Appellant argues that the claimed invention solves a problem of a user
“fast forward[ing] or otherwise skip[ping] the advertisement.” Id. at 11.
Appellant characterizes the claimed solution as being applied to “devices
having capabilities to support fast forward and other related video controls.”
Reply Br. 6 (citing Spec. ¶ 14).
Appellant further argues eligibility in view of Data Engine
Technologies, in which the claims were found eligible because they
“recite[d] a specific improvement over prior systems, resulting in an
improved user interface for electronic devices.” Reply Br. 5 (citing Data
Eng. Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018)). Appellant
argues that the claims do not merely claim the “‘use of the Internet’ to
perform an abstract business practice (with insignificant added activity).”
Id. at 4.
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The USPTO’s 2019 Guidance provides considerations, drawn from
prior court precedent, that indicate an additional element or combination of
elements may have integrated a recited abstract idea into a practical
application. 84 Fed. Reg. at 55. One such consideration is whether the
additional element(s) reflect an improvement in the functioning of a
computer or another technology or technical field. Id. Considerations
indicating a lack of a practical application of the recited abstract idea include
additional element(s) that amount to an instruction to implement the abstract
idea on a computer or to otherwise instruct to “apply [the abstract idea].” Id.
Other such considerations indicating a lack of a practical application include
additional elements that add insignificant extra-solution activity to the
abstract idea, or that merely link the abstract idea to a particularly
technological environment. Id.
Under this framework, we analyze the additional elements in claim 2,
which, as discussed supra, are:
a computing device . . . determining a spatial dimension of an
advertisement selected for display with the requested video
content; generating, by the computing device, combined video
content that comprises one or more frames, each of the one or
more frames comprising: a resized content portion having a
second aspect ratio, wherein the second aspect ratio is based on
a reduction in a spatial dimension of the first aspect ratio by at
least the determined spatial dimension of the advertisement, and
wherein the resized content portion is associated with the
requested video content; . . . wherein the advertisement portion
does not overlap the resized content portion; and . . . a user
device.
The generation of combined video content having a specific resizing
of two portions of media (the content portion and the advertisement portion)
such that they do not overlap is not merely an instruction to apply claim 2’s
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concept of “receiving . . . a request indicating requested video content, . . .
an advertisement portion associated with the advertisement, . . . and sending,
to a user device, the combined video content.” The particular arrangement
of two portions of media, based on reduction in a spatial dimension of the
aspect ratio of one portion based on the spatial dimension of the second
portion, such that the portions do not overlap in the frame, is beyond an
instruction to apply the concept of sending an combined video of a requested
video portion and an advertisement portion. Similarly, the additional
elements are more than extra-solution activity, such as generic data
gathering or display, and do not merely link advertising to the technological
field of transmitted video. For the same reasons, we determine that the
additional elements provide an improvement to the technology of sending
two video portions between devices. While the claim requires one of those
portions to be an advertisement, the claim is not directed towards the
advertising activity. The claim instead is directed towards how the video
portions are combined for transmission to the user, reciting specific structure
that improves the relevant technology. See, e.g., CardioNet, LLC v.
InfoBionic, Inc., 2020 WL 1897237, 5 (“the claims ‘focus on a specific
means or method that improves’ cardiac monitoring technology”) (quoting
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Circ. 2016)).
The additional limitations are unlike those in Ultramercial, which
performed commercial, transactional functions of tracking ad usage, setting
terms for viewing advertising-supported media, and receiving payment. See
Ultramercial, 772 F.3d at 715. The abstract idea in Ultramercial was
limited only by “insignificant” data-gathering and pre-solution activity,
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limited to Internet implementation, such that the claim did not “provide any
‘practical assurance that the process is more than a drafting effort designed
to monopolize the [abstract idea] itself.’” Id. at 716 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)).
The additional limitations are yet further distinguishable from those in
Affinity Labs v. Amazon.com, cited by the Examiner, which the court found
“more abstract than the idea in Ultramercial” because it “covers streaming
content generally, not even including an additional feature such as
exchanging the consumer’s access to the streaming content for the
consumer’s viewing of an advertisement.” Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016).
We further draw parallels between the improvement of technology in
claim 2 to the improvement of technology found in prior court cases. In
RCT v. Microsoft, the court held that the patentees had claimed an eligible
process of rendering an image by applying a particular noise mask thereto,
and that eligibility was not lost because that process involved an abstract
idea. Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 868–69
(Fed. Cir. 2010). In DDR Holdings v. Hotels.com, the court held that
directing web traffic to a hybrid webpage created by a web server, rather
than to a third party webpage as was customary, resulted in a patent-eligible
inventive concept, rather than a “business method aimed at processing
business information, applying a known business process to the particular
technological environment of the Internet, or creating or altering contractual
relations using generic computer functions and conventional network
operations.” DDR Holdings, 773 F.3d. at 1257–1259.
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Additionally, we note that our determination that claim 2 provides an
improvement to technology is consistent with a USPTO Eligibility Example
that addressed hypothetical claims to resizing content so that overlap would
not exist. July 2015 Update Appendix 1: Examples, 8, available at:
https://www.uspto.gov/sites/default/files/documents/101_examples_1to36.p
df. Example 23 provides a contrast between an ineligible claim 3, which
calculated resizing information for text within a graphical element based
upon the area of another graphical element, and an eligible claim 4, which
used the resizing information to automatically relocate the resized text to an
unobscured portion of that graphical element for so long as the two graphical
elements overlapped. Id. at 10–12. Claim 4 was described as “not merely
attempting to limit the mathematical algorithm to a particular technological
environment [but instead,] improves the functioning of the basic display
function of the computer itself,” and “demonstrate[s]” an improvement to
the computer’s basic ability to display information and interact with the user.
Id. at 12. Our determination that the additional elements in claim 2 provide
an improvement to the ability to transmit information, rather than providing
a particular technological environment, is consistent with this USPTO
example.
Based upon our controlling guidance and court precedent, we
determine that claim 2 is not directed towards the recited abstract idea, but
that the recited abstract idea is integrated into a practical application of that
idea. Accordingly, claim 2 is eligible, and the eligibility analysis is
concluded. See 84 Fed. Reg. at 54.
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has shown the
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Examiner erred in concluding claim 2 is directed to a judicial exception, i.e.,
an abstract idea, without significantly more. We therefore reverse the
Examiner’s rejection of claim 2. Because the Examiner rejects claims 3–27
on the same grounds as claim 2, we reverse the Examiner’s rejection of
claims 3–27.3
CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejection
of claims 2–13, 15, 16, and 18–27 as being unpatentable under nonstatutory
double patenting over Chen, and we reverse the Examiner’s rejection of
claims 2–27 as lacking subject matter eligibility under 35 U.S.C. § 101.
Because we affirm fewer than all claims that were rejected, we affirm in
part.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Grounds Affirmed Reversed
2–27 101 Eligibility 2–27
2–13, 15,
16, 18–27
Chen, Nonstatutory
Double Patenting
2–13, 15,
16, 18–27

Overall
Outcome
2–13, 15,
16, 18–27
14, 17

3 We note that the Examiner has found “the claim elements are a
combination of well-understood, routine, and conventional techniques,
found in the art,” citing specific references that are found to be prior art.
Ans. 8. As these are cited only for purposes of the eligibility analysis, the
issue of obviousness over these references is not before us, and has not been
considered here.
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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 IN PART