Craig Stephen. Etchegoyen

Patent Trials and Appeals Board

Aug 1, 2019

12819012 - (D) (P.T.A.B. Aug. 1, 2019)

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.
12/819,012 06/18/2010 Craig Stephen Etchegoyen UN-NP-SU-022 9063
96051 7590 08/01/2019
Uniloc USA Inc.
102 N. College Avenue
Suite 303
Tyler, TX 75702
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
kris.pangan@unilocusa.com
sean.burdick@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG STEPHEN ETCHEGOYEN1
____________

Appeal 2018-007488
Application 12/819,012
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI,
MICHAEL C. ASTORINO, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 3, 4, 14, and 15. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We Affirm.

1 Appellant identifies the real party in interest as Uniloc. App. Br. 3.
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THE INVENTION
Appellant states, “[t]he present invention is directed toward systems
for media activation, and related methods.” Spec. ¶ 2.
Claim 3, reproduced below, is representative of the subject matter on
appeal.
3. A computerized method for modifying media activation
on remote devices to distinguish licensed copies of media from
unlicensed copies distributed peer-to-peer, comprising:
receiving a media identifier of a media and a device
identifier from a first remote device executing the media, the
device identifier being based on a combination of at least one
user-configurable parameter and at least one non-user-
configurable parameter of the first remote device;
granting a usage license for the media to the first remote
device;
correlating the usage license with the media identifier
and the device identifier;
generating a sale metric for the media based on a number
of usage licenses granted;
determining a piracy metric of the media based on
availability of illegal copies of the media; and
charging a publisher of the media a fee based on the sale
and piracy metrics;
wherein determining the piracy metric comprises
determining the availability of illegal copies of the media on a
public network; and
wherein determining the piracy metric comprises
estimating a number of illegally downloaded copies of the
media on a peer-to-peer network.

THE REJECTION
The following rejection is before us for review.
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Claims 3, 4, 14 and 15 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–5 in the
Final Office Action and on pages 3–11 in the Examiner’s Answer.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 3, 4, 14, and 15 under 35 U.S.C.
§ 101.
The Appellant argues claims 3, 4, 14, and 15 as a group (App. Br. 15),
and we select claim 3 as the representative claim for this group, and so the
remaining claims stand or fall with claim 3. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015).
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 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. 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 id. at 219
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(“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, 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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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
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environment.” Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. 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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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:
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(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 Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, 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.
In so doing, as indicated above, we apply a “directed to” two prong
test: 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.” Guidance 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states,
Media, such as software (computer games and video games)
and music, are typically sold on a physical medium like an
optical disc. This form of media distribution is commonly
practiced, but prone to piracy. Software and music piracy
continue to increase at an alarming rate, particularly in
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countries with emerging economies. Global revenue losses due
to software piracy grew from $8 billion to nearly $48 billion
worldwide in 2007 and 21 % of software in the United States is
unlicensed, mostly as a result of over-installation. Piracy
around the rest of the world is even worse. Yet despite these
substantial losses, in the past few years many software
development groups have asked themselves whether copy
protection and license management schemes are really worth
the trouble, trouble that often involves: the alienation of good
customers due to restrictive activation schemes involving
DRM, root-kits, or disc-locking; the difficulty of implementing
many solutions; and the increased support costs for customers
locked out by cumbersome license keys or overzealous
licensing rules.
Specification ¶ 3.
The preamble says it is “for modifying media activation on remote
devices to distinguish licensed copies of media from unlicensed copies
distributed peer-to-peer.” Claim 3.
Accordingly, the Examiner found that the claims are directed to
“facilitating a media usage by granting usage license using media identifier
and device identifier, and tracking the sales as well as piracy factor based on
illegal copies, also charging the media publisher based on different factors.”
(Final Act. 3).
We agree with the Examiner that claim 3 is directed to granting a
usage license and charging a publisher of the content a fee based on sale and
piracy metrics. This is a form of managing human activity. Claim 3 recites
in pertinent part,
granting a usage license for the media . . .; correlating the usage
license with the media identifier and the device identifier;
generating a sale metric for the media based on a number of
usage licenses granted; determining a piracy metric of the
media based on availability of illegal copies of the media; and
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charging a publisher of the media a fee based on the sale and
piracy metrics; wherein determining the piracy metric
comprises determining the availability of illegal copies of the
media on a public network; and wherein determining the piracy
metric comprises estimating a number of illegally downloaded
copies of the media on a peer-to-peer network.
Acts of illegal downloading and pricing based on availability and sale of
illegal copies to discourage such behavior entails methods of organizing
human activity which are patent-ineligible. Guidance 84 Fed. Reg. at 52,
Alice, 573 U.S. at 218–20.
Turning to the second prong of the “directed to” test, claim 3 only
generically requires “a first remote device,” and “remote devices.” These
components are described in the Specification at a high level of generality.
See Spec. ¶¶ 21, 55, 59 and Fig. 1. We fail to see how the generic recitations
of these most basic computer components and/or of a system so integrates
the judicial exception 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.” Guidance 84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of a method
of managing human activity that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to licenses, does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“And
that the claims do not preempt all price optimization or may be limited to
price optimization in the e-commerce setting do not make them any less
abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
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include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:
The elements of the instant process, when taken in combination,
together do not offer substantially more than the sum of the
functions of the elements when each is taken alone. That is, the
elements involved in the recited process perform the same
activities according to their generic functionalities which are
well-understood, routine and conventional.
Final Act. 4. We agree with the Examiner. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, correlate, determine and apply decision criteria to data
to generate a result and transmit same are some of the most basic functions
of a computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In
re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
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each step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(receiving/correlating/determine/executing/updating) and storing is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that
sequence of data retrieval, analysis, modification, generation, display, and
transmission was abstract); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
receive, correlate determine and apply decision criteria to data to generate a
result was abstract). The ordering of the steps is, therefore, ordinary and
conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a method of organizing human
activity using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 225–26.
Appellant argues,
The Examiner’s broad generalization of the claims ignores this
and other recitations which require specific actions in
determining whether to grant a software license. While
granting a software license may be ‘fundamental digital rights
management’ practice, the claims recite specific techniques
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and limitations that are far from generic. Final Act. 4. These
recitations, in contrast to conventional digital rights
management practices, provide specific steps that are not
considered by the Examiner.
(Appeal Br. 11).
Although we agree with Appellant that the claims must be read, as a
whole, we nevertheless find, on balance, that claim 3 is directed to granting
a usage license and charging the publisher of the content a fee based on sale
and piracy metrics for the reasons specified above with respect to our
“directed to” findings. As found supra, claim 3 only includes the following
generically recited device limitations: “remote devices” and “a first remote
device.” What remains in the claim after disregarding these device
limitations, are abstractions, i.e., “receiving a media identifier of a media
and a device identifier . . ., the device identifier being based on a
combination of at least one user- configurable parameter and at least one
non-user-configurable parameter.” Such steps are themselves mental
processes because they involve concepts performed in the human mind.2
“[A] claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo,
566 U.S. at 90). To the extent Appellant is arguing that these are additional
elements constituting an inventive concept, such features cannot constitute
the “inventive concept.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed.
Cir. 2018) (Moore, J., concurring) (“It is clear from Mayo that the ‘inventive

2 For purposes of ensuring a concise analysis, we chose the human activity
judicial exception above as the abstraction for analysis, but as Appellant
points out the claims are directed to plural abstractions and our focus on one
over the other is to avoid cumulative analyses. See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally
be described at different levels of abstraction.”)
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concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s]
untouched the numerous cases from this court which have held claims
ineligible because the only alleged ‘inventive concept’ is the abstract idea.”);
see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”).
Citing to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1316 (Fed. Cir. 2016) Appellant argues that “[t]he instant claims are
factually analogous to the McRO case in that the claims recite processes that
are specifically designed to achieve improved antipiracy techniques.” (App.
Br. 12). We disagree with Appellant because the question under McRO is
whether the claims as a whole “focus on a specific means or method that
improves the relevant technology” or are “directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery.” Id. at 1314 (citations omitted). In this case, claim 3 as a whole,
as we found above, is focused on satisfying certain contingencies for
granting a usage license and charging a publisher of the content a fee based
on sale and piracy metrics, which is a form of managing human activity and
not a technological improvement over for example an existing, manual 3–D
animation technique. We note that “the addition of merely novel or non-
routine components to the claimed idea [does not] necessarily turn[] an
abstraction into something concrete.” See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014).
Appellant argues that “the claims indeed improve upon an existing
process of preventing software piracy” (App. Br. 13), but again the claims
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do not recite a particular way of programming or designing the software to
create menus that have these features, but instead merely claim the resulting
systems. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d at
1314 (“directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery”). Essentially, the claims are
directed to certain functionality—here, the ability to prevent software piracy.
Alternatively, the claims are not directed to a specific improvement in the
way computers operate. Cf. Enfish, 822 F.3d at 1335–36.
Appellant next argues, “the Examiner has the burden of explaining
why the ‘significantly more’ threshold of Alice is not met.” (Appeal Br. 14).
We disagree with Appellant. To the extent Appellant argues that the
Examiner erred in adequately supporting this determination by not providing
evidence, we are unpersuaded. In this regard, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
Manual of Patent Examining Procedure § 2106.07(a)(III) (2018) (“The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Thus, the court does not require ‘evidence’
that a claimed concept is a judicial exception, and generally decides the legal
conclusion of eligibility without resolving any factual issues.” (Citations
omitted.))
Moreover, the Federal Circuit made clear in Berkheimer that “not
every § 101 determination contains genuine disputes over the underlying
facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not
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require evidentiary support for independent claim 1 because “[t]he
limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
All that is required of the USPTO to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must “notify the applicant,”
“stating the reasons for such rejection,” “together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of his application.” 35 U.S.C. § 132; see also In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden
on examiners beyond the notice requirement of § 132”). Here, as we found
above, the Examiner has made these findings as required by the statute. See
Final Act. 2–5.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 3, 4, 14, and
15 under 35 U.S.C. § 101.

DECISION
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