Disney Enterprises, Inc.

Patent Trials and Appeals Board

Mar 29, 2021

2020006322 (P.T.A.B. Mar. 29, 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.
14/301,237 06/10/2014 Edward C. Drake 0260395 3990
63649 7590 03/29/2021
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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):
docketing@farjami.com
farjamidocketing@yahoo.com
ffarjami@farjami.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte EDWARD C. DRAKE and JEFFREY A. STEELE
________________

Appeal 2020-006322
Application 14/301,237
Technology Center 3600
________________

Before ELENI MANTIS-MERCADER, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 5, 6, 7, 14, and 18–24.2,3 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. According to Appellant, Disney Enterprises, Inc. is the
real party in interest. Appeal Br. 2.
2 Claims 2–4, 8–13, and 15–17 are cancelled. Appeal Br. 26–28 (Claims
Appendix).
3 We mailed a decision pertaining to this application on November 2, 2018.
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INVENTION
The invention relates to digital purchase transfers between separate
retailers. Spec. 2:2–4. Claim 1 is illustrative of the invention and is
reproduced below:
1. A user device comprising:
a memory storing a receipt identifying a media content
downloadable or streamable only from a first retailer of a
plurality of retailers; and
a processor configured to execute a redemption software
application to make the media content also downloadable or
streamable from a second retailer of the plurality of retailers by:
displaying a user redemption interface listing a plurality
of media contents, including the media content, each displayed
with a redeem option;
receiving, via the user redemption interface, a selection of
the redeem option for the media content from a user to redeem
the media content from the second retailer of the plurality of
retailers;
retrieving the receipt for the media content from the
memory;
transmitting the receipt identifying the media content to a
redemption server, wherein the redemption server includes a
server memory having a plurality of media redemption tokens,
and wherein the server memory is organized such that each of
the media redemption tokens includes a respective redemption
code associated with only one of the plurality of retailers and
only one of the plurality of media contents including the media
content;
receiving a first redemption token of the plurality of media
redemption tokens including a first redemption code from the
redemption server in response to transmitting the receipt to the
redemption server when the redemption server determines the
media content identified by the receipt is available to the second
retailer, wherein the first redemption token identifies the media
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content and is appended to a universal resource locator (URL) of
the second retailer, and wherein the first redemption code is
associated with the media content and the second retailer in the
server memory entitling the user device to receive the media
content from the second retailer only and not from the other
plurality of retailers;
in response to receiving the selection of the redeem option
from the user for the media content via the user redemption
interface, transmitting the first redemption token including the
first redemption code to the second retailer using the URL
including the first redemption token appended thereto that
identifies the media content to the second retailer and permits
redemption of the media content by the user device from the
second retailer; and
downloading or streaming the media content from the
second retailer, in response to the transmitting of the first
redemption token including the first redemption code by the user
device to the second retailer.
Appeal Br. 25–26 (Claims Appendix) (emphases added).

REJECTION
The Examiner rejects claims 1, 5–7, 14, and 18–24 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 6–10.
ANALYSIS
I. Claims 1, 5–7, 14, and 18–24 Rejected Under 35 U.S.C. § 101
A. Principles of Law
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). 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, 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 (1853))); 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
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 187; see also id. at 191 (“We view respondents’ claims as
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nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the 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. at 191 (citing
Benson and Flook); see also, 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 (internal 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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“Update”); see also
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October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct.
18, 2019) (notifying the public of the availability of the Update). “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also
October 2019 Guidance Update at 1. The Manual of Patent Examining
Procedure (“MPEP”) now incorporates this revised guidance and subsequent
updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).4
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.5
MPEP §§ 2106.04(a), (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 to
whether the claim:

4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
5 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Ans. 5; Final Act 2, 5. The Examiner concludes
the present claims are not integrated into a practical application and there are
no limitations recited in the present claims that add significantly more to the
abstract idea. Ans. 8–9, 12; Final Act. 7–8, 10. The Examiner determines
the present claims do not amount to significantly more than an abstract idea
itself because the abstract idea is implemented using additional elements that
are well-understood, routine, and conventional. Ans. 11–12 (citing MPEP
§ 2106.05(d)); Final Act. 8–10 (citing MPEP § 2106.05(d)).
Appellant argues that the present claims recite various technological
improvements to the user interface. Appeal Br. 11–13 (citing Core Wireless
Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)).
Appellant argues the present claims are integrated into a practical
application because the present claims overcome a lack of interactions
between retailers such that a user device to is able to “redeem” media
content. Appeal Br. 13–16 (citing Spec. 1:5–15); Reply Br. 4–5. Appellant
argues that because the present claims recite end with a physical
transformation of downloading. Appeal Br. 16–19. Appellant argues the
present claims improve the capability of the user device for automatically
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communicating with the second retailer. Id. at 22–23. We disagree with
Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the MPEP §§ 2106.04(a), (d). The emphasized portions of claim
1, reproduced above (see supra at 2–3), recite commercial interactions
(including agreements in the form of contracts or sales activities) because
they pertain to interactions between retailers such that a user device to is
able to “redeem” media content. See MPEP §§ 2106.04(a), (d).
Commercial interactions (including agreements in the form of contracts or
sales activities) fall into the category of certain methods of organizing
human activity. Id. Certain methods of organizing human activity are a type
of abstract idea. Id.
We also conclude the claims at issue here are analogous to the claims
in Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266 (Fed. Cir.
2016). In Affinity Labs, the Court held “the concept of delivering user-
selected media content to portable devices is an abstract idea, as that term is
used in the section 101 context.” Id. at 1269.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See MPEP §§ 2106.04(a), (d). We therefore
(1) identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements both individually and
collectively to determine whether they integrate the exception into a
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practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the elements in the present claims used to implement the
abstract idea are the “memory,” “processor,”6 “redemption software
application,”7 “user redemption interface,”8 “redemption server,” “server
memory,”9 “URL,” and “user device.” See MPEP §§ 2106.04(a), (d). The
additional elements of the present claims do not integrate the abstract idea
into a practical application (Ans. 8–9, 12; Final Act. 7–8, 10) because they
do not impose any meaningful limits on practicing the abstract idea for the
following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 13–16 (citing Spec. 1:5–
15); Reply Br. 4–5. The MPEP, which incorporates the Update addresses
how we consider evidence of improvement that is presented to us. The
Update states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use 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.

6 This feature is recited in claims 1 and 23, but not recited in claim 14.
7 This feature is recited in claims 1 and 23, but not recited in claim 14.
8 This feature is recited in claims 1 and 14, but not recited in claim 23.
9 This feature is recited in claims 1 and 14, but not recited in claim 23.
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MPEP §§ 2106.04(a), (d) (citing Update 11 (emphases added)). The Update
further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
MPEP §§ 2106.04(a), (d) (citing Update 13 (emphasis added)).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appellant refers us to page 1, lines 5 to 15 of the
Specification and argues that the present claims are integrated into a
practical application because the present claims overcome a lack of
interactions between retailers such that a user device to is able to “redeem”
media content. Appeal Br. 13–16 (citing Spec. 1:5–15); Reply Br. 4–5.
However, we disagree with Appellant because that excerpt discuss the past
problems with past retailer interaction with another retailer, which is an
abstract idea as discussed supra in § I.D.
Appellant’s citation to Core Wireless is unavailing. Appeal Br. 11–13
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(citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356
(Fed. Cir. 2018)). In Core Wireless, the U.S. Court of Appeals for the
Federal Circuit noted that the invention improved the efficiency of using an
electronic device by consolidating “‘a limited list of common functions and
commonly accessed stored data,’ which can be accessed directly from the
main menu.” Core Wireless, 880 F.3d at 1363 (citation omitted). Moreover,
displaying selected data or functions of interest in the summary window
allowed the user to view the most pertinent data or functions “without
actually opening the application [window] up.” Id. at 1367 (emphasis
omitted). Stated differently, the application window is in an un-launched
state. Id. In addition, the user’s navigation speed through various views and
windows is improved because it saves the user from having to navigate to
the required application, open the application, and then navigate within that
application to enable the data of interest to be seen or a function of interest
to be activated. Id. Unlike the claims of Core Wireless, the present claims
do not recite displaying an application summary window that was not only
reachable directly from the main menu, but could also display a limited list
of selectable functions while the application was in an un-launched state or
an improvement in the functioning of computers. As discussed above, the
claims are directed to an abstract idea, rather than an improvement to the
underlying computer technology or to any of the additional elements.
We disagree with Appellant’s argument that because the present
claims recite end with a physical transformation of downloading. Appeal
Br. 16–19. In Diehr, the Court focused on the production of molded articles
that are properly cured. Id. at 177. Further, the Court noted that achieving
the perfect cure depended upon numerous factors such as the temperature of
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the molding process, the thickness of the article to be molded, and the
amount of time the article is allowed to remain in a press. Id. at 177–78.
The Court also noted the industry was not able to obtain uniformly accurate
cures because the temperature of the molding press could not be precisely
measured, which made it difficult to do any necessary computations to
determine cure time. The Court held that a physical and chemical process
for molding precision synthetic uncured rubber implementing the Arrhenius
equation was a transformation of an article. Unlike the claims of Diehr, the
present claims recite a transformation of data and do not recite a physical
transformation for molding precision synthetic uncured rubber implementing
the Arrhenius equation or a similar type of physical transformation.
We disagree with Appellant’s argument that the present claims
improve the capability of the user device for automatically communicating
with the second retailer. Appeal Br. 22–23. An improvement to the
capability of the user device for automatically communicating with the
second retailer is still abstract idea as discussed supra in § I.D.
At best, this is an improvement to certain methods of organizing
human activity (i.e., an abstract idea as discussed supra in § I.D). Id.; see,
e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”).
“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (citations omitted).
We determine the limitations “transmitting,” “downloading,”
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“streaming,” and “appended” is the type of basic data transmission
functionality that has been determined to be insignificant post-solution
activity. See buySafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (stating “That a computer receives and sends the information over a
network – with no further specification – is not even arguably inventive”).
Furthermore, the additional elements in the present claims, namely
“memory,” “processor,” “redemption software application,” “user
redemption interface,” “redemption server,” “server memory,” “URL,” and
“user device” do not, either individually or in combination, integrate the
abstract idea into a practical application. In particular, Appellant’s
Specification discloses that these elements encompass generic computer
components. Spec. 4:17–22, 9:15–21, 10:10–20, 12:5–22, 15:16–16:11.
Merely adding generic computer components to perform abstract ideas does
not integrate those ideas into a practical application. See MPEP
§§ 2106.04(a), (d) (citing 2019 Revised Guidance, 84 Fed. Reg. at 55
(identifying “merely includ[ing] instructions to implement an abstract idea
on a computer” as an example of when an abstract idea has not been
integrated into a practical application)).
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea.
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because we determine that the present claims recite an abstract
idea that is not integrated into a practical application, we proceed to Step 2B.
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F. Step 2B
We agree with the Examiner’s determination that the present claims
do not amount to significantly more than an abstract idea itself because the
abstract idea is implemented using additional elements that are well-
understood, routine, and conventional. Ans. 11–12 (citing MPEP
§ 2106.05(d)); Final Act. 8–10 (citing MPEP § 2106.05(d)). Furthermore,
the Specification indicates that the additional elements (i.e., “memory,”
“processor,” “redemption software application,” “user redemption
interface,” “redemption server,” “server memory,” “URL,” and “user
device”) are nothing more than generic computer components. Spec. 4:17–
22, 9:15–21, 10:10–20, 12:5–22, 15:16–16:11. Appellant’s Specification
indicates these additional elements were well-understood, routine, and
conventional components because it describes them at a high level of
generality and in a manner that indicates that they are sufficiently well-
known. Id.
The additional elements, either individually or in combination, do not
amount to an inventive concept. Final Act. 10; Ans. 12. An inventive
concept “cannot be furnished by the unpatentable law of nature (or natural
phenomenon or abstract idea) itself.” Genetic, 818 F.3d at 1376; see also
2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining that, after
determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat
else is there in the claims before us?’” (alteration in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim, as a whole, amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
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19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional” (emphasis added)).
For at least the above reasons, we conclude that each of the present
claims, considered as a whole, is directed to a patent-ineligible abstract idea
that is not integrated into a practical application, and does not include an
inventive concept. We, therefore, sustain the Examiner’s rejection of:
(1) independent claims 1, 14, and 23; and (2) dependent claims 5–7, 18–22,
and 24 under § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
II. Claims 25–27
The Examiner does not provide a rejection for claims 25–27. See
generally Final Act. (lacking a rejection for claims 25–27 under 35 U.S.C.
§ 103); Ans. (lacking a discussion of claims 25–27 under 35 U.S.C. § 101).
Moreover, Appellant added claims 25–27 as new claims in the Amendment
filed on April 10, 2020. Although the Examiner entered claims 25–27 from
the April 10, 2020 Amendment in the Advisory Action mailed on April 22,
2020, the Examiner did not provide a rejection of claims 25–27.
Therefore, there is no rejection for us to affirm or reverse.
Accordingly, claims 25–27 are not before us and we do not include claims
25–27 in the claim table below.
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CONCLUSION
In summary:

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5–7, 14,
18–24
101 Eligibility 1, 5–7, 14,
18–24