14050034 - (D) (P.T.A.B. Jan. 3, 2020)

ERICSSON AB

Patent Trials and Appeals BoardJan 3, 2020

14050034 - (D) (P.T.A.B. Jan. 3, 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. 14/050,034 10/09/2013 Charles Hammett Dasher P33006-US2 1008 27045 7590 01/03/2020 ERICSSON INC. 6300 LEGACY DRIVE M/S EVR 1-C-11 PLANO, TX 75024 EXAMINER EKPO, NNENNA NGOZI ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 01/03/2020 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): amber.rodgers@ericsson.com michelle.sanderson@ericsson.com pam.ewing@ericsson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHARLES HAMMETT DASHER and CHRIS PHILLIPS ____________ Appeal 2019-000807 Application 14/050,034 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and IRVIN E. BRANCH, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 10, 14, 16, and 18–24. Appeal Br. 1. Claims 2, 4–9, 11–13, 15, and 17 are canceled. Appeal Br. 23–29 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use “Appellant” to reference the present applicant, as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Ericsson AB.” Appeal Br. 1. Appeal 2019-000807 Application 14/050,034 2 APPELLANT’S INVENTION Appellant’s invention “relates to . . . controlling the delivery of video programming to set-top boxes.” Spec. ¶ 2. Claim 1 recites: 1. A method of controlling delivery of video programs from video distribution equipment to a video receiver device, the method comprising: receiving, at the video distribution equipment from a mobile terminal, an identifier that is associated with an image displayed by the video receiver device, wherein the image is communicated by the video distribution equipment to the video receiver device; and in response to the receiving of the identifier, controlling delivery of video programs from the video distribution equipment to the video receiver device in response to a command received from the mobile terminal requesting delivery of an identified video program. Appeal Br. 23 (Claims Appendix). REJECTIONS Claims 1, 3, 10, 14, 16, and 18–24 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 7–13. Claims 1, 3, 10, 14, 16, and 18–24 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Beals (US 2012/0198572 A1; Aug. 2, 2012). Final Act. 14–24. 35 U.S.C. § 101 REJECTION For this rejection, the Examiner and Appellant address all claims as a group. See, e.g., Appeal Br. 15; Final Act. 9. We address the rejection with reference to claim 1. Appeal 2019-000807 Application 14/050,034 3 Principles of Law 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. 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, 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, Appeal 2019-000807 Application 14/050,034 4 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 187; 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. (citing Benson and Flook) (citation omitted); 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 (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. Appeal 2019-000807 Application 14/050,034 5 PTO Guidance The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); see USPTO, October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019). 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 activities such as a fundamental economic practice, and 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) (9th ed. 2018)). 84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then conclude the claim is directed to a judicial exception (id. at 54) and 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. Id. at 56. Examiner’s Findings and Appellant’s Contentions The Examiner finds each claim is directed to “receiving a user Appeal 2019-000807 Application 14/050,034 6 identifier based on an optical scan from a mobile terminal, generating an equipment identifier, storing the association, and controlling video delivery based on the association.” Final Act. 8–9. The Examiner further finds these features constitute “abstract idea[s] similar to the data recognition and storage discussed in Content Extraction [& Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014)] and the delivery of user-selected media content to portable devices discussed in Affinity Labs [of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016)].” Id. The Examiner also finds all claim features constitute either one of the alleged abstract ideas or “client-server video distribution technology . . . [recited] at a high level of generality.” Final Act. 12. Appellant contends the claimed invention is rather “directed to solving a specific technological problem” of enabling a cable customer to control a set-top box that cannot transmit control signals to the cable provider. Reply Br. 2–3 (citing Spec. ¶ 5). Appellant further contends the claims have “the specificity necessary to show . . . a concrete solution to the problem” (Appeal Br. 14) and accordingly “pose[] no risk of preempt[ing] . . . mathematical principles, basic business practices, laws of nature, or abstract ideas in general” (Reply Br. 3). Step 1:Does the Claim Fall within a Statutory Category? There is no dispute that the claimed subject matter falls within a 35 U.S.C. § 101 category of patentable subject matter. See Guidance, 84 Fed. Reg. at 53−54 (“Step 1”). Appeal 2019-000807 Application 14/050,034 7 Step 2A(1):2Does the Claim Recite Any Judicial Exceptions? We are persuaded the Examiner has not shown claim 1 recites a judicial exception. Specifically, we agree with Appellant’s contentions inasmuch as the claim features alleged to be abstract ideas—“receiving a user identifier based on an optical scan from a mobile terminal, generating an equipment identifier, storing the association, and controlling video delivery based on the association” (Final Act. 8)—are not judicial exceptions described by the Guidance (see 84 Fed. Reg. at 52). See also Reply Br. 3 (“no risk of preempt[ing] . . . abstract ideas” (quoted supra)). Similarly, even assuming the above claim features are analogous to the cited abstract ideas of Content Extraction and Affinity Labs (Final Act. 8–9), neither of these decisions is one of the many corresponded by the Guidance to its described judicial exceptions (see 84 Fed. Reg. at 52 nn.12–15). Accordingly, we do not sustain the rejection. See id. at 51 (“All USPTO personnel are . . . expected to follow the [G]uidance.”), 53 (“Claims that do 2 The Guidance separates the herein-enumerated issues (1) to (4) (see supra 5–6) into Steps 2A(1), 2A(2), and 2B, as follows: The [revised] procedure . . . focuses on two aspects [of whether a claim is “directed to” a judicial exception under the first step of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the claim recites a judicial exception; and (2) whether a recited judicial exception is integrated into a practical application. . . . [W]hen a claim recites a judicial exception and fails to integrate the exception into a practical application, . . . further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B) . . . is needed . . . in accordance with existing USPTO guidance as modified in April 2018. 84 Fed. Reg. at 51. Appeal 2019-000807 Application 14/050,034 8 not recite matter that falls within the[] enumerated groupings of abstract ideas should not be treated as reciting abstract ideas.”). Step 2A(2): Are the Recited Judicial Exceptions Integrated Into a Practical Application? Further, even assuming the above claim features constitute judicial exceptions described by the Guidance, we would be persuaded the Examiner fails to show these features are not integrated into a practical application. See Guidance, 84 Fed. Reg. at 53 (describing a practical application as a “meaningful limit” on recited judicial exceptions). Specifically, we would agree with Appellant’s contentions inasmuch as the Examiner overgeneralizes the claimed invention as comprising only the above claim features and “client-server video distribution technology . . . [recited] at a high level of generality.” Final Act. 12; see also Appeal Br. 14 (“specificity necessary to show . . . a concrete solution” (quoted supra)). Rather, claim 1 recites an ordered combination of the claimed video distribution equipment (VDE), video receiver device (VRD), and mobile terminal (MT)—e.g., respectively a cable provider , set-top box, and smartphone (Spec. ¶¶ 22–25; Fig. 1). Claim 1 specifies: the VDE provides an image to the VRD for display; the MT provides the VDE an identification associated with the image; and, in response to the identification, the VDE will send programming to the VRD per commands received from the MT. Thus, in sum, the MT controls the VRD by transmitting commands to the VDE and obtains that control via the circular transmission of VDE-generated information associated with the image (i.e., passing of the information from the VDE to VRD, then to the MT, and then back to the Appeal 2019-000807 Application 14/050,034 9 VDE).3 The Examiner fails to address whether the above ordered combination (i.e., sequence of above transmissions) constitutes a practical application. Moreover, the Examiner does not specifically address Appellant’s contention that the ordered combination is a technological solution to a technological problem—particularly enabling a cable customer to control the media streamed to a set-top box lacking communication with (to) the cable provider (see Reply Br. 2–3 (quoted supra)). The Examiner must address whether the ordered combination performs more than the sum of its parts. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (A “court must look to the claims as an ordered combination.”); see also 84 Fed. Reg. at 53 n.19 (quoting McRO’s above instruction), 55 n.24 (“Again, whether [a] . . . combination of elements integrate the exception into a practical application should be evaluated on the claim as a whole.”). Conclusion For the foregoing reasons, we do not sustain the Examiner’s rejection of claims 1, 3, 10, 14, 16, and 18–24 under 35 U.S.C. § 101. 35 U.S.C. § 102(e) REJECTION For the following reasons, we are unpersuaded of error in this rejection of claim 1. For the same reasons, we are unpersuaded of error in 3 All independent claims recite a similar combination of transmissions. Essentially, independent claim 18 replaces claim 1’s step of the VDE transmitting the image to the VRD with a step of the VDE associating a “user defined identifier” and “equipment identifier” received from the MT. Independent claims 3, 10, and 14 recite claim 1’s combination of transmissions. Independent claims 20 and 22–24 recite claim 18’s combination of transmissions. Appeal 2019-000807 Application 14/050,034 10 this rejection of claims 3, 10, 14, 16, and 18–24, which are not separately argued. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group . . . , the Board may select a single claim . . . [to] decide the appeal . . . with respect to the group.”). As reflected by Appellant’s below contentions, claim 1 recites: an identifier provided by the MT to the VDE; and a command provided by the MT to the VDE. Appellant contends the Examiner’s Answer re-characterizes the rejection so as to rely on Beals’ cellphone transmissions of Figures 2 and 5. Reply Br. 5; see also Ans. 9 (new alternative finding that reads the claimed command on Beals’ pay-per-view order of Figure 5).4 Appellant further contends the Examiner is thereby relying on different embodiments of Beals to support an anticipation rejection. Id. We are unpersuaded because, as explained below, Beals describes the features of Figures 2 and 5 as compatible features. Specifically, Beals describes the features of Figure 2—whereby an account holder’s cellphone must quickly capture and report a plurality of barcodes respectively displayed by the account’s set-top boxes (see, e.g., Beals, Fig. 2, step 202)—as a means to verify the account’s set-top boxes are 4 Appellant contends the claimed identifier and command are respectively read on Beals’ cellphone transmissions of Figures 3C–3G and Figure 5. Reply Br. 5. Beals’ flowchart of Figure 2 corresponds to the diagrams of Figures 3A–G. Compare Beals ¶ 32 (Fig. 2) and id. ¶¶ 37–39 (Figures 3A– G); see also Final Act. 14 (“Fig. 2 shows the [cable provider’s] reception of the information captured by the reader 102; Figs. 3B and 3C show the process . . . where[by] the set top box displays a QR code that is subsequently captured by smart phone.”). We reference the flowchart in lieu of the diagrams, which are less informative. Appeal 2019-000807 Application 14/050,034 11 not located in different residences. Beals ¶¶ 6–7, 14–17, 47; see also Final Act. 14–15 (“QR code capture . . . for authorization of the set top boxes.”). Beals describes the features of Figure 5—whereby the cellphone must capture and report a singular barcode displayed by one of the account’s set-top boxes (see, e.g., Beals, Fig. 5, step 502)—as a means to verify a request for a video program is authorized by the account holder. Id. ¶¶ 46– 47, 50; see also Ans. 9 (“[S]can of the QR code . . . prompts the cell phone to order a pay per view movie. . . . [The] provider may extract the telephone number from the order [to] validate.”). Though these verifications are respectively addressed by Beals’ Figures 2 and 5 (id. ¶¶ 32–36, 45–50), they are self-evidently compatible for a same account (i.e., to serve their different purposes). Moreover, Beals expressly states the verification of Figure 5 can be performed “as part of” or “separate from” the verification of Figure 2. Id. ¶ 45. Appellant also contends the Examiner’s re-characterization of the rejection reads the claimed identifier on the telephone number of Beals’s above cellphone transmissions. Reply Br. 5–6 (addressing Ans. 9–10). Appellant further contends “Beals does not disclose where” the telephone number is associated with QR codes. Id. at 6. We are unpersuaded. With respect to Beals’ cellphone transmissions of both Figure 2 and Figure 5, the captured QR codes are transmitted to the cable provider by the same cellphone (of the same account holder) and thereby associated with the same telephone number (as part of each above-noted verification of Figures 2 and 5). See, e.g., Beals Figs. 2 (steps 202, 206–07), 5 (steps 502–03, 505–06). Thus, in every instance, the same “identifier . . . is associated with an image displayed” (claim 1). Appeal 2019-000807 Application 14/050,034 12 For the foregoing reasons, we sustain the Examiner’s rejection of claims 1, 3, 10, 14, 16, and 1824 under 35 U.S.C. § 102(e). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis/Reference Affirmed Reversed 1, 3, 10, 14, 16, 18–24 101 Eligibility 1, 3, 10, 14, 16, 18–24 1, 3, 10, 14, 16, 18–24 102(e) Beals 1, 3, 10, 14, 16, 18–24 Overall Outcome5 1, 3, 10, 14, 16, 18–24 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. § 1.136(a)(1)(iv). DECISION The Examiner’s decision rejecting claims 1, 3, 10, 14, 16, and 18–24 is affirmed. AFFIRMED 5 “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” 37 C.F.R. § 41.50(a)(1).