Ex Parte Agapi et al

Patent Trial and Appeal Board

Nov 12, 2013

10846435 (P.T.A.B. Nov. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CIPRIAN AGAPI, THOMAS E. CREAMER, JAMES R. LEWIS,
VANESSA V. MICHELINI, WALLACE J. SADOWSKI, and
CLIFFORD J. STROHOFER
___________

Appeal 2011-010208
Application 10/846,435
Technology Center 3600
____________

Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Ciprian Agapi et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 5, and 21-23. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter new grounds of rejection pursuant
to 37 C.F.R. §41.50(b). 1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for distributing digitally
conveyable content comprising the steps of:
providing a computer-implemented content distribution
chain for distributing digitally conveyable content, the content
distribution chain including a content production system, a
content brokerage system, at least one content distribution
system, and at least one content consumer system;
the content production system producing digitally
conveyable content;
the content brokerage system receiving the digitally
conveyable content from the content production system;
the content brokerage system conducting market research
and determining a target audience utilizing marketing data

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Oct. 18, 2010) and the Examiner’s Answer (“Ans.,” mailed Mar. 18,
2011).

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obtained through the market research;
the content brokerage system determining at least one
content distribution system with access to the target audience;
the content brokerage system negotiating deals with the at
least one content distribution system;
the content brokerage system adding value to the received
digitally conveyable content;
the content brokerage system providing the value-added
content to the at least one content distribution system;
the content distribution system determining at least one
potential content customer system and presenting the at least
one potential content customer system a content delivery
opportunity;
the content distribution system providing the content to the
at least one content customer system upon the at least one
potential content customer system accepting the content
delivery opportunity; and
the content distribution system reporting content usage
information to the content brokerage system;
wherein the content brokerage system established media
distribution data and conveys the media distribution data to the
content distribution system, said content distribution system
using the media distribution data and distribution data included
within content consumer profiles that are maintained by the
content distribution system and the content brokerage system
does not have access to when providing the content to the
content customer system, wherein the content consumer
profiles include information protected under confidentiality
agreement and/or privacy laws, and wherein the content
distribution system does not disclose the content consumer
profiles to the content brokerage system;
wherein a medium in which content is delivered is
changeable from one system to the next in the content
distribution chain; and
wherein pricing of content is variable based upon discernible
consumer-specific factors.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Van Buren
Stefik
Seibel

U.S. 6,667,816 B1
U.S. 6,895,392 B2
U.S. 7,043,531 B1
Dec. 23, 2003
May 17, 2005
May 9, 2006
The following rejections are before us for review:

1. Claims 1, 5, and 21-23 under 35 U.S.C. §101 as being directed
to non-statutory subject matter.
2. Claims 21-23 under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and
distinctly claim the subject matter that Applicants regard as the
invention.
3. Claims 1, 5, and 21-23 under 35 U.S.C. §103(a) as being
unpatentable over Stefik, Seibel, and Van Buren.

ISSUES
The first issue is whether claims 1, 5, and 21-23 are directed to non-
statutory subject matter under 35 U.S.C. § 101 because they encompass a
human organism.
The second issue is whether claims 1 and 5 are directed to non-
statutory subject matter under 35 U.S.C. § 101 because they encompass an
abstract idea.
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The third issue is whether claims 21-23 are indefinite under 35 U.S.C.
§112, second paragraph, because it is unclear whether the claims are directed
to a method or apparatus.
The fourth issue is whether the requirement that the content brokerage
system that negotiates with content distribution systems and adds value to
digitally conveyable content causes claims 21-23 to be indefinite under 35
U.S.C. § 112, second paragraph.
The fifth issue is whether claims 1, 5, and 21-23 are unpatentable
under 35 U.S.C. § 103(a) over Stefik, Seibel, and Van Buren. Specifically,
the issue is whether the Examiner has established that the prior art teaches a
content brokerage system adding value to the digitally conveyable content
and providing the value-added content to the content distribution system.

FINDINGS OF FACT
We find that the following enumerated Findings of Fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the U.S. Patent and Trademark
Office (“Office”)).
1. Appellants’ Figure 1 is reproduced below.
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Figure 1 depicts a system for distributing digitally conveyable
content from a producer to a consumer (¶¶ [0014] and [0016]) and
depicts humans and computers in boxes labeled production system
125, brokerage system 130, distribution system 135, and consumer
system 140.
2. The Specification states:
Further, the content producer 105, the content
broker 110, the content distributor 115, and/or the
content customer 120 can be a multitude of
different entities. These entities include an
automated computer system, a computerized
network, a human agent, an organization, and the
like.
[0027] By way of illustration, the
content producer 105 can be represented by a
production system 125, the content broker 110 can
be represented by a brokerage system, the content
distributor 115 can be represented by the
distribution system 135, and the content customer
120 can be represented by a consumer system 140.
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[0028] Each of the systems 125, 130,
135, and 140 can be agent and/or an organization.
When so implemented, the agents and/or
organizations can rely upon automated computer
systems to automatically perform one or more of
the tasks described herein. Further, each of the
systems 125, 130, 135, and 140 can be a computer
system, network, and/or device.
¶¶ [0026]-[0028].
3. The Specification describes a content producer as including but
“not limited to, media producers, software developers,
investigators, researchers, artists, architects, advertising firms,
inventors, and the like.” ¶ [0019].
4. The Specification describes a content distributor 115 as “any entity
having special knowledge concerning one or more content
customers 120.” ¶ [0024].
5. The Specification describes a content customer 120 as “an end-
user of the content”; for example, “a software user, a book reader,
a music listener, a media broadcast watcher, a magazine
subscriber, a mail recipient, a data consumer, and the like” and “an
advertisement recipient and/or a solicited individual.” ¶ [0025].
6. The Specification broadly describes an embodiment where the
system is implemented as an automated system with a program for
controlling a computer to implement the method steps. ¶ [0010] –
[0012]. See also ¶ [0030] (“[i]n another example, the brokerage
system 130 can be an automated computer system”); ¶ [0031]
(“[i]n still another example, the distribution system 135 can be an
automated computer system”); ¶¶ [0045]-[0046] (“[t]he present
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invention can be realized in hardware, software, or a combination
of hardware and software”).
7. The Specification states: “Any kind of computer system or other
apparatus adapted for carrying out the method described herein is
suited.” ¶ [0045].
8. The Specification states: “This invention can be embodied in other
forms without departing from the spirit or essential attributes
thereof.” ¶ [0047].
9. The Appellants state: “Further, it is noted that although each of the
systems can be an agent/or an organization, the agent and/or the
organization rely on machine (such as computer systems) to
perform the tasks.” Br. 11-12.
10. The Appellants state: “[T]here is nothing wrong for a machine or
apparatus to be operated with the assistance of a human being.
Therefore, a ‘computer’ can negotiate and add value automatically
or with the assistance of a human being, both within the scope of
the claims.” Br. 12.
Findings of Fact Related to the New Grounds of Rejection
11. The Specification states: “In step 225, each content broker can
negotiate content delivery deals with the determined content
distributors. Different deals can be negotiated with different
content distributors.” ¶ [0041].
12. The Specification describes a content broker program that: 1)
receives digital content from the content producers; 2) provides the
digital content to the content distributor; 3) established media
distribution data to convey to the media distributor; and 4)
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automatically selects content distributors. See ¶ [0010] and ¶
[0030].
13. The Specification states: “This program may be provided by
storing the program in a magnetic disk, an optical disk, a
semiconductor memory, any other recording medium, or
distributed via a network.” ¶ [0012].

ANALYSIS
Non-Statutory Subject Matter Rejections
Human Organism
The Examiner rejected claims 1, 5, and 21-23 under 35 U.S.C. §1012
as being directed to non-patentable subject matter, because these claims
encompass a human organism. Ans. 4-5. The Examiner found that the
claimed content production system, content brokerage system, and content
distribution system [hereinafter collectively, “the content systems”], when
given the broadest reasonable meaning in light of the Specification,
encompass a human being or a group of human beings. Id.
We will address each of the independent claims individually. As to
claim 23, which is directed to a system, we agree with the Examiner that the
claimed content systems encompass a human being or a group of human

2 We note that section 33(a) of the Leahy-Smith America Invents Act (AIA)
creates a statutory expression of the Office’s longstanding position that
human organisms are not patent-eligible subject matter. AIA, Public Law
112-29, sec. 33(a), 125 Stat. 284 (Sept. 16, 2012) (“Notwithstanding any
other provision of law, no patent may issue on a claim directed to or
encompassing a human organism.”). See also Manual of Patent Examining
Procedure § 2105 (8th Ed., Rev. 9, Aug. 2012).

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beings, when given the broadest reasonable meaning in light of the
Specification. We see nothing in the meaning of system itself or the
Specification that would preclude these systems from being reasonably
construed as encompassing a human being or a group of human beings.
Further, we note that the Specification describes embodiments where these
systems include both humans and computers (see FF 1-5), as well as,
embodiments where these systems are fully automated (see FF 6). As the
Appellants state: “a ‘computer’ can negotiate and add value automatically or
with the assistance of a human being, both within the scope of the claims.”
FF 10. See also FF 9.
Next, as to claims 21 and 22, unlike claim 23, these claims are
directed to an article - a “machine-readable storage having stored thereon . . .
one computer program” that causes a machine to provide the content
systems. Given this, we find that claims 21 and 22 do not reasonably
encompass the embodiments of the invention where the systems include a
human being or human beings.
Finally, as to claims 1 and 5, claim 1 is directed to a method and
encompasses steps or actions. The Examiner argues that claim 1
encompasses a human because “the steps of claim 1 are interpreted as being
performed by a person rather than a device.” Ans. 10. However, the method
encompasses the steps or actions which use human interaction but do not
encompass the humans themselves. See Br. 11-12.
Accordingly, the rejection of claims 1, 5, 21, and 22 under 35 U.S.C.
§101 as encompassing a human organism is reversed, and the rejection of
claim 23 under 35 U.S.C. § 101 as encompassing a human organism is
affirmed.
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Abstract Idea
We are not persuaded by the Appellants’ argument (Br. 9-10) that the
Examiner erred in rejecting claims 1 and 5 under 35 U.S.C. § 101 as being
directed to a non-statutory subject matter because it encompasses an abstract
idea. The Examiner found that claims 1 and 5 fail the machine-or-
transformation test. Notwithstanding that this test for determining patent
eligibility of a process is unduly narrow under Bilski v. Kappos, 130 S. Ct.
3218 (2010), it can nevertheless be instructive as a factor in determining
whether the claimed processes are patent-ineligible abstract ideas, and it is
the only factor at issue here as the Appellants make no other arguments.
First, the Appellants argue that claim 1 satisfies the machine prong
because the content production system, the content brokerage system, the
content distribution system, and the content consumer system “can all
involve machines.” Br. 10 (emphasis added). However, as discussed supra,
when given the broadest reasonable interpretation in light of the
Specification, these systems do not require a particular computer, and we
find the claim’s recitation of a machine is nominal. See FF 6-8.
Second, the Appellants argue that claim 1 includes a transformation
because the digitally conveyable content is produced, has value added to it,
and the medium upon which it is delivered is changeable. Br. 10. However,
“[t]he mere manipulation or reorganization of data . . . does not satisfy the
transformation prong.” CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011).
Accordingly, the rejection of claims 1 and 5 under 35 U.S.C. §101 as
encompassing an abstract ideas is affirmed.
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Indefiniteness
We are persuaded by the Appellants’ arguments (Br. 12) that the
Examiner erred in rejecting claims 21-23 under 35 U.S.C. § 112, second
paragraph, as being indefinite. The Examiner rejected claims 21-23 as being
indefinite because: 1) the scope of claims 21 and 23 is indefinite because
they recite both a method and an apparatus (Ans. 5-6) and 2) the scope of
claims 21 and 23 is indefinite because “it is unclear how a ‘computer’ can
negotiate and add value.” (Ans. 6).
First, the Examiner found that claims 21 and 23 recites both apparatus
limitation and method steps (i.e., the “wherein” statements) (Ans. 5-6). We
disagree with the Examiner and find that the “wherein” statements are not
method steps but functional language. The Appellants may use functional
language or any style of expression or format of claim which makes clear the
boundaries of the subject matter for which protection is sought. As noted by
the Court in In re Swinehart, 439 F.2d 210 (CCPA 1971), a claim may not
be rejected solely because of the type of language used to define the subject
matter for which patent protection is sought.
Second, the Examiner found that the recitation that the content
brokerage system negotiates with the content distribution system and adds
value to the digitally conveyable content causes the scope of claims 21-23 to
be indefinite, because it is unclear how a computer can perform these
functions. Ans. 5-6. The test for compliance is whether the claims set out
and circumscribe a particular area with a reasonable degree of precision and
particularity when read in light of the application disclosure as they would
be interpreted by one of ordinary skill in the art. In re Moore, 439 F.2d
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1232, 1235 (CCPA 1971). We find that the Examiner has not established
that the scope of the claims is indefinite.
Accordingly, the rejection of claims 21-23 under 35 U.S.C. § 112,
second paragraph, as being indefinite is reversed.

Obviousness
We are persuaded by the Appellants’ argument (Br. 18) that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Stefik, Seibel, and Van Buren. The Appellants argue that
Seibel’s description of providing a customer with a coupon in column 10,
lines 29-31 does not teach the claimed content brokerage system adding
value to the digitally conveyable content and providing the value-added
content to the content distribution system. Br. 18. We agree.
Initially, we note that the rejection does not specifically rely upon
Seibel’s coupon in column 10, lines 29-31 to teach the limitations at issue, as
the rejection makes no mention of the limitations at issue. The rejection
does cite Seibel’s coupon column 10, lines 29-31 to teach another limitation
performed by the content distribution (i.e., “presenting the at least one
potential content customer system a content delivery opportunity’). See
Ans. 8. Further, the Examiner does not respond to the Appellants’ argument
in their Answer. See Ans. 12-13.
Inasmuch as the Examiner may be relying upon Seibel’s coupon, we
fail to see how Seibel’s coupon teaches the claimed content broker system
adding value to the digitally conveyable content and providing the value-
added content to the content distribution system. We find that the Examiner
fails to establish a prima facie showing of obviousness.
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Independent claims 21 and 23 recite similar limitations and are
rejected using the same rationale (see Ans. 6). Accordingly, the rejection of
claims 1, 21, and 23, and claims 5 and 22 dependent thereon, under 35
U.S.C. § 103(a) as being unpatentable over Stefik, Seibel, and Van Buren is
reversed.

NEW GROUNDS OF REJECTION
Pursuant to 37 C.F.R. §41.50(b), we enter the following new grounds
of rejection on claims 21-23.
§112, first paragraph
We enter new grounds of rejection on claim 21 under 35 U.S.C. §112,
first paragraph, as failing to comply with the written description
requirement.
Claim 21 recites:
At least one machine-readable storage having stored thereon, at
least one computer program having a plurality of code sections,
said code section executable by a machine for causing the
machine to perform the steps of:
providing a computer-implemented content distribution
chain . . ., the content distribution chain including . . . a content
brokerage system . . .

. . . .

the content brokerage system negotiating deals with the
at least one content distribution system;

To show written description,
the test requires an objective inquiry into the four
corners of the specification from the perspective of
a person of ordinary skill in the art. Based on that
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inquiry, the specification must describe an
invention understandable to that skilled artisan and
show that the inventor actually invented the
invention claimed.
Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc).
The Specification does not reasonably convey to one of ordinary skill
in the art that the inventors had possession of an article having stored
thereon on a computer program with code that causes a machine to provide a
content brokerage system that negotiates deals. While the Specification
describes a content broker 105 negotiating different deals with different
content distributors (see FF 11) and, separately, a content broker program
(FF 12), the Specification does not explicitly describe any particular
computer program for negotiating these different deals. Further while the
Specification does describe the content broker program as performing other
claimed functions (i.e. receiving digital content from the content producer
through by various means and adding-value to the content by various means)
(FF 12), the Specification is silent as to the content broker program
negotiating deals. Further, while the Specification broadly states that the
functions of the invention can be implemented in a computer program (FF
6), the Specification is silent as to any specific implementation of the
negotiation function, particularly given that the negotiated deals are describe
as being different with each content distributor (FF 11).

§ 101
We enter a new ground of rejection on claims 21-23 under 35 U.S.C.
§101 as being directed to non-statutory subject matter because the claims
encompass an abstract idea. As discussed supra, we found the method claim
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1 encompassed an abstract idea. Independent claims 21-23 recite an article
and system, respectively, that closely tracks the method claim.
Although CLS Bank issued as a plurality
opinion, in that case a majority of the court held
that system claims that closely track method
claims and are grounded by the same meaningful
limitations will generally rise and fall together.
[CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d
1269 (Fed. Cir. 2013)], at 1274 n.1 (Lourie, Dyk,
Prost, Reyna, & Wallach, JJ., plurality opinion)
(“[E]ight judges, a majority, have concluded that
the particular method, medium, and system claims
at issue in this case should rise or fall together in
the § 101 analysis.”).
Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1341 (Fed. Cir. 2013). See also Ultramercial, Inc. v. Hulu, LLC, 722
F.3d 1335 (Fed. Cir. 2013), and CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011). Therefore, we reject claims 21-23 under 35
U.S.C. §101 as encompassing non-statutory subject matter because they
encompass an abstract idea.
Further, we reject claims 21 and 22 under 35 U.S.C. §101 as
encompassing non-statutory subject matter because the claims encompass a
signal. Claim 21 is directed to “machine readable storage having stored
thereon, at least one computer program having . . . code sections.” Giving
these claims the broadest reasonable construction in light of the
Specification, we find that claims 21 and 22 encompass the code sections
being disposed on transitory propagating signals. A signal does not fit
within at least one of the four statutory subject matter categories under 35
U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
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We note that the Specification is silent as to what “machine readable
storage” encompasses and does not preclude transitory propagating signals
as the “machine readable storage.” See FF 13. See also Ex parte
Mewherter, 2012-007692, 2013 WL 3291360 (PTAB May 8, 2013)
(precedential) (finding a machine readable storage medium non-statutory
under § 101).
Since claims 21 and 22 encompass subject matter that does not fit
within any of the four statutory categories of patentable subject matter, we
reject these claims under 35 U.S.C. § 101.

DECISION
The decision of the Examiner to reject claims 1, 5, and 23 is affirmed
and to reject claims 21-22 is reversed. We enter new grounds of rejection on
claims 21-23.
The decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION,
must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. §41.50(b)

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