Ex Parte Aydar et al

Patent Trial and Appeal Board

Mar 24, 2015

11314752 (P.T.A.B. Mar. 24, 2015)

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.
11/314,752 12/20/2005 Ali Aydar 257.22-US-I1 4625
105454 7590 03/24/2015
Gates & Cooper LLP - Specific Media/Myspace
6701 Center Drive West, Suite 1050
Los Angeles, CA 90045
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
03/24/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ALI AYDAR, JORDAN MENDELSON,
and SHAWN FANNING
____________

Appeal 2012-004196
Application 11/314,7521
Technology Center 3600
____________

Before, JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 26–30 and 47–63. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1
Appellants identify MySpace Music LLC as the real party in interest.
Appeal Br. 2.

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THE INVENTION
Appellants’ claims are directed to a method of regulating
downloading and other machine reproductions of digitally stored memory
contents based on the rights of the owners of the content. Spec. ¶ 2.
Claim 26 reproduced below, is representative of the subject matter on
appeal.
26. A method of managing online digital rights and files,
comprising:
providing a database of file information including
ownership rights with respect to sound recording and rules
associated with a specific file of rights holder, the file
information further including a title, a performer, a category of
the specific file, and restrictions for digital rights management
purposes;
accessing the file information for the specific file;
receiving an update to the file information including the
ownership rights and rules associated with the specific file; and
storing the updated file information.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Ginter US 5,892,900 Apr. 6, 1999
The following rejections are before us for review.
Claims 26–30 and 47–63 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 26–30 and 47–63 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
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Claims 26–30 and 47–63 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ginter.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 7–12 of the
Answer.
2. Ginter discloses:
Each event record 872 may be a set of instructions
to be executed by the end user’s electronic
appliance 600 to make an addition or modification
to the end user’s secure database 610, for example.
Events can perform many basic management
functions, for example: add an object to the object
registry, including providing the associated
user/group record(s), rights records, permission
record and/or method records; delete audit records
(by “rolling up” the audit trail information into, for
example, a more condensed, e.g. summary form, or
by actual deletion); add or update permissions
records 808 for previously registered objects; add
or update budget records; add or update user rights
records; and add or update load modules.
Col. 142, ll. 13–26.
3. Ginter discloses that a
. . . catalog is used to record information related to
the VDE content in content storage, and/or content
available through the repository reflected in
content references. The content catalog 3322 may
consist of titles of content, abstracts, and other
identifying information. In addition, the catalog
may also indicate the forms of electronic
agreement and/or agreement VDE template
applications (offering optional, selectable control
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structures and/or one or more opportunities to
provide related parameter data) that are available
to end users 3310 through the repository for given
pieces of content in deciding, for example, options
and/or requirements for: what type(s) of
information is recorded during such content's use,
the charge for certain content usage activities,
differences in charges based on whether or not
certain usage information is recorded and/or made
available to the repository and/or content provider,
the redistribution rights associated with such
content, the reporting frequency for audit
transmissions, the forms of credit and/or currency
that may be used to pay certain fees associated
with use of such content, discounts related to
certain volumes of usage, discounts available due
to the presence of rights associated with other
content from the same and/or different content
providers, sales, etc.
Col. 314, ll. 29–52.
4. Ginter discloses a content system having:
. . . general search characteristics should be
associated with content submissions (e.g. whether
abstracts should be automatically indexed for
searches by users of the repository, the manner in
which content titles, abstracts, promotional
materials, relevant dates, names of performers
and/or authors, or other information related to
content submissions mayor should be used in lists
of types of content and/or in response to searches,
etc.), and/or
how content that is stored at and/or passed through
the repository should be shipped (including any
container criteria, encryption requirements,
transaction requirements related to content
transmissions, other control criteria, etc.)
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Col. 310, ll. 23–37.
5. Ginter discloses “that Author 3306A provide[s] information
concerning the types and/or categories of content proposed for storage and
access using the repository. . . .” Col. 310, ll. 7–9.
6. Ginter discloses:
Author 3306A transmits a message to the
repository 3302 indicating her desire to register
with the repository to distribute her content. In
response to this message, the user/author
registration system 3320 of the content system
3302A, and the user/author registration system
3338 of the clearinghouse system 3302B transmit
requests for registration information to author
3306A using the network 3304.
Col. 309, ll. 59–65.
7. Ginter discloses: “[w]hen an end user makes use of container
content, their content usage information may, for example, be segregated in
accordance with control structures that organize usage information based at
least in part on the author who created that segment.” Col. 319, ll. 36–40.
8. The Examiner found with respect to the 35 U.S.C. § 101 rejection:
In the instant application, Appellant’s [sic] method
step fails the first prong of the new test because
there is no tie to any kind of machine for any of the
claimed step[s]. Specifically, the steps of
“providing”, “accessing”, “receiving”, and
“storing” does [sic] not require the use of a
machine. Rather, the method step could be
performed by a person with human mind.
Therefore, the claims do not pass the first test of
Bilski with respect to providing a tie to a particular
machine.
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(Answer 13 ).
9. The Examiner found with respect to the 35 U.S.C. § 101 rejection:
. . . Appellant’s [sic] method step fails the second
prong of the test because the claimed step does not
result in an article being transformed from one
state to another. Contrary to the Appellant’s [sic]
assertion, there is no transformation occurring in
the claims for a physical object or substance or
data that represents physical objects or substances.
The Appellant [sic] does not present argument as
to why the steps of providing, accessing, receiving,
and storing represent a transformation of a
physical object or substance. Contrary to the
Appellant’s [sic] assertion, Examiner finds that
there is no transformation occurring in the claim
for a physical object or substance, or an article
representative of a physical object or substance, to
a different state or thing.
(Answer 14 ).
10. The Examiner found with respect to the 35 U.S.C. § 101 rejection:
Additionally, other factors and considerations in
addition to the machine/transformation test also
point to a finding that the claims are directed to a
mere abstract idea. The claims seem to be a mere
statement of a general concept of storing
information to a file. The claims if allowed would
appear to effectively grant a monopoly on this
broad concept claimed in the method. Moreover,
steps of the method, as claimed, could be
performed by any currently known or future
manner of storing update information to a file, or
even done by human beings because no machine is
recited in the claims (i.e., if the machine is not
inherently required, a human user could perform
the steps manually “on” a computer or similar
device). When viewing these factors and the
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claims as whole, it is concluded that the claims are
directed to a mere abstract idea and are not patent
eligible under 35 USC 101.
(Answer 14 ).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 26–30 and 47–63 under
35 U.S.C. § 101.
The Examiner found “. . . there is no tie to any kind of machine for
any of the claimed step[s]. Specifically, the steps of ‘providing’,
‘accessing’, ‘receiving’, and ‘storing’ does [sic] not require the use of a
machine.” (FF. 8). The Examiner also found “. . . that there is no
transformation occurring in the claim for a physical object or substance, or
an article representative of a physical object or substance, to a different state
or thing.” (FF. 9).
Accordingly, the Examiner found, “[w]hen viewing these factors and
the claims as whole, it is concluded that the claims are directed to a mere
abstract idea and are not patent eligible under 35 USC 101.” (FF. 10).
We agree with the Examiner’s ultimate findings that claim 26 is
drawn to an abstract idea. (FF. 10).
Independent claim 26, the only independent claim before us, recites,
in pertinent part, the steps of,
providing a database of file information including
ownership rights with respect to sound recording
and rules associated with a specific file of rights
holder, the file information further including a
title, a performer, a category of the specific file,
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and restrictions for digital rights management
purposes;
accessing the file information for the specific file;
receiving an update to the file information
including the ownership rights and rules
associated with the specific file; and
storing the updated file information.
The Supreme Court has
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . If so, we then
ask, “[w]hat else is there in the claims . . . . To
answer that question, [] consider the elements of
each claim both individually and “as an ordered
combination” to determine whether the additional
elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described
step two of this analysis as a search for an
“‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to
ensure that the patent in practice amounts to
significantly more than a patent upon the
[ineligible concept] itself.”
Alice Corp. Pty. Ltd. v CLS Bank Int’l., 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012) (citations omitted).
We must first determine whether the claims at issue are directed to a
patent-ineligible concept. We conclude that they are. As found supra
(FF. 8–10), the Examiner, in applying the Bilski factors2, found that the

2 The test under the Federal Circuit’s formulation to determine whether a
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substantive portions of claim 26 do not cover a machine or apparatus, nor do
they transform the underlying subject matter to a different state or thing.
(FF. 8, 9). Although Bilski is no longer controlling in light of Alice, the
Examiner’s findings above are nevertheless useful factors in our analysis
under Alice. The Court found in Alice that it need not labor to delimit the
precise contours of the “abstract ideas” category in that case. See Alice
Corp. 134 S. Ct. at 2357.
We, thus, agree with the Examiner’s findings (FF. 8–10) that claim 26
is drawn to the abstract idea of using a database to access, update data and
store updated data in the database file, a thought process we, as humans,
have practiced since early in time, namely, refreshing our memories with the
latest information. It follows from the Supreme Court’s prior cases, and
Bilski in particular, that the claims at issue here are directed to an abstract
idea. On their face, the claims before us are devoid of substantial ties to a
machine or apparatus3 (FF. 8). Rather, the claims cover the simple concept
of updating a memory. Like the risk hedging in Bilski, the concept of
updating a memory is a fundamental practice to our understanding of how

claimed process recites patentable subject matter under § 101 is if: “(1) it is
tied to a particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing.” Bilski v Kappos, 561 U.S. 593, at 600
(2010) (citing In re Bilski, 545 F.3d 943, 959–60 (Fed. Cir. 2008).

3
Claim 26 recites a “database.” Although a database can be arranged data in
a computer memory, such computer components are not required by its
definition: “a usually large collection of data organized especially for rapid
search and retrieval (as by a computer).”
http://www.merriam-webster.com/dictionary/database (last visited, Mar. 23,
2015). Thus, in our view, even data arranged in a file cabinet is a database.
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information is kept and maintained. Thus, the idea of updating a memory,
like hedging, is an “abstract idea” beyond the scope of § 101.
We further find that the introduction of the word “digital” recited in
claim 26 does not alter the analysis at Mayo step two, and does not transform
the abstract idea of monitoring and compensating for the sale of content,
into a patent-eligible invention. The mere recitation of the content in digital
form does not add any meaningful limitation beyond generally linking the
abstract method to a general purpose computer. See Alice Corp., 134 S. Ct.
at 2350. Adding a nominal recitation of content in computer readable form
is insufficient to make a claim patent-eligible. See Bancorp Servs. v. Sun
Life Assurance Co.¸ 687 F.3d 1266, 1278 (Fed. Circ. 2012). See also Mayo,
132 S. Ct. at 1293 (a claim cannot simply state the abstract idea and add the
words “‘apply it.’”)
“[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 Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not. In fact,
the digital form of the content does not control the core steps of the claims,
but rather speaks only to the type of medium in which the content is fixed;
be it on paper, or encoded in an electronic medium, for purposes of this
analysis, the difference is not distinguishable.
We, therefore, agree with the Examiner’s ultimate finding that claims
26–30 and 47–63 are drawn to an abstract idea.
35 U.S.C. § 112 REJECTION
We will not sustain the rejection of claims 26–30 and 47–63 under
35 U.S.C. § 112 for the reasons given by the Appellants on page 5 of the
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Appeal Brief. Specifically, we find that the antecedent basis for “updated
file information” is properly based on the phrase, “receiving an update to the
file information.”
We do not agree with the Examiner’s finding that the claims fail to
“positively recite updating the file information with the received update
information,” because the concern is a matter of claim breadth, not
indefiniteness. “Breadth is not indefiniteness.” In re Gardner, 427 F.2d
786, 788 (1970).
35 U.S.C. § 103 REJECTION
The Appellants argued claims 26–30 and 47–63 as a group.
(Appeal Br. 5). We select claim 26 as the representative claim for this
group, and the remaining independent claims stand or fall with claim 26. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 26 recites in pertinent part, “providing a database of file
information including ownership rights with respect to sound recording and
rules associated with a specific file of rights holder, the file information
further including a title, a performer, a category of the specific file, and
restrictions for digital rights management purposes.”
The Examiner found that Ginter discloses this limitation at:
(see col. 18, lines 56–64, a distribution model
including content delivery from an Internet
repository; col. 141, lines 5–35; col. 293, lines 50–
66, maintaining of online catalog of collection of
requirement records and descriptive information of
objects for distribution; col. l line 307/15–308/61,
repository where contents are kept for distribution;
col. l lines 309/25–321/4, repository used for
storing and distributing content, registration
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information including types/categories of the
content, content title, content abstracts, content
promotional materials, relevant dates, names of
performers and/or authors, and how the content
should be distributed, e.g. container criteria,
encryption requirements, transaction requirements,
other control requirements) . . . .
(Answer 7–8).
Appellants argue,
Applicant [sic] respectfully asserts that Ginter
merely illustrates in Fig. 7 that “ROS 602 may also
manage secure database 610 and a storage device
(e.g., ‘secondary storage’ 652) used to store secure
database 610” (Col. 63, lines 36–39 — emphasis
added). However, the mere disclosure of a secure
database 610, as in Ginter, simply fails to
specifically suggest applicant’s claimed “providing
a database of file information including ownership
rights with respect to a sound recording and rules
associated with a specific file of a rights holder,
the file information further including a title, a
performer, a category of the specific file, and
restrictions for digital rights management
purposes” (emphasis added), as claimed.
(Appeal Br. 6).
We disagree with Appellants. We find that although the Appellants’
arguments do cover in rebuttal some of the sections of Ginter which were
cited to by the Examiner concerning database 610, the Examiner also cited
to additional sections of Ginter, particularly, column 309, line 25 to column
321, line 4, disclosing a content repository (Answer 7), to which the
Appellants do not respond. That is, Appellants’ “mere disclosure of a secure
database 610” argument fails because it ignores the disclosure in Ginter at
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column 309, line 25 to column 321, line 4, which discloses a content
repository which meets the claim requirements.
Based on Ginter’s disclosed content repository alone (FF. 2–7), we
find that the Examiner established a prima facie case of obviousness for the
rejection for the following reasons. We find that Ginter explicitly discloses
that the content repository and related information “consist of titles of
content, abstracts, and other identifying information.” (FF. 3). We find that
items such as, title, and performer, are identifying information. We further
find that the claim requirement of “category of the specific file” is met by
Ginter disclosing, “Author 3306A provide[s] information concerning the
types and/or categories of content proposed for storage.” (FF. 5).
Moreover, Ginter discloses recording the named author (FF. 4) and
specifying redistribution rights, both of which qualify as evidence of the
required ownership rights. Ginter further discloses determining “what
type(s) of information is recorded during such content’s use” (FF. 3), which
we find meets the claim requirement of rules associated a specific file of a
right holder. Against these findings, Appellants offer no arguments.
Appellants do argue that Ginter fails to disclose “receiving an update
to the file information including the ownership rights and rules associated
with the specific file.” (Appeal Br. 6).
We disagree with Appellants. We find Appellants’ Specification does
not specifically define the term “update”, nor does it utilize the term contrary
to its customary meaning. The ordinary and customary definition of the
term “update” is: “to give (someone) the most recent information about
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something.”
4
We thus find the registration information which is transmitted
to the repository 3320 by the author via the registration transmission
(FF. 5, 6) is an update because it gives the repository the most recent
information on ownership rights and rules associated with a specific file.
(FF. 4).
Appellants also argue that Ginter fails to disclose, “wherein the rules
associated with the specific file relate to a format of a track included in the
specific file.” (Appeal Br. 7).
We disagree with Appellants because Ginter explicitly discloses
relating content usage information in accordance with control structures that
organize usage information based at least in part on the author who created
that segment or track. (FF. 7). In other words, Ginter discloses author
specified rules including how the involved segment of the work is to be
formatted. (FF. 2–4).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 26–30 and
47–63 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 26–30 and 47–63
under 35 U.S.C. § 112, second paragraph.
We conclude the Examiner did not err in rejecting claims 26–30 and
47–63 under 35 U.S.C. § 103(a).
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).

4
http://www.merriam-webster.com/dictionary/update (last visited Mar. 10,
2015).
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DECISION
For the above reasons, the Examiner’s rejection of claims 26–30 and
47–63 is AFFIRMED.
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
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