Ex Parte Bock

Patent Trial and Appeal Board

Dec 29, 2016

10393644 (P.T.A.B. Dec. 29, 2016)

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.
10/393,644 03/21/2003 Joel N. Bock 2003-01JB 4708
7590
Joel N. Bock
1321 Hastings Street
Teaneck, NJ 07666
12/30/2016 EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
12/30/2016 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 JOEL N. BOCK
Appeal 2014-008430
Application 10/3 93,6441
Technology Center 3600
Before ANTON W. FETTING, KEVIN W. CHERRY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 1—22. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Appellant’s claimed “invention relates to a business method for
shifting, changing, reproducing and exchanging the physical embodiments
of (copyrighted and uncopyrighted) works of authorship, including, for
1 According to Appellant, “[t]he real party in interest is the inventor, Joel N.
Bock.” (Appeal Br. 3.)
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Application 10/393,644
example, musical works, photographic works, cinematographic and video
works, multimedia works, software works.” (Spec. 1,11. 8—11.)
Claims 1,9, 16, and 18 are the independent claims on appeal. Claim 1
is illustrative. It recites (emphasis and paragraphing added):
1. A system for reproducing an original copy of a work of
authorship, comprising:
a microprocessor;
a database coupled to the microprocessor;
a data input device coupled to the microprocessor,
wherein the microprocessor
processes information received from the data
input device,
identifies information in the database
corresponding to the information received from the
data input device, and
verifies the authenticity of the work of
authorship using information other than digital
data comprising the work of authorship; and
a data writing device coupled to the microprocessor, the
data writing device reproducing the work of authorship.
REJECTIONS
Claims 1—22 are rejected under 35 U.S.C. § 112, first paragraph (now
35 U.S.C. § 112(a)), as failing to comply with the written description
requirement.
Claims 1—17, and 20-22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over England (US 7,325,145 Bl, iss. Jan. 29, 2008) and Inoue
(US 6,865,552 Bl, iss. Mar. 8, 2005).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Inoue and Tony Samuel & Graeme Berry, How to insure your most valuable
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assets, Managing Intellectual Property, Dec. 2000/Jan. 2001, Iss. 105,
page 32 (hereinafter “Samuel”).
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Inoue, Samuel, and Matt Lake, Create Your Own Music CDs, PC World
Online, May 1, 1999, page 1 (hereinafter “Lake”).
ANALYSIS
The § 112, first paragraph, rejection of claims 1—22
Claims 1—22 are rejected under § 112, first paragraph. The Examiner
finds that “independent claims 1, 9, and 16 have been amended to include
‘information other than digital data comprising the work or [sic] authorship.
The specification does not teach using data except that which is linked to the
original work.” (Final Action 8.) Specifically, the Examiner finds that
“[t]he scope of the disclosure is such that it does not exclude the use of the
work of authorship for the verifying of the authenticity step.” (Answer 2.)
Appellant argues that the Examiner misstates the language of the
claim and that there is support in the Specification for the claim element
“verifies the authenticity of the work of authorship using information other
than digital data comprising the work of authorship.” (See Appeal Br. 11.)
The Specification discloses that “[u]pon verification of the
information on the original medium 2, in step 58, the system copies the work
of authorship from the original medium 2 to the new medium 3 located in
the digital data writing device 6.” (Spec. 11,11. 11—13, emphasis added.)
Appellant argues that the term “information” should be read as not including
the “work of authorship” and, thus, that the Specification supports the
“verifies” claim element. (Appeal Br. 11—13.)
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The Specification discloses:
The central processing unit 1 is coupled to a digital data reading
drive 4 . . . that reads information stored on the original medium
2 on which the work of authorship is stored.... The information
stored on the original medium 2 may include or upon purchase
be modified to include the date and location of purchase, vendor
information, purchase price, artist and writer information, album
name, song list, publishing information, purchaser information,
etc.
(Spec. 9,11. 6—12.) This suggests that the “information stored on the original
medium” does not include the “work of authorship.”
Additionally, the Specification discloses:
Alternatively or additionally, the system may include a memory
7 for storing or buffering the digital data comprising the work of
authorship during and/or prior to reproduction of the work of
authorship .... The memory 7 may also store the information
read from the original medium 2.
{Id. at 9,11. 14—19.) This further suggests that the “information stored on the
original medium” does not include the “work of authorship.”
The Specification further discloses: “Along with the work of
authorship, additional information may be transferred to the new medium 3,
including all of the information included on the original medium 2.” {Id.
at 9,11. 22—24.) Use of the term “additional information” suggests that the
information is additional to work of authorship information, i.e., that “work
of authorship” is included in the term “information.” However, read in its
entirety, the sentence is more appropriately read as disclosing that “all of the
information included on the original medium 2” is additional to the “work of
authorship.”
In view of the above, we are persuaded that the Specification teaches
that the term “information,” as used in the statement “[u]pon verification of
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the information on the original medium 2” does not include “work of
authorship.” Therefore, we will reverse the § 112, first paragraph rejection
of claims 1—22.2
The §103 rejection of claims 1—17, 21, and 22
The Examiner finds that England teaches “verif[ying] the authenticity
of the work of authorship using information other than digital data
comprising the work or [sic] authorship.” (Final Action 9, citing England,
col. 3,11. 25—50, and Figs. 2, 3, and 7).
Appellant disagrees and argues that
to accomplish its verification of authenticity England requires
that the digital data comprising the work of authorship be sent to
the verification module where it is subjected to a digest operation
and is then compared to the stored digest to see if they
correspond. Thus, the digital data comprising the “work of
authorship” is used by England to verily authenticity.
(Reply Br. 4.)
Figure 2 of England discloses “a flow diagram illustrating a procedure
for verifying the existence of an original data storage medium before playing
or installing a music file.” (England, col. 3,11. 7—9.) Specifically, Figure 2
discloses that a “Verification Module Randomly Selects a Block of Data,”
and that the “Verification Module Asks the Client to Produce the Data
Associated with the Selected Block.” {Id. at Fig. 2.) In the next step, the
“Verification Module Performs a Digest Operation on the Data Received
2 We note that claims 18—20 do not include the term “information other than
digital data comprising the work of authorship.” However, in view of our
decision, we treat the inclusion of claims 18—20 in this § 112, first
paragraph, rejection as harmless error.
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from the Client” after which the “Verification Module Compares the Result
of the Digest Operation to Known Verification Data (Digests)” to determine
if there is a match, i.e., if the verification was successful. (Id.) “The digest
operation is a cryptographic operation that processes a block of data such
that the resulting digest is significantly smaller in size than the original block
of data.” (Id. at col. 5,11. 17—19.)
In describing the operation of the procedure of Figure 2, England
discloses that “[t]he table of digests 110 shown in FIG. 1 represent [sic] a
table of the results of the digest calculation as applied to all blocks of a
known legitimate CD. Thus, the table of digests 110 represent [sic] known
verification data.” (Id. at col. 5,11. 28—31, emphasis added.) Therefore, “[i]f
the music CD in the CD-ROM drive 106 is legitimate, then the digest of any
block on the CD will match the corresponding digest entry in the table of
digests 110.” (Id. at col. 5,11. 33—36.) In the example shown in Figure 2,
the procedure “verifies three different random blocks before determining
that the CD in the CD-ROM drive 106 is legitimate.” (Id. at col. 5,11. 45—
47.)
In short, the procedure in England cited by the Examiner performs a
digest calculation on all blocks of data of a known legitimate CD, i.e., the
digest calculation is performed on the work of authorship on the known
legitimate CD.
Therefore, we are persuaded that the Examiner erred in finding that
England teaches “verif[ying] the authenticity of the work of authorship using
information other than digital data comprising the work or [sic] authorship.”
(See Final Action 9.) Therefore, we will reverse the rejection of claim 1 and
dependent claims 2—8 and 21. Independent claims 9 and 16 contain similar
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language. Therefore, for similar reasons, we will reverse the rejection of
claims 9 and 16, and dependent claims 10—15, 17, and 22.
The £ 103 rejection of claims 18—20^
Claim 18 recites (paragraphing added):
18. A method implemented using a processor and a database
for generating additional revenues from the sale of an original
copy of a work of authorship, comprising:
using the processor to determine a fee to charge based on
at least one of a risk of future damage and a risk of future loss of
the original copy of the work of authorship;
offering to cover at least one of the risk of future damage
and the risk of future loss of the original copy of the work of
authorship after acceptable transfer to a recipient; and
accepting the payment of the fee in exchange for covering
at least one of the risk of future damage and the risk of future loss
of the original copy of the work of authorship after acceptable
transfer to a recipient.
Claim 18 is rejected as obvious over the combination of Inoue with
Samuel. (See Final Action 24—25, citing Samuel 2.) Inoue teaches making
copies of a recording and charging a fee to make such copies. (Inoue,
Abstract.) Samuel teaches insuring against the risk of loss of value for a
patent or “for a brand or copyright.” (Samuel 1—2.) In particular, Samuel
discloses “the need for a company to protect against the risk of its IP
[intellectual property] suffering a serious diminution in value from events
outside management’s control.” {Id. at 1.)
3 The Examiner discusses the rejection of claim 20 under § 103 in the
context of claims 1—9, 11—13, 15—17, 21, and 22. {See Final Action 9.) But
claim 20 depends from claim 18. Additionally, Appellant erroneously refers
to claim 20 as “depend[ing] from one of claims 1, 9, or 16.” {See Appeal
Br. 19.) Regardless, in view of our decision, we treat this as harmless error.
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The Examiner determines that “[i]t would have been obvious for one
of ordinary skill in the art at the time of the invention to combine the data
copying system of Inoue with the asset insuring system of Samuel because
of the motivation to insure against risk of infringement and lawsuit.” (Final
Action 25, citing Samuel 2.) Appellant argues that “Inoue and Samuel,
either alone or in any known combination, do not teach or suggest ‘offering
to cover at least one of the risk of future damage and the risk of future loss
of the original copy of the work of authorship after acceptable transfer to a
recipient.’” (Appeal Br. 22.)
We determine that the Examiner does not sufficiently explain the
reasoning with rational underpinnings to modify Inoue (from a system that
teaches charging a fee to make copies of a recording) in view of Samuel to
include offering to cover the risk of damage or loss to an original copy of a
work of authorship. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,418
(2007), citing In re Kahn, 441 F.3d 997, 988 (Fed. Cir. 2006). Therefore,
we will reverse the rejection of independent claim 18 and dependent
claims 19 and 20.
New ground of rejection, § 101
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 18-20 under 35 U.S.C § 101.
Subsequent to the filing of briefs in this appeal, except for the Reply
Brief, the Supreme Court decided Alice Corp. Pty Ltd. v. CLS Bank Int 7,
134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set out
in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012), “for distinguishing patents that claim laws of nature, natural
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp., 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 132 S. Ct. at 1294, 1298). Therefore, we must first determine
whether the claims at issue are directed to a patent-ineligible concept.
Although the Court in Alice did not elaborate on how it made its
finding as to what the claims were directed, we find that this case’s claims
themselves and the Specification provide enough information to inform one
as to what they are directed.
The claimed invention relates to calculating a fee to charge based on a
risk of loss of a work of authorship, i.e., a charge for insurance. The steps in
claim 18 include determining a fee, offering to cover the risk of loss, and
accepting payment. Dependent Claim 19 provides a replacement of the
work upon submission of a valid claim. Dependent claim 20 provides a
copy of the work upon payment. In short, the claims are directed to offering
insurance. The Federal Circuit has found claims directed to a stable value
insurance policy to be directed to an ineligible abstract idea. See Bancorp
Services, L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266 (Fed.
Cir. 2012). In view of the above, we conclude that the claims at issue are
directed to a patent-ineligible concept.
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We now apply the second part of the framework to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice Corp., 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
The claims recite the use of a processor. The claims “do not require
an arguably inventive set of components or methods, such as measurement
devices or techniques.” Id. The introduction of a computer into the claims
does not alter the analysis at step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[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.” Id. at 2359. They do not. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional and adds no inventive concept. Nor do the
claims offer detail about the computer system. In short, the claim
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steps/limitations do no more than require a generic computer to perform
generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of determining an insurance fee, offering the insurance,
and accepting payment in exchange for providing the insurance. The claims
do not, for example, purport to improve the functioning of the computer
itself. Nor do they effect an improvement in any other technology or
technical field. Instead, the claims at issue amount to nothing significantly
more than an instruction to apply the abstract idea of providing insurance for
a fee. That is not enough to transform an abstract idea into a patent-eligible
invention. See id. at 2360.
DECISION
The Examiner’s rejection of claims 1—22 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner’s rejections of claims 1—22 under 35 U.S.C. § 103(a)
are reversed.
We enter a NEW GROUND OF REJECTION of claims 18-20 under
35 U.S.C. § 101.
This decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) further provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
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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.
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)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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