Ex Parte Brownell et al

Patent Trial and Appeal Board

Sep 22, 2017

14453181 (P.T.A.B. Sep. 22, 2017)

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.
14/453,181 08/06/2014 David M. Brownell 170106-1651 5279
09/26/201771247 7590
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
TRUONG, THANHNGA B
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
uspatents @ tkhr.com
docketing @ thomashorstemeyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. BROWNELL, GERARD J HEINZ II, and
PATRICK G. MCCULLER,
Appeal 2017-001090
Application 14/453,1811
Technology Center 2400
Before THU A. DANG, ERIC S. FRAHM, and CARL L. SILVERMAN,
Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest is identified as Amazon Technologies, Inc., a
Nevada corporation, the assignee of record, which is a subsidiary of
Amazon.com, Inc., a Delaware corporation. App. Br. 2.
Appeal 2017-001090
Application 14/453,181
STATEMENT OF THE CASE
The invention relates to providing limited versions of software
applications. Abstract; || 9, 10. Claims 1, 6, and 13, reproduced below, are
exemplary of the subject matter on appeal (emphasis added):
1. A non-transitory computer-readable medium embodying
a program executable in at least one computing device
comprising a processor and a memory, the program when
executed causing the at least one computing device to at least:
determine a portion of a full version of an application
that is predicted to be unaccessed during an evaluation period;
generate a limited version of the application from the full
version of the application, wherein the limited version of the
application excludes the portion of the application that is
predicted to be unaccessed during the evaluation period;
receive a request from a client computing device, the
request being associated with the evaluation period; and
send the limited version of the application to the client
computing device.
6. A system, comprising:
at least one computing device comprising a processor and
a memory; and
at least one service executed in the at least one
computing device, the at least one service when executed
causing the at least one computing device to at least:
determine a portion of a full version of an
application to be excluded from a limited version of the
application;
generate the limited version of the application
from the full version of the application, the limited
version having a smaller data size than the full version of
the application;
receive a request from a client computing device,
the request being associated with a trial of the
application; and
send the limited version of the application to the
client computing device.
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13. A method, comprising:
receiving, by at least one computing device comprising a
processor and a memory, a request from a client computing
device for a demonstration version of an application;
generating, by the at least one computing device, the
demonstration version of the application from a full version of
the application; and
sending, by the at least one computing device, data
corresponding to the demonstration version of the application to
the client computing device, wherein the data corresponding to
the demonstration version of the application is sent according
to a sequence established based at least in part on a code
access profile for the demonstration version of the application.
App. Br. 23—26 (Claims Appendix).
THE REJECTIONS2
Claims 1—20 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1—20
ofU.S. Patent No. 8,806,655 Bl. Final Act. 4.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to non­
statutory subject matter. Final Act. 4.
Claims 1—3, 6—9, 11—18, and 20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Ramzan et al (US 8,412,952 Bl; pub.
April 2, 2013) (“Ramzan”) and Cooper et al (US 5,757,908; iss. May 26,
1998) (“Cooper”). Final Act. 5-9.
2 The Examiner states claims 4, 5, 10, and 19 are objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten to
incorporate all limitations of claims 4, 5, 10, and 19 into their independent
claims 1, 6, and 13, respectively. Final Act. 9.
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Application 14/453,181
ANALYSIS
The double patenting rejection
The Examiner finds that, “[although the conflicting claims are not
identical, they are not patentably distinct from each other because the two
inventions have similar subject matter.” Final Act. 4.
Appellants present no argument and, therefore, we pro forma sustain
the obviousness-type double patenting rejection of claims 1—20.
The §101 rejection
Appellants argue the Examiner errs in finding claims 1—20 are
directed to non-statutory subject matter. App. Br. 4—11; Reply Br. 4—13.
The Examiner concludes independent claims 1, 6, and 13 are directed
to a non-statutory abstract idea of providing limited versions of applications
and do not include additional elements sufficient to amount to significantly
more than the non-statutory abstract idea, and claims 2—5, 7—12, and 14—20
are non-statutory because of their dependency. Final Act. 4; see also Ans.
3-6
In the Answer, the Examiner presents additional rationale for this
rejection:
[Independent Claims 1, 6, and 13 are directed to the abstract idea of
providing limited versions of applications (e.g. determining portion of
full version of application to be unaccessed, generating a limited
version of application, and sending a limited version of application -
see Cyberphone Sys., LLC v. CNN Interactive (Fed. Cir. Feb. 26,
2014); see also July 2015 Update: Subject Matter Eligibility (Federal
Register Vol. 80, No. 146, July 2015)). The a non-transitory
computer-readable medium of claim 1, a system of Claim 6, and a
method of Claim 13 recite steps of (determine a portion of a full version
... , generate a limited version of the application .... , receive a request.
..., send the limited version of the application....). Clearly, the method
and function of the apparatus only amount to steps of determine a
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Application 14/453,181
portion of a full version ... (e.g. Cyberphone organizing), generate a
limited version of the application ..., receive a request... and send the
limited version of the application...
Claims 1, 6, and 13 fail to recite any actual step to providing limited
versions of applications for trial and testing purposes. Claim 6 recites
a system comprising at least one computing device comprising a
processor and a memory; and at least one service executed in the at least
one computing device, the at least one service when executed causing
the at least one computing device to at least for performing the abstract
idea of claim 1, and "simply implementing an abstract concept on a
computer, without meaningful limitations to that concept, does not
transform a patent-ineligible claim into a patent-eligible one."
Accenture Global Service v. Guidewire Software, Inc., 728 F.3d 1336
(Fed. Cir. 2013) at 1345.
Given the broadest reasonable interpretation, Claims 1, 6, and 13 are
directed to the broad and well-known concept of providing limited
versions of applications and "would risk disproportionately tying up the
use of the underlying ideas ... and are therefore ineligible for patent
protection" (Alice Corp. v. CLS Bank International 134 S. Ct at 2354
(2014)).
Under STEP 2B (Part 2 of the Mayo test), Claims 1, 6, and 13 do not
recite additional limitations that individually or in combination amount
to significantly more than the judicial exception. The recited features
of the particular data and technological environment (i.e. exchange via
a network among a plurality of devices) do not circumvent the
prohibition against patenting an abstract principle by attempting to limit
the use of the [principle] to a particular technological environment (see
Diehr, 450 U.S. at 191; "attempts to limit the abstract concept to a
computer implementation and to a specific industry thus do not provide
additional substantive limitations to avoid preempting the abstract idea
of [the] system" Accenture Global Service v. Guidewire Software,
Inc., 728 F.3d 1336 (Fed. Cir. 2013)). The claims fail to recite any
inventive concept that amounts to significantly more than the abstract
idea above. Dependent Claims 2-5, 7-12, 14-20 when analyzed as a
whole are held to be patent ineligible under 35 U.S.C. § 101 because
the additional recited limitations fail to establish that the claims are not
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directed to an abstract idea, and none of the additionally recited
limitations amount to significantly more than the abstract idea.
Ans. 4—6.
The Supreme Court in Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S.
Ct. 2347 (2014) reiterated the framework set out in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) for
“distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 132 S. Ct. at 1297, 1298). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 132 S. Ct. at 1294).
The question is not whether claims mention a computing environment
but what they are “directed to.” [T]he “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded subject matter.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1375,
2016 WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the focus of the
claimed advance over the prior art”); Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016). “The ‘abstract idea’ step of the inquiry
calls upon us to look at the ‘focus of the claimed advance over the prior art’
to determine if the claim’s ‘character as a whole’ is directed to excluded
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subject matter.” Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016)). “In determining the eligibility of
respondents’ claimed process for patent protection under § 101, their claims
must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188
(1981).
Appellants argue claims 1—20 together without clearly linking the
arguments to specific claims. App. Br. 4—11; Reply Br. 5—13. In our
Decision, we address independent claims 1, 6, and 13 individually.
Claim 1 recites, inter alia, “determine a portion of a full version of an
application that is to be predicted to be unaccessed during the evaluation
period.” We disagree with the Examiner’s characterization that the claimed
invention is directed to “providing a limited application.” We agree with
Appellants’ argument that the Examiner mischaracterizes and oversimplifies
claim 1 because the Examiner’s characterization ignores at least the
limitation of predicting. Reply. Br. 5—6 (citing Enfish, LLC, v. Microsoft
Corp. 822 F.3d 1327, 1335, “describing the claims at such a high level of
abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.”).
Claim 1 is directed to providing a limited application wherein the
limited application excludes a portion of the application that is predicted to
be unaccessed during an evaluation period. See also Specification,
paragraph 46, “[f]or example, the limited application 130 may exclude a
portion of the application 127 that is predicted to be unaccessed during the
testing or evaluation period. Such a portion may remain unaccessed because
a time limitation does not allow for a user to reach functionality of the
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portion, the client 106 does not support the portion, or for other reasons.”
As described in the Specification, the limited version of a full version of an
application is provided for trial and testing purposes to computing devices
with limited connection bandwidth to enable a user to quickly download the
limited version of the application to evaluate for purchase. Spec. Tflf 2, 9, 10.
We conclude claim 1 is not directed to an abstract idea. Having made
this threshold determination under step one of the Alice framework, we need
not move to the second step nor address other arguments presented by
Appellants.
In view of the above, we do not sustain the rejection of claim 1, and
dependent claims 2—5.
Claim 13 recites, inter alia, “wherein the data corresponding to the
demonstration version of the application is sent according to a sequence
established based at least in part on a code access profile for the
demonstration version of the application (emphasis added). ” Similar to our
discussion regarding claim 1, supra, we are persuaded that the Examiner
mischaracterizes and oversimplifies the claim in determining it is directed to
“providing limited applications.” Ans. 5. Instead, claim 13 is directed to
providing a limited (demonstration) application wherein the data
corresponding to the demonstration version of the application is sent
according to a sequence established based at least in part on a code access
profile for the demonstration version of the application. See also Spec. Tflf
23, 32, 34; Fig. 1).
Therefore, we agree claim 13 is not directed to an abstract idea.
In view of the above, we do not sustain the rejection of claim 13, and
dependent claims 14—20.
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Independent claim 6 recites neither of the limitations discussed, supra,
in claims 1 and 13. Claim 6 recites:
determine a portion of a full version of an application to be
excluded from a limited version of the application;
generate the limited version of the application from the full
version of the application, the limited version having a smaller data
size than the full version of the application.
We agree with the Examiner’s determination that claim 6 is directed
to the abstract idea of providing limited applications. Ans. 5. In particular,
the term “determine” as reasonably and broadly interpreted, unlike claims 1
and 13, supra, does not render the claim eligible as claim 6 remains directed
to the abstract idea of providing a limited application. Claim terms in a
patent application are given the broadest reasonable interpretation consistent
with the specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Regarding step 2 of Alice, we
agree with the findings and conclusions of the Examiner that claim 6 does
not recite additional limitations that individually or in combination amount
to significantly more than the abstract idea (judicial exception). Id.
We conclude claim 6 is distinguishable from the type of claim
recently considered by the court in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327. We conclude claim 6 is not “directed to an improvement in the
functioning of a computer,” as was found by the court regarding the subject
claim in Enfish, 822 F.3d at 1338, because the claim recites conventional
computer elements without addressing improvements to the functioning of a
computer.
Appellants’ reliance on DDR and other cited cases is misplaced. For
example, in DDR, the claims at issue involved, inter alia, “web pages
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displays [with] at least one active link associated with a commerce object
associated with a buying opportunity of a selected one of a plurality of
merchants” (claim 1 of US 7,818,399). The Federal Circuit found the claims
in DDR to be patent eligible under step two of the Mayo/Alice test because
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks.” DDR Holdings, 773F.3datl257. Specifically, the Federal
Circuit found the claims addressed the “challenge of retaining control over
the attention of the customer in the context of the Internet.” Id. at 1258.
Claim 6 is dissimilar to DDR’s web page with an active link and the
Specification does not support the view that the computer related claim
elements are unconventional. See Spec. 63—66.
The Examiner notified Appellants of the reasons for the rejection
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.” 35
U.S.C. § 132. And, contrary to Appellants’ assertions ( App. Br. 6—7), in
doing so, the Examiner set forth a prima facie case of unpatentability such
that the burden shifted to Appellants to demonstrate that the claims are
patent-eligible.
We note that the introduction of a “processor of a computer system”
into the claims to implement an abstract idea is not a patentable application
of the abstract idea. Alice, 134 S. Ct. at 2357—58. The computer
implementation here is purely conventional and performs basic functions.
See id. at 2359—60. Appellants do not adequately show how the claimed
steps are done technically such that they cannot be done manually or that
they are not routine and conventional functions of a generic computer. See
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Versata, 793 F.3d at 1334 (“the limitations of claim 17 involve arranging a
hierarchy of organizational and product groups, storing pricing information,
retrieving applicable pricing information, sorting pricing information,
eliminating less restrictive pricing information, and determining the price.
All of these limitations are well-understood, routine, conventional activities
previously known to the industry.”).
Regarding Appellants’ argument (Reply Br. 12—13) that dependent
claims 4, 10, and 19 are not subject to a prior art rejection, “[t]he novelty of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981).
In view of the above, we sustain the rejection of claim 6, and
dependent claims 7—12 as these claims are not argued separately.
The §103 rejections
Appellants argue the Examiner errs in finding the combination of
Ramzan and Cooper teaches the claim 1 limitations:
determine a portion of a full version of an application
that is predicted to be unaccessed during an evaluation period; and
generate a limited version of the application from the full
version of the application, wherein the limited version of the
application excludes the portion of the application that is predicted
to be unaccessed during the evaluation period.
App, Br. 11—15; Reply Br. 13—16.
Appellants argue, inter alia, the Examiner’s suggested combination of
Ramzan and Cooper fails to teach the claim 1 limitation “determine a
portion of a full version of an application that is predicted to be unaccessed
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during an evaluation period” because the Examiner admits Ramzan does not
teach this limitation, and the Examiner errs in finding Cooper remedies this
deficiency. App. Br. 12—14 (citing Cooper 4:4—22; Final Act. 6). According
to Appellants, “Cooper does not make any form of prediction in regards to
the encrypted file, nor does Cooper "determine" the encrypted file based
upon a prediction that it will not be accessed during an evaluation period.”
Id. at 13; see also Reply Br. 14—15.
The Examiner’s findings and cited portions of Ramzan and Cooper
discuss encrypting and decrypting technique for trial software but the
findings and cited portions do not address the prediction limitation other
than in a conclusory fashion. Ans. 7—8 (citing Ramzan 3:45—51, 58—62;
Cooper 4:5—22; see also Final Act. 5—6.
We are persuaded by Appellants’ arguments because, on the record
before us, the Examiner does not provide evidence showing the cited
references teach this limitation as required for obviousness. As stated by the
Supreme Court, the Examiner’s obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In view of the above, we also do not sustain the rejection of claim 1,
and dependent claims 2 and 3 under 35 U.S.C. §103. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (“[Dependent claims are nonobvious if the
independent claims from which they depend are nonobvious . . . .”).
Because our decision with regard to the disputed limitation is dispositive of
the rejection of these claims, we do not address additional arguments raised
by Appellants.
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Appellants argue the Examiner errs in rejecting independent claim 6
and errs in finding “that "[t]his claim consists [of] a system to implement
claim 1 and is rejected with the same rationale applied against claim 1
above." App. Br. 15 (citing Final Act. 7). Appellants argue claim 6 “recites
‘the limited version having a smaller data size than the full version of the
application,’" which is not recited in claim 1. Id.
We are persuaded by Appellants’ arguments because the Examiner’s
findings regarding claim 6 are based on claim 1 limitations, discussed supra,
and the Examiner does not address all claim 6 limitations. See Final Act. 7;
Ans. 9. For example, in the claim 6 rejection, the Examiner does not address
“the limited version having a smaller data size than the full version of the
application.” Id.
Based on the record3 before us, the Examiner presents insufficient
evidence that the combination of Ramzan and Cooper teaches the disputed
claim 6 limitation as required for obviousness. KSR Int’l. Co. v. Teleflex,
Inc., 550 U.S. 398,418.
In view of the above, we do not sustain the rejection of claim 6, and
dependent claims 7—9, 11, and 12 under 35 U.S.C. §103. In re Fritch, 972
F.2d 1260, 1266.
Appellants argue the cited references do not teach the independent
claim 13 limitations:
3 We note in the rejection of dependent claims 2 and 17, which recite
substantially the same limitation, the Examiner rejects these claims finding
Ramzan teaches the trial version is smaller than the full version because no
authentication function is included with the trial version. Final Act. 6, 8
(citing Ramzan 3:58—67); Ans. 12 see also App. Br. 20; Reply 19.
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generating, by the at least one computing device, the
demonstration version of the application from a full version of the
application-, and
wherein the data corresponding to the demonstration version
of the application is sent according to a sequence established based
at least in part on a code access profile for the demonstration
version of the application.
App. Br. 18.
Appellants argue the Examiner errs in finding claim 13 is "a method
to implement claim 1 and is rejected with the same rationale applied against
claim 1 above." Id. (citing Final Act. 8). According to Appellants, claim 13
also recites “the data corresponding to the demonstration version of the
application is sent according to a sequence established based at least in part
on a code access profile for the demonstration version of the application, ”
which is not recited in claim 1. Appellants argue the Examiner’s finding
regarding the rejection of “a similar element recited by” dependent claim 9
based on the teaching of Ramzan does not teach "the data corresponding to
the demonstration version of the application is sent according to a sequence
established based at least in part on a code access profile for the
demonstration version of the application," as claimed. Id. at 18—19 (citing
Ramzan 1:47—56; Final Act. 5); see also App. Br. 9 and Reply Br. 20
discussing the rejection of claim 9.
We are persuaded by Appellants’ arguments as, based on the record
before us, the Examiner’s findings do not sufficiently address the disputed
claim limitation. Final Act. 5; Ans. 13.
In view of the above, we also do not sustain the rejection of claim 13,
and dependent claims 14—18 and 20 under 35 U.S.C. §103. In re Fritch, 972
F.2d 1260, 1266.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—20 for obvious-
type double patenting.
We affirm the Examiner’s decision rejecting claims 6—12 under 35
U.S.C§ 101.
We reverse the Examiner’s decision rejecting claims 1—5 and 14—20
under 35 U.S.C § 101.
We reverse the Examiner’s decision rejecting claims 1—3, 6—9, 11—18,
and 20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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