Ex Parte CHOI et al

Patent Trial and Appeal Board

Dec 20, 2018

14924380 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/924,380 10/27/2015
23373 7590 12/25/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Yang-lim CHOI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Q222772 1089
EXAMINER
MESA,JOEL
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YANG-LIM CHOI and SU-HYUN NAM
Appeal2018-003673
Application 14/924,380 1
Technology Center 2400
Before JOHN A. EVANS, JOHN D. HAMANN, and JASON M. REPKO,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-13. We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellants identify Samsung Electronics Co., Ltd, as the real party in
interest. App. Br. 2.
2 Rather than reiterate the arguments of the Appellants and the Examiner,
we refer to the Appeal Brief (filed August 7, 2017, "App. Br."), the Reply
Brief (filed February 20, 2018, "Reply Br."), the Examiner's Answer
(mailed December 18, 2017, "Ans."), the Final Action (mailed January 30,
2017, "Final Act)," and the Specification (filed October 27, 2015, "Spec.")
Appeal2018-003673
Application 14/924,380
STATEMENT OF THE CASE
The claims relate to a method for sharing content between a mobile
terminal and a local server. See Abstract.
Invention
Claims 1, 7, and 13 are independent. An understanding of the
invention can be derived from a reading of illustrative claim 1, which is
reproduced below with some formatting added:
1. A method of communicating metadata of contents
at an electronic device, the method comprising:
receiving the metadata of the contents from a first device;
receiving a contents share service request if the electronic
device is determined to be located within a predetermined area;
transmitting a response to the contents share service
request for an approval of contents share service; and
establishing a communication channel with a second
device, wherein the communication channel is a traffic channel
available to the second device;
receiving metadata from the second device; and
transmitting the metadata information of the contents to
the second device based on a result of matching the metadata of
the contents from the first device and the metadata from the
second device.
Hennessy et al.
Battagin et al.
Ohsumi
References and Rejections
US 2003/0028623 Al
US 2005/0278307 Al
US 2006/0184648 Al
for their respective details.
2
Feb. 6,2003
Dec. 15, 2005
Aug. 1 7, 2006
Appeal2018-003673
Application 14/924,380
Moll et al. US 7,330,728 Bl Feb. 12,2008
(Filed June 25, 2004)
1. Claims 1-13 stand rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter. Final Act. 3-5.
2. Claims 1, 4--7, and 10-13 stand rejected under 35 U.S.C. §103 as
being unpatentable over Hennessy3 and Moll. Final Act. 5-8.
3. Claims 2 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hennessy, Moll, and Battagin. Final Act. 8-9.
4. Claims 3 and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hennessy, Moll, and Ohsumi. Final Act. 9-10.
ANALYSIS
We have reviewed the rejections of claims 1-13 in light of
Appellants' arguments that the Examiner erred. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief.
CLAIMS 1-13: NON-STATUTORY SUBJECT MATTER.
Appellants argue all claims as a group without designating a
representative claim. See App. Br. 14. Therefore, we decide the appeal of
the § 101 rejection on the basis of independent Claim 1, and refer to the
rejected claims collectively herein as "the claims." See 37 C.F.R.
§ 4I.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
3 The Examiner refers to Hennessy as "Henn." Ans. 5.
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Application 14/924,380
The Examiner finds the claims are directed to concepts, such as
obtaining and comparing intangible data and using categories to organize,
store, and transmit information. 4 Final Act. 4. Without a specific citation,
the Examiner finds the courts have found such concepts to be ineligible as
abstract ideas. Id.
Appellants analogize their claims to those of Cellzdirect5, and contend
that the claims are not simply the observation or detection of a natural law.
App. Br. 14. Appellants argue instead the claims are "directed to" improved
sharing of contents via localized sharing of contents metadata between
mobile terminals, thereby sharing contents desired by the user without the
user's intervention. Id. Thus, Appellants contend, their claims are "like
thousands of others that recite processes to achieve a desired outcome, e.g.,
methods of producing things, or methods of treating disease." Id. ( quoting
Rapid Litig. Mgmt. at 1048-9).
Mayo-Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217
(2014). At the first step, we determine whether the claims at issue are
"directed to" a patent-ineligible concept. Id.
4 Although the Examiner does not provide a citation, Appellants presume the
Examiner relies upon Cyberfone Sys. v. CNN Interactive Group, Inc., 558
Fed. Appx. 988 (Fed. Cir. 2014). See App. Br. 10. R. 38.
5 See Rapid Litigation Management Ltd. v. Cellzdirect, Inc., 827 F.3d 1042
(Fed. Cir. 2016).
4
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Application 14/924,380
The Examiner finds the claims are directed to abstract ideas which are
encompassed in the steps of "receiving the metadata," "receiving a contents
share service request," "transmitting a response," "establishing a
communication channel," "receiving metadata," and "transmitting the
metadata information." Ans. 2. The Examiner finds the claimed concepts
are similar to concepts, such as obtaining and comparing intangible data,
found to be abstract in CyberSource6 and such as remotely accessing and
retrieving user-specified data, found to be abstract in Intellectual Ventures
I. 7 Id. The Examiner finds the claims merely manipulate data, but with no
inventive end. Ans. 3. The Examiner's Answer maintains these findings,
but without specific response to Appellants' arguments presented in the
Appeal Brief. See Ans. 2-3.
Appellants contend "the fundamental inquiry is to determine whether
the scope of a patent claim is directed to a building block of human
ingenuity or [to] something more that transforms the patent claim into a
patent-eligible invention, which 'pose[ s] no comparable risk of pre-emption,
and therefore remain[ s] eligible for the monopoly granted under our patent
laws'." App. Br. 11 (quoting Alice at 2354--55).
Appellants argue the rejection oversimplifies the claims by distilling
the limitations of claim 1 to: "obtaining and comparing intangible data,
using categories to organize, store, and transmit information" and
"receiving, establishing and transmitting." Id. Appellants cite McRO for the
proposition that that oversimplification of the limitations of the claims by
6 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (2011).
7 Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332
(2017).
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failing to account for the specific requirements is improper. App. Br. 12
(quoting McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299, 1313
(Fed. Cir. 2016) ("We have previously cautioned that courts 'must be careful
to avoid oversimplifying the claims' by looking at them generally and failing
to account for the specific requirements of the claims.").
Appellants contend matching metadata of the contents of mobile
terminals within a social network to enable the sharing of the contents of the
mobile terminals is not an abstract idea similar to organizing human activity,
an idea "of itself," nor is it a mathematical relationship or formula. App. Br.
13-14 (citing Alice Corp., 573 U.S. at 217-20). Appellants argue the claims
do not merely observe or detect a natural law8, but are "directed to" an
improvement in computer technology, i.e., an improved method of sharing
contents of local terminals by localized sharing of metadata. Id., 14.
The Intellectual Venture I Court found the claims were directed to an
abstract idea because the claims recited remotely accessing and retrieving
information, but without reciting any particular unique delivery through the
user interface, and thus, merely provide a technological environment for the
information exchange. Reply Br. 8. Appellants argue claim 1 recites, inter
alia, "receiving the metadata of the contents from a first device; receiving a
contents share service request if the electronic device is determined to be
located within a predetermined area; transmitting a response to the contents
share service request for an approval of contents share service; and
establishing a communication channel with a second device, ... receiving
8 Citing Rapid Litigation Management Ltd. v. CellzDirect, Inc., 827 F.3d
1042 (2016).
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Application 14/924,380
metadata from the second device; and transmitting the metadata information
of the contents to the second device based on a result of matching the
metadata of the contents from the first device and the metadata from the
second device." App. Br. 14; Reply Br. 8. According to Appellants, the
claim recites "how the sharing of contents occurs." Reply Br. 9.
We agree with Appellants that under Step 1 of the Mayo/Alice analysis, the
claims are not "directed to" an abstract idea. In determining patent
eligibility under§ 101, the Federal Circuit reviews the specification
disclosure. See Ancora Techs., Inc. v. HTV Am., Inc., 2018-1404, slip op. 3
(Fed. Cir. Nov. 16, 2018) ("The '941 patent describes an asserted
improvement based on assigning certain functions to particular computer
components and having them interact in specified ways").
Appellants' Specification discloses: the "present invention relate[ s] to
contents sharing between a mobile terminal and a local server, and more
particularly to, sharing contents required by a user using a mobile terminal
via another user's local mobile terminal or a local server." Spec., ,r 2.
Downloading content from a server through the use of a third party mobile
terminal is a technological solution to a technological problem.
Where, as here, the claims are found not directed to an abstract idea,
under Alice step 1, "the claims satisfy § 101 and we need not proceed to the
second step." Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356, 1361 (Fed. Cir. 2018) (citing Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253, 1262 (Fed. Cir. 2017)).
CLAIMS 1, 4--7, AND 10-13: OBVIOUSNESS OVER HENNESSY AND MOLL.
Improper combination.
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The Examiner finds Hennessey substantially teaches the claims except
Hennessey fails to teach establishing a communications channel with a
second device. Final Act. 5---6. The Examiner finds Moll teaches receiving
a contents share service request if the electronic device is determined to be
roaming within a predetermined area. Final Act. 6. The Examiner finds
Moll further teaches transmitting a response to the contents share service
request for an approval of contents share service, in order to locate a mobile-
subscriber terminal. Id.
Appellants contend neither Hennessey, nor Moll, together or
severally, teach sharing metadata relating to contents between remote
terminals. App. Br. 20. With respect to Moll, Appellants argue Moll
teaches communication between a mobile subscriber terminal (MST) and the
serving and subscriber networks. Id. Appellants argue Hennessey does not
describe a subscriber mobile terminal that could have been modified by the
teachings of Moll because Hennessey discloses computer terminals which,
as would be understood by the artisan of ordinary skill, do not roam through
various cellular networks, and thus the negotiation between the serving
network and subscribing network, described by Moll, could never be a
required service of the systems in Hennessey. App. Br. 20-1.
The Examiner finds the motivation to combine the references is found
in the Moll reference: "in order to for [sic] locating a mobile-subscriber
terminal." Ans. 4--5 (citing Moll, Abstr.). The Examiner fails to respond to
Appellants' contentions. Appellants allege Hennessey discloses static
terminals in a computer network. In the absence of an Examiner's finding to
the contrary ( and the Examiner makes none), we accept Appellants'
allegations as correct. We agree with Appellants that a network comprised
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of static terminals has no need, or motivation, to incorporate methods for
locating a mobile-subscriber terminal. "A patent composed of several
elements is not proved obvious merely by demonstrating that each element
was, independently, known in the prior art." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 401 (2007). Although it may "be necessary for a court to look
to interrelated teachings of multiple patents," in order to "facilitate review,
this analysis should be made explicit." Id.at 418 (citing In re Kahn, 441
F.3d 977,988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness"). In view of the forgoing, we decline to
sustain the rejections of claims 1, 4--7, and 10-13.
CLAIMS 2, 3, 8, AND 9: OBVIOUSNESS OVER HENNESSY, MOLL, AND
VARIOUSLY BATT AGIN OR 0HSUMI.
Appellants contend neither Battagin, nor Ohsumi, cure the
deficiencies of Moll and Hennessey as discussed above. App. Br. 25.
The Examiner's Answer does not make findings with respect to these
secondary references.
In view of the forgoing, we decline to sustain the rejections of claims
2, 3, 8, and 9.
DECISION9
9 Because we do not sustain the Examiner's rejection of claims 1-13 for the
reasons discussed supra, we need not address Appellants' additional
arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (Finding an administrative agency is at liberty to reach a decision
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Application 14/924,380
The rejection of claims 1-13 under 35 U.S.C. § 101 is reversed.
The rejections of claims 1-13 under 35 U.S.C. § 103 are reversed.
REVERSED
based on "a single dispositive issue.").
10