Ex Parte Cragun et al

Patent Trial and Appeal Board

Jun 22, 2018

13708446 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/708,446 12/07/2012 Brian J. Cragun
46296 7590 06/26/2018
MARTIN & ASSOCIATES, LLC
P.O. BOX548
CARTHAGE, MO 64836-0548
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.
ROC920100040US2 1018
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN J. CRAGUN and JOHN E. PETRI
Appeal2017-003134 1
Application 13/708,446
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1--4. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention "generally relates to a system for providing content to a
user, and more specifically relates to a system for providing licensed content
to a user." Spec. i-f 2.
1 The Appellants identify International Business Machines Corp. as the real
party in interest. Appeal Br. 1.
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Application 13/708,446
Claim 1, the only independent claim on appeal, is illustrative:
1. A computer-implemented method for a user to receive content
from a content provider, the method comprising the steps of:
providing at least one processor;
providing a memory coupled to the at least one processor;
the at least one processor performing the steps of:
a user defining a license policy that specifies criteria for
automatically acquiring at least one license, the criteria including
maximum cost for a licensed object, maximum cost per
document that includes the licensed object, and maximum cost
per time period for the user;
receiving a request from the user for a document;
sending the request for the document to the content
provider;
when all objects in the document are unlicensed, rendering
the document to the user;
when at least one object in the document is a licensed
object, determining when the user has an existing license for the
licensed object, and in response, rendering the document to the
user;
when the user does not have an existing license for the
licensed object, performing the steps of:
querying the content provider for license
information for the licensed object, the license information
including price for the licensed object;
determining when the price for the licensed object
in the license information is less than the maximum cost
for the licensed object specified in the license policy, when
the price for the document is less than the maximum cost
per document specified in the license policy, and when the
price for the document does not cause the maximum cost
per time period for the user specified in the license policy
to be exceeded, and in response, acquiring a license for the
licensed content without requiring further input from the
user, and the user receiving the document including the
licensed object;
determining when the price for the licensed object
in the license information is less than the maximum cost
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for the licensed object specified in the license policy and
when the price for the document with the licensed object
is more than the maximum cost per document specified in
the license policy and the price for the document without
the licensed object is less than the maximum cost per
document specified in the license policy, rendering a
partial document to the user that does not include the
licensed object;
determining when the price for the licensed object
in the license information is less than the maximum cost
for the licensed object specified in the license policy, when
the price for the document is less than the maximum cost
per document specified in the license policy, and when the
price for the document causes the maximum cost per time
period for the user specified in the license policy to be
exceeded, and in response, rendering a partial document to
the user that does not include the licensed object; and
determining when the price for the licensed object
in the license information is more than the maximum cost
for the licensed object specified in the license policy, and
in response, prompting the user for authorization, and
when the user authorizes, acquiring a license for the
licensed content and rendering the document including the
licensed object to the user, and when the user does not
authorize, rendering a partial document to the user that
does not include the licensed object.
Claims 1--4 are rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter in the form of abstract ideas.
Claims 1--4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Ginter et al. (US 5,892,900, iss. Apr. 6, 1999) (hereinafter "Ginter").
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Application 13/708,446
Claim Construction
ANALYSIS
During prosecution the PTO gives claims their "broadest reasonable
interpretation consistent with the specification." In re Hyatt, 211F.3d1367,
1372 (Fed. Cir. 2000).
Claim 1 recites a processor performing steps that begin with a user
defining a policy, receiving a request from a user for content, and sending
the request to a content provider. Then the claim recites two mutually
exclusive "when" sections of limitations, each describing steps taken in the
event a "when" condition is met. The two conditions are "all objects in the
document are unlicensed," and "at least one object in the document is a
licensed object."
If all objects in a document are unlicensed, the method recites
"rendering the document to the user." If at least one object in the document
is a licensed object, the method involves additional conditions and
determinations that dictate what steps are taken, beginning with determining
if the user has a license or not. If the user has a license, the content is
rendered. But if the user does not have a license, the method recites steps to
determine what license will or will not be acquired before determining what
portions of the content to render to the user.
As an initial matter of claim construction, and regarding the
conditional steps in claim 1, we note that conditional steps employed in a
method claim need not be found in the prior art if, under the broadest
reasonable construction, the method need not invoke the steps. Ex parte
Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3-6 (PTAB
April 28, 2016) (concluding the broadest reasonable interpretation of a claim
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encompassed situations in which conditional method steps "need not be
reached") (precedential).
The Specification describes that the "term 'licensed content' as used
herein is any content that requires the user to do something in exchange for
receiving the content." Spec. i-f 5. A step which does not require a user to
"do something" is, thus, broader than one that requires a user to "do
something."
The Specification does not define or describe the term "rendering,"
but describes that "[i]f all content in the document requested by the user is
unlicensed (step 320=YES), the content provider renders the full document
to the user's browser (step 380)." Id. i-f 40 (cited at Appeal Br. 2). Because
"rendering" is not defined, we rely on the ordinary and customary definition,
"to transmit to another: deliver." MERRIAM-WEBSTER ONLINE DICTIONARY,
http://m-w.com/dictionary/render (last retrieved on June 12, 2018).
In the broadest construction of claim 1, in the condition that all
objects in the document are unlicensed, the claim recites "rendering the
document to the user," and no later-recited steps are performed. In this case,
the claim merely recites language for a user defining a policy, the receipt
and sending of a request, and the transmitting of unlicensed content to the
user. This is consistent with the Appellants' description that "[ c ]laim 1 is a
very detailed claim that recites a user defining a license policy that includes
specified criteria, and different specified actions depending on various
conditions in the claim." Appeal Br. 5.
Our further analysis of the issues in the case is based on this
construction of claim 1.
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Section 101 Rejection o(Independent Claim 1
We are not persuaded the Examiner errs in finding claim 1 is directed
to an abstract idea because, according to the Appellants, "claim 1 as a whole
is not directed to the formation of contractual relationships." Id.
This argument is a mischaracterization of the Examiner's findings,
which, instead of finding the claim is only similar to cases directed to the
formulation of contractual relationships, also finds the claim is similar to
case with other characteristics as well:
The claim as a whole is therefore similar in nature to subject
matter previously held as being directed towards the judicial
exception regarding an abstract idea involving the forming of
contractual relationships such as the formulation and trading of
risk management contracts (Alice Corp. Pty. Ltd. v. CLS Bank
Intl/, 573 U.S. _, 134 S. Ct. 2347 (2014)), the creation of a
transaction guaranty that binds to the transaction upon the
closing of the transaction (buySAFE, Inc. v. Google, Inc., 112
USPQ2d 1093 (Fed. Cir. 2014)), determining a price using
organizational and product group hierarchies (Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 115 USPQ2d 1681 (Fed. Cir. 2015)),
determining an award in accordance with arbitration language (In
re Comiskey, 89 USPQ2d 1655 (Fed. Cir. 2009)), implementing
a rules based policy for processing an insurance claim (Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 108 USPQ2d
1173 (Fed. Cir. 2013)) and detecting fraud in an Internet credit
card transaction ( CyberSource Corp. v. Retail Decisions Inc., 99
USPQ2d 1690 (Fed. Cir. 2011)) (which can be viewed as the
execution of a set of rules in order to determine whether a
purchase contract involving a credit should be consummated).
Furthermore, the claim can be viewed as nothing more than an
"idea of itself' as comparing new and stored information and
using rules to identify options has been deemed as ineligible
(SmartGene, Inc. v Advanced Biological Labs., 555 Fed. Appx.
950 (Fed. Cir. 2014)) as has using categories to organize, store
and transmit information ( Cyberfone Systems, LLC v. CNN
Interactive Group, Inc., 558 Fed. Appx. 988 (Fed. Cir. 2014))
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and the claim merely uses the policy to implement rules dictating
when a license should or should not be acquired and
subsequently transmits information based on the applied rule.
Answer4-5.
Although the claim recites six different possible sets of steps to take
under different conditions (one with unlicensed content, one where the user
holds a license, one where all required licenses are acquired, and one where
only a partial document is rendered because not all licenses are acquired),
we need not find cases similar to each and every possible method performed,
but only the broadest case. This is because if the broadest reasonable
construction of the claim is directed to an abstract idea, we need not consider
other cases. Therefore, we find claim 1 is directed to providing for a user to
define a policy, receiving and forwarding a request from the user, and
transmitting content to the user. 2 We find that this is similar to the claims
recited in Cyberfone, a case identified by the Examiner.
In addition to being similar to the claims in Cybeifone, which uses
"categories to organize, store and transmit information" (id.), claim 1 is also
similar to claims in Front Row Technologies, LLC v. NBA Media Ventures,
LLC, 204 F.Supp.3d 1190 (D.N.M., 2016), aff'd, 2017 WL 4127880 (Mem)
(Fed. Cir. 2017), which involved sending video of an event to handheld
devices over wireless networks. For example, claim 1 of US 7 ,812,856
recites:
1. A method for providing venue-based data to hand held
devices, said method comprising the steps of: capturing video
images from more than one perspective of a venue-based activity
2 The Appellants argue "[ c ]laim 1 is directed to receiving content from a
content provider in the form of a document." Appeal Br. 8, see also Reply
Br. 3.
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using more than one video camera located at a sports and
entertainment venue; providing said video images to a server to
process said more than one video perspective captured by more
than one video camera into venue-based data formatted for
wireless transmission via wireless data networks to more than
one hand held device, each of said more than one hand held
device further comprising at least one of a personal digital
assistant and a smart phone, said more than one hand held device
including at least one 802 .11 wireless module for access to a
wireless local area network and a cellular communications
module for communication with a wireless cellular
communications network, said more than one hand held device
further comprising a touch-sensitive display screen to
simultaneously and singularly display said venue-based data and
to accept user input via said touch-sensitive display screen; and
retrieving said venue-based data from said server and wirelessly
transmitting said venue-based data to at least one hand held
device located at said sports and entertainment venue over said
wireless local area network and also wirelessly transmitting said
venue-based data to at least one hand held device located outside
of said sports and entertainment venue over said wireless cellular
communications network.
In particular, claim 1 of the Appellants' application is similar to claim 1 in
Front Row Technologies, because both involve transmitting content to a
user.
Furthermore, except for the recitation of the "providing" of a
"processor" and "memory," and the recitation that the processor performs
the remaining steps of the method, the method involves communicating and
forwarding a request, and transmitting content to a user, which can be
performed manually by a human using simple devices such as pen and
paper. A user may request a document that the provider of the document
communicates in writing to the user. The Federal Circuit has held that if a
method can be performed by human thought alone, or by a human using pen
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and paper, it is merely an abstract idea and is not patent-eligible under § 101.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ("[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101."). In addition,
mental processes remain unpatentable even when automated to reduce the
burden on the user of what once could have been done with pen and paper.
Id. at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson, [ 409 U.S. 63 (1972)].").
For these reasons, we agree with the Examiner that claim 1 is directed
to an abstract idea.
We next examine the claim as a whole, and as an ordered set of steps
to determine if it recites an "inventive concept" or "something more." See
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014).
We are not persuaded by the Appellants' argument that the specific
claim "limitations are improvements to computer systems that deliver
licensed content by acquiring a license for the licensed content without
requiring further input from the user" (Appeal Br. 7, see also Reply Br. 2),
because our construction of the claim scope does not include the limitations
directed to acquiring licenses. This also applies to the Appellants' argument
that the "limitations improve the functioning of the computer itself, because
the computer does not have to wait for user input to acquire a license." Id.
We also are unpersuaded, for the same reason, by the Appellants' argument
that the claim is "thus necessarily rooted in computer technology in order to
overcome a specific problem arising in the realm of computer systems that
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deliver licensed content" (id., see also Reply Br. 2), because our
construction does not require licensed content.
We also are unpersuaded that additional limitations recited are beyond
the scope of what the Examiner finds the claim is directed to (id. 8, Reply
Br. 3--4 ), because the limitations denoted are outside the scope of the claim
we found above.
The Appellants also argue the claim does not "attempt to preempt
every application of the abstract idea identified by the examiner" (the
formation of contractual relationships). Id. 7. While "preemption 'may
signal patent ineligible subject matter,' [ ] 'the absence of complete
preemption does not demonstrate patent eligibility'." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015)
("[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the ecommerce setting do not make them any less
abstract."). And, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
The Appellants have, thus, failed to demonstrate that the claim recites
an "inventive concept" or "significantly more" that transforms it from the
abstract idea of providing for a user to define a policy, receiving and
forwarding a request from the user, and transmitting content to the user.
For this reason, we sustain the rejection of claim 1 under 35 U.S.C. § 101 as
directed to an abstract idea.
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Section 101 Rejection o(Dependent Claims 2-4
Although the Appellants argue that dependent claims 2--4 recite
limitations that transform the alleged abstract idea into eligible subject
matter (Appeal Br. 9-10), the limitations of each of claims 2--4 address only
"criteria in the license policy" that affects the determination for acquiring
licensed content. However, our construction of the claim, in its broadest
reasonable interpretation, does not require licensed content, or the
acquisition of licenses. Therefore, the Appellants' arguments are
unpersuasive.
As a result, we affirm the rejection of claims 2--4 under 35 U.S.C.
§ 101 as abstract.
Section 103 (a) Rejection of Claim 1
We are not persuaded by the Appellants' arguments advanced at
pages 11-18 of the Appeal Brief, and pages 4--8 of the Reply Brief, because
they are directed only to limitations for determining and acquiring licenses
that are not within the scope of the broadest reasonable interpretation of the
claim. This is not in dispute, as the Appellants do "not dispute the fact that
when all content in a document is unlicensed (step 320=YES), steps 330,
340, 350, 360 and 370 will not be executed/or that particular user request."
Appeal Br. 16. However, the Appellants argue the "[E]xaminer cannot
assume a particular condition is satisfied, then ignore all the limitations in
the claims that are not relevant to that particular condition, because the
claim[ ] recites FOUR sets of conditions with FOUR corresponding sets of
actions that are performed." Id. 17. The Appellants, thus, argue the
Examiner has not shown Ginter to teach all four of the conditional steps for
acquiring a license. Id.
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As we noted above, however, conditional steps employed in a method
claim need not be found in the prior art if, under the broadest reasonable
construction, the method need not invoke the steps. Ex parte Schulhauser, at
*3-6. Further, there is no language in the claim that requires steps to be
performed that deal with conditions that are not occurring. There is, for
example, no step to determine what conditions are present and to determine
what steps are then performed under each condition. Instead, the claim
encompasses the situation where unlicensed content is requested and
provided, with no additional steps performed, other than permitting a user to
define a policy.
The Examiner finds Ginter discloses the receipt of a request and
providing of unlicensed content, at column 140[,] lines 25-38 and
column 215[,] lines 7-16. Answer 8. The Appellants do not dispute this
finding.
The Examiner has, therefore, established on the record the
obviousness of claim 1.
For these reasons, we affirm the rejection of claim 1 as obvious over
Ginter.
Section 103 (a) Rejection of Claims 2-4
Each of dependent claims 2--4 recite refinements of the "criteria in the
license policy."
The Appellants argue error on the part of the Examiner for asserting
the limitations of dependent claims 2--4 represent merely non-functional
descriptive material, undeserving of patentable weight, because, according to
the Appellants, claim 1 "specifies criteria for automatically acquiring at least
one license," and claims 2--4 refine that criteria. Appeal Br. 19.
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We are not persuaded by the Appellants' argument. In the broadest
reasonable interpretation of claim 1, the policy is defined, but the
information in the policy, further refined by claims 2--4, is not used, and,
thus, has no functional relationship to any method step that is performed. As
such, the policy limitations of claims 2--4 correspond to printed matter that
does not serve to distinguish the claim.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms ofpatentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any
new and unobvious functional relationship between the printed matter and
the substrate."') (citations omitted).
The content of the specific policies does not affect the claim, because
the policy is not used in the broadest construction of claim 1. Moreover,
even if functional, the claimed policies differ from the prior art only in the
content of the policy information, which is not a patentable distinction. As a
result, the Appellants' claimed policy refinements do not distinguish the
claimed invention from the prior art.
It has been repeatedly held that an applicant cannot create a novel
product by attaching printed matter to it, even if that printed matter itself is
new. See, e.g., Ngai. Thus, adding instructions to a kit that describe a
method of using it does not make the kit patentable over the same kit with a
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different set of instructions. There are cases in which the descriptive
material can form a functional relationship with the underlying substrate.
For example, in In re Miller, the addition of printed matter to the outside of a
cup permitted an otherwise ordinary cup to be used like a measuring cup to
half recipes. In re Miller, 418 F.2d 1392, 1396 (CCPA 1969). The printed
matter in Miller served as a computing or mathematical recipe conversion
device permitting a cook to perform calculations automatically with no
further thought. However, the claim before us is more like the claim in Ngai
than Miller.
DECISION
We affirm the rejection of claims 1--4 under 35 U.S.C. § 101.
We affirm the rejection of claims 1--4 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)(l )(iv).
AFFIRMED
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