Ex Parte Drake et al

Patent Trial and Appeal Board

Oct 31, 2018

14301237 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/301,237 06/10/2014
63649 7590 11/02/2018
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Edward C. Drake
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.
0260395 3990
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD C. DRAKE and JEFFREY A. STEELE
Appeal2017-007335
Application 14/301,23 71
Technology Center 3600
Before ELENI MANTIS-MERCADER, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to digital purchase transfers between
separate retailers. Spec. 2:2--4. Claim 1 ( emphasis added) is illustrative of
the invention and is reproduced below:
1. A user device comprising:
a memory storing a receipt for a media content purchased
from a first retailer; and
a processor configured to:
1 According to Appellants, Disney Enterprises, Inc. is the real party in
interest. App. Br. 2.
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Application 14/301,237
retrieve the receipt for the media content from the
memory;
transmit the receipt to a redemption server, wherein the
redemption server includes a plurality of media redemption
tokens, and wherein each of the media redemption tokens is
associated with an entitlement corresponding to one of a plurality
of media contents including the media content;
receive one of the plurality of media redemption tokens
from the redemption server in response to the transmitting of the
receipt to the redemption server;
transmit the one of the plurality of media redemption
tokens received from the redemption server to a second retailer;
and
receive the media content from the second retailer in
response to the transmitting of the one of the plurality of media
redemption tokens to the second retailer, wherein the one of the
plurality of media redemption tokens is associated with the
entitlement corresponding to the media content.
REJECTIONS AT ISSUE2
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception, without significantly more. Final Act. 5---6.
Claims 1, 3-8, 11-14, and 16-20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Fomenko (US 8,639,630 B2;
issued Jan. 28, 2014) and Lee (US 2013/0347044 Al; published Dec. 26,
2013). Final Act. 6-11.
2 The Examiner rejected claims 8-20 under 35 U.S.C. § 112(b). Final Act.
4--5. However, in the Advisory Action mailed September 27, 2016, the
Examiner states "[t]he after final amendments will be entered because they
overcome the 112(b) rejection." We, therefore, consider the rejection under
35 U.S.C. § 112(b) to be withdrawn.
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Application 14/301,237
Claims 2, 3, 3 9, 10, and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Fomenko, Lee, and Jaini (US
2014/0372255 Al; filed June 12, 2013). Final Act. 12-13.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
Rejections of Claims 1-20 under 35 U.S.C. § 101
The Examiner concludes claims 1-20 are directed to an abstract idea
such as using categories to organize, store, and transmit information similar
to Cyberfone Sys., LLC v. CNN Interactive Grp., Inc. 558 Fed. Appx. 988
(2014). Final Act. 5. In addition, the Examiner concludes the present claims
are directed to an abstract idea such as comparing new and stored
information and using rules to identify options similar to SmartGene, Inc. v.
Advance Biological Labortories, SA 555 Fed. Appx. 950 (2014). Id.
Additionally, the Examiner concludes the present claims are directed to an
abstract idea such as displaying an advertisement in exchange for access to
3 Claim 3 depends from claim 2. App. Br. 20 (Claims Appendix). The
Examiner rejects claim 2 under 35 U.S.C. § 103 as being unpatentable over
the combination of Fomenko, Lee, and Jaini. Final Act. 12-13. However,
the Examiner rejects claim 3 under 35 U.S.C. § 103 as being unpatentable
over the combination of Fomenko and Lee. Final Act. 7-8. We consider
the Examiner's grouping in the rejection of claim 3 as an inadvertent
typographical error. We, therefore, construe the rejection of claim 3 to be
rejected under 35 U.S.C. § 103 as being unpatentable over the combination
of Fomenko, Lee, and Jaini.
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Application 14/301,237
copyrighted media such as Ultramercial, Inc. and Ultramercial, LLC v.
Hulu, LLC and Wildtangent, Inc. 772 F.3d 709 (2014). Id. And the
Examiner concludes the present claims are directed to data retrieving,
transmitting, and receiving similar to data collection and management
concepts in Content Extraction and Transmission L.L.C. v. Wells Fargo
Bank, National Association, 776 F.3d 1343 (Fed. Cir 2014), TL!
Communications LLC Patent Litigation v. AV Automotive, L.L. C. 823 F .607
(2017), and Elec. Power Gp., LLC v. Alstom, 830 F.3d 1350 (Fed. Cir.
2016). Ans. 3. The Examiner concludes unlike Enfzsh, LLC v. Microsoft
Corporation, 822 F.3d 1327 (2016), the present claims merely use the
computer as a tool that performs the abstract concepts. Id.
The Examiner concludes the additional elements recited in the present
claims do not amount to significantly more than the judicial exception
because they are generic components that are well-understood, routine, and
conventional. Final Act. 6; Ans. 3. Also, the Examiner concludes the
claims do not purport to improve the functioning of the computer itself, any
other technology, or another technical field to amount to significantly more
than the abstract idea. Final Act. 6.
Appellants argue the present claims are not directed to an abstract idea
because they are similar to the claims in Enfzsh in that the present claims
overcome the problem of an inability of consumers who have purchased
media content online to access the same media content through another
retailed. App. Br. 7-11. Moreover, Appellants argue the present claims
amount to significantly more than an abstract idea because there is no
preemption. Id. at 11-12. Further, Appellants argue the present claims
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are significantly more than an abstract idea because they are directed to a
specific way of enabling a user device to purchase media content from one
retailer, and obtain access to the same media content through another
retailer. Id. at 12. We disagree with Appellants.
Following the decision in Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134
S. Ct. 2347 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 82-84 (2012)), we analyze claims where the abstract idea
judicial exception to the categories of statutory subject matter is at issue
using the following two-part analysis set forth in Mayo: 1) determine
whether the claim is directed to an abstract idea; and 2) if an abstract idea is
present in the claim, determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices; 4 certain
methods of organizing human activities; 5 "[a]n idea ofitself'; 6 and,
mathematical relationships or formulas. 7 Claims that include abstract ideas
4 Alice, 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use of a
third party intermediary to mitigate settlement risk.
5 Id. at 2356: e.g., a series of steps instructing how to hedge risk (citing
Bilski v. Kappas, 561 U.S. 593, 599 (2010)).
6 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972); Le Roy v. Tatham, 14 How. 156, 175
(1852)).
7 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Gottschalk, 409 U.S. at 71-72).
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like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: improvements to another
technology or technical field; 8 improvements to the functioning of the
computer itself; 9 and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 10
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea; 11 mere instructions to implement an
abstract idea on a computer; 12 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 13
8 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
9 Id. at 2359.
10 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
11 Id. at 2357-58.
12 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
13 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
Alice Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that claims 1-20 are directed to an abstract idea, and we therefore
agree with and adopt the Examiner's conclusions. Final Act. 5---6; Ans. 3.
Additionally, we note the present claims are also directed to an abstract idea
similar to the abstract idea in Affinity Labs of Texas, LLC v. Amazon.com,
Inc., 838 F.3d 1266, 1269. In Affinity Labs, the Federal Circuit held that
delivering user-selected media content that a user has a right to access to the
user's device from an appropriate network location is an abstract idea. Id.
In this case, the present claims are directed to delivering user-selected media
content that a user has a right to access to the user's device from an another
network provider (i.e., another network location), which is an abstract idea.
Regarding Appellants' argument that the present claims are not
directed to an abstract idea because they are directed to an improvement
overcoming the problem of an inability of consumers who have purchased
media content online to access the same media content through another
retailed (App. Br. 7-11), we disagree. We disagree because the present
claims are an abstraction similar to Affinity Labs that happen to use a
computer as a tool that performs the abstract concepts, but does not improve
the underlying technology. Stated differently, just because there may be an
improvement to an abstraction does not mean that the abstract idea is an
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improvement to the underlying technology. Because the present claims are
directed to an abstract idea, we proceed to step (2) of the Alice, two-part test.
Alice Step 2
On this record, we see no error in the Examiner's analysis and
conclusion that claims 1-20 do not amount to significantly more than the
abstract idea. Final Act. 5---6; Ans. 3. We also agree with the Examiner
conclusion that the additional elements recited in the present claims are
generic components that are well-understood, routine, and conventional.
Final Act. 6; Ans. 3.
Appellants refer to Figure 2--4 and the corresponding disclosure in the
Specification to provide subject matter support for the structural limitations.
App. Br. 3-5. The Specification states "processor 212 refers to a general
processor," "processor 337 refers to a general processor," and "flowchart
400 is described with respect to Figure 2." Spec. 10: 15-16, 16: 17-18, 20:3-
5. And the Specification states "[m]emory 215 may be ... any sufficient
memory capable of storing a set of commands," "[ m ]emory 33 5 may be ...
any sufficient memory capable of storing a set of commands," and
"flowchart 400 is described with respect to Figure 2." Spec. 10: 17-19,
16:19-21, 20:3-5. We, therefore, conclude the components recited in the
present claims are generic components. Alice at 23 59.
Regarding Appellants argument that the present claims amount to
significantly more than an abstract idea because there is no preemption
(App. Br. 11-12), while preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
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addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
We also disagree with Appellants' argument (App. Br. 12) that the
present claims are significantly more than an abstract idea because they are
directed to a specific way of enabling a user device to purchase media
content from one retailed, and obtain access to the same media content
through another retailer. We disagree because, as stated above, the
components recited in the present claims are generic components
implementing an abstract idea. Alice, 134 S. Ct. at 2359; Spec. 10:15-16,
16: 17-18, 20:3-5.
Accordingly, for the reasons stated supra, we sustain the Examiner's
rejection of: (1) independent claims 1, 8, and 14; and (2) dependent claims
2-7, 9-13, and 15-20 under 35 U.S.C. § 101.
Rejections of Claims 1-7 and 14--20 under 35 U.S.C. § 103
The Examiner finds Lee teaches a first device transmits a token to a
second retailer, which the Examiner maps to the limitation
transmit the one of the plurality of media redemption tokens
received from the redemption server to a second retailer; and
receive the media content from the second retailer in response to
the transmitting of the one of the plurality of media redemption
tokens to the second retailer
as recited in claim 1 ( and similarly recited in claim 14 ). Ans. 5 ( citing Lee
,r,r 127, 193, 197, Figs. 15, 18).
Appellants argue Lee fails to teach or suggest that a "user device" that
"transmit[ s] the one of the plurality of media redemption tokens received
from the redemption server to a second retailer" is the same user device that
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"receive[ s] the media content from the second retailer in response to the
transmitting of the one of the plurality of media redemption tokens to the
second retailer" as recited in claim 1. App. Br. 16; Reply Br. 2-3.
Moreover, Appellants argue Lee's second device D2 transmits a right token
to a second retailer, but does not receive corresponding content in response
to transmitting the right token. Reply Br. 2. According to Appellants, Lee
teaches a handover transaction between first device D 1 authorizing a retailer
to provide content to second device D2. Id. at 2-3. We agree with
Appellants.
The cited portions of Lee teach first device D 1 authorizing a retailer to
provide content to second device D2. Ans. 5 (citing Lee ,r,r 127, 193, 197,
Figs. 15, 18); Final Act. 7-8 ( citing Lee ,r,r 224, 226). However, the cited
portions of Lee fail to teach or suggest a "user device" that "transmit[ s]
the one of the plurality of media redemption tokens received from the
redemption server to a second retailer" is the same user device that
"receive[ s] the media content from the second retailer in response to the
transmitting of the one of the plurality of media redemption tokens to the
second retailer" as recited in claim 1. Lee ,r,r 127, 193, 197,224,226, Figs.
15, 18.
Accordingly, we do not sustain the Examiner's rejection of:
(1) independent claims 1 and 14; and (2) dependent claims 2-7 and 14--20 14
under 35 U.S.C. § 103.
14 We do not sustain the Examiner's rejection of claim 16 for an additional
reason. That is, although the Examiner includes claim 16 in the heading of
the rejection, the Examiner does not include a rejection of claim 16 in the
body of the rejection. Compare Final Act. 7 (the heading includes claim 16)
with id. at 7-11 (the body of the rejection omits a rejection of claim 16).
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Rejections of Claims 8--13 under 35 U.S.C. § 103
Appellants argue Lee teaches first device D 1 sends a request to a
second retailer, but Lee's token transmission from first device DI to a
second retailer does not include a right token. App. Br. 15 (citing Lee
,r,r 224--226, Fig. 18). Moreover, Appellants argue independent claim 8 is
allowable for at least the same reasons as claims 1 and 14 are allowable.
App. Br. 16-17. We disagree with Appellants.
Appellants' persuasive arguments pertaining to independent claims 1
and 14 do not apply to independent claim 8. Specifically, we note that claim
8 does not recite the user device transmitting a token to a second retailer.
Therefore, "[A]ppellant's arguments fail from the outset because ... they
are not based on limitations appearing in the claims." See In re Self, 671
F.2d at 1348 (CCPA 1982).
Accordingly, we sustain the Examiner's rejection of: (1) independent
claim 8; and (2) dependent claims 9-13 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-7 and 14--20
under 35 U.S.C. § 103.
We affirm the Examiner's decision rejecting claims 8-13 under
35 U.S.C. § 103.
We, therefore, conclude the Examiner fails to establish a prima facie basis of
obviousness pertaining to claim 16.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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