Ex Parte Fein et al

Patent Trial and Appeal Board

Nov 9, 2018

11618014 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/618,014 12/29/2006
73552 7590 11/14/2018
Schwabe, Williamson & Wyatt/SFC
1211 SW Fifth Ave.
Suite 1900
Portland, OR 97204
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gene S. Fein
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.
9663-0007 5167
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
IPDocketing@SCHWABE.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GENES. FEIN and EDWARD MERRITT
Appeal2017-001564
Application 11/618,014
Technology Center 3600
Before JOHNNY A. KUMAR, HUNG H. BUI, and
CARL L. SILVERMAN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-30, and 32-38, which are all of
the pending claims. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants indicate the real party in interest is CUFER ASSET LTD.
L.L.C. App. Br. 3.
Appeal2017-001564
Application 11/618,014
Illustrative Claim
Illustrative claims 1 and 18 under appeal read as follows:
1. A computer implemented method, comprising:
establishing a connection between a particular electronic
device and a server configured to provide distribution of a
plurality of different media types;
determining, by the server, a compatibility of the
particular electronic device with the different media types
according to which of the different media types the particular
electronic device is configured to execute;
identifying, by the server, media types that are
compatible with the particular electronic device;
transmitting, by the server, one or more representations
of compatible media content to the particular electronic device
in response to identifying the compatible media types, wherein
the one or more representations are displayed on a user
interface residing on the particular electronic device to enable
user selection of the compatible media content;
determining, by the server, an additional media type that
is provided by the server for distribution, wherein the additional
media type is not compatible with the particular electronic
device;
upgrading, by the server, the particular electronic device
to be compatible with the additional media type in response to
determining the additional media type, wherein the upgraded
particular electronic device is configured to execute the
additional media type in response to being upgraded;
transmitting, by the server, one or more representations
of additional media content associated with the additional
media type to the upgraded particular electronic device,
wherein the user interface is updated to display the
representations of the additional media content;
receiving, from the upgraded particular electronic device,
a user request for distribution of the additional media content to
the upgraded particular electronic device; and
transmitting, by the server, the additional media content
to the upgraded particular electronic device in response to
receiving the user request.
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Application 11/618,014
18. A memory device having instructions stored thereon
that,
in response to execution by a processing device, cause the
processing device to perform operations comprising:
establishing a connection with a particular electronic
device and;
determining a compatibility of the particular electronic
device with different media types according to which of the
different media types the particular electronic device is
configured to execute;
identifying media types that are compatible with the
particular electronic device;
determining an additional media type from the different
media types, wherein the additional media type is not
compatible with the particular electronic device;
upgrading the particular electronic device to be
compatible with the additional media type in response to
determining the additional media type, wherein the upgraded
particular electronic device is configured to execute the
additional media type in response to being upgraded;
updating the the [sic] determined capability to include the
additional media type;
transmitting data identifying additional media content
associated with the additional media type to the upgraded
particular electronic device, wherein the user interface is
updated to display one or more representations of the additional
media content;
receiving, from the upgraded particular electronic device,
a user request for distribution of the additional media content;
locating the additional media content from a plurality of
storage modules associated with the processing device in
response to receiving the user request; and
transmitting the additional media content.
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Appeal2017-001564
Application 11/618,014
Rejections
A.
The Examiner rejects claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-
30, and 32-38 under 35 U.S.C. § 101 because "the claimed invention is
directed to non-statutory subject matter." Final Act. 2--4.
As to this rejection, our decision as to the § 101 rejection of claim 18
is determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 1, 3, 4, 6-8, 11, 14, 22, 23, 25, 27-30, and 32-38.
B.
The Examiner rejects claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-
30, and 32-38 under 35 U.S.C. § I03(a) as being unpatentable over the
combination of Wiser et al., (US 6,868,403 Bl, issued Mar. 15, 2005)
(hereinafter "Wiser"), Spencer et al., (US 2003/0014630 Al, published Jan.
16, 2003) (hereinafter "Spencer"), and Chatani (US 7,076,467 Bl, issued
July 11, 2006). Final Act. 5-13.
Appellants present arguments for independent claims 1, 18, and 34.
App. Br. 15-16. As to this rejection, our decision as to the § 103 rejection
of claim 1 is determinative as to the § 103 rejection of all the claims.
Therefore, except for our ultimate decision, we do not discuss further herein
the§ 103 rejection of claims 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-30, and 32-
38.
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Application 11/618,014
Issues on Appeal
Has the Examiner erred in rejecting claim 18 as being directed to
patent-ineligible subject matter?
Has the Examiner erred in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. Mayo/Alice Analysis under 35 US. C. § 1 OJ
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
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If the claims are not directed to a patent-ineligible concept, the inquiry ends.
See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir.
2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
B. Examiner's§ 101 Determination
Applying step 1 of the Alice/Mayo analysis, the Examiner determines:
the claims are directed towards upgrading an electronic device
to ensure that the device is compatible with the media type
facilitating a media execution by the updated device executable
programs, and tracking the user requests. Further, the claims
recite a method for establishing a connection between devices,
determining the compatibility between the devices, identifying
and transmitting compatible media content files, upgrading the
device with media type executable if the media type is not
compatible so the device can play the media type after the
upgrading, which is similar to concepts identified as abstract
ideas by the courts such as collecting and comparing known
information (Classen), process of organizing information,
storing and transmitting information (Cyberfone) and data
recognition and storage (Content Extraction) and thus, the
claims include an abstract idea.
Ans. 3.
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B. Appellants'§ 101 Arguments2
Appellants raise the following arguments in contending that the
Examiner erred in rejecting claim 1 as being directed to patent-ineligible
subject matter because:
the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks.
For example, claim 18 recites upgrading the particular
electronic device to be compatible with the additional media
type in response to determining the additional media type,
wherein the upgraded particular electronic device is configured
to execute the additional media type in response to being
upgraded. Independent claims 1 and 34 recite similar features.
As a result of the upgrade, the functioning of the electronic
device is improved so that it is able to execute the additional
media type after being upgraded.
App. Br. 13-14.
C. Panel's§ 101 Analysis
According to the Federal Circuit, the first-stage filter in the§ 101
analysis - is a meaningful one, sometimes ending the § 101 inquiry. See
Visual Memory LLC, 867 F .3d at 1262 ( citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); see also Enfzsh, 822
F.3d 1327; Thales, 850 F.3d at 1347. "In this regard, [the panel] must
articulate with specificity what the claims are directed to ... and 'ask
2 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellants' other§ 101
contentions herein.
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whether the claims are directed to an improvement to computer functionality
versus being directed to an abstract idea'." Id. (citing Enfzsh, 822 F.3d at
1335) ("[S]ome improvements in computer-related technology when
appropriately claimed are undoubtedly not abstract, such as a chip
architecture, an LED display, and the like."). The key question is "whether
the focus of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database [in
Enfzsh])." Id. (citing Enfzsh, 822 F.3d at 1335-36).
Claim 18, and similarly claims 1 and 34, recites "upgrading the
particular electronic device to be compatible with the additional media type
in response to determining the additional media type, wherein the upgraded
particular electronic device is configured to execute the additional media
type in response to being upgraded." The focus of Appellants' claims 1, 18,
and 34 is to improve the functionality of an electronic device, particularly,
upgrading the electronic device to be compatible with different types of
media content in the event that particular electronic device is unable to
receive and process additional media type that is not compatible with the
particular electronic device. Spec. 5:8-19. Based on that focus, we
determine Appellants' claims are directed to an improved computer system
(i.e., electronic device), and not an abstract idea of upgrading an electronic
device.
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Application 11/618,014
In addition, although the Examiner cites to the decisions in Classen, 3
Cyberfone,4 and Content Extraction,5 the Examiner fails to explain the
relevancy of these decisions to the claimed invention. In particular, claim 18
does not recite "collecting and comparing known information," "organizing
information, storing and transmitting information," or "data recognition and
storage." Thus, we fail to see any particular relevance as to the Examiner's
citations as the subject matter of Appellant's claim 18 is not directed to any
abstract idea of these decisions.
As such, we agree with Appellants that the claims are not directed to
an abstract idea under Alice step 1. If the claims are not directed to a patent-
ineligible concept, we need not address Alice step 2. See Visual Memory
LLC, 867 F.3d at 1262.Accordingly, for at least these reasons, we are
constrained on this record to reverse the Examiner's rejection under
35 U.S.C. § 101 of claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-30, and 32-
38, as being purportedly directed to patent-ineligible subject matter in light
of Alice and its progeny.
3 Classen Immunotherapies, Inc. v. Elan Pharms, Inc., 786 F.3d 892 (Fed.
Cir. 2015).
4 Cybeifone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988
(Fed. Cir. 2014).
5 Content Extraction and Transmission LLC v. Wells Fargo Banks, Nat.
Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014).
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Application 11/618,014
D. Panel's§ 103 Analysis6
The issue is whether the Examiner erred in finding that the
combination of Wiser, Spencer, and Chatani teaches the limitation of
"determining, by the server, an additional media type that is provided by the
server for distribution, wherein the additional media type is not compatible
with the particular electronic device," and "upgrading, by the server, the
particular electronic device to be compatible with the additional media type
in response to determining the additional media type" as recited in
independent claim 1. Independent claims 18 and 34 recite commensurate
limitations.
We tum to Appellants' Specification to ascertain the meaning of the
terms "upgrading" as recited in claim 1, because the Specification is the
single best guide as to the meaning of a disputed term.
The claims, of course, do not stand alone. Rather, they are part
of "a fully integrated written instrument" consisting principally
of a specification that concludes with the claims. For that reason,
claims "must be read in view of the specification, of which they
are a part." ... [T]he specification "is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term."
Phillips v. AWHCorp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (citations
omitted).
Appellants' Specification on page 5, lines 8-23 describes:
The variety of media content available for selection via
the general user interface 170 for the network may include
music, ring tones, feature films, live and cached television
programs, software programs and applications, radio programs
and other textual, graphical, audio, video and audiovisual
6 The contentions we discuss are determinative as to the § 103 rejections on
appeal, so we do not discuss Appellant's other § 103 contentions herein.
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Application 11/618,014
content. The general user interface 170 may also be custom
branded for distribution, hardware or content partners. The
individual electronic devices 105a-105e may run software
interfaces that are programmed to work with the capabilities of
the device. For instance, if certain portable devices do not play
video content, then only textual and audio content options
will appear on the interface, which may be updated later via
download to accommodate an upgraded device that now
accepts video. Different interfaces will also require different
download options via a menu selection to download the right
interface for the right device. Specific interfaces may suit the
screen size, functionality, technical and billing demands of the
device, network partners and software and content partners.
The interface and content download system is also be
configured for specific device requirements utilizing the
specifications made available by the device API's and
compatible software formats such as Pocket PC and Symbian
among many others.
(Emphasis added).
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Even assuming, arguendo, that the Examiner's
characterization of Spencer is proper in alleging that the
particular type of programming language used might facilitate
forwards and backwards compatibility, Appellant respectfully
submits that this would not render obvious the features recited
by claim 1, namely determining, by the server, an additional
media type that is provided by the server for distribution,
wherein the additional media type is not compatible with the
particular electronic device, and upgrading, by the server, the
particular electronic device to be compatible with the
additional media type in response to determining the additional
media type. Rather, as discussed above, Spencer describes that
the devices would simply issue an error message when faced
with incompatible media content, rather than be upgraded.
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Reply Br. 5-6.
Here, the Examiner relies upon Spencer to teach or suggest the argued
limitation. See Ans. 5-6. Therefore, our discussion will be limited thereto.
Specifically, Spencer relates to downloading of audio files through a
computer network. See Spencer ,r 1. However, the Examiner has not shown
that Spencer teaches upgrading an electronic device if that particular
electronic device is not capable of processing video content that is not
compatible. In addition, the Examiner has not shown that Wiser and Chatani
make up for the deficiencies of Spencer.
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments.
We are therefore constrained by the record before us to find that the
Examiner erred in rejecting independent claims 1, 18, and 34 and dependent
claims 3, 4, 6-8, 11, 14, 22, 23, 25, 27-30, and 32-33, and 35-38 for similar
reasons.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-30, and 32-38 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
(2) Appellants have established that the Examiner erred in rejecting
claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-30, and 32-38 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25, 27-30, and 32-38 have
not been shown to be unpatentable.
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Application 11/618,014
DECISION
The Examiner's rejection of claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25,
27-30, and 32-38 under 35 U.S.C. § 101, as being directed to patent-
ineligible subject matter is reversed.
The Examiner's rejection of claims 1, 3, 4, 6-8, 11, 14, 18, 22, 23, 25,
27-30, and 32-38 as being unpatentable under 35 U.S.C. § 103(a) is
reversed.
REVERSED
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