Ex Parte Godwin et al

Patent Trial and Appeal Board

Oct 14, 2016

11974064 (P.T.A.B. Oct. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111974,064 10/11/2007
20991 7590 10/14/2016
THE DIRECTV GROUP, INC.
PA TENT DOCKET ADMINISTRATION
CA I LAI I Al09
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
FIRST NAMED INVENTOR
John P. Godwin
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.
PD-200248B 3918
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
MAILDATE DELIVERY MODE
10/14/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. GODWIN and ROBERT G. ARSENAULT
Appeal2014-004128
Application 11/974,064
Technology Center 3600
Before ANTON W. PETTING, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
John P. Godwin and Robert G. Arsenault (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 28, 29, 31, 32, 35-37, 39, 40,
and 43, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
1 Our Decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed August 28, 2013) and Reply Brief ("Reply Br.," filed February
18, 2014), and the Examiner's Answer ("Ans.," mailed December 18, 2013)
and Final Office Action ("Final Act.," mailed March 28, 2013).
Appeal2014-004128
Application 11/974,064
The Appellants' invention is directed generally to a transmission
distribution system which conserves transmission bandwidth by
consolidating the broadcast of simultaneous common programming from a
number of different program streams comprising a number of input data
streams, onto a lesser number of broadcast resources by using a unique
mapping scheme while allowing the individual identity or other overlay of
each of the channels to be displayed at the user device. Spec. para. 27.
An understanding of the invention can be derived from a reading of
exemplary claim 28, which is reproduced below (bracketed matter and some
paragraphing added).
28. A method of revenue sharing between a plurality of local
affiliates and a primary affiliate comprising the steps of:
[ 1] providing a common signal to the plurality of local affiliates
and the primary affiliate,
wherein the common signal provided to the plurality of
local affiliates replaces a first signal otherwise provided to
the plurality of local affiliates
in response to determining there is substantially common
content between the first signal and the common signal;
[2] monitoring user viewership of the provided common signal;
and
[3] compensating the plurality of local affiliates
by dividing advertising revenue from the common signal
between the plurality of local affiliates and the primary
affiliate
according to the monitored user viewership.
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Appeal2014-004128
Application 11/974,064
The Examiner relies upon the following prior art:
Hane US 2004/0205829 Al
Stallworth US 2006/0117350 Al
Oct. 14, 2004
June 1, 2006
Claims 28, 29, 31, 32, 35-37, 39, 40, and 43 stand rejected under 35
U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention.
Claims 28, 29, 31, 32, 35-37, 39, 40, and 43 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hane and Stallworth.
ISSUES
The issues of indefiniteness tum primarily on whether one of ordinary
skill understands how to make a determination there is substantially
common content. The issues of obviousness tum primarily on whether the
limitations regarding determining substantially common content are
optional.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Hane
0 I .Hane is directed to integrating "national" and "local" broadcast
material in a manner that makes highly efficient use of
electromagnetic spectrum resources. More particularly, Hane
integrates the use of digital terrestrial broadcast facilities or other
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Appeal2014-004128
Application 11/974,064
local facilities for the delivery of local programming to
subscribers of national program networks distributed by direct
broadcast satellite operators. Hane para. 4.
02.Hane describes the integration of DBS systems and DTV systems
to deliver video and multimedia programming including local
content and, in particular, local advertising. Hane para. 35.
03.A DBS satellite broadcasts a plurality of program channels to a
network command server, a plurality of local command servers,
and to a plurality of receiving devices (also referred to herein as
end-user receiving devices or "EURD"). Program channels can
represent, for example, any of the program networks supplied by
most cable systems plus many others. Hane para. 36.
04.A network command server communicates with DBS satellite via
a DBS uplink. DBS satellite can also relay signals from network
command server to local command servers and receiving devices.
Network command server can include a program channel cue
monitor that monitors program channels. When program channel
cue monitor identifies an upcoming local program segment, it
forwards cue data (including time of the tone and the identity of
program channel) to network command server. Hane para. 37.
Stallworth
OS.Stallworth is directed to providing a national audience with media
content produced within and related to a specific geographic
terrain. Stallworth para. 2.
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Application 11/974,064
06. Stallworth describes the local media producers collecting fees for
advertisements featured in the block programming. The cable
network airing the block programming would receive payments
from either the local media producer or the advertisers.
Alternatively, a revenue sharing model in which the local media
producer and the cable network share revenues generated by the
block programming, for example, in the form of percentages of
revenues. Stallworth para. 45.
ANALYSIS
Claims 28, 29, 31, 32, 35-37, 39, 40, and 43 rejected under 35 US.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim
the invention
We are persuaded by Appellants' argument that a person of ordinary
skill in the art would readily appreciate the scope of the claimed invention.
App. Br. 8. The Examiner finds that the word "substantially" renders the
claims indefinite. Final Act. 2.
The limitation at issue is
providing a common signal to the plurality of local
affiliates and the primary affiliate, wherein the common signal
provided to the plurality of local affiliates replaces a first signal
otherwise provided to the plurality of local affiliates in response
to determining there is substantially common content between
the first signal and the common signal[.]
Claim 28. First, the step recited is providing a common signal, which does
not recite the word "substantially." Therefore, the actual step recited is not
part of the rejection. Second, the use of the word "substantially" occurs in a
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Application 11/974,064
wherein clause, and the actual criterion described again does not use the
word "substantially." Instead, the word "substantially" is used as part of the
object of a determination that is part of the wherein criterion.
The issue then is whether one of ordinary skill understands what it
means to make a determination there is substantially common content. The
answer when so framed is yes, as a determination is a yes or no decision in
such a context. Any manner of making a yes or no decision is within the
scope of this.
Precision or accuracy is not the issue. It does not matter whether one
of ordinary skill knows what substantially means, but only whether he
understands how to make a decision, right or wrong. Thus, the limitation is
extremely broad, but not indefinite.
Claims 28, 29, 31, 32, 35-37, 39, 40, and 43 rejected under 35 USC
§ 103 (a) as unpatentable over Hane and Stallworth
We are persuaded by Appellants' argument that the limitation
regarding determining there is substantially common content between the
first signal and the common signal is not optional. App. Br. 9-10. The
Examiner makes no finding that the art describes this, but finds a common
source rather than content. Final Act. 4. The Examiner goes on to find the
limitation is optional. Id. at 4--5. The claim explicitly recites that there is a
responsiveness to determining there is substantially common content
between the first signal and the common signal. Such response is not an
option, but an affirmative test with successful outcome for the common
content.
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Application 11/974,064
CONCLUSIONS OF LAW
The rejection of claims 28, 29, 31, 32, 35-37, 39, 40, and 43 under 35
U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention is improper.
The rejection of claims 28, 29, 31, 32, 35-37, 39, 40, and 43 under 35
U.S.C. § 103(a) as unpatentable over Hane and Stallworth is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 28, 29, 31, 32, 35-37, 39, 40, and43 are
rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of those
patent-ineligible concepts ..... If so, we then ask, "[ w ]hat else
is there in the claims before us? .... To answer that question,
... consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application .... [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1294, 1296-98 (2012)).
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Application 11/974,064
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 28 recites that it is a method of revenue
sharing. The three steps in claim 28 result in dividing revenue. The
Specification at paragraph 27 recites that the invention relates to television
distribution. Aside from Specification paragraph 72 and originally filed
claim 27, the Disclosure has little to do with the claims in the instant
application. The Specification at paragraph 72 recites that the invention
relates to a novel means for compensating local affiliates and originally field
claim 27 is a method of revenue sharing. These appear to be the sole
support for the current claims. Thus; all this evidence shows that claim 28 is
directed to revenue sharing, i.e., payment for services.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of revenue sharing is a fundamental business
practice long prevalent in our system of commerce. The use of revenue
sharing is also a building block of partnerships. Thus, revenue sharing, like
hedging, is an "abstract idea" beyond the scope of§ 101. See Alice, 134 S.
Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
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risk hedging in Bilski and the concept of revenue sharing at issue here. Both
are squarely within the realm of "abstract ideas" as the Court has used that
term. See Alice, 134 S. Ct. at 2357.
The remaining claims merely describe generic information for
monitoring, who gets the signal for revenue sharing, and selecting channels
for monitoring. We conclude that the claims at issue are directed to a patent-
ineligible concept.
Taking the claim elements separately, the function performed at each
step of the process is purely conventional. Providing a signal, monitoring
viewership, and sharing revenue are common place television industry
activities. All of these functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than perform generic television industry functions.
Considered as an ordered combination, the steps add nothing that is
not already present when the steps are considered separately. Viewed as a
whole, Appellants' method claims simply recite the concept of sharing
television revenue. The method claims do not, for example, purport to
improve the functioning of the television transmission itself. Nor do they
effect an improvement in any other technology or technical field. Instead,
the claims at issue amount to nothing significantly more than an instruction
to apply the abstract idea of revenue sharing using some unspecified, generic
television transmission. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
As to the structural claims, they
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Application 11/974,064
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
... ; the system claims recite a handful of generic ... components
configured to implement the same idea. This Court has long
"warn[ ed] . . . against" interpreting § 101 "in ways that make
patent eligibility 'depend simply on the draftsman's art.'
Alice, 134 S. Ct. at 2360 (internal citation omitted). Although claims 36, 37,
39, 40, and 43 use mean plus function limitations, the means for providing a
signal is a conventional satellite and no structure is recited in the
Specification at paragraph 72 to support the means for monitoring and
compensating. 2 Using a conventional satellite for its intended purpose was a
well-established "basic concept." See In re TL! Comm. LLC Patent Litig.,
823 F.3d 607, 612-613 (Fed. Cir. 2016). (Using a generic telephone for its
intended purpose was a well-established "basic concept" sufficient to fall
under Alice step 1.)
DECISION
The rejections of claims 28, 29, 31, 32, 35-37, 39, 40, and 43 are
reversed.
The following new ground of rejection is entered pursuant to
37 C.F .R. § 41.50(b ). Claims 28, 29, 31, 32, 35-37, 39, 40, and 43 are
rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Our decision is not a final agency action.
2 Paragraph 72 is the sole portion of the Specification cited for support.
App. Br. 4--5.
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Application 11/974,064
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under §41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure§ 1214.01 (9th
ed. Rev. 07.2015, Nov. 2015).
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Appeal2014-004128
Application 11/974,064
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) (2011).
REVERSED; 37 C.F.R. § 41.50(b)
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