Ex Parte Kister

Patent Trial and Appeal Board

Jul 31, 2018

13831096 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/831,096 03/14/2013
43471 7590
ARRIS Enterprises, LLC
Legal Dept - Docketing
101 Tournament Drive
HORSHAM, PA 19044
08/02/2018
FIRST NAMED INVENTOR
Thomas F. Kister
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.
CS39990 2041
EXAMINER
PRATT, EHRINLARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
arris.docketing@arris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS F. KISTER
Appeal2017-004488
Application 13/831,096
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1-12 and 14--18. Claim 13 has been
canceled. See App. Br. 12 (Claims App.). We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is ARRIS Enterprises.
App. Br. 3.
Appeal2017-004488
Application 13/831,096
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to the automated transfer of a
unique identifier of a consumer electronics device during a registration
process for registering the consumer electronics device with an external
entity. See Spec., Abstract. Claim 1, which is illustrative, reads as follows:
1. A method comprising
initiating, in one or more computer processors, registration
of a consumer electronics device (CED) with an external entity,
wherein the CED is associated with a consumer, and the CED
does not have ability to complete the registration with the
external entity by itself;
obtaining, using the one or more computer processors, a
unique identification for the CED; and
providing, by the one or more computer processors, the
unique identification to the external entity in order to complete
the registration of the CED, wherein the registration includes:
registering the unique identification of the CED,
and
associating the CED with a subscriber account of
the external entity, whereby the consumer is provided
access as a subscriber to one or more of content and
services.
References
The Examiner relies on the following prior art in rejecting the claims:
Sherman et al.
Ahmed
Choi
Rubio
US 2009/0078760 Al
US 2012/0169856 Al
US 8,650,097 B2
EP 2 485 459 Al
2
Mar. 26, 2009
July 5, 2012
Feb. 11, 2014
Aug. 8, 2012
Appeal2017-004488
Application 13/831,096
Rejections
(1) Claims 1-12 and 14--18 stand rejected under 35 U.S.C. § 101 as
directed to judicially-excepted subject matter under 35 U.S.C. § 101. Final
Act. 2--4.
(2) Claims 1---6, 8, 10-12, 14, 15, and 17 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Sherman and
Choi. Final Act. 5-12.
(3) Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sherman, Choi, and Rubio.
Final Act. 12-13.
(4) Claims 9 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Sherman, Choi, and Ahmed.
Final Act. 13-14.
ANALYSIS
Rejection under 35 U.S.C. § 101
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. 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,
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natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these 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. The inquiry
often is whether the claims are directed to "a specific means or method" for
improving technology or whether they are simply directed to an abstract
end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311,
1314 (Fed. Circ. 2016). If the claims are not directed to a patent-ineligible
concept, the inquiry ends. Otherwise, the inquiry proceeds to the second
step, where 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 79-80, 1297). We, therefore,
look to whether the claims focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
The Examiner finds the claims are directed to the abstract idea of
"initiating registration with an external entity, wherein a consumer
[electronics device] does not have [the] ability to complete the registration
with the external entity by itself." Final Act. 2 (underlining omitted). The
Examiner further finds that the additional elements recited in the claims are
not sufficient to amount to significantly more than the abstract idea. Final
Act. 3--4.
Appellant argues the claims are not directed to an abstract idea
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because "[t]he claims recite improvements involving traditional areas of
computer technology." App. Br. 5. Appellant further argues the claims
"both implicitly and expressly require the use of a computing device, and
cannot be performed purely mentally." App. Br. 6; see also Reply Br. 2, 4.
Appellant's arguments are not persuasive. We agree with the
Examiner that the claims are directed to a patent-ineligible abstract concept
of initiating registration of a consumer electronics device with an external
entity. Final Act. 2. All the steps recited in Appellant's independent claims
1 and 15, including, for example: (i) "initiating ... registration of a
consumer electronics device (CED) with an external entity"; (ii) obtaining
... a unique identification for the CED"; (iii) providing ... the unique
identification to the external entity in order to complete the registration of
the CED; (iv) "registering the unique identification of the CED"; and (v)
"associating the CED with a subscriber account of the external entity" are
abstract processes of collecting, storing, and analyzing information of a
specific content. Information, as such, is intangible. See Microsoft Corp. v.
AT & T Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and
analysis, including when limited to particular content, is within the realm of
abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Turning to the second step of the Alice inquiry, we find nothing in
Appellant's claims that adds anything "significantly more" to transform the
abstract concept of collecting, storing, and analyzing information into a
patent-eligible application. Alice, 134 S. Ct. at 2357. Limiting such an
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abstract concept of initiating registration of a consumer electronics device
with an external entity to a general purpose computer having generic
components such as "one or more computer processors" recited in
Appellant's claims 1 and 15 does not make the abstract concept patent-
eligible under 35 U.S.C. § 101. As recognized by the Supreme Court, "the
mere recitation of a generic computer cannot transform a patent ineligible
abstract idea into a patent-eligible invention." See Alice, 134 S. Ct. at 2358
( concluding claims "simply instruct[ing] the practitioner to implement the
abstract idea of intermediated settlement on a generic computer" not patent
eligible); see also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed.
Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible" (internal citation omitted)).
We are also not persuaded by Appellant's arguments that the claims
are similar to the claims in BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) because they are directed to
computer-related technology and improve upon existing technological
processes. Reply Br. 2--4. The Federal Circuit has held that "receiving
transmitted data over a network and displaying it to a user merely implicates
purely conventional activities that are the 'most basic functions of a
computer."' Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1331 (Fed. Cir. 2017) (quoting Alice, 134 S. Ct. at2359). Put another way,
"[a]n abstract idea on 'an Internet computer network' or on a generic
computer is still an abstract idea." BASCOM, 827 F.3d at 1348. We agree
with the Examiner that the claims neither address a technical problem nor
provide a technical solution, but merely recite limitations directed to the
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application of an abstract idea on a computer. "We have repeatedly held that
such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea." Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016) (quotation omitted).
Here, the claims merely obtain a unique identification for a consumer
electronics device and provide the unique identification to an external entity.
As the Federal Circuit has held, "the practices of collecting, analyzing, and
displaying data, with nothing more, are practices whose implicit exclusion
from § 101 undergirds the information-based category of abstract ideas."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097-98 (Fed. Cir.
2016) (quotation omitted); see also CyberSource, 654 F.3d at 1370 ("mere
data-gathering steps cannot make an otherwise nonstatutory claim
statutory") ( quotation omitted).
Because Appellant's claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection claims 11-
12 and 14--18 under 35 U.S.C. § 101 as being directed to judicially-excepted
subject matter in light of Alice and its progeny.
Rejections under 35 U.S. C. § 103 (a)
Appellant contends the combination of Sherman and Choi fails to
teach or suggest "providing, by the one or more computer processors, the
unique identification to the external entity in order to complete the
registration of the CED, wherein the registration includes: registering the
unique identification of the CED, and associating the CED with a subscriber
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account of the external entity, whereby the consumer is provided access as a
subscriber to one or more of content and services," as recited in claim 1.
App. Br. 7. Appellant argues the disputed limitations "constitute[] a feature
that is absent from the proposed combinations [ of cited references]." App.
Br. 7. However, Appellant does not address the Examiner's findings and
offers no explanation or reasoning as to how or why the cited references fail
to teach or suggest the disputed limitations. Therefore, Appellant's
argument is unpersuasive. See 37 CPR§ 4I.37(c)(l)(iv) ("The arguments
shall explain why the examiner erred as to each ground of rejection
contested by [ A ]ppellant. . . . [ A ]ny arguments or authorities not included in
the appeal brief will be refused consideration by the Board for purposes of
the present appeal.") ( emphasis added.) Moreover, arguments not made are
deemed waived. See id; cf In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an [ A ]ppellant, looking for nonobvious
distinctions over the prior art.").
Accordingly, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of claim 1 and claims 2-12 and 14--18, which are not separately
argued with particularity. See App. Br. 7-8.
DECISION
We affirm the Examiner's rejection of claims 1-12 and 14--18 under
35 U.S.C. § 101.
We affirm the Examiner's rejection of claims 1-12 and 14--18 under
35 U.S.C. § 103(a).
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Application 13/831,096
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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