Ex Parte KnightDownload PDFPatent Trial and Appeal BoardDec 8, 201410846544 (P.T.A.B. Dec. 8, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/846,544 05/17/2004 Andrew F. Knight 018 3561 42067 7590 12/08/2014 Andrew Knight 1 Walnut Street Lewiston, ME 04240 EXAMINER COBURN, CORBETT B ART UNIT PAPER NUMBER 3714 MAIL DATE DELIVERY MODE 12/08/2014 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 ANDREW F. KNIGHT ____________ Appeal 2011-011141 Application 10/846,5441 Technology Center 3700 ____________ Before EDWARD A. BROWN, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andrew F. Knight (“Appellant”) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant is identified as the real party in interest. App. Br. 1. Appeal 2011-011141 Application 10/846,544 2 Claimed Subject Matter Claims 1, 19, and 20 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating a character’s fear of at least one of acting in a particular manner and performing a particular task; indicating said character being provided with a virtual reality environment having a characteristic; indicating that said character’s fear is at least one of reduced and eliminated in said virtual reality environment due to said characteristic; and indicating a belief of said character that said character is in said virtual reality environment at a time in said timeline in which said character is not in said virtual reality environment. Appeal Br. 100, Claims App. Reference The Examiner relies upon the following prior art reference: Any movie recorded on a DVD. Ans. 3. Rejections Appellant seeks review of the following rejections: I. Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter and II. Claims 1–202 are rejected under 35 U.S.C. § 103(a) as unpatentable over any movie recorded on a DVD. 2 Claims 1–14 are rejected under this ground as part of a new ground of rejection in the Examiner’s Answer. Ans. 3, 18–19. Appeal 2011-011141 Application 10/846,544 3 SUMMARY OF DECISION We enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b) against claims 1–20 under 35 U.S.C. § 112, second paragraph, as indefinite. We AFFIRM the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101. We designate our affirmance as a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). We REVERSE, pro forma, the Examiner’s rejections under 35 U.S.C. § 103(a). OPINION New Ground of Rejection – Indefiniteness We enter a new ground of rejection of claims 1–20 under 35 U.S.C. § 112, second paragraph, because the terms “indicating,” recited in independent claims 1 and 20, and “an indication,” recited in independent claim 19, respectively, are indefinite for failing to “particularly point out and distinctly claim[] the subject matter which applicant regards as his invention.”3 35 U.S.C. § 112, second paragraph. We interpret the claim language, where necessary, giving the claims their broadest reasonable interpretation in light of the Specification. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). The ordinary and customary meaning of “indicate” is “to point out or show.” CHAMBERS 21ST CENTURY DICTIONARY (2001), available at http://search.credoreference.com/content/entry/chambdict/indicate/0? 3 While we focus our discussion on the term “indicating,” recited in claim 1, our analysis is equally applicable to the term “an indication,” recited in claim 19. Appeal 2011-011141 Application 10/846,544 4 searchId=02992c9c-0dfc-11e4-8ccb-0aea1e3b2a47&result=0 (last visited October 10, 2014). In the context of claim 1, for example, the first step is thus interpreted as “pointing out or showing a character’s fear of at least one of acting in a particular manner and performing a particular task.” Although at first glance, “indicating” may not appear indefinite, Appellant’s Specification reveals the difficulty underlying the interpretation of the term in the context of the present application: As well known by those of ordinary skill in the art, there are many ways to indicate a fact in a movie without any explicit words to that effect at all: circumstance, cinematography, subtly suggestive newspaper headlines, suggestive words by the protagonist or other characters, etc., can all be indicative of that fact. Spec. 18 (emphasis added). As reflected in Appellant’s Specification, the claim language “a character’s fear of at least one of acting in a particular manner and performing a particular task” can be indicated “without any explicit words to that effect.” Id. Thus, while explicit words may indicate the recited actions of the first character, so too may “circumstance” and “cinematography,” in which explicit words to that effect are not used. In our view, Appellant’s Specification expands upon how the “indicating” steps of the claim may be performed to such an extent where there is “no objective definition identifying a standard for determining when” a method of relaying a story actually “indicat[es]” a certain fact (e.g., “a character’s fear of at least one of acting in a particular manner and performing a particular task” as recited in claim 1). See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005), abrogated Appeal 2011-011141 Application 10/846,544 5 by, Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014);4 Interval Licensing LLC v. AOL, Inc., 2014 WL 4435871, at *5 (Fed. Cir. Sept. 10, 2014) (“Although absolute or mathematical precision is not required, it is not enough . . . to identify some standard for measuring the scope of the phrase. . . . [Rather, t]he claims, when read in light of the specification and prosecution history, must provide objective boundaries for those of skill in the art.”) (citations and quotations omitted). We find the discussion in Datamize analogous to the circumstances here.5 As in Datamize, whether a person performing the claimed method has “indicated” a certain fact solely depends upon the subjective opinion of the person purportedly practicing the invention. See Datamize, 417 F.3d at 1350 (citing In re Musgrave, 431 F.2d 882, 893 (CCPA 1970)). Additionally, 4 While the Supreme Court in Nautilus disagreed with the standard for determining indefiniteness as applied by the U.S. Court of Appeals for the Federal Circuit in Datamize, the Court did not suggest any disagreement with the holding in Datamize that a completely subjective construction of a term renders the term indefinite. See generally Nautilus, 134 S. Ct. 2120. Although in the context of litigation based on an issued patent, the standard enunciated in Nautilus for determining definiteness—whether a patent’s claims “viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty” (id. at 2129)—is arguably less of a hurdle to establishing indefiniteness than the “insolubly ambiguous” standard applied in Datamize. Thus, we have no reason to suspect that, had the analysis in Datamize been performed under the “reasonable certainty” standard, the Federal Circuit would have reached a different result. 5 In addition to our discussion herein, we recognize that, in Datamize, the Federal Circuit agreed with the district court construction that the ordinary meaning of “aesthetically pleasing” “includes ‘having beauty that gives pleasure or enjoyment’ or, in other words, ‘beautiful[,]’” but concluded that the phrase was indefinite. 417 F.3d at 1348. Appeal 2011-011141 Application 10/846,544 6 there is no objective way to determine whether that person succeeded in “indicating” a certain fact.6 In other words, the public would not be notified “of the patentee’s right to exclude since the meaning of the claim language would depend on the unpredictable vagaries of any one person’s opinion of” whether a certain fact was indicated. Id. “[A] claim term, to be definite, requires an objective anchor.” Id. Here, we have none. Ultimately, our conclusion rests upon the finding that the terms “indicating” and “an indication” in the context of the claims “fail[] to delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Id. at 1353. In the context of the claims and Specification, “indicating” and “an indication” are not clear and unambiguous or “reasonabl[y] precis[e].” See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“The USPTO, in examining an application, is obliged to test the claims for reasonable precision according to these principles.”).7 Accordingly, we conclude that claims 1–20 are indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. 35 U.S.C. § 112, second paragraph. 6 Another possibility is to ask whomever the fact was intended to be relayed to whether the fact was actually indicated or not. This approach, however, merely results in the subjective opinion of the individual to whom the story was intended to be relayed. 7 This decision should not be read as concluding that the terms “indicating” and “an indication” are indefinite in each and every context. Our conclusion is based on the specific use of the terms in the claims on appeal and discussion of the terms in the Specification. Appeal 2011-011141 Application 10/846,544 7 Rejection I The Examiner concludes that claims 1–20 are directed to a non- statutory abstract idea and hence ineligible subject matter for patenting under 35 U.S.C. § 101. Ans. 3. The Examiner initially relies upon a variety of reasons as to why the claims are directed to ineligible subject matter, but narrows the focus in the Answer to the analysis provided by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), which was decided while the briefing in this appeal was ongoing. In particular, the Examiner determines that “[i]n many ways, [a storyline] is analogous to a mathematical algorithm. . . . [i]t is an abstract idea -- the notion behind the story. And any number of stories can be built using the same storyline.” Id. at 19. The Examiner concludes that claims 1–20 “seek[] to preempt all practical uses for a storyline.” Id. at 3. Appellant raises several arguments in response to this rejection, but we focus on the Reply Brief because the arguments directed to Bilski are provided therein. In particular, Appellant asserts that “[f]or all intents and purposes, the Bilski opinion is useless.” Reply Br. 6. Appellant explains that the Supreme Court held that “the Federal Circuit’s machine-or- transformation test is a test but not the test.” Id. Further, Appellant contends that “the Supreme Court’s explanation of why Appellant’s claims are unpatentable abstract ideas is vacuous.” Id. Appellant asserts that the concurring opinion in Bilski supports the notion that the “the legal construct of ‘abstract idea’ is directly associated with mathematical algorithms.” Id. Thus, according to Appellant, because “[a] fictional storyline is not a mathematical algorithm[,] the claimed methods in the present application are not abstract ideas.” Id. Appeal 2011-011141 Application 10/846,544 8 Appellant argues the eligibility of the claims in specific groups and we address each group below after discussing the current legal framework for assessing whether a claim is directed to patent eligible subject matter. Section 101 of the Patent Act defines the subject matter eligible for patent protection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). It provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme Court’s “precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract ideas.’” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 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.” Alice Corp., 134 S. Ct. at 2355. As reiterated by the Supreme Court in Alice Corp: First, we 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, we consider the elements of each claim both Appeal 2011-011141 Application 10/846,544 9 individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have 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.” Id. (citations omitted). Claims 1–148 First, claim 1 is directed to a process of relaying9 a story and recites four “indicating” steps.10 Thus, the claim is directed to the abstract idea of 8 Appellant does not separately argue claims 1–14. Appeal Br. 5–47; Reply Br. 5–7. We select claim 1 as representative. Accordingly, claims 2– 14 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). 9 The ordinary and customary meaning of “relaying” is “receiv[ing] and pass[ing] on.” CHAMBERS 21ST CENTURY DICTIONARY (2001), available at http://search.credoreference.com/content/entry/chambdict/relay_1/0?searchI d=945a6d93-0e89-11e4-80fa-0aea1e24c1ac&result=0 (last visited July 18, 2014). In the context of the claims and Specification, however, the term appears more analogous to “passing on” rather than requiring receiving and passing on. Thus, the process of telling someone a story (which passes on a story, whether or not that person telling the story received the story from another or created the story) would fall within the scope of relaying a story as understood in the context of the claims and Specification. 10 Although we conclude in the new ground of rejection that the term “indicating” is indefinite, that conclusion does not preclude us from reaching the question of whether the claims are directed to non-statutory subject matter under § 101 because we focus our analysis here on the narrow context where the elements of the story relayed are explicitly written or spoken. Even in that narrow, arguably more definite (i.e., explicitly writing is more definite than using “circumstance” to indicate a particular fact of a story), context, we conclude that claim 1 is directed to non-statutory subject matter for the reasons explained herein. Appeal 2011-011141 Application 10/846,544 10 relaying (passing on, e.g., such as by telling) a story.11 In determining the first step of this analysis, we are not persuaded by Appellant’s argument that abstract ideas are limited to mathematical algorithms. See Alice Corp. at 2356–57 (rejecting Petitioner’s argument that the abstract-ideas category is confined to preexisting, fundamental truth[s] that exis[t] in principle apart from any human action (citations and quotations omitted; alterations in original)). Second, the elements of claim 1, individually and “as an ordered combination[,]” do not transform the nature of the claim into a patent- eligible application. While claim 1 includes steps “indicating” certain elements of the story, the steps are insufficient “to ensure that the patent [application] in practice amounts to significantly more than a patent upon the [ineligible concept] [of relaying a story] itself.” Alice Corp., 134 S. Ct. at 2355 (second alteration in original). In other words, there is no “inventive concept.” Id. Additionally, each of claim 1’s method steps “can be performed in the human mind, or by a human using a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (relying on the Supreme Court’s decision in Gottschalk v. Benson, 409 U.S. 63, 67 (1972), for the proposition that “methods which can be performed mentally, or 11 Storytelling is similar to an example given by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (2013), vacated, WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014). In Ultramercial, the Federal Circuit indicated that while “the word poem is concrete, poetry is [abstract].” Id. at 1343. Specifically, as applied here, while the word story may be concrete, storytelling (i.e., relaying a story) is abstract. Appeal 2011-011141 Application 10/846,544 11 which are the equivalent of human mental work, are unpatentable abstract ideas”). For example, the first “indicating” step can be performed either in the human mind, or by a human writing down a character’s fear of at least one of acting in a particular manner and performing a particular task.12 The same is true of the second, third, and fourth “indicating” steps. Thus, in light of the analysis explained in Alice Corp. and CyberSource, claim 1 is not directed to patent-eligible subject matter at least because it is a mental process and hence an abstract idea. Further, the Supreme Court recognized that, although not the sole test, the “machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.” Bilski, 130 S. Ct. at 3227. Here, claim 1 is not tied to a particular machine or apparatus and does not transform a particular 12 Appellant has not argued that the preamble is limiting, and we do not believe it is. That being said, even if it were limiting, “relaying a story” can also be performed by a human writing down a story and giving it to another human. Appellant, however, contends that “indicating” is “an active step that is not a ‘process of human thinking’ and does not ‘depend . . . on human intelligence alone.’” Appeal Br. 37 (citing In re Comiskey, 499 F.3d 1365, 1377–78 (Fed. Cir. 2007)). As noted above, Appellant’s Specification states, “there are many ways to indicate a fact in a movie without any explicit words to that effect at all: circumstance, cinematography, subtly suggestive newspaper headlines, suggestive words by the protagonist or other characters, etc. can all be indicative of that fact.” Spec. 18. The Specification also states that “[e]ach of the steps may comprise indicating in a written or video form.” Id. at 1. Thus, as with “step (b)” of CyberSource, which the Federal Circuit determined could be performed by a person “writing down a list of credit card transactions made from a particular IP address,” 654 F.3d at 1372, so too could the “indicating” steps of claim 1 be performed by writing. Appeal 2011-011141 Application 10/846,544 12 article into a different state or thing. Id. at 3226 (citation omitted); see also Digitech Image Techs. v. Elecs. for Imaging, Inc., slip op. at 11 (Fed. Cir. July 11, 2014) (finding the method claims directed to an abstract idea in-part because they are “not tied to a specific structure or machine”). In addition, storytelling is not a “new and unforeseen invention” or an “emerging technolog[y]” that poses a difficulty in deciding whether the claim qualifies as a patentable “process.” Bilski, 130 S. Ct. at 3227–28. Thus, the machine-or-transformation test provides further support for our conclusion that claim 1 is directed to non-statutory subject matter. Accordingly, we sustain the Examiner’s rejection of claims 1–14 as directed to non-statutory subject matter. Claim 15 Claim 15 recites: 15. The process as claimed in claim 1, wherein each of said steps of indicating comprises indicating in a written form. Appeal Br. 105, Claims App. As reflected above, claim 15 narrows claim 1 to a process where each of the indicating steps of claim 1 are indicated in a written form. While narrower than the process recited in claim 1, claim 15 could be performed by an individual simply writing down each of the previously recited indicating steps. The addition of “indicating in a written form” constitutes “insignificant postsolution activity,” which does not transform the unpatentable abstract idea of relaying a story, as recited in claim 1, into a patentable process. See Bilski, 130 S. Ct. at 3230 (“the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the Appeal 2011-011141 Application 10/846,544 13 use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity’”).13 Accordingly, we sustain the Examiner’s rejection of claim 15 as directed to non-statutory subject matter. Claim 16 Claim 16 recites: 16. The process as claimed in claim 1, wherein each of said steps of indicating comprises indicating in a video form. Appeal Br. 105, Claims App. For the same reasons discussed with respect to claim 15, claim 16’s addition of “indicating in a video form” constitutes “insignificant postsolution activity,” which does not transform the unpatentable abstract idea of relaying a story, as recited in claim 1, into a patentable process. See Bilski, 130 S. Ct. at 3230. Accordingly, we sustain the Examiner’s rejection of claim 16 as directed to non-statutory subject matter. Claim 17 Claim 17 recites: 17. The process as claimed in claim 1, wherein said process is a process of displaying a motion picture having a timeline and a unique plot, comprising: 13 Appellant asserts that claim 7 requires a physical transformation because even if performed with pen and paper, “the physical object (paper) is transformed by the pen’s ink.” Appeal Br. 54. Similar to the discussion of step (b) in CyberSource, 654 F.3d at 1372–73, the ability to perform the steps of claim 1 by writing, as recited in claim 15, does not render claim 15 any less abstract. Appeal 2011-011141 Application 10/846,544 14 displaying a video representation of an actor acting as said character; displaying a video representation of said actor indicating said fear of at least one of acting in a particular manner and performing a particular task; displaying a video representation of an indication that said character is provided with said virtual reality environment; displaying a video representation of an indication that said character’s fear is at least one of reduced and eliminated in said virtual reality environment; and displaying a video representation of said actor indicating said belief. Appeal Br. 105, Claims App. As reflected above, claim 17 narrows claim 1 to “a process of displaying a motion picture” and adds five “displaying” steps. While narrower than the process recited in claim 1, the addition of these “displaying” steps constitutes “insignificant postsolution activity,”14 which does not transform the unpatentable abstract idea of relaying a story, as recited in claim 1, into a patentable process. See Bilski, 130 S. Ct. at 3230.15 14 Claim 17’s steps may also be considered an attempt to limit claim 1 to a particular technological environment, i.e., displaying a motion picture that relays a story. Regardless, the particular technological environment of claim 17 does not transform the unpatentable abstract idea of relaying a story into a patentable process. 15 Appellant asserts that claim 17 is tied to a particular machine—a video machine—and that it transforms video information/data into a visual depiction. Appeal Br. 71–73. Even though claim 17 is directed to a process of displaying a motion picture, no machine or apparatus is expressly recited in the claim. Additionally, we are unconvinced that displaying a video representation transforms a particular article into a different state or thing. Even if we were to assume that claim 17 were tied to a particular machine and that it recites a transformation of a particular article into a different state or thing, we would nonetheless conclude that claim 17 is directed to non- Appeal 2011-011141 Application 10/846,544 15 Accordingly, we sustain the Examiner’s rejection of claim 17 as directed to non-statutory subject matter. Claim 18 Claim 18 recites: 18. The process as claimed in claim 1, wherein said process is a process of creating a motion picture having a time line and a unique plot, comprising: providing a set; providing a video camera configured to video at least a portion of said set; inciting an actor to act as said character; inciting said actor to indicate said fear of at least one of acting in a particular manner and performing a particular task; creating a first video segment via said video camera by filming said indication of said fear by said actor; inciting said actor to indicate said belief; creating a second video segment via a video camera by filming said indication of said belief by said actor; editing and combining at least part of at least said first and second video segments to form a motion picture; and storing said motion picture on an information storage medium. Appeal Br. 105–06, Claims App. As reflected above, claim 18 recites a process of creating a motion picture, and narrows claim 1 to the use of a video camera, and the steps of providing a set, providing a video camera, inciting an actor to act a certain way, creating and editing video segments, and storing the segments combined as a motion picture on an information storage medium. The statutory subject matter because it recites insufficient postsolution activity, which does not transform the abstract idea of relaying a story into a patentable process. Appeal 2011-011141 Application 10/846,544 16 question before us is whether the additional elements of claim 18 as compared to claim 1, individually and as an ordered combination transform the nature of the claim into a patent-eligible application. Taking the claim elements separately, each step of the process is “purely convention.” Alice Corp., 134 S. Ct. at 2359 (quotation omitted). Using a video camera to create a video segment amounts to making a video recording (or movie)—one of the most basic functions of a video camera. See id. (noting that “[u]sing a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping—one of the most basic functions of a computer”) (citation omitted); see also Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005, 1008 (Fed. Cir. 2014) (holding the claims ineligible even though they “require[d] ‘a computer with a central processing unit,’ ‘a memory,’ ‘an input and output terminal,’ ‘a printer,’ [and] in some cases ‘a video screen’”).16 The same is true with respect to the other steps of the claim—each of the providing, creating, inciting, editing, and storing steps are “‘well-understood, routine, conventional activit[ies]’ previously known to the industry.” Id. (citing Mayo, 132 S. Ct. at 1294).17 Considered “as an ordered combination,” these steps “ad[d] nothing . . . that is not already present when the steps are considered separately.” Id. Viewed as a whole, claim 18 simply recites the concept of creating a movie. The claim does not “purport to improve the functioning of” the video camera 16 Although nonprecedential, Planet Bingo is persuasive. Fed. Cir. R. 32.1; see Fed. R. App. Pro. 32.1(a). 17 We take Official Notice that these steps are well-understood, routine, conventional activities previously known to the movie industry. MPEP § 2144.03 (9th ed., Mar. 2014). Appeal 2011-011141 Application 10/846,544 17 or other device, nor does the claim “effect an improvement in any other technology or technical field.” Id. at 2359–60 (citation omitted); see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (reiterating the Supreme Court’s approach in Alice Corp). Thus, the additional elements of claim 18 are “not ‘enough’ to transform an abstract idea into a patent-eligible invention.” Alice Corp., 134 S. Ct. at 2360 (citation omitted). Accordingly, we sustain the Examiner’s rejection of claim 18 as directed to non-statutory subject matter. Claim 19 Claim 19 recites: 19. An information storage medium containing information of a story having a timeline and a unique plot involving characters, said information comprising: an indication of a character’s fear of at least one of acting in a particular manner and performing a particular task; an indication of said character being provided with a virtual reality environment having a characteristic; an indication that said character’s fear is at least one of reduced and eliminated in said virtual reality environment due to said characteristic; and an indication of a belief of said character that said character is in said virtual reality environment at a time in said timeline in which said character is not in said virtual reality environment. Appeal Br. 106, Claims App. As reflected above, claim 19 is directed to an information storage medium containing information. Claim 19, however, does not contain any limitations directed to the structure or physical composition of the information storage medium. While the information storage medium may be Appeal 2011-011141 Application 10/846,544 18 a book or a DVD,18 the broadest reasonable interpretation of information storage medium is much broader. In fact, the phrase literally covers anything that stores information. As such, “information storage medium” reads on the human brain, a naturally occurring phenomena, and is thus directed to non-statutory subject matter. See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116–20 (2013) (holding that naturally occurring DNA, even if isolated, is directed to non-statutory subject matter); see also Diamond v. Chakrabarty, 447 U.S. 303, 309–10 (1980) (drawing a distinction between naturally occurring and nonnaturally occurring compositions of matter); MPEP § 2106 I (9th ed., Mar. 2014) (same). Accordingly, we sustain the Examiner’s rejection of claim 19 as directed to non-statutory subject matter. Claim 20 Claim 20 recites: 20. A program product for relaying a story having a timeline and a unique plot involving characters, said product comprising machine-readable program code for causing, when executed, a machine to perform the following process steps: indicating a character’s fear of at least one of acting in a particular manner and performing a particular task; indicating said character being provided with a virtual reality environment having a characteristic; indicating that said character’s fear is at least one of reduced and eliminated in said virtual reality environment due to said characteristic; and 18 Appellant’s Specification discloses a book and a DVD as non-limiting examples of an information storage medium. Spec. 5. Appeal 2011-011141 Application 10/846,544 19 indicating a belief of said character that said character is in said virtual reality environment at a time in said timeline in which said character is not in said virtual reality environment. Appeal Br. 107, Claims App. As reflected above, claim 20 is drafted in what has become known as Beauregard format, named for In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1287 (Fed. Cir. 2013) (Lourie, J., concurring) (“Claims in Beauregard format formally recite a tangible article of manufacture—a computer- readable medium, such as a computer disk or other data storage device—but such claims also require the device to contain a computer program for directing a computer to carry out a specified process.”). For the same reasons explained in CLS Bank Int’l, claim 20 is equivalent to the method it recites for § 101 purposes. Id. at 1287–88; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1266, 1375 (Fed. Cir. 2011) (holding that “the ‘computer readable medium’ limitation . . . does not make the otherwise unpatentable method patent-eligible under § 101”). Thus, because the four indicating steps recited in claim 20 are identical to the four indicating steps recited in claim 1, our discussion of claim 1 is equally applicable here. Accordingly, for the reasons we explained in the context of discussing the rejection of claim 1 supra, we sustain the Examiner’s rejection of claim 20 as directed to non-statutory subject matter. We designate our affirmance of Rejection I as a NEW GROUND OF REJECTION so as to provide Appellant with a full and fair opportunity to respond to the thrust of the rejection because the reasoning upon which we rely differs somewhat from the reasoning articulated by the Examiner. Appeal 2011-011141 Application 10/846,544 20 Rejection II The Examiner concludes that any movie recorded on a DVD would have rendered the subject matter of claims 1–20 obvious to one of ordinary skill in the art at the time of the invention. Ans. 3, 17–19. As discussed in the context of the New Ground of Rejection, claims 1–20 each recite the terms “indicating” or “an indication,” which we conclude are indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. 35 U.S.C. § 112, second paragraph. Thus, the prior art rejection under § 103(a) must fall, pro forma, because it is necessarily based on speculative assumptions as to the scope of the claims. See In re Steele, 305 F.3d 859, 862–63 (CCPA 1962).19 DECISION We AFFIRM the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101, and designate our affirmance as a NEW GROUND OF REJECTION. We REVERSE, pro forma, the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 103(a). We enter a NEW GROUND OF REJECTION of claims 1–20 as indefinite under 35 U.S.C. § 112, second paragraph, for failing to 19 If Appellant elects to reopen prosecution in light of the new ground of rejection, the Examiner should consider whether the process claims (claims 1–18) would have been obvious in light of prior art processes for relaying a story (e.g., a process of writing a book, or recording or making a motion picture) rather than obvious in light of a prior art product such as a “movie recorded on a DVD” as the rejection currently stands. Appeal 2011-011141 Application 10/846,544 21 particularly point out and distinctly claim the subject matter which Appellant regards as the invention. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that 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 proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation