Ex Parte Kramer et al

Patent Trials and Appeals Board

Jun 6, 2018

12895721 - (D) (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/895,721 09/30/2010
79502 7590 06/08/2018
Knobbe, Martens, Olson & Bear, LLP
(SEAZN) (AMAZON)
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Joshua N. Kramer
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.
SEAZN.227DV1 8244
EXAMINER
HALE,TIMB
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
SEAZN.Admin@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA N. KRAMER and AMEESH P ALEJA
Appeal2017-003393
Application 12/895,721 1
Technology Center 3600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-10, 25, and 27-30, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "time based management of digital content
used with electronic devices lacking a connection to a common reference
time keeping device." Spec. Abstract.
1 According to Appellants, the real party in interest is Amazon Technologies,
Inc., "which is a subsidiary of Amazon.com, Inc." App. Br. 3.
Appeal2017-003393
Application 12/895,721
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A non-transitory computer-readable medium having a
computer-executable instructions for synchronizing time
keeping, wherein the computer-executable instructions, when
executed by a processor, cause the processor to:
retrieve a first reference time according to a reference time
keeping device in response to a time calibration request for a
disconnected electronic device, wherein the disconnected
electronic device is distinct from the processor and lacks a
persistent connection to the reference time keeping device;
request a device time maintained by the disconnected
electronic device, wherein the request is delivered to the
disconnected electronic device by a portable data transfer device,
wherein the portable data transfer device is distinct from the
processor and the reference time keeping device;
at a point in time in which the disconnected electronic
device is not in communication with the processor:
retrieve a second reference time according to the
reference time keeping device;
determine a device time correction value for the
disconnected electronic device as a function of the first
reference time and the device time;
determine a synchronization time correction value
indicating a difference between the first reference time and
the second reference time;
combine the device time correction value and the
synchronization time correction value to generate time
calibration data for the disconnected electronic device; and
store the time calibration data within the portable
data transfer device for retrieval by the disconnected
electronic device, the time calibration data enabling the
disconnected electronic device to establish a current time
maintained by the reference time keeping device.
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Rejections
Claims 1, 3-10, 25, and 27-30 stand rejected under 35 U.S.C. § 101
as being directed to ineligible subject matter. Final Act. 2, 4--5.
Claims 1, 4--7, 9, 10, 25, and 27-30 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Couillard (US 2002/0129290
Al; Sept. 12, 2002), Ananny et al. (US 2009/0161806 Al; June 25, 2009),
and Ginter et al. (US 2008/0141033 Al; June 12, 2008). Final Act. 6-10.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Couillard, Ananny, Ginter, and van der Kaay et al.
(US 2002/0056042 Al; May 9, 2002). Final Act. 10-11.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Couillard, Ananny, Ginter, and Official Notice. Final
Act. 11-12.
ISSUES
1. Did the Examiner err in concluding claim 1 is directed to
ineligible subject matter under § 101?
2. Did the Examiner err in finding the combination of Couillard
and Ananny teaches or suggests "at a point in time in which the
disconnected electronic device is not in communication with the processor
... determine a device time correction value for the disconnected electronic
device as a function of the first reference time and the device time," as
recited in claim 1?
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ANALYSIS
§ 101
Section 101 defines patentable subject matter: "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, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014).
"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." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to§ 101 swallow the rule."
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
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character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, we "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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "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. (quotation omitted).
For computer-related technology, the Federal Circuit has held that a claim
may pass the second step if "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]." DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., "a challenge particular to
the Internet").
Here, the Examiner determines "the claims recite a series of steps
instructing how to synchronize a time value for a device based on a plurality
of reference values and setting a digital clock based on the recorded times of
other time keeping devices" and therefore the "claimed concept falls within
the judicial definition of an abstract idea of an idea 'of itself' such as
obtaining and comparing intangible data." Ans. 5---6.
Appellants contend the Examiner is not considering what the claims
are "directed to" and "the claims at issue are more properly viewed as
interactions for synchronizing reference times on a disconnected electronic
device by generating time calibration data that is corrected based on the time
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needed to use a portable data transfer device to convey information between
the disconnected electronic device and a reference time-keeping system."
App. Br. 10. Appellants argue the present claims are distinguishable from
prior cases holding claims ineligible under § 101 and instead analogizes to
DDR Holdings because "the claims recite specific interactions for utilizing
information exchanged between those devices in order to determine time
correction values, and to use those time correction values to achieve
synchronization even in the absence of direct communication-thus
overcoming inherent limitations in the technology of disconnected electronic
devices." App. Br. 11-13. According to Appellants, "[t]he claims are not
concerned with 'synchronizing time values' in the sense that one might
discuss setting one's watch, where trivial differences in times have no
effect." Id. at 11.
We are not persuaded of error, however, because neither the claims as
presently written nor the abstract idea that the claims are directed to are as
narrow as Appellants assert. "In addressing the first step of the section 101
inquiry, as applied to a computer-implemented invention, it is often helpful
to ask whether the claims are directed to 'an improvement in the functioning
of a computer,' or merely 'adding conventional computer components to
well-known business practices."' Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016) (quoting Enfzsh,
822 F.3d at 1338). Here, "with the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper."
Intellectual Ventures I LLCv. Symantec Corp., 838F.3d1307, 1318 (Fed.
Cir. 2016).
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For example, suppose a father looks at his watch and tells his son,
"It's 1:00 PM. You should practice piano." The son looks at a clock on the
piano and sees that it has stopped at 6:00. Realizing the clock is currently
five hours off, the son reminds himself to wind and set the clock after
playing piano. After the son has played for a while, the father looks at his
watch again and says, "You've been playing for one hour so you can stop
now." The son then winds and sets the clock based on the difference
between the two reference times (i.e., the one hour between the two times
the father checked his watch) and the difference between the initial watch
time and the stopped clock time (i.e., the five hours between 1 :00 and 6:00).
Specifically, because the clock was five hours off when the son started but
one hour has passed, he now turns the clock back four hours (i.e., five hours
minus one hour, so that the watch is changed from 6:00 to 2:00). The clock
is "disconnected" from and "lacks a persistent connection to" the father's
watch. Therefore, other than generic components such as a "processor,"
"electronic device," "computer-readable medium," and "portable data
transfer device," the Examiner is correct that "[h Jere, the claims describe
a[ n J algorithm that could be performed by the human mind using merely pen
and paper, such as determining a correct clock setting." Ans. 6. Such
generic components do not change the abstract nature of the claimed
algorithm, nor does Appellants' intended purpose for the algorithm (e.g.,
time synchronization for rights management of digital content in a
disconnected device).
Appellants further argue "[ n Jo pending claim, if allowed, poses any
threat of monopolizing the concept of 'a series of steps instructing how to
synchronize a time value for a device based on [a J plurality of reference
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values."' App. Br. 11. "But we have consistently held that claims that are
otherwise directed to patent-ineligible subject matter cannot be saved by
arguing the absence of complete preemption." Return Mail, Inc. v. US.
Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017). "While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Id.
Turning to step two in the Alice/ Mayo framework, Appellants argue
the present claims "improve the functioning of a computer itself' because
"accurate timing information is critical to many operations of a computing
device, including the management of digital content encrypted with DRM
techniques." App. Br. 16. According to Appellants, "[b]y setting forth
specific recitations utilized by a computing device to synchronize time
information with a disconnected electronic device, the claims as pending set
forth technical solutions to technical problems." Id. As discussed above,
however, the identical algorithm applies to humans setting a clock. "The
Supreme Court and [the Federal Circuit] have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract."
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
Appellants further contend that "[t]he recitations of the claims are not
similar to any of the 'routine and conventional' processes identified by
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courts." App. Br. 15. Specifically, the limitations of (A) "determine a
device time correction value for the disconnected electronic device" and
(B) "combine the device time correction value and the synchronization time
correction value to generate time calibration data for the disconnected
electronic device," according to Appellants, "do not bear any resemblance to
the 'routine' processes typically dismissed by courts." Id. As an initial
matter, such calculations are part of the abstract idea set forth by the
Examiner (i.e., "obtaining and comparing intangible data" in "a series of
steps instructing how to synchronize a time value for a device based on a
plurality of reference values and setting a digital clock based on the recorded
times of other time keeping devices"), and therefore we need not reach
whether such limitations are routine and conventional. Ans. 5---6.
Yet even if considered, Appellants' argument is not persuasive. The
background section of the Specification explains it is a known technology
that "the time maintained by an internal clock of the playback device may be
synchronized with a clock maintained by the network in order to allow the
playback device to correctly measure time." Spec. i-f 3. Thus, the
Specification treats "determin[ing] a device time correction value as a
function of a reference time [e.g., from a network clock] and a device time
[e.g., from a playback device clock]" as routine, as is to be expected given
that such a determination is made any time two clocks are compared (e.g.,
when setting one clock based upon another). Similarly, the background
section of the prior art treats factoring in delays due to transmission over a
network (i.e., the claimed "synchronization time correction value") as
known and conventional. E.g., Couillard i-fi-1 6, 8; see also id. i-fi-147--49
(describing similar correction values for Couillard's invention). Other than
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the device being "disconnected," Appellants have not explained why such
basic synchronization calculations would be anything other than routine and
conventional, nor how they add "significantly more" than the abstract idea.
Appellants also argue "systems that might utilize otherwise generic
hardware can nevertheless recite 'significantly more' than an abstract idea."
App. Br. 15. We agree with the Examiner, however, that "[a]lthough the
non-transitory computer-readable medium, time keeping device, and
electronic device fall outside the abstract idea, these additional elements are
not sufficient to amount to significantly more than the judicial exception as
they recite generic computer elements performing generic computer
functions" and "would be routine and conventional in the industry at the
time of the invention." Ans. 7-8. For example, the Specification explains
that the "portable data transfer device," "disconnected electronic device,"
and "processor" are all generic and conventional. E.g., Spec. i-fi-1 21 ("USB
devices represent one illustration of the portable data transfer device 106.
Other examples of the portable data transfer device 106 may include, but are
not limited to, flash memory cards, magnetic media, and optical media, such
as rewriteable CDs and DVDs."), 13 (listing similar examples and noting
"the large base of portable data transfer devices available for consumer
use"), 16 ("The disconnected electronic device 104 may include, but are not
limited to, personal computers, mobile phones, terminals, electronic book
readers, laptop computers, digital media players, set top boxes, video game
players, and personal digital assistants" or "CD and DVD players, digital
audio players (e.g., MP3 players), digital video players, and the like"), 80
("All of the processes described herein may be embodied in, and fully
automated via, software code modules executed by one or more general
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purpose computers or processors."). Again, Appellants have not sufficiently
explained how the generic components claimed here are performing
anything other than their generic and conventional functions such as
synchronization, data processing, and data storage.
Accordingly, we sustain the Examiner's rejection under§ 101 of
claim 1, and claims 3-10, 25, and 27-30, which Appellants do not argue
separately. See App. Br. 8-16; 37 C.F.R. § 41.37(c)(l)(iv).
§ 103
Claim 1 recites "at a point in time in which the disconnected
electronic device is not in communication with the processor ... determine a
device time correction value for the disconnected electronic device as a
function of the first reference time and the device time." Independent claim
25 recites commensurate limitations.
The Examiner relies on Ananny for teaching the first portion of the
limitation ("at a point in time in which the disconnected electronic device is
not in communication with the processor") but Couillard for teaching the
second portion ("determine a device time correction value for the
disconnected electronic device as a function of the first reference time and
the device time"). Final Act. 7.
Appellants argue "the Office treats these recitations as discrete, to be
addressed independently" and "does not provide any explanation as to how a
combination of Couillard and Ananny could teach" the combined limitation.
App. Br. 19.
We agree with Appellants. With respect to this limitation, the
Examiner's Answer only addresses Couillard. Ans. 10-11. Yet the
Examiner previously stated that "Couillard does not teach ... 'at a point in
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time when the disconnected electronic device is not in communication with
the first processing device."' Final Act. 7. Thus, the Examiner's Answer
does not address the argument raised by Appellants or otherwise explain
why it would have been obvious to do Couillard's determination "at a point
in time when the disconnected electronic device is not in communication
with the first processing device." See Reply Br. 11.
Accordingly, we do not sustain the Examiner's rejections under§ 103
of independent claims 1 and 25, and their dependent claims 3-10 and 27-30.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1, 3-10, 25, and 27-30 under§ 101, but we reverse the Examiner's
decision rejecting claims 1, 3-10, 25, and 27-30 under§ 103.
Because we affirm at least one rejection for every appealed claim, we
designate this Decision an affirmance.
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.
§ 41.50(±).
AFFIRMED
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