Ex Parte Littlejohn et al

Patent Trial and Appeal Board

Dec 10, 2018

12475375 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/475,375 05/29/2009 Jeff Littlejohn
86548 7590 12/12/2018
Garlick & Markison (IH)
106 E. 6th Street, Suite 900
Austin, TX 78701
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.
137-CIT-03-2009 3373
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF LITTLEJOHN, BOBBI DENISE SCHUSTER, KEYIN HSU,
and JENNIFER PEREZ
Appeal2017-010465 1
Application 12/475,3752
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 43--47, 49--52, 54--58, and 60. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 21, 2017) and Reply Brief ("Reply Br.," filed August 4, 2017), and
the Examiner's Answer ("Ans.," mailed June 6, 2017) and Final Office
Action ("Final Act.," mailed September 22, 2016).
2 Appellants identify iHeartMedia Management Services, Inc. as the real
party in interest. App. Br. 4.
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Application 12/475,375
CLAIMED INVENTION
Appellants' claimed invention "relates generally to utilizing unique
identifiers, and more particularly to tracking public performances of works
using unique identifiers" (Spec. ,r 2).
Claims 43, 50, and 56 are the independent claims on appeal.
Claim 43, reproduced below with bracketed notations added, is illustrative
of the claimed subject matter:
43. A method comprising:
[(a)] using a data pull subsystem to obtain, from a first
content provider, a first identifier identifying a first instance of a
work indexed in accordance with a first identification system
used by the first content provider, by executing a program
instruction in a computer system;
[ (b)] using the data pull subsystem to obtain, from a
second content provider, a second identifier identifying a second
instance of the work indexed in accordance with a second
identification system used by the second content provider, the
second identification system being different from the first
identification system, by executing a program instruction in a
computer system;
[ ( c)] associating the first identifier and the first instance
of the work with a unique identifier selected from a set of unique
identifiers by executing a program instruction in a computer
system;
[ ( d)] associating the second identifier and the second
instance of the work with the unique identifier by executing a
program instruction in a computer system;
[ ( e)] storing and associating attributes of the work with
the first identifier, the second identifier, and the unique identifier,
in a unified numbering system (UNS) database, by executing a
program instruction in a computer system;
[(f)] receiving a message relating to a broadcast of at
least one of the first instance of the work or the second instance
of the work;
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[ (g)] determining whether the message includes the
unique identifier; and
[(h)] in response to determining that the message does
not include the unique identifier, tracking public performances
of either the first instance of the work or the second instance of
the work based on the attributes of the work, by executing a
program instruction in a computer system.
REJECTI0NS 3
Claims 43--47, 49-52, 54, and 55 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. 4
Claims 43--47, 49-52, 54--58, and 60 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 43--47, 49-52, 54--58, and 60 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Chen (US 2006/0116926 Al, pub. June 1,
2006) and Stuhec (US 7,856,597 B2, iss. Dec. 21, 2010).
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
3 The Examiner has withdrawn the rejection of claims 43--47, 49-52, 54--58,
and 60 under 35 U.S.C. § 112, second paragraph. Ans. 2.
4 The Examiner has withdrawn the rejection of claims 56-58 and 60 under
35 U.S.C. § 112, first paragraph. Ans. 2.
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using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
In rejecting the claims under§ 112, first paragraph, the Examiner
takes the position that the Specification does not include adequate written
description support for "in response to determining that the message does
not include the unique identifier, tracking public performances of either the
first instance of the work or the second instance of the work based on the
attributes of the work," as recited in independent claim 43, and similarly
recited in independent claim 50 (Final Act. 2-3). We, however, agree with
Appellants that the Specification includes the requisite written description
support at least at paragraphs 44, 60, 69, and 71 (App. Br. 9-10). Therefore,
we do not sustain the Examiner's rejection.
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
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 (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 Corp., 134 S. Ct.
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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." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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 there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to "setting advertising rates, polling data and
statistical estimates of how often a particular advertisement is aired" (Final
Act. 3-5). The Examiner, however, revised this determination in the
Answer. There, the Examiner determined that the claims are directed to
"tracking public performances of a work" (Ans. 7) - a concept that the
Examiner concluded is similar to concepts that the courts have identified as
abstract (id.). The Examiner also determined that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception (id. at 8-9).
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We are not persuaded that the Examiner erred in determining that the
pending claims are directed to an abstract idea. Independent claim 43, for
example, recites a method comprising (1) receiving a first identifier
identifying a first instance of a work from a first content provider;
(2) receiving a second identifier identifying a second instance of the work
from a second content provider; (3) associating the first identifier and the
first instance of the work with a unique identifier selected from a set of
unique identifiers; ( 4) associating the second identifier and the second
instance of the work with the unique identifier; ( 5) storing and associating
attributes of the work with the first identifier, the second identifier, and the
unique identifier, in a database; ( 6) receiving a message relating to a
broadcast of at least one of the first instance of the work or the second
instance of the work; (7) determining whether the message includes the
unique identifier; and (8) if the message does not include the unique
identifier, tracking public performances of either the first instance of the
work or the second instance of the work based on the attributes of the work.
In other words, claim 43 involves nothing more than receiving/collecting
information (i.e., receiving multiple instances of content from multiple
different content providers; storing and associating the multiple instances,
different identifiers of the multiple instances, and content attributes of
multiple instances with a unique identifier; and receiving a message relating
to broadcast of at least one of the multiple instances); and analyzing the
information (i.e., determining whether the message includes the unique
identifier, and if not, comparing other message content with the stored
content attributes) - activities squarely within the realm of abstract ideas.
See, e.g., Electric Power Group LLC v. Alstom, S.A., 830 F.3d 1350, 1353-
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54 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas);
Content Extraction & Transmission v. Wells Fargo Bank, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (holding that that the claim was "drawn to the abstract
idea of 1) collecting data, 2) recognizing certain data within the collected
data set, and 3) storing that recognized data in a memory" - concepts that
the court concluded were "undisputedly well-known.").
Although Appellants acknowledge that the claims involve data
manipulation techniques, Appellants argue that, rather than attempting to
patent a series of steps that do no more than gather, analyze, and store data,
the present claims are directed to "a concrete and tangible real-world result
- a public-performance tracking technique" (id. at 8). Yet, the fact that the
claimed invention may result in real world consequences does not change
that the claims are directed to an abstract idea. Cf CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in
Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.").
We also do not agree with Appellants that there is any parallel
between the present claims and those held patent-eligible in McRO or DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (App.
Br. 18-19). Appellants argue that, like the claims in DDR Holdings,
Appellants' claimed invention is necessarily rooted in computer technology
to overcome a problem (i.e., tracking media items played out during a
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broadcast) specifically arising in the realm of computer networks (App.
Br. 19). Yet, it is not clear to us how performance tracking is "necessarily
rooted in computer technology" or otherwise tied to a problem only arising
in computer operations. Public-performance tracking existed before and still
exists outside of computer technology. And, unlike the situation in DDR
Holdings, there is no indication here that a computer is used other than in its
normal, expected, and routine manner, e.g., for receiving, processing, and
transmitting information.
Appellants argue that the claims solve a problem that does not exist
outside of computerized systems, i.e., how to improve computerized tracking
of media items played out during a broadcast (id.). Yet, as the Federal
Circuit cautioned in DDR Holdings, "not all claims purporting to address
Internet-centric challenges are eligible for patent." DDR Holdings, 773 F.3d
at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014 ), although the patentee argued that its claims were "directed to a
specific method of advertising and content distribution that was previously
unknown and never employed on the Internet before," Ultramercial,
772 F .3d at 714, the court found that this alone could not render its claims
patent-eligible where the claims merely recited the abstract idea of "offering
media content in exchange for viewing an advertisement," along with
"routine additional steps such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Internet." Id. at 715-716.
Similarly here, we find that the invocation of a computer network is
not sufficient to transform Appellants' otherwise patent-ineligible abstract
idea into patent-eligible subject matter. We find, as did the Examiner, that
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the claims are directed to the abstract idea of "tracking public performances
of a work" (Ans. 7). Narrowing that abstract idea to use in electronic
commerce merely limits the use of the abstract idea to a particular
technological environment, which the Court made clear in Alice is
insufficient to transform an otherwise patent-ineligible abstract idea into a
patent-eligible subject matter. See Alice Corp., 134 S. Ct. at 2358.
There is no indication here that invocation of a computer network
adds any inventive concept. For example, there is no indication that the
particular operations recited in claim 43 require any specialized computer
hardware or other inventive computer components, invoke any assertedly
inventive programming, or that the claimed invention requires more than the
use of generic computer components to perform the claimed method steps.
To the contrary, the Specification discloses just the opposite, i.e., that the
claimed invention is implemented using generic computer components (see
Spec. ,r,r 90, 91 ).
We also are not persuaded that the facts in McRO are sufficiently
analogous to the present facts to control the outcome here. In McRO, the
court determined that the claim was not directed to an abstract idea, and was
patent-eligible under 35 U.S.C. § 101 where the claim "focused on a specific
asserted improvement in computer animation" of facial expressions made
during speech and where "incorporation of the claimed rules, not the use of
the computer ... 'improved [the] existing technological process' by
allowing the automation of further tasks." McRO, 837 F.3d at 1314.
The court emphasized that the automation went beyond, for example, merely
"organizing [ existing] information into a new form." Id. at 1315 (internal
quotes and citation omitted). Instead, the claim used limited rules in a
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process specifically designed to achieve an improved technological result in
conventional industry practice. Id. at 1316. In this sense, McRO is akin to
DDR Holdings, Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), and similar decisions which have held claims patent-eligible where
the claimed invention provided a technological improvement in industry
practice. See DDR Holdings, 773 F.3d at 1257 (holding that claims reciting
computer processor for serving "composite web page" were patent eligible
because "the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks"); Enfzsh, 822 F.3d at 1338 (holding that claims directed to self-
referential table for computer database were patent eligible because claims
were directed to an improvement in the functioning of a computer); Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017)
(holding that claims directed to "an improved computer memory system"
having many benefits were patent eligible).
In contrast here, the claims at issue collect data, manipulate that data,
and then render an output. Appellants do not persuasively argue that the
claims provide any improvement in technology or that they improve the
functionality of the computer itself.
Appellants assert, as described above, that the claimed invention
improves computerized tracking of media items played out during a
broadcast (App. Br. 19). But, we are not persuaded that the claims, thus,
represent any technological improvement. Instead, it appears clear, when
considered in light of the Specification, that the focus of the claimed
invention, as recited, for example, in independent claims 43, is on achieving
a business objective (i.e., accurately determining how often a particular work
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has been broadcast) (see Spec. ,r,r 3-5), and not on any claimed means for
achieving that goal that improves technology.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 43--47, 49-52, 54--58, and 60 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Obviousness
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 43, 50, and 56 under 35 U.S.C. § 103(a)
because Chen, on which the Examiner relies, does not disclose or suggest
storing and associating two different identifiers associated with different
instances of the same work with a single unique identifier, i.e.,
limitations ( c ), ( d), and ( e ), as recited in claim 43, and similarly recited in
claims 50 and 56 (App. Br. 24--25).
Chen is directed to a system and method for creating and operating
Internet-based publishing and advertising forums, and discloses that the
forums exist on the Internet as public Web sites that allow free access to all
Internet users (Chen ,r 10). The forums allow authors to publish their works
on the Internet, and to benefit financially from a recurrent royalty drawn
from advertising revenue generated by advertisements placed in the
published articles (id.). Chen discloses in paragraph 28, cited by the
Examiner, that when an article is accepted for publication, a unique
Article ID is generated and saved in an Article Table, along with the article
content, title, abstract, a designated category name, and the Author ID;
Chen similarly discloses, in cited paragraphs 30 and 31, that a unique Ad ID
is generated on receiving an ad submission. However, we find nothing in
these paragraphs or in any of the other portions of Chen, on which the
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Examiner relies, that discloses or suggests that two different instances of the
same work submitted by different authors are associated with the same
unique identifier, as the independent claims require.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 43, 50, and 56 under 35 U.S.C. § 103(a). For the
same reasons, we also do not sustain the rejection of dependent claims 44--
47, 49, 51, 52, 54, 55, 57, 58, and 60. Cf In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) ("dependent claims are nonobvious if the independent
claims from which they depend are nonobvious").
DECISION
The Examiner's rejection of claims 43--47, 49--52, 54, and 55 under
35 U.S.C. § 112, first paragraph, is reversed.
The Examiner's rejection of claims 43--47, 49--52, 54--58, and 60
under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 43--47, 49--52, 54--58, and 60
under 35 U.S.C. § 103(a) is reversed.
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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