Ex Parte Murphy et al

Patent Trial and Appeal Board

Nov 30, 2018

15429003 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/429,003 02/09/2017
124903 7590 12/04/2018
Park, Vaughan, Fleming & Dowler LLP -- Yao Group
2800 Fifth Street, Suite 110
Davis, CA 95618
Shaun Murphy
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.
PRIV15-1002US 6847
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
sy _incoming@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAUN MURPHY, CHARLES MURPHY, and
RICHARD JOHNSON
Appeal2018-008584
Application 15/429,003
Technology Center 3600
Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and
NABEEL U. KHAN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-008584
Application 15/429,003
This is an appeal under 35 U.S.C. § I34(a) from the final rejection of
claims 1-20 and 22-28. Claim 21 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to a messaging and content sharing
platform that allows for securely transferring an object. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for transferring an object comprising:
receiving the object at a sending device operated by a user,
wherein the object is a message or other content;
receiving, at the sending device, data indicating one or more
restrictions set by the user associated with the object;
dividing, by the sending device, the object into at least two
portions which include a first portion and a second portion;
sending, by the sending device over a computer network, at
least the first portion of the two portions of the object to a server that
does not store the second portion;
receiving, by the sending device, a request from a receiving
device to obtain the object;
determining, by the sending device, that one or more
restrictions set by the user are satisfied; and
sending, by the sending device, the second portion to the
receiving device, wherein the receiving device requests the first
portion from the server and combines the second portion with the first
portion to obtain the object.
Claims 1-20 and 22-28 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
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Claims 3 and 17 stand rejected under 35 U.S.C. § 112(b) as indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor or a joint inventor regards as the invention.
Claims 1, 3, 5-15, 17, 19, 20, and 22-28 stand rejected under 35
U.S.C. § 103 as unpatentable over Shribman et al. (US 2016/0337426 Al;
Nov. 17, 2016) and Ginter et al. (US 2005/0177716 Al; Aug. 11, 2005).
Claims 2, 4, 16, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Shribman, Ginter, and Munk (US 2016/0224600 Al;
Aug. 4, 2016).
ANALYSIS
We are persuaded by Appellants' arguments (App. Br. 14--15) that
independent claim 1 is directed to patent-eligible subject matter under 35
U.S.C. § 101.
The Examiner found that "[ w ]hile claims 1, 15 and 20 are directed
toward a statutory category of invention, the claims are directed toward a
judicial exception, namely the abstract idea of: DRM [Digital Rights
Management], controlling the consumption of content [Smariflash v. Apple,
680 Fed. Appx. 977 (Fed. Cir. 2017) (nonprecedential)]." (Final Act. 4.)
We do not agree with the Examiner's findings and ultimate conclusion that
the claims are directed to non-statutory subject matter.
In Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014), the
Supreme Court applied the framework as set forth in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) for determining
whether the claims are directed to patent-eligible subject matter. Alice, 134
S. Ct. at 2355. The first step in the analysis is to "determine whether the
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claims at issue are directed to one of [the judicially-recognized] patent-
ineligible concepts." Id. If the claims are directed to a patent-ineligible
concept, then the second step in the analysis is to consider the elements of
the claims "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 at 79, 78). However,
the Federal Circuit has articulated that "the first step in the Alice inquiry ...
asks whether the focus of the claims is on the specific asserted improvement
in computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Accordingly, the Federal Circuit determined, if "the claims are directed to a
specific implementation of a solution to a problem in the software arts," then
"the claims at issue are not directed to an abstract idea." Id. at 1339.
In the "Background" section, Appellants' Specification states that
"this disclosure is related to a messaging, content sharing, and object transfer
platform with transaction security and other features." (i-f 8.) In particular,
with respect to online transactions, Appellants' Specification discloses the
following drawbacks:
As an increasing number of users come online, they seek
to purchase digital content and physical goods online. Existing
mobile and electronic commerce typically requires a presentation
layer, such as a website or a mobile application that has a
shopping cart and a checkout process. The shopping cart and
checkout process is not convenient for users, and many users
leave their shopping carts without completing the purchase of
items. This adds much friction to the distribution of digital and
physical goods and also leaves the purchasing parties vulnerable
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to malicious attackers as the retailer may not secure payment,
shipping, or other personally identifiable information.
(i-f 9 ( emphasis added).)
As a solution to the problem of malicious attackers for non-secure
payments, Appellants propose the following solution:
Improvements over existing systems include the additional
security and efficiency associated with transferring the content
being purchased .... With embodiments of the present invention,
the seller may release ( e.g., download or decrypt) the product
upon receiving payment ( or the system may automatically
release (e.g., download or decrypt) the product upon receiving
payment). For example, a photographer may send unencrypted
low-quality thumbnail images to a potential buyer with
encrypted full resolution photos, and the buyer may click on a
purchase control and perform the purchase transaction. The
system may release encryption keys to the buyer and the buyer
may decrypt full resolution photos. This is a secure and efficient
process.
(i-f 35.) In particular, Appellants' Specification discloses the following
embodiment:
The sending device can send a large encrypted ( or unencrypted)
portion of the message and/or content of a predetermined size to
an enterprise server or a server in the cloud for storage .... The
system may retain the small portion of the data and store it locally
within a secure storage of the system, and, in some embodiments,
can also include a copy of the small portion when sending a
message. Without the small portion of the data, the receiving
device ( and malicious attackers) may not be able to put together
the complete set of data. In some embodiments, the sending
device can split the encrypted file ( or an unencrypted file) into
multiple portions that include more than two portions, and the
portions can vary in size.
(i-f 67 .) This embodiment is claimed in independent claim 1 as follows: (i)
"dividing, by the sending device, the object into at least two portions which
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include a first portion and a second portion"; and (ii) "sending, by the
sending device over a computer network, at least the first portion of the two
portions of the object to a server that does not store the second portion."
Independent claims 15 and 20 recite similar limitations.
Thus, to the extent Appellants' claimed invention is considered an
abstract idea, such claimed invention is a "specific asserted improvement in
computer capabilities" rather than "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." See Enfzsh, 822
F.3d at 1335-36. Accordingly, because "the claims are directed to a specific
implementation of a solution to a problem in the software arts," claims 1, 15
and 20 are not directly toward an abstract idea. See id. at 1339.
Therefore, we are persuaded by Appellants' arguments that:
the claimed system solves a technical problem of secure object
delivery in the network from the storage system by providing a
specific implementation of a solution in the software arts. By
storing an object in at least two portions, the storage system
prevents unauthorized access to the object at a particular storage
location. Similarly, by associating the restrictions with the
object, the storage system ensures that a receiver retrieves the
object only when the sender deems the restrictions to be satisfied.
(App. Br. 15 ( citations omitted).)
Thus, we do not agree with the Examiner that claims 1, 15, and 20 are
directed towards patent-ineligible subject matter.
Accordingly, we do not sustain the rejection of independent claims 1,
15, and 20 under 35 U.S.C. § 101. Claims 2-14, 16-19, and 22-28 depend
from independent claim 1. We do not sustain the rejection of claims 2-14,
16-19, and 22-28 under 35 U.S.C. § 101 for the same reasons discussed
with respect to independent claim 1.
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§ l l 2(b) Rejection
We are persuaded by Appellants' arguments (App. Br. 23) that
dependent claims 3 and 17 are not indefinite under 35 U.S.C. § 112(b ).
The Examiner found that "[t]he scope of the claim is unclear since one
of ordinary skill would not be able to ascertain what the positive step is since
'enabling' represents state rather than action." (Final Act. 7.) We do not
agree.
Dependent claim 3 recites "receiving a user request to upgrade the
account to enable the transfer of the first portion of the object or other
objects stored at the server to one or more receiving devices" ( emphasis
added). Dependent claim 17 recites similar limitations. In the context of
computing, one technical definition of "enable" is "[ t Jo activate or tum on."
MICROSOFT® COMPUTER DICTIONARY 191 (5th ed. 2002). Such definition is
consistent with Appellants' Specification, which discloses the following:
the system may determine whether the user is associated with a
subscription service ( operation 410). . . . The user may also
upgrade his account to a professional account, which enables
commerce capabilities (operation 414). The system may receive
a user request to upgrade to allow transferring the content or
other objects stored at a server to one or more receiving devices.
The transfer of the content may occur after a purchasing party
submits payment for the content.
(Spec. ,r 59 (emphasis added).) In view of the technical definition of
"enable," which is consistent with Appellants' Specification, one of ordinary
skill in the art would understand that the limitation "to upgrade the account
to enable the transfer of the first portion of the object or other objects stored
at the server to one or more receiving devices" means upgrading the account
to activate the transfer of objects.
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Thus, we are persuaded by Appellants' arguments that "receiving a
user request to upgrade the account to enable the transfer of the first portion
of the object indicates that the first portion of the object can be transferred to
the storage of the upgraded account" means "upgrading the account [that]
'makes possible' the storage of the first portion of the object." (App.
Br. 23.)
Thus, we do not sustain the rejection of dependent claims 3 and 17
under 35 U.S.C. § 112, second paragraph.
§ 103 Rejection-Shribman and Ginter
We are unpersuaded by Appellants' arguments (App. Br. 25) that the
combination of Shribman and Ginter would not have rendered obvious
independent claim 1, which includes the limitation "sending, by the sending
device over a computer network, at least the first portion of the two portions
of the object to a server that does not store the second portion."
The Examiner found that the client device of Shribman, which sends a
request for a first content part to a first content server and sends a request for
a second part to a second content server, corresponds to the limitation
"sending, by the sending device over a computer network, at least the first
portion of the two portions of the object to a server that does not store the
second portion." (Ans. 14--15.) We agree with the Examiner's findings.
Shribman relates to "streaming content from multiple servers, and, in
particular, to concurrently streaming video content from multiple sources,
such as from multiple Content Distribution Networks (CDNs)." (i-f 2.)
Shribman explains that sending a request for content to a provider server
includes "streaming, to the client device, the first content part from the first
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content server" and "sending, by the client device, a request for the second
content part to the second content server using the second server identifier."
(i-f 260.) Moreover, Shribman explains that "[t]he method may further
comprise the step of partitioning the content into at least the distinct first and
second content parts" (i-f 277) and "[t]hree or more multiple content servers
may be used, each storing a copy of the content or any part thereof' (i-f 278).
Because Shribman explains that the first content part is stored on the first
content server and the second content part is stored on the second content
server, rather than the first content server, Shribman teaches the limitation
"sending, by the sending device over a computer network, at least the first
portion of the two portions of the object to a server that does not store the
second portion."
Appellants argue that "the first sever [sic] stores an entire copy of the
content, and therefore, stores both 'first and second distinct content parts' in
the first copy of the content" and "[ s ]imilarly, the second sever [sic] stores
an entire copy of the content comprising all content parts." (App. Br. 25
(emphasis omitted).) Accordingly, Appellants argue, "the first and second
content servers of Shribman, each of which stores the entire copy of the
content, are not the same as the server of the instant claim," in which "the
server exclusively stores only one of the portions." (Id.) However, as
discussed previously, Shribman explains that in one embodiment, "[ t ]hree or
more multiple content servers may be used, each storing a copy of the
content or any part thereof." (i-f 278.)
Thus, we agree with the Examiner that the combination of Shribman
and Ginter would have rendered obvious independent claim 1, which
includes the limitation "sending, by the sending device over a computer
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network, at least the first portion of the two portions of the object to a server
that does not store the second portion."
We are unpersuaded by Appellants' arguments (App. Br. 27) that the
combination of Shribman and Ginter would not have rendered obvious
independent claim 1, which includes the limitation "dividing, by the sending
device, the object into at least two portions which include a first portion and
a second portion."
The Examiner found that partitioning of content into a distinct first
part and a distinct second part of Shribman, corresponds to the limitation
"dividing, by the sending device, the object into at least two portions which
include a first portion and a second portion." (Ans. 16.) We agree with the
Examiner's findings.
Shribman explains that "the client device partitions the content into
parts, allocates a source to each part, and simultaneously receives media
streams of the content parts from the allocated sources." (Abstract.)
Moreover, as discussed previously, Shribman explains that "[t]he method
may further comprise the step of partitioning the content into at least the
distinct first and second content parts." (i-f 277 .) Because Shribman explains
that the client device partitions the content into parts, which includes
partitioning content into distinct first and second content parts, Shribman
teaches the limitation "dividing, by the sending device, the object into at
least two portions which include a first portion and a second portion."
Appellants argue that "Shribman further elaborates in FIG. 12 and par.
[0420] that client device # 1 24 of Shribman 'may partition the content into
parts as part of a "Content Partition" step 123, and assigns sources to the
parts as part of a "Sources Allocation" step 124, "' and "the client device,
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which is the receiving device of a video stream, of Shribman obtains
different parts of a content, or partitions, from different sources." (App.
Br. 27.) Appellants further argue, "[t]his operation is not executed by a
source, which is the sending device of a video stream" and "Shribman does
not disclose a 'dividing, by the sending device, the object into at least two
portions."' (Id.) Contrary to Appellants' arguments, in one embodiment,
Shribman also explains that "the client device partitions the content into
parts." (Abstract.)
Thus, we agree with the Examiner that the combination of Shribman
and Ginter would have rendered obvious independent claim 1, which
includes the limitation "dividing, by the sending device, the object into at
least two portions which include a first portion and a second portion."
We are unpersuaded by Appellants' arguments (App. Br. 29, 38) that
the combination of Shribman and Ginter would not have rendered obvious
independent claim 1, which includes the limitation "receiving, at the sending
device, data indicating one or more restrictions set by the user associated
with the object."
The Examiner found that the rules and controls for the content creator
of Ginter corresponds to the limitation "receiving, at the sending device, data
indicating one or more restrictions set by the user associated with the
object." (Final Act. 10.) The Examiner concluded that "it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Shribman to include the features of Ginter because restrictions are
rules to control the consumption of content." (Id. (emphasis omitted).) We
agree with the Examiner's findings and conclusions.
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Ginter relates to "protecting rights of various participants in electronic
commerce and other electronic or electronically-facilitated transactions."
(i-f 3.) Figure 2 of Ginter illustrates an example of a chain of handling and
control (i-f 291), including VDE content creator 102 (i-f 405), arrow 104 for
sending the "rules and controls" (i-f 406), and content user 112 (i-f 407). In
particular, Ginter explains that "content creator 102 may also specify 'rules
and controls' for distributing the content" which "can specify who has
permission to distribute the rights to use content, and how many users are
allowed to use the content." (i-f 405.) Because Ginter explains that content
creator 102 specifies "rules and controls" for distributing the content, Ginter
teaches the limitation "receiving, at the sending device, data indicating one
or more restrictions set by the user associated with the object."
Appellants argue that "the set of restrictions of the instant application
is directed to the conditions for accessing the object itself' and "[ u ]nlike the
Ginter system, which modifies the control information of a content based on
a condition (e.g., a payment), the system of the instant application uses the
set of restrictions to set the conditions themselves." (App. Br. 29.)
However, Appellants' arguments are not commensurate in scope with
claim 1, because the claim does not require the set of restrictions to be
directed towards conditions for accessing the object itself. Moreover, the
importation of a narrow embodiment into the broader independent claim 1 is
improper. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) ("For example, a particular embodiment appearing in
the written description may not be read into a claim when the claim language
is broader than the embodiment.")
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Appellants further argue that "the 'rules and controls' of Ginter
controls the access of an entire content" and thus, "the combination of
Shribman and Ginter merely discloses controlling the access of the entire
content of Shribman, regardless of its content parts." (App. Br. 38
( emphases omitted).) Accordingly, Appellants argue, "the combination of
Shribman and Ginter cannot facilitate control of individual content parts of
Shribman without changing the principles of operation of Ginter." (Id.)
However, the Examiner cited to Ginter for teaching the limitation
"determining, by the sending device, that one or more restrictions set by the
user are satisfied" (Final Act. 10) and cited to Shribman for teaching the
limitation "at least two portions which include a first portion and a second
portion" (Ans. 16). The rejection of claim 1 is based on the combination of
Cummins and Maman, and Appellants cannot show non-obviousness by
attacking the references individually. See In re Keller, 642 F.2d 413,426
(CCPA 1981).
Thus, we agree with the Examiner that the combination of Shribman
and Ginter would have rendered obvious independent claim 1, which
includes the limitation "receiving, at the sending device, data indicating one
or more restrictions set by the user associated with the object."
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103. Claims 3, 5-14, 26, and 27 depend from claim 1, and
Appellants have not presented any additional substantive arguments with
respect to these claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[T]he Board reasonably interpreted Rule 41.3 7 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
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found in the prior art."). Instead, Appellants merely summarize either
Shribman or Ginter with a conclusory statement that the references do not
teach the features of the dependent claims. (See App. Br. 30-37.)
Therefore, we sustain the rejection of 3, 5-14, 26, and 27 under 35 U.S.C.
§ 103, for the same reasons discussed with respect to independent claim 1.
Independent claims 15 and 20 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any additional substantive arguments with respect to these claims.
See id. We sustain the rejection of claims 15 and 20, as well as dependent
claims 17, 19, 22-25, and 28, for the same reasons discussed with respect to
claim 1.
§ 103 Rejection-Shribman, Ginter, and Munk
Although Appellants nominally argue the rejection of dependent
claims 2, 4, 16, and 18 separately (App. Br. 29-31 ), the arguments presented
do not point out with particularity or explain why the limitations of these
dependent claims are separately patentable. In particular, Appellants merely
provide a summary of Munk with conclusory statements that Munk does not
teach the features of claims 2, 4, 16, and 18. (See id.) Moreover, Appellants
merely provide a conclusory statement that the "raw machine data of Munk
is technologically incompatible with the streaming service of Shribman."
(App. Br. 39.) Accordingly, without additional explanation, Appellants have
not presented any persuasive arguments with respect to these claims.
Arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., In re Huang, 100 F.3d 135, 139-140 (Fed. Cir. 1996).
We are not persuaded by these arguments for the reasons discussed with
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respect to claims 1 and 15, from which claims 2, 4, 16, and 18 depend.
Accordingly, we sustain the rejection of claims 2, 4, 16, and 18.
DECISION
The Examiner's decision rejecting claims 1-20 and 22-28 under 35
U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 3 and 17 under 35 U.S.C.
§ 112(b) is reversed.
The Examiner's decision rejecting claims 1-20 and 22-28 under 35
U.S.C. § 103 is affirmed.
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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