Ex Parte O et al

Patent Trial and Appeal Board

Aug 23, 2017

14105372 (P.T.A.B. Aug. 23, 2017)

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.
14/105,372 12/13/2013 Clint H. O'Connor DC-17944.02 1080
33438 7590 08/25/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
tmunoz @ tcchlaw. com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLINT H. O'CONNOR, GARY D. HUBER, and
MICHAEL HAZE
Appeal 2016-006478
Application 14/105,372
Technology Center 3600
Before THU A. DANG, LINZY T. McCARTNEY, and SCOTT E. BAIN,
Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3—9, 11—17, and 19—26. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-006478
Application 14/105,372
STATEMENT OF THE CASE
The present patent application concerns “separating the purchase of
digital assets from their fulfillment and activation.” Specification 11, filed
December 13, 2013 (“Spec.”). Claim 1 illustrates the claimed subject
matter:
1. A system for managing the entitlement of digital assets,
comprising:
a storage medium comprising a repository of system
identifier data, digital assets data, and digital assets entitlement
data; and
a processor, the processor being operable to:
receive purchase transaction data comprising digital
assets identifier data and digital assets activation key data
associated with a purchase of digital assets;
receive system identifier data associated with a
target system;
process the purchase transaction data and the
system identifier data to generate digital assets activation
request data, wherein the digital assets activation request
data is provided to the provider of the digital assets;
receive digital assets data and digital assets
activation data from the provider of the digital assets; and
process the purchase transaction data and the digital
assets activation data to generate digital assets entitlement
data; and wherein
the digital assets entitlement data is associated with
the target system identified by the system identifier data
and with digital assets identified by the digital assets
identifier data.
Appeal Brief 6, filed November 16, 2015 (“Br.”).
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Application 14/105,372
REJECTION
Claims 1, 3—9, 11—17, and 19—26 stand rejected under 35 U.S.C. § 101
as directed to nonstatutory subject matter. Final Office Action 3—5, mailed
June 12, 2015 (“Final Act.”).
ANALYSIS
Appellants do not present separate arguments for claims 1, 3—9, 11—
17, and 19—26. See Br. 3—5. We select claim 1 as representative of these
claims and decide the appeal based on claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (“When multiple claims subject to the same ground of
rejection are argued as a group . . ., the Board may select a single claim from
the group . . . and may decide the appeal as to the ground of rejection with
respect to the group ... on the basis of the selected claim alone.”).
Appellants argue claim 1 is not directed to an abstract idea because
“the claims of the present application are unlike that of any of the examples
provided by the [Supreme] Court.” Br. 4. Moreover, Appellants contend
claim 1 recites limitations “sufficient to ‘transform’ the claims into a patent-
eligible application as the elements provide meaningful improvements over
the technical field of managing the entitlement of digital assets.” Br. 4.
Finally, Appellants assert claim 1 is akin to the claims the Federal Circuit
concluded were patent eligible in DDR Holdings LLC v. Hotels.com L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Br. 4-5.
Section 101 of the Patent Act provides “[w]hoever 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 has long held that this
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Application 14/105,372
provision contains an implicit exception: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)). The Court has
set forth a two-part inquiry to determine whether this exception applies.
First, we must “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. Second, if the
claim is directed to one of those patent-ineligible concepts, 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 Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012)). Put differently, we must search the claims for an “inventive
concept,” that is, “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.’” Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1294).
We first consider whether the Examiner properly concluded that claim
1 is directed to an abstract idea. The Examiner concluded claim 1 is
“directed to handling software activation which is considered to be an
abstract idea inasmuch as such activity is considered both a fundamental
economic practice and a method of organizing human activity.” Final Act.
4.
Appellants have not persuaded us the Examiner erred. To determine
whether claim 1 is directed to an abstract idea, we consider claim 1 “in [its]
entirety to ascertain whether [its] character as a whole is directed to
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Application 14/105,372
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). See also Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“[W]e have described
the first-stage inquiry as looking at the ‘focus’ of the claims, their
“‘character as a whole.”’). Claim 1 recites “[a] system for managing the
entitlement of digital assets” that includes “a storage medium” and “a
processor.” Br. 6. The claimed processor is “operable to” (1) receive
purchase transaction and system identifier data, (2) generate digital assets
activation request data by processing the purchase transaction and system
identifier data, (3) receive digital assets and digital assets activation data,
and (4) generate digital assets entitlement data by processing the purchase
transaction and digital assets activation data. Br. 6. That is, the claimed
system receives data and uses unspecified processes to generate additional
data from the received data.
The Federal Circuit has concluded similar claims are directed to an
abstract idea. For example, in Clarilogic, Inc. v. FormFree Holdings Corp.,
the court concluded claims reciting “collecting financial data, transforming
the data into a desired format, validating the data by ‘applying an algorithm
engine,’ analyzing certain exceptions, and generating a report” were directed
to an abstract idea. Clarilogic, Inc. v. FormFree Holdings Corp., No. 20lb-
1781, 2017 WL 992528, at *2 (Fed. Cir. Mar. 15, 2017) (nonprecedential).
The court explained that claims “for collection, analysis, and generation of
information reports, where the claims are not limited to how the collected
information is analyzed or reformed, is the height of abstraction.”
Clarilogic, 2017 WL 992528, at *2. Similarly, in Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, the court concluded that
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claims reciting receiving output, recognizing data within the received output,
and storing the recognized data were directed to an abstract idea. Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014). The court noted “[t]he concept of data
collection, recognition, and storage is undisputedly well-known.” Content
Extraction, 776 F.3d at 1347. And in Electric Power Group, LLC v. Alstom
S.A., the court concluded claims focused on “collecting information,
analyzing it, and displaying certain results of the collection and analysis”
were directed to an abstract idea. Elec. Power Grp., 830 F.3d at 1353. The
court reasoned “the focus of the claims is not on ... an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power Grp., 830 F.3d at 1354.
We see no meaningful difference between claim 1 and the claims at
issue in Clarlogic, Context Extraction, and Electric Power Group. Claim 1
does not improve the recited “storage medium” and “processor”; claim 1
merely uses these components to perform functions specified at a high level
of generality. The recited functions either are well-known (the “receive”
limitations) or essentially describe a result without meaningfully limiting
how the claimed system achieves the result (the “process” limitations).
Claim 1 does not “focus on a specific means or method that improves the
relevant technology” but instead is “directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery.”
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed.
Cir. 2016). We therefore agree with the Examiner that claim 1 is directed to
an abstract idea. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
(Fed. Cir. 2016) (explaining that courts “have found it sufficient to compare
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[the] claim[] at issue to those claims already found to be directed to an
abstract idea in previous cases.”); see also Amdocs (Israel) Limited v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that
the “decisional mechanism courts now apply” for deciding if claims are
directed to an abstract idea “is to examine earlier cases in which a similar or
parallel descriptive nature can be seen”).
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next consider whether claim 1 includes an “inventive
concept.” The Examiner found “[t]he computing device and apparatuses”
recited in claim 1 “are generic computers with functionalities [that] are well-
understood, routine and conventional activities previously known to the
industry.” Final Act. 5. The Examiner explained the elements recited in
claim 1 “when taken alone, each execute in a manner routinely and
conventionally expected of these elements” and “when taken in combination
... do not offer substantially more than the sum of the functions of the
elements when each is taken alone.” Final Act. 5. Based on these findings,
among others, the Examiner concluded claim 1 does not include an
“inventive concept.” See Final Act. 4—5.
Appellants have not persuaded us the Examiner erred. We see
nothing in the elements of claim 1, considered “both individually and ‘as an
ordered combination’” that ‘transform[s] the nature of the claim[s]’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
Ct. at 1289, 1297). Appellants’ conclusory assertions that claim 1
“provide[s] a substantial improvement over the art in the field” and includes
limitations “sufficient to ‘transform’ the claims into a patent-eligible
application” lacks adequate supporting reasoning and evidence. See Br. 4.
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As discussed above, claim 1 recites two generic components—a “storage
medium” and a “processor”—that perform functions specified in terms of
results, not mechanisms to achieve those results. That is, claim 1 recites
these functions “in general terms, without limiting them to technical means
for performing the functions that are arguably an advance over conventional
computer and network technology.” Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (quoting Elec.
Power Grp., 830 F.3d at 1351). That is not enough. See Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017) (concluding claims did not recite an inventive concept where the
claims “provide[] only a result-oriented solution, with insufficient detail for
how a computer accomplishes it”).
As for DDR Holdings, we disagree with Appellants that the claims
before us are similar to the claim at issue in that case. There, the disputed
claims solved an Internet-specific problem with an Internet-based solution
that was “necessarily rooted in computer technology” and “overrode] the
routine and conventional sequence of events.” DDR Holdings, 773 F.3d at
1255—59. Here, as noted above, claim 1 merely recites performing functions
specified at a high level of generality using generic computer components.
As the DDR Holdings court explained, “after Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256.
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Application 14/105,372
DECISION
We affirm the Examiner’s rejection of claims 1, 3—9, 11—17, and 19—
26 under 35 U.S.C. § 101.
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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