Ex Parte Olliphant et al

Patent Trial and Appeal Board

Mar 16, 2018

11837001 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111837,001 08/10/2007 Hugo Olliphant
132897 7590 03/20/2018
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
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.
P2395.10218US01 4168
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
docket@mabr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGO OLLIPHANT, VISHWANATH SHASTRY,
MATTHEW MENGERINK, and HARVEY GRASTY
Appeal2016-001386 1
Application 11/837,001 2
Technology Center 3600
Before HUBERT C. LORIN, WILLIAM V. SAINDON, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1, 4, 5, 8, 9, 11, 14--17, 24, 27-30, and
33-37. We have jurisdiction under§ 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our Decision references Appellants' Specification ("Spec.," filed Aug. 10,
2007).
2 Appellants identify eBay Inc. as the real party in interest. Appeal Br. 2.
SUBJECT MATTER ON APPEAL
The invention "relates generally to a system and method for
distributing digital content and more specifically to a system and method for
integrating Digital Rights Management (DRM) information and payment
information for the digital content." Spec. 1 :3---6. Claims 1, 8, 11, 24, and
3 0 are the independent claims on appeal. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system for a buyer to receive digital content from
another buyer over a network, the system comprising:
a client machine of the buyer comprising an interface
including:
a digital content portion to receive, via the network,
a package including the digital content; and
a header portion to receive, via the network, a
package including a header of the digital content;
the digital content is outside the header and is configured
to enable the client machine of the other buyer to transmit the
header and the digital content to the interface;
the header provides Digital Rights Management (DRM)
information and payment information for the digital content;
the payment information includes payment receiver
information and is embedded into the DRM information; and
the interface is configured to be used by the buyer to
transmit a payment to a payment system in response to the buyer
determining to buy the digital content, the payment system being
associated with a seller of the digital content based on the
payment information for the digital content.
REJECTION
The Examiner rejects claims 1, 4, 5, 8, 9, 11, 14--17, 24, 27-30, and
33-37 under 35 U.S.C. § 101 as non-statutory subject matter.
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ANALYSIS
Written Description
We enter a new ground of rejection of claims 1, 4, 5, 8, 9, 11, 14--17,
24, 27-30, and 33-37 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. These claims contain
subject matter that is not described in the disclosure of the application in
such a way as to reasonably convey to one skilled in the relevant art that the
inventors, at the time the application was filed, had possession of the
claimed invention. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane) (citations omitted).
Each of the independent claims recites that the digital content is
configured to cause the client machine of another buyer to transmit the
header and the digital content to the client machine of the buyer. For
example, independent claim 1 recites "the digital content ... is configured to
enable the client machine of the other buyer to transmit the header and the
digital content to the interface."
The disclosure, however, does not describe that the digital content is
configured to enable the other client machine to transmit the header and the
digital content to the interface. As such, the disclosure of the application
does not reasonably convey to one skilled in the art that the inventors had
possession of the invention as recited in each of the independent claims.
Consequently, independent claim 1, 8, 11, 24, and 30 and dependent claims
4, 5, 9, 14--17, 27-29, and 33-37 fail to comply with the written description
requirement.
Indefiniteness
We also enter a new ground of rejection of claims 1, 4, 5, 8, 9, 11, 14--
17, 24, 27-30, and 33-37 under 35 U.S.C. § 112, second paragraph, as being
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indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention. These claims contain
subject matter that is unclear. Ex parte McAward, No. 2015-006416, 2017
WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (citing In re
Packard, 751F.3d1307, 1310, 1314 (Fed. Cir. 2014)).
Each of the independent claims recites that the digital content is
configured to cause the client machine of another buyer to transmit the
header and the digital content to the client machine of the buyer. For
example, independent claim 1 recites "the digital content ... is configured to
enable the client machine of the other buyer to transmit the header and the
digital content to the interface." In contrast, the Specification describes that
the interface, not the digital content, can be used to receive digital content.
Namely, the Specification describes that "[t]he interface 200 can be used by
the buyer to receive a digital content package." Spec. 5:3--4. The
Specification similarly describes that "[ t ]he buyer system 500 provides an
interface (as shown in FIGS. 2 and 3) for a buyer to receive a digital content
package." Id. at 6:7-8. In light of the inconsistency between the claims and
the Specification as to what is configured to cause the other buyer's client
machine to transmit the header and the digital content, the scope of the
independent claims is unclear. See, e.g., In re Cohn, 439 F.2d 989, 993
(Fed. Cir. 1971) (sustaining a rejection of claims under 35 U.S.C. § 112,
second paragraph, where the claims are inherently inconsistent with the
specification). Consequently, independent claim 1, 8, 11, 24, and 30 and
dependent claims 4, 5, 9, 14--17, 27-29, and 33-37 are indefinite.
Non-Statutory Subject Matter
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The Examiner has determined that claims 1, 4, 5, 8, 9, 11, 14--17, 24,
27-30, and 33-37 are judicially excepted from statutory subject matter. To
distinguish claims to judicially-excepted subject matter, i.e., laws of nature,
natural phenomena, and abstract ideas, from claims to patent-eligible
applications of those concepts, we apply a two-step framework, which, in
the first step, considers whether a claim is directed to a patent-ineligible
concept, e.g., an abstract idea, and, if so, considers, in the second step,
whether the elements the claim, individually and as an ordered combination,
recite an inventive concept-an element or combination of elements
sufficient to ensure the claim amounts to significantly more than the abstract
idea and transform the nature of the claim into a patent-eligible concept.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294,
1296-98 (2012)).
To apply this two-step framework, we must understand the scope of a
claim. Without an understanding of the scope, we cannot accurately
ascertain what a claim is directed to pursuant to the first step, nor can we
properly consider the elements of the claim individually and as an ordered
combination under the second step. Given that the present claims include
subject matter that is unclear, the Examiner's determination that the claims
are patent ineligible necessarily required speculation as to the scope of the
claims. We, therefore, do not sustain proforma the Examiner's rejection of
claims 1, 4, 5, 8, 9, 11, 14--17, 24, 27-30, and 33-37 under 35 U.S.C. § 101
as subject matter judicially excepted from statutory subject matter.
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DECISION
We enter a new ground of rejection for claims 1, 4, 5, 8, 9, 11, 14--17,
24, 27-30, and 33-37 under 35 U.S.C. § 112, first paragraph.
We also enter a new ground of rejection for claims 1, 4, 5, 8, 9, 11,
14--17, 24, 27-30, and 33-37 under 35 U.S.C. § 112, second paragraph.
The Examiner's decision to reject claims 1, 4, 5, 8, 9, 11, 14--17, 24,
27-30, and 33-37 under 35 U.S.C. § 101 is reversed.
NEW GROUNDS OF REJECTION
We enter new grounds of rejection pursuant to our authority under 37
C.F .R. § 41.50(b ). Section 41.50(b) further provides:
\Vhen the Board enters such a non-final decision, the 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant rnay again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought
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Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214. 01.
REVERSED; 37 C.F.R. § 41.50(b)
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