Ex Parte Raley et al

Patent Trial and Appeal Board

Dec 11, 2018

13763002 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/763,002 02/08/2013
128144 7590 12/13/2018
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
FIRST NAMED INVENTOR
Michael Raley
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.
10-559-US-l-Pl 3428
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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):
uspto@rimonlaw.com
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL RALEY and EDDIE J. CHEN
Appeal2017-003501
Application 13/763,002
Technology Center 3600
Before MURRIEL E. CRAWFORD, MEREDITH C. PETRA VICK, and
J. JOHN LEE, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1--4, 6-9, 11-20, 22-36, 38--41 and 43--48, which are all the claims
pending in the present application. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify ContentGuard Holdings, Inc., as the real party in
interest. (App. Br. 1.)
Appeal2017-003501
Application 13/763,002
CLAIMED SUBJECT MATTER
The present invention relates generally to an apparatus and method for
authorizing users to "access content from multiple domains on multiple
devices without having to manually manage authorization of devices."
Independent claim 1 is illustrative of the claims on appeal and recites:
1. An apparatus of a first domain for granting access to
content, in the first domain, the apparatus comprising:
one or more processors; and
one or more memories operatively coupled to at least one
of the one or more processors and having instructions stored
thereon that, when executed by at least one of the one or more
processors, cause at least one of the one or more processors to:
authenticate a user device that is in the first domain
by receiving user credentials associated with the user;
communicate with a device of a second domain that
is distinct from the first domain to determine whether the
user associated with the user credentials has a license to
access content in the second content domain, the license
specifying at least one use permission in the second
domain; and
grant temporary authorization to the user device to
access content in a manner within the scope of the at least
one use permission in the first domain based at least in part
on a determination that the user associated with the user
credentials has a license to access content in the second
content domain.
REJECTIONS ON APPEAL
Claims 1--4, 6-9, 11-20, 22-36, 38--41 and 43--48 stand rejected
under 35 U.S.C. § 101.
Claims 1--4, 6-9, 11-20, 22-25, 27-36, 38--41 and 43--48 stand
rejected under 35 U.S.C. § 112(b).
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Application 13/763,002
Claims 1--4, 6, 8-9, 11-20, 22, 24--25, 27-36, 38, 40--41 and 43--48
stand rejected under 35 U.S.C. § I03(a) as unpatentable in view of Johnson
(US 8,443,429 Bl; issued May 14, 2013) and Mayo (US 2005/0204148 Al;
published Sept. 15, 2005).
ANALYSIS
A. Rejection Under§ 101 for Patent-Ineligible Subject Matter
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 implicit
exceptions; specifically, "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
Alice sets forth a two-step framework for determining whether a claim
falls within one of these judicially-created exceptions. Id. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
1296-1297 (2012)). The first step of the framework is to determine whether
the claim is "directed to a patent-ineligible concept," such as an abstract
idea. Id. If the claim is not directed to a patent-ineligible concept, the
inquiry ends and the claim is eligible under § 101. McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). But if the
claim is directed to an ineligible concept, the inquiry proceeds to the second
step of the Alice framework. Id.
In the second step of the Alice framework, the elements of the claim at
issue are considered, both "individually and as an ordered combination," to
determine whether an "inventive concept" is present. Alice, 134 S. Ct. at
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2355. The claim is eligible if it includes an element or combination of
elements that is sufficient to ensure that the claim amounts to "significantly
more" than just the ineligible concept itself. Id.
The Examiner rejected claims 1--4, 6-9, 11-20, 22-36, 38--41 and
43--48 under § 101, concluding they are directed to an abstract ideas without
additional elements that amount to "significantly more." Final Act. 12-18.
Appellants argue that the Examiner erred in both steps of the Alice
framework. See App. Br. 4--7. Their arguments address the independent
claims (1, 17, and 33) together, and no arguments are presented as to the
dependent claims separate from those for the independent claims. See id.
Thus, our analysis also focuses on the independent claims.
For Alice step one, Appellants argue (1) that the Examiner failed to
explain adequately how the claim limitations are directed to an abstract idea,
(2) the purported abstract idea identified by the Examiner is not an ineligible
concept, and (3) the claims are not directed to an abstract idea because they
are necessarily rooted in computer technology in order to overcome a
problem specifically arising in computer networks similar to DDR Holdings
LLC v. Hotels.com LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014). App. Br.
5-7. Appellants' arguments, however, are not persuasive.
As the Examiner explained (Final Act. 3--4, 7-8), the independent
claims each recite the same process of receiving user credentials to
authenticate a user device, communicating with a second domain to
determine whether the user credentials have a license specifying permissions
in the second domain, and granting temporary authorization to access
content in the first domain based on such license. The Examiner determined
that the claimed invention is directed to the abstract idea of "using
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credentials provided by one entity for the purpose of receiving authorization
from a second entity," and relied on a number of court cases in which similar
schemes of authenticating credentials and granting conditional access to
content were held to be ineligible abstract ideas. Id. at 4---6. Thus, the
Examiner analyzed the claim limitations and properly compared them to
similar examples in case law to explain why the claims are directed to an
ineligible abstract idea. See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1294 (Fed. Cir. 2016) (applying the methodology of comparing
to prior cases to determine whether a claim is directed to an abstract idea).
Appellants' conclusory assertions that the Examiner did not do so are not
persuasive. See App. Br. 5 (alleging "no explanation"); Reply Br. 2
(alleging the Examiner did not provide "any reasoning"). 2
Appellants also fail to demonstrate that the Examiner's analysis is
incorrect. Despite contending that the abstract idea identified by the
Examiner is "not an abstract idea within the meaning of 35 U.S.C. § 101 and
is not similar to any abstract ideas in previous court decisions," Appellants
do not address any of the court decisions relied on by the Examiner.
Further, Appellants' reliance on DDR is misplaced. According to
Appellants, the present invention "is directed to overcoming inefficiencies
associated with computer networks," and consequently are "necessarily
2 Indeed, despite faulting the Examiner for purportedly failing to address the
claim limitations (App. Br. 5) and oversimplifying the claims (Reply Br. 2),
Appellants do not identify any claim limitation( s) as demonstrating that the
claims are not directed to an abstract idea, and only characterizes the
claimed invention as a "technique [that] improves content access technology
by allowing users to access content from multiple domains on multiple
devices without having to manually manage authorization of devices." App.
Br. 5---6.
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rooted in computer technology in order to overcome these inefficiencies."
App. Br. 6; see also Reply Br. 2-3. These arguments are unpersuasive. In
DDR, the claims at issue related to a problem unique to the workings of
Internet hyperlinks. See DDR, 773 F.3d at 1257. As the Examiner found,
the present invention addresses a problem "similar to that of having a
driver's license, a birth certificate or other credential issued by one
jurisdiction being considered valid in a different jurisdiction" such that "the
problem is not one that is unique to the Internet world." Final Act. 4; see
also Ans. 20 ( explaining that the present invention does not address a
"technological problem" but rather "one involving the organization of
human activity" similarly to using authenticating documents from one
authority to access services from a different authority). Although Appellants
show that this problem exists in a setting involving computer networks
(Reply Br. 3 (citing Spec. ,r,r 6-8)), no evidence is cited to demonstrate that
this problem is unique or specific to such an environment. Thus, even
though the claims "have nothing to do with driver's licenses or birth
certificates" (App. Br. 7), we agree with the Examiner's finding that the
character of the claims is similar for purposes of determining whether the
claims are directed to an abstract idea.
With respect to Alice step two, Appellants present only conclusory
attorney argument that fails to show any error in the Examiner's analysis.
Appellants several times aver that the claims present an "inventive concept"
(Reply Br. 4) and offer "significantly more" than an abstract idea because of
limitations that are not "well-understood, routine and conventional in the
field" (App. Br. 6), but no such limitations are identified. Although
Appellants note that the claims recite granting "temporary authorization" in
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Application 13/763,002
a domain based on checking credentials in a different domain, they do not
explain or even assert that this limitation is sufficient to add "significantly
more" to the abstract idea of the claim, nor is it evident from the brief
paragraph of the Specification cited. See App. Br. 6 ( citing Spec. ,r 79).
Similarly unpersuasive is Appellants' argument that the Examiner failed to
consider the "ordered combination of claim elements"-Appellants do not
identify any individual element or combination of elements that were not
considered. See Reply Br. 4. Moreover, the Examiner clearly considered
the claim limitations, including as an ordered combination. Final Act. 13.
In sum, Appellants fail to identify any specific aspect of the Examiner's
Alice step two analysis that is erroneous, much less provide persuasive
argument, authority or evidence to demonstrate such error. 3
For the above reasons, we sustain the Examiner's rejection of claims
1--4, 6-9, 11-20, 22-36, 38--41 and 43--48 under§ 101.
B. Rejection Under§ l 12(b) for Indefiniteness
The Examiner rejected claims 1--4, 6-9, 11-20, 22-25, 27-36, 38--41
and 43--48 under§ 112(b) as indefinite. Final Act. 18-19. Specifically, the
Examiner determined that the claim term "manner" in the phrase "grant
temporary authorization to the user device to access content in a manner
within the scope of the at least one use permission" is indefinite because it
3 Appellants note that the Examiner incorrectly referenced a "second
domain" in the Examiner's Answer where the correct term should have been
"first domain." Reply Br. 1-2. Although Appellants are correct, we are not
persuaded this establishes reversible error because the Examiner did not
make the same mistake in the Final Action.
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fails to apprise those skilled in the art of the scope of the claim. Id.; Ans. 21.
The term is recited in each of the independent claims.
Appellants argue that the term "manner" is not indefinite because the
claim makes clear that the user is authorized to access content in a manner
"within the scope of the at least one use permission," which defines the
scope of the term. App. Br. 7-8; Reply Br. 5---6. We agree. The claim
specifies that the term "manner" is bounded by the requirement that it be
"within the scope of the at least one use permission." The Examiner did not
indicate that the limitation "scope of the at least one use permission" is
indefinite. Thus, we reverse the Examiner's rejection of claims 1--4, 6-9,
11-20, 22-25, 27-36, 38--41 and 43--48 under§ 112(b).
C. Rejection Under§ 103(a) for Obviousness
The Examiner rejected claims 1--4, 6, 8-9, 11-20, 22, 24--25, 27-36,
38, 40--41 and 43--48 as obvious in view of Johnson and Mayo. Final Act.
19-23. According to Appellants, the Examiner erred in finding that Mayo
teaches communicating with a second domain ( distinct from the first
domain) to determine whether the user has a license specifying at least one
use permission for accessing content on the second domain, a limitation
recited in each of the independent claims. App. Br. 8-10. Appellants argue
all of the rejected claims together and do not address any claim individually.
Id. More specifically, Appellants argue that (1) Mayo teaches away from
the claimed invention because it teaches the use of session cookies/tokens,
(2) Mayo does not teach access based on a use permission but rather teaches
granting full access, and (3) Mayo's cookies/tokens do not teach the recited
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license specifying a use permission. App. Br. 8-10. Appellants' arguments
are not persuasive.
First, Appellants fail to identify any evidence, or even allege, that
Mayo criticizes, discredits, or otherwise discourages communicating with a
second domain in the manner claimed in the present application. Thus,
Appellants have not established that Mayo teaches away from the claimed
invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Second, Appellants are incorrect that Mayo does not teach granting
access according to use permissions rather than full access to all content. In
Mayo, a user establishes a session with "second domain 24" while having
previously logged into "first domain 18." Mayo ,r 57. The user makes a
request for resources at second domain 24, which is redirected to first
domain 18. Id. Security service 26 creates a secure token or tag that verifies
the user's status on first domain 18. Id. As the Examiner found (Final Act.
10), Mayo teaches that "the nature or types of resources that the user is
authorized or permitted to access" may be disclosed via a secure token.
Mayo ,r 57. The secure token helps "establish the resources which the user
is authorized to access, and which the second domain [24] is authorized to
display to the user." Id. We agree with the Examiner's finding that these
disclosures of Mayo teach the relevant limitations of the present claims.
Finally, we are not persuaded by Appellants argument that the tokens
in Mayo fail to teach the recited license specifying a use permission. See
App. Br. 9-10. As discussed above, the Examiner found that Mayo teaches
a secure token that relays information regarding the nature/types of
resources that the user is permitted to access. See Final Act. 10 ( citing Mayo
,r 57). Although Appellants assert conclusorily that "Mayo does not relate to
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licenses at all" (App. Br. 9), no evidence is presented to rebut the
Examiner's finding that the information relayed by the tokens in Mayo teach
the recited use permission specified by a license. Appellants further argue
that Mayo's cookies/tokens are temporary and "disappear[] when the
browsing session ends." Id. at 9--10 (citing Mayo ,r 28). The cited portion
of Mayo, however, does not support Appellants argument, in fact disclosing
that cookies "may" be temporary, or may instead be "persistent," i.e., not
deleted at the end of the session. Mayo ,r 28. Further, Appellants do not
identify any evidence indicating that the recited license specifying a use
permission should be construed to exclude temporary cookies or tokens.
For the above reasons, we are not persuaded of error in the
Examiner's rejection of claims 1--4, 6, 8-9, 11-20, 22, 24--25, 27-36, 38,
40--41 and 43--48 as obvious in view of Johnson and Mayo, and we sustain
the rejection as a result.
DECISION
We AFFIRM the Examiner's rejection of claims 1--4, 6-9, 11-20, 22-
36, 38--41 and 43--48 under 35 U.S.C. § 101.
We REVERSE the Examiner's rejection of claims 1--4, 6-9, 11-20,
22-25, 27-36, 38--41 and 43--48 under 35 U.S.C. § 112(b).
We AFFIRM the Examiner's rejection of claims 1--4, 6, 8-9, 11-20,
22, 24--25, 27-36, 38, 40--41 and 43--48 under 35 U.S.C. § 103(a).
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.
§ 1.136(a)(l )(iv).
AFFIRMED
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