Ex Parte Rhoads et al

Patent Trial and Appeal Board

Sep 26, 2018

14030028 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/030,028 09/18/2013 Geoffrey B. Rhoads
99103 7590 09/28/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
098888-2341 4361
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY B. RHOADS and ANTHONY RODRIGUEZ 1
Appeal2018-002316
Application 14/030,028
Technology Center 2400
Before JASON V. MORGAN, IRVINE. BRANCH, and
JON M. JURGOV AN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 6-9, 11-15, and 18-20. Claims 4, 5, 10, 16, and 17
are canceled. Br. 14--16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Invention
The Specification discloses processing audio and video to obtain data
from "digital watermarks imperceptibly embedded" therein. Spec. ,r 46.
1 Appellant is Digimarc Corporation, identified in the Appeal Brief as the
real party in interest. Br. 2.
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Application 14/030,028
Representative Claim
1. A method comprising:
receiving, at a processor, a digital watermark that is associated with a
content item;
identifying, by the processor, a content type or location based at least
in part on the digital watermark;
obtaining user characteristics, at the processor, that are associated
with a user to whom media content is to be delivered to; and
based on the user characteristics and the content type or location,
determining, by the processor, user-specific content from a plurality
of content for the user.
Rejections
The Examiner rejects claims 1-3, 6-9, 11-15, and 18-20 on grounds
of non-statutory double-patenting as either being anticipated by or obvious
over Rhoads et al. (US 8,543,661 B2; issued Sept. 24, 2013)
("Rhoads '661"). Final Act. 3--4.
The Examiner rejects claims 1-3, 6-9, 11-15, and 18-20 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
5-7.
NON-STATUTORY DOUBLE-PATENTING
Appellant does not challenge the Examiner's non-statutory double-
patenting rejection. Rather, Appellant previously requested "that the double
patenting rejections be held in abeyance until such time as the currently
pending claims are otherwise in condition for allowance." Amend. 5 (Mar.
31, 2017); Resp. after Final Act. 5 (June 28, 2017).
The Examiner acknowledged Appellant's request for abeyance. Final
Act. 2; see also Adv. Act 2 (July 7, 2017) ("Applicant is holding the double
patenting rejection in abeyance"). However, the Examiner dispels any
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suggestion that the double-patenting rejection is not an issue for
consideration by asserting that "[ e ]very ground of rejection set forth in the
Office action dated 4/18/1 7 from which the appeal is taken is being
maintained." Ans. 3. Despite being on notice that the double-patenting
rejection is not being held in abeyance, Appellant failed to file a Reply Brief.
Furthermore, neither the Examiner nor Appellant have the authority to
hold a pending double-patenting rejection in abeyance in proceedings before
the Board. "Only objections or requirements as to form not necessary for
further consideration of the claims may be held in abeyance until allowable
subject matter is indicated." Manual of Patent Examining Procedure (9th
ed., rev. 07.2015), § 804.I.B.1 (Nov. 2015). The time to present merits on a
pending double-patenting rejection is in the Appeal Brief, not some future
date. See Ex parte Invista North America S.A.R.L., Appeal No. 2014-
002277, slip op. at 4 (PT AB 2016) (non-precedential).
Appellant may file a terminal disclaimer or the Examiner may
withdraw pending double-patenting rejections. However, any double-
patenting rejection left pending may be decided by the Board on appeal
unless specific circumstances dictate the Board withhold judgment. See Ex
parte Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential) (it was
premature for the Board to address a provisional non-statutory double-
patenting rejection when no other rejections were sustained).
Such circumstances do not apply here. The non-statutory double-
patenting rejection at issue is non-provisional. Moreover, we sustain another
rejection of the claims, as detailed below. Therefore, the unchallenged
double-patenting rejection is before the Board and is ripe for consideration.
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Accordingly, we summarily sustain the Examiner's non-statutory
double-patenting rejection of claims 1-3, 6-9, 11-15, and 18-20.
35 U.S.C. § 101
Findings and Contentions
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner concludes the claimed invention is "directed to the
abstract idea of determining best content based on receipt of an identifier."
Final Act. 5. The Examiner also concludes that additional recitations
directed to use of general purpose computer technologies do not make the
claim 1 significantly more than the underlying abstract idea. See id. at 5---6;
see also Ans. 3.
Appellant contends the Examiner erred because claim 1 requires "use
of a 'digital watermark' to identify content type or location, ... obtain[s]
user characteristics 'associated with a user to whom media content is to be
delivered to', and then ... determin[es] 'user-specific content' based on ...
identified" data. Br. 11. Appellant further argues that claim 1 "features can
only be performed using a specially-programmed computer configured to
receive a digital watermark, identify content type or location based on the
digital watermark, obtain user characteristics, and then determine user-
specific content based on the user characteristics and the content type or
location." Id. at 12.
Analysis
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
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in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions "from those that claim patent-
eligible applications of those concepts." Id. (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if so, then determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the patent-
ineligible concept itself. See Alice, 134 S. Ct. at 2355. However, "at present
there is no such single, succinct, usable definition or test" for what an
"abstract idea" encompasses. Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016), cert. denied, 138 S. Ct. 469 (2017).
Therefore, the conclusion that a claim is abstract often turns on the
examination of "earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided." Amdocs, 841 F.3d at 1294 (citing Elec. Power Grp., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016)).
Step 1:
Appellant argues claim 1 is not abstract because it uses a digital
watermark. See Br. 11-12. In particular, Appellant argues "[ w ]ithout a
specially-programmed computer, a human cannot identify a content type or
location based on a digital watermark ... " Id. at 12. However, the use of a
computer to recognize digital watermark a human cannot identify is
insufficient to make claim 1 non-abstract.
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A similar case involving validating entry into a transit system using a
bankcard terminal included a recitation directed to "receiving, from a
bankcard reader, bankcard data comprising data from a bankcard currently
presented by a holder of the bankcard, wherein the bankcard comprises one
of a credit card and a debit card." Smart Sys. Innovations, LLC v. Chicago
Transit Auth., 873 F.3d 1364, 1369 (Fed. Cir. 2017) (quoting Silbemagl et
al. (US 7,566,003 B2; issued July 28, 2009) ("Silbemagl"), claim 14 ), aff'g
No. 14-cv-08053, 2015 WL 4184486 (N.D. Ill. July 10, 2015). The claimed
invention of Smart Systems included embodiments in which a human could
not read the data from the bankcard. See, e.g., Silbemagl col. 4, 11. 30-39
( detailing embodiments of a bankcard as including the Credit Card Format
with a magnetic stripe, a key fob, a wristband, etc.). Despite encompassing
the use of bankcard data in forms not identifiable by a human, the claimed
invention was directed to the abstract idea of data collection, storage, and
recognition. Smart Sys., 873 F.3d at 1372. Similarly, determining best
content based on receipt of an identifier is abstract even with the identifier
being in a digital watermark that is not identifiable by a human.
For these reasons, we agree with the Examiner that claim 1 is directed
to an abstract idea. See Final Act. 5.
Step 2:
Appellant's arguments that "the claimed 'digital watermarks'
require[ s] technical means such as a computer processor to function" and
that the computer receiving and using the claimed digital watermarks is
"specially-programmed" are unavailing. Br. 12. "A claim contains an
inventive concept if it 'include[ s] additional features' that are more than
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'well-understood, routine, conventional activities."' Smart Sys., 873 F.3d at
1374 (quoting with omissions Alice, 134 S. Ct. at 2357, 2359).
In Smart Systems, the claimed invention recited several recitations
directed to technical means and special programming. See Smart Systems,
873 F.3d at 1369 (reciting, e.g., "downloading, from a processing system"
and "receiving, from a bankcard reader"). Recitations directed to "general
computer and technological components "'like processor,' 'hash identifier,'
'identifying token,' and 'writeable memory,' the technical details of which
are not described"' were insufficient to make the claim more than the
underlying abstract idea. Id. at 1374 (quoting Smart Sys. 2015 WL 4184486,
at *6).
Claim 1 of the present application similarly fails to recite anything
beyond generic computer technology recitations. Mere programming of
generic computer technologies is insufficient to make a claim more than an
underlying abstract idea. See Alice, 134 S. Ct. at 2357 ("method claims,
which merely require generic computer implementation, fail to transform
[an] abstract idea into a patent-eligible invention").
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and claims 2, 3, 6-9, 11-15, and 18-20, which Appellant does not
argue separately. Br. 13.
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Application 14/030,028
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 6-9, 11-15,
and 18-20.
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.
§ 4I.50(f).
AFFIRMED
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