Ex Parte Singer et al

Patent Trial and Appeal Board

Aug 31, 2018

10686955 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/686,955
103865 7590
Procopio - SPE
525 B Street
Suite 2200
FILING DATE
10/15/2003
09/05/2018
San Diego, CA 92101
FIRST NAMED INVENTOR
Mitch Fredrick Singer
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.
l 13748-745UT4 8821
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
docketing@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITCH FREDRICK SINGER and BRIAN DAVID LAKAMP
Appeal2017-006727
Application 10/686,955
Technology Center 3600
Before MICHAEL J. STRAUSS, JON M. JURGOV AN, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, 14--20, and 71, which are all the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Sony Corporation and Sony Pictures Entertainment Inc.
as the real parties in interest. Br. 2.
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Application 10/686,955
Introduction
By way of background, Appellants explain that, although access to
digital content through a variety of devices in multiple locations is a benefit
to users, "content owners are often concerned with uncontrolled and
unauthorized copying." Spec. 1: 17-18. Appellants' invention is directed to
"managing devices and content in a network environment." Spec., Abstract.
Claim 1 is the only independent claim and is representative of the claims on
appeal, reproduced here with disputed limitations emphasized:
1. A method of binding content to a hub network
including a server device and one or more client devices,
compnsmg:
[a] receiving at the server device a request to bind a
discrete instance of content of a client device to a hub network
including the server device and the one or more client devices
as members of said hub network,
wherein each of the client device and the server device
includes one or more computers,
wherein the discrete instance of content of the client
device is independent of any hub network and can be played or
presented through any compliant client device according to a
corresponding license,
wherein said discrete instance includes discrete locked
content data and a discrete license associated with the discrete
locked content data,
wherein the discrete license is not bound to said hub
network;
[b] disabling said discrete instance by the server device;
c] enabling by the server device a bound instance to bind
said discrete locked content data to said hub network at the
server device as source locked content data.
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Application 10/686,955
wherein the bound instance is bound to one hub network.
and is one logical instance represented by the source locked
content data and corresponding licenses stored on the server
device of the hub network and the one or more client devices of
the hub network,
wherein said bound instance includes source locked
content data and a root license associated with the source
locked content data,
wherein said source content data and said root license are
stored on said server device, and
wherein said root license is bound to said hub network.
Br. 15-16 (Claims App'x) (bracketed formatting added).
Rejections & References
Claims 1-11, 14--20, and 71 stand rejected-
(a) under 35 U.S.C. § 101 as directed to an abstract idea without reciting
significantly more (Final Act. 2--4);
(b) under 35 U.S.C. § 101 as "hybrid claims" directed both to a product
and to a process (id. at 4);
(c) under 35 U.S.C. § 112(b) orpre-AIA 35 U.S.C. § 112, ,r 2, as
indefinite for being hybrid claims (id. at 4--6);
( d) under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, ,r 2, as
indefinite because "it[ i]s unclear to a person of ordinary skill in the
art how the discrete locked content is being bound to the hub network
when it has already been disabled" (id. at 6); and
(e) under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Alve (US
2003/0076955 Al; Apr. 24, 2003) and Chase (US 2003/0187801 Al;
Oct. 2, 2003) (id. at 7-17).
ANALYSIS
The§ 101 "Abstract Idea" Rejection
Section 101 defines patentable subject matter, but the Supreme Court
has "long held that this provision contains an important implicit exception"
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that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012) (quotation omitted). "Eligibility under 35 U.S.C. § 101 is a
question of law, based on underlying facts." SAP Am., Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1020 (Fed. Cir. 2018). To determine patentable subject
matter, the Supreme Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claim is not directed to a patent-ineligible concept then the
inquiry continues to a second step, in which 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, 566
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Application 10/686,955
U.S. at 79, 78). The Supreme Court has "described step two of this analysis
as a search for an 'inventive concept'-i.e., 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." Id.
( quotation omitted).
Here, the Examiner determines that all the claims "are directed to the
basic concept of licensing/binding digital content to a network, which is a
fundamental economic practice and a method of organizing human activities
and thus, an abstract idea." Final Act. 3. Elsewhere, the Examiner states
that "the functions [ofJ binding content to a hub network, disabling the
discrete instance of the content and enabling the bound instance of the
content are generic computer functions that are well-understood, routine and
conventional activities previously known to the industry," and that "[t]here
is no improvement to the functioning of the computer nor is there an
improvement to another technology or technical field." Ans. 7, 8, 9 (thrice
repeating verbatim the foregoing quoted language).
Appellants contend the Examiner errs because claim 1 is directed to
the non-generic, specific technological aspects of "binding content to a hub
network," "receiving at a server device a request to bind a discrete instance
of content of a client device to a hub network," "disabling said discrete
instance of the content by the server device," and "enabling by the server
device a bound instance of the content to bind said discrete locked content
data to said hub network at the server device." Br. 7. Appellants argue
claim 1 is akin to a claim held to be patent-eligible in DDR Holdings LLC v.
Hotels.com L.P, 773 F.3d 1245, 1258-59 (Fed. Cir. 2015), in which a claim
for automating creation of a composite web page was determined not to be
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directed to an abstract idea because it recited a specific way to solve a
specific problem related to a specific technology. Br. 9.
We agree with Appellants. "The Supreme Court has recognized that
all inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas. But not all claims are directed to an
abstract idea." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir.
2016) ( quotation omitted). Here, we agree with Appellants that claim 1 is
not directed simply to an abstract idea, but rather it is directed to a
technological method of managing devices and digital content in a network
environment. More specifically, claim 1 is directed to software technology
for binding digital content to specific types of network devices through the
use "discrete locked content data." See Br. 7-10. The Specification
describes a specific technological problem that concerns owners arising from
network access to digital content-the ease of uncontrolled and unauthorized
copying by network devices-and claim 1 recites a specific way to solve the
problem. See, e.g., Spec. 1: 11-28, 6: 12-7: 13.
The Examiner does not sufficiently support the determination that
claim 1 is directed to "generic computer functions that are well-understood,
routine and conventional activities previously known to the industry." In
considering the technological aspects of the software to which claim 1 is
directed, it is of little to no import that well known or "generic" computer
technology may be programmed to perform the recited functions of claim 1.
Furthermore, we disagree with the Examiner's reasoning that the idea of
"licensing/binding digital content to a network" constitutes "a fundamental
economic practice and a method of organizing human activities." Final
Act. 3. Contrary to the Examiner's assertion, "binding digital content to a
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network," which is a principal aspect towards which claim 1 is directed, is
neither a fundamental economic practice nor a method of organizing human
activities. Rather, this aspect to which claim 1 is directed is technological.
The limitations of claim 1 are tied directly to the problem and solution in the
Specification.
Accordingly, we do not sustain the Examiner's§ 101 rejection of
claims 1-11, 14--20, and 71.
The "Hybrid Claim" Rejections under§§ 101 and 112
The Examiner rejects claims 1-11, 14--20, and 71 under both§§ 101
and 112 because they "are indefinite because the claims are considered
hybrid claims" and they "are directed to neither a 'process' or a 'machine'
but rather embrace or overlap two different statutory classes of invention as
set forth in 35 U.S.C §101." Final Act. 4--6 (quoting id. at 5). Although
Appellants argue the allowability of the claims without discussing the hybrid
claim determination and a failure to argue an issue constitutes a waiver (see
ExparteFrye, 94 USPQ2d 1072, 1075 (BPAI2010) (precedential) (cited
with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); 37 C.F.R.
§ 4I.37(c)(l)(iv))), we exercise our discretion under 35 U.S.C. § 6(b) to
address this matter-of-law issue (see Akzo Nobel Coatings, Inc. v. Dow
Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016) ("Indefiniteness is a
question of law that we review de novo."); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir. 2015) ("We review questions
concerning compliance with the doctrinal requirements of§ 101 of the
Patent Act (and its constructions) as questions of law.")).
A hybrid claim, which is a single claim that claims both an apparatus
and a method, is indefinite. See MPEP § 2173.05(p)(II) (citing In re Katz
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Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed.
Cir. 2011); IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d1548 (BPAI 1990)).
Thus, under§ 112, a claim may cover a method of using an apparatus or the
apparatus, but not both. See IPXL Holdings, 430 F.3d at 1384. Here, the
Examiner errs in determining claim 1 is a hybrid claim. Claim 1 recites
apparatus-related limitations that are method of use limitations, i.e., the
apparatus-related limitations limit the functionality of the method, and these
limitations do not result in the claim covering a recited apparatus.
Accordingly, we do not sustain the Examiner's rejections of claims 1-
11, 14--20, and 71 under 35 U.S.C. §§ 101 and 112 based on hybrid
claiming.
The§ 112 Indefiniteness Rejection because it is Unclear how Discrete
Locked Content is Bound to the Hub Network when it has been Disabled
The Examiner rejects claims 1-11, 14--20, and 71 as indefinite under
§ 112 because, on the one hand, claim 1 requires "that the discrete instance
which includes discrete locked content is disabled," and, on the other hand,
claim 1 requires "that the discrete locked content is being bound to the hub
network at the server device." Final Act. 6. The Examiner reasons it is
"unclear to a person of ordinary skill in the art how the discrete locked
content is being bound to the hub network when it has already been
disabled." Id. Appellants offer no responsive arguments. See Br. 5; Ans.
11. We summarily affirm this rejection. 2 Ex parte Frye, 94 USPQ2d at
1075; 37 C.F.R. § 4I.37(c)(l)(iv).
2 We note that, unlike the "hybrid claiming" § 112 rejection, where there
were no subsidiary fact-finding issues necessary for our sua sponte reversal
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The § 103 Obviousness Rejection
Appellants argue the Examiner errs in the rejection of claim 1 by
finding Alve teaches or suggests "binding a discrete instance of content of a
client device to a hub network," instead contending "the cited passages of
Alve merely disclose the concept of authorized devices (having domain
keys) within an authorized domain." Br. 12. This argument is unpersuasive.
As the Examiner responds by finding, and as we agree, "Alve
discloses enabling by the server device a bound instance to bind said discrete
locked content data (e.g. content encrypted with content key) to said hub
network (e.g. binding content to a domain by encrypting the content with a
domain key) at the server device as source locked content data." Ans. 13
( citing Alve ,r,r 2, 42, 44, Fig. 2A). As the Examiner also finds, and as we
also agree, the recited hub network reads on Alve' s "authorized domain"
that, for example, as shown in Alve' s Figure 1, may several authorized
devices networked together through a home network. Final Act. 8 ( citing
Alve ,r,r 20, 23, 40-42, Figs 1, 2A (and related text)). Appellants do not
persuasively explain how or why the cited portions of Alve, which disclose
encrypting of a particular item of content ( discrete instance) from an
authorized device ( client device) with the authorized domain's (hub
network's) domain key, fail to disclose binding a discrete instance, as
recited.
of that rejection, here there are subsidiary fact-related issues related to how
an ordinarily skilled artisan would have understood claim 1 in view of
Appellants' Specification. See Akzo Nobel Coatings, Inc. v. Dow Chem.
Co., 811 F.3d at 1343 (explaining that indefiniteness may be "subject to a
determination of underlying facts").
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Appellants also argue the Examiner errs in the rejection of claim 1 by
finding the combined teachings of Alve and Chase "teach or suggest a server
device disabling the discrete instance of the content and enabling the bound
instance of the content to bind the discrete locked content data to the hub
network, where the bound instance is bound to one hub network." Br. 13.
This argument also is unpersuasive.
The relevant inquiry is whether the claimed subject matter would have
been obvious to those of ordinary skill in the art in light of the combined
teachings of Alve and Chase. In re Keller, 642 F.2d 413,425 (CCPA 1981).
As the Examiner responds, and as we agree, (a) Alve teaches enabling a
bound instance to bind discrete locked content data to the hub network, and
(b) Chase teaches a server disabling a discrete instance of content by its
disclosure of a DRM system "disabling all licenses issued to a user's
computing device for corresponding content" (Chase ,r 20). See Final Act.
8-9; Ans. 14. Appellants do not persuasively explain why Alve's teaching
of enabling encryption of an instance of watermarked content with a domain
(hub) key (see Alve ,r,r 40-53) is not encompassed by "enabling a bound
instance to bind discrete locked content data to the hub network," as recited.
Appellants also do not explain how or why the Examiner errs in finding
paragraph 20 of Chase ("content revocation is achieved by disabling all
licenses issued to a user's computing device for corresponding content")
fails to teach disabling an instance of content, as recited. In view of these
findings, Appellants do not persuade us how or why the Examiner errs in
finding the combination of the cited disclosures from Alve and Chase teach
the disputed requirement.
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Accordingly, we sustain the § 103 rejection of claim 1. We also,
accordingly, sustain the rejections of claims 2-11, 14--20, and 71, for which
Appellants offer no separate arguments of error for the § 103 rejection.
DECISION
For the above reasons, we-
(a) reverse the rejection of claims 1-11, 14--20, and 71 under 35 U.S.C.
§ 101 as directed to an abstract idea without reciting significantly
more;
(b) reverse the rejection of claims 1-11, 14--20, and 71 under § 101 as
"hybrid claims" directed both to a product and to a process;
(c) reverse the rejection of claims 1-11, 14--20, and 71 under§ 112 as
indefinite for being hybrid claims;
(d) affirm the rejection of claims 1-11, 14--20, and 71 under§ 112 as
indefinite because it is unclear how discrete locked content is being
bound to the hub network when it has already been disabled; and
(e) affirm the rejection of claims 1-11, 14--20, and 71 under§ 103.
Because we affirm at least one rejection of every claim, we designate
our decision an affirmance.
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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