Flinchem, Edward P. et al.

Patent Trials and Appeals Board

Oct 9, 2020

2019003354 (P.T.A.B. Oct. 9, 2020)

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.
12/862,992 08/25/2010 Edward P. Flinchem 088245-5852 5058
23524 7590 10/09/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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 EDWARD P. FLINCHEM and WILLIAM L. VALENTI
Appeal 2019-003354
Application 12/862,992
Technology Center 3600
BEFORE JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
PETRAVICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, and 4–20. Appellant canceled
claim 3. We have jurisdiction under 35 U.S.C. § 6(b).
This application was first before us in Appeal No. 2013-011050.
Appellant has significantly amended all claims since we entered a decision
in that appeal.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as INTEGIC
TECHNOLOGIES LLC. Appeal Br. 2.
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We reverse pro forma and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claims 1 and 11, reproduced below, are independent. Claims 2 and
4–10 depend directly or indirectly from claim 1. Claims 12–20 depend
directly or indirectly from claim 11. Claims 1 and 11 are illustrative of the
claimed subject matter and are reproduced below.
1. A peer-to-peer file sharing system comprising:

a mobile computing device capable of peer-to-peer file sharing;
a second mobile computing device capable of peer-to-peer file
sharing; and
a server comprising:
a processor; and
a memory having instructions stored thereon that, if executed by
the processor, cause the server to perform operations comprising:
receiving, from the mobile computing device, a request for
content;
transmitting, in response to the request, the content to the
mobile computing device, wherein the content includes an
advertisement, and wherein the content including the
advertisement was previously forwarded to the mobile
computing device from the second mobile computing device;
monitoring an exposure of the advertisement based on an
identifier;
wherein the server is configured to transmit a digital content key
to the mobile computing device, wherein the digital content key
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unlocks protected content for use on the mobile computing
device; and
wherein the mobile computing device is configured to determine
if the content received by the mobile computing device from the
server is presented for a first time on the mobile computing
device and to provide an indication whether the content has been
previously presented on the mobile computing device;
only in response to the content being presented for the first time
on the mobile computing device, receiving a communication
signal to update the identifier at the server in response to a
presentation of the content by the mobile computing device,
wherein the updated identifier indicates the content is presented
on the mobile computing device for the first time.

11. A computer-readable storage device having instructions
stored thereon that, if executed by a computing device, cause the
computing device to perform operations comprising:

receiving, from a mobile computing device capable of peer-to-
peer file sharing, a request for content;

transmitting, in response to the request, the content to the mobile
computing device, wherein the content includes an
advertisement and the mobile computing device is configured to
store an indication in a memory of the mobile computing device
indicating whether the content has been previously presented on
the mobile computing device, and wherein the content including
the advertisement was previously forwarded to the mobile
computing device from a second mobile device capable of peer-
to-peer file sharing;

only in response to the content being presented for the first time
on the mobile computing device, receiving an identifier from the
mobile computing device in response to a presentation of the
content by the mobile computing device, wherein the identifier
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indicates whether the content is presented on the mobile
computing device for the first time; and

monitoring an exposure of the advertisement based on the
identifier.
REJECTION
The Examiner rejected claims 1, 2, and 4–20 under 35 U.S.C. § 101
for claiming patent-ineligible subject matter. Final Act.2 3–4.
OPINION
Claims 1, 2, and 4–20 are indefinite for the reasons discussed below.
The rejection of claims 1, 2, and 4–20 under 35 U.S.C. § 101 for claiming
patent-ineligible subject matter must fall, pro forma, because it necessarily is
based on speculative assumptions as to the meaning of the claims. See In re
Steele, 305 F.2d 859, 862–63 (CCPA 1962). We make no comment on the
merits of the Examiners position regarding the eligibility of the claimed
subject matter.

NEW GROUNDS OF REJECITON
“The Specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b).
“[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.”’ Ex parte McAward, Appeal

2 We refer to the Final Action mailed on June 1, 2018.
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No. 2015-006416, at 11 (PTAB Aug. 25, 2017) (precedential) (quoting In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). “Put differently,
‘claims are required to be cast in clear-as opposed to ambiguous, vague,
indefinite-terms.”’ Id. (quoting Packard, 751 F.3d at 1313). “At the same
time, this requirement is not a demand for unreasonable precision.”
Packard, 751 F.3d at 1313.
Claims 1, 2, and 4–10
Claims 1, 2, and 4–10 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
First, claim 1 lacks clarity because it is unclear which limitations are
included or not included in the recited list of operations caused by execution
of the instructions stored on the server’s memory. Claim 1 recites that the
server comprises a processor and
a memory having instructions stored thereon that, if executed by
the processor, cause the server to perform operations
comprising:
receiving, from the mobile computing device, a request
for content;
transmitting, in response to the request, the content to the
mobile computing device, wherein the content includes an
advertisement, and wherein the content including the
advertisement was previously forwarded to the mobile
computing device from the second mobile computing device;
monitoring an exposure of the advertisement based on an
identifier;.
Appellant indented the limitations starting with receiving, transmitting, and
monitoring from all other limitations of the claim, thus, indicating that these
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limitations recite the start of the list of operations. Notably, however, the
word “and” does not appear between the transmitting and monitoring
limitation, thus, indicating that the list continues.
Claim 1 then recites a first wherein clause limitation:
wherein the server is configured to transmit a digital content key
to the mobile computing device, wherein the digital content key
unlocks protected content for use on the mobile computing
device; and
The lack of the word “and” between the transmitting and monitoring
limitation and the context of the first wherein clause limitation indicates that
Appellant intended the first wherein clause limitation to be part of the list of
operations.
To the contrary, the lack of indentation and use of the wherein clause
format indicates that Appellant did not intend the first wherein clause
limitation to be part of the claimed list of operations. Appellant did not
indent the first wherein clause limitation, unlike the previous receiving,
transmitting, and monitoring limitations. Appellant’s use of the wherein
clause format is also unlike the previous receiving, transmitting, and
monitoring limitations and inconsistent with the first wherein clause
limitation being part of the list of operations.
This causes the language of claim 1 to be unclear as to whether
Appellant intended the first wherein clause limitation to be or not to be part
of the claimed list of operations. The Specification provides no help to
clarify claim 1 because the Specification only briefly and broadly states that
server complex 231, 431 enables the download of digital content keys.
Spec. ¶¶ 19, 26. The Specification does not explicitly describe any details of
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how server complex 231, 431 enables the download of digital content keys.
See id.
The first wherein clause limitation ends with the word “and.”
The use of the word “and” indicates that Appellant intended the next
recited limitation to be the last limitation of the list of claimed
operations. After the word “and,” claim 1 recites a second wherein
clause limitation:
wherein the mobile computing device is configured to determine
if the content received by the mobile computing device from the
server is presented for a first time on the mobile computing
device and to provide an indication whether the content has been
previously presented on the mobile computing device;.
Similar to the first wherein clause limitation, the lack of indentation and the
use of the wherein clause format indicate that Appellant did not intend the
second wherein clause limitation to be a part of the claimed list of
operations. The context of the second wherein clause limitation also
indicates that Appellant did not intend it to be part of the claimed list of
operations, as the context of the second wherein clause limitation does not
recite an operation of the server. This is in contradiction to the placement of
the word “and” at the end of the first wherein clause limitation and causes
the language of claim 1 to be unclear as to whether Appellant intended the
second wherein clause limitation to be or not to be part of the claimed list of
operations.
The next limitation is the last recited limitation of claim 1 and the
word “and” does not appear between it and the second wherein clause
limitation. Claim 1 lastly recites:
only in response to the content being presented for the first time
on the mobile computing device, receiving a communication
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signal to update the identifier at the server in response to a
presentation of the content by the mobile computing device,
wherein the updated identifier indicates the content is presented
on the mobile computing device for the first time.
The lack of the word “and” before this last limitation and the lack of
indentation indicate that Appellant did not intend this last limitation to be
part of the list of operations. To the contrary, the context of this last
limitation indicates that Appellant intended this last limitation to be part of
the list of operations, as the context of the last limitation recites an operation
of the server. See Spec. ¶¶ 28, 29 (describing the server updating a count of
impression in response to receiving the identity of a file that was played on
the mobile computing device). This causes the language of claim 1 to be
unclear as to whether Appellant intended the last limitation to be or not to be
part of the claimed list of operations.
In sum, it is unclear which of claims 1’s limitations are included or
not included in the recited list of operations caused by execution of the
instructions stored on the server’s memory because of the placement of the
word “and” in the claimed list, the inconsistent use of indentations, and the
inconsistent use of the wherein clause format.
Second, claim 1 lacks clarity because the limitation that defines the
content as having been previously forwarded to the mobile computing
device is inconsistent with the limitation requiring the receiving of a
communication signal “only in response to the content being presented for
the first time on the mobile computing device.” Claim 1 requires
“transmitting, in response to the request, the content to the mobile
computing device.” Claim 1 defines the transmitted content as “content
[that] was previously forwarded to the mobile computing device from
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the second mobile computing device.” Claim 1, thus, requires the server to
transmit the same content that was previously forwarded to the mobile
computing device from the second mobile computing device. With respect
to that same content, claim 1 also recites:
only in response to the content being presented for the first
time on the mobile computing device, receiving a
communication signal to update the identifier at the server in
response to a presentation of the content by the mobile
computing device, wherein the updated identifier indicates the
content is presented on the mobile computing device for the first
time.
It is unclear how the receiving of the communication signal can be
“only in response to the content being presented for the first time on the
mobile computing device” if the content transmitted by the server is by
definition “content [that] was previously forwarded to the mobile computing
device from the second mobile computing device.” We note that claim 2,
which depends from claim 1, recites “wherein the stored indication indicates
the content was previously forwarded from the second mobile computing
device.” The Specification provides no help to clarify claim 1 because the
Specification does not describe the server transmitting content that is defined
as having been previously forwarded to the mobile computing device from
the second mobile computing device. The Specification only describes the
server transmitting content in response to a request from a mobile computing
device or another mobile computing device transmitting content it received
from the server. See Spec. ¶ 26, Abstract, Fig. 3.
Claim 2, which depends from claim 1, lacks clarity because it is
unclear what element of claim 1 provides antecedent basis for “the stored
indication.” Claim 2 recites, “wherein the stored indication indicates the
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content was previously forwarded from the second mobile computing
device.” Claim 1, however, does not recite an indication that is stored.
Claim 1 recites the mobile computing device “provid[ing] an indication
whether the content has been previously presented on the mobile computing
device” and the server “receiving a communication signal to update the
identifier at the server.” But, claim 1 does not recite that the indication is
stored on either the server or the mobile computing device. Claim 1 does
recite that the identifier is at the server, implying it is stored at the server. It
is, thus, unclear whether “the stored indication” refers to the indication or
identifier recited in claim 1. The Specification provides no help to clarify
claim 2 because the Specification does not describe storing an indicator that
indicates the content was previously forwarded from the second mobile
computing device.3 See e.g., Spec. ¶¶ 28–29.
Claim 4, which depends from claim 1, lacks clarity because the use of
the word “identifier” is inconsistent with claim 1. Claim 4 depends from
claim 1 and recites, “wherein monitoring the exposure of the advertisement
based on the identifier comprises updating an advertisement impression
count in response to receipt of the identifier.” Claim 1, however, does not
recite the mobile computing device sending the identifier to the server.
Claim 1 recites the mobile computing device “provid[ing] an indication
whether the content has been previously presented on the mobile computing
device” and the server “receiving a communication signal to update the
identifier at the server.” But, claim 1 only recites the identifier being “at the

3 During any further prosecution, the Examiner may want to consider
whether the Specification provides written description support as required by
35 U.S.C. § 112(a).
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server.” Claims 1 and 4, thus, use the words indication, communication
signal, and identifier inconsistently.
For the foregoing reasons, claims 1, 2, and 4–10 are rejected under 35
U.S.C. § 112(b) as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellant regards as the invention.

Claims 11–20
Claims 11–20 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter that
Appellant regards as the invention.
First, independent claim 11 lacks clarity because it is unclear how a
limitation directed to the configuration of the mobile computing device
further defines the transmitting operation, which defines the instructions
stored on the computer-readable storage device of the server (i.e., the server
software). The preamble of independent claim 11 recites “[a] computer-
readable storage device having instructions stored thereon that, if executed
by a computing device, cause the computing device to perform operations
comprising,” and the body of claim 11 recites the operations of receiving a
request, transmitting content, and receiving an identifier, and monitoring an
exposure. These recitations correspond to the Specification’s description of
the software on server. See Spec. ¶¶ 28–29, Abstract.
With respect to the transmitting operation, claim 11 recites
transmitting, in response to the request, the content to the mobile
computing device, wherein the content includes an
advertisement and the mobile computing device is configured
to store an indication in a memory of the mobile computing
device indicating whether the content has been previously
presented on the mobile computing device, and wherein the
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content including the advertisement was previously forwarded to
the mobile computing device from a second mobile device
capable of peer-to-peer file sharing;.
The use of the word “wherein” indicates that the clauses that follow further
define the transmitting. One clause, however, is directed to the
configuration of the mobile computing device. It is unclear how a limitation
directed to the configuration of the mobile computing device further defines
the transmitting operation, which defines the instructions stored on the
computer-readable storage device of the server (i.e., the server software).
Claims 19 and 20, which depend from claim 11, similarly lack clarity.
The preamble of dependent claim 19 recites “the computer-readable storage
device of claim 11” and the body of claim 19 beings with “wherein,” which
indicates that the body of claim 19 is directed to further defining the
structure of the computer-readable device. The remaining body of
dependent claim 19, however, does not recite any further structure of the
computer-readable device. The body of dependent claim 19 recites:
“wherein the mobile computing device communicates content received from
the server to the second mobile computing device.” This limitation recites a
function of the mobile computing device, which is a separate device from
the computer-readable device or server.
Likewise, the preamble of dependent claim 20 recites “the computer-
readable storage device of claim 11” and the body of claim 20 begins with
“wherein,” which indicates that the body of claim 20 should be directed to
further defining the structure of the computer-readable device. The body of
claim 20, however, does not recite any further structure of the computer-
readable device. Instead, the body of dependent claim 20 recites: “wherein
the mobile computing device includes flash memory, a display, and a
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speaker.” This limitation recites components of the mobile computing
device, which is separate from the computer-readable device.
In addition, claim 11 lacks clarity because the limitation that defines
the content as having been previously forwarded to the mobile computing
device is inconsistent with the limitation requiring the receiving of an
identifier “only in response to the content being presented for the first time
on the mobile computing device.”
Claim 11 requires the server to “transmit[], in response to the request,
the content to the mobile computing device.” Claim 11 defines the
transmitted content as “content [that] was previously forwarded to the
mobile computing device from the second mobile computing device
capable of peer-to-peer file sharing.” Claim 11, thus, requires the server
to transmit the same content that was previously forwarded to the mobile
computing device from the second mobile computing device capable of
peer-to-peer file sharing. With respect to that same content, claim 11 also
recites:
only in response to the content being presented for the first
time on the mobile computing device, receiving an identifier
from the mobile computing device in response to a presentation
of the content by the mobile computing device, wherein the
identifier indicates whether the content is presented on the
mobile computing device for the first time.
Similar to claim 1, it is unclear how the server can receive the identifier
“only in response to the content being presented for the first time on the
mobile computing device” if the content transmitted by the server is by
definition content that was previously forwarded to the mobile computing
device from a second mobile computing device capable for peer-to-peer file
sharing. The Specification provides no help to clarify claim 11 because the
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Specification does not describe the server transmitting content that is defined
as having been previously forwarded to the mobile computing device from a
second mobile computing device capable of peer-to-peer file sharing. The
Specification only describes the server transmitting content in response to a
request from a mobile computing device or another mobile computing
device transmitting content it received from the server. See Spec. Abstract,
¶ 26, Fig. 3.
For the foregoing reasons, claims 11–20 are rejected under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter that Appellant regards as the invention.
CONCLUSION
The Examiner’s rejection of claims 1, 2, and 4–20 under 35 U.S.C.
§ 101 is reversed. We enter a new ground of rejection of claims 1, 2, and 4–
20 under 35 U.S.C. § 112(b) for being indefinite.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1, 2, 4–
20
101 Eligibility 1, 2, 4–20
1, 2, 4–
20
112(b) Indefiniteness 1, 2, 4–
20
Overall
Outcome
1, 2, 4–20 1, 2, 4–
20
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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that 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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

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)