Jeyhan Karaoguz et al.

Patent Trials and Appeals Board

Oct 24, 2019

12948943 - (D) (P.T.A.B. Oct. 24, 2019)

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.
12/948,943 11/18/2010 Jeyhan Karaoguz BP21591 4902
51472 7590 10/24/2019
Foley & Lardner LLP/ Broadcom Corporation
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
cmckenna@foley.com
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEYHAN KARAOGUZ, NAMBIRAJAN SESHADRI,
and HENRY SAMUELI
____________

Appeal 2018-001432
Application 12/948,943
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
SCOTT E. BAIN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–9, 11, 13, 17–26, and 29, which are all the claims
pending and rejected in the application. We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Avago Technologies General IP (Singapore) PTE. LTD
as the real party in interest. Appeal Br. 3.

Appeal 2018-001432
Application 12/948,943

2
STATEMENT OF THE CASE
Introduction
The present invention relates to “updating advertising content for a
recorded program (e.g., recorded on personal video recorder equipment).”
Spec. ¶ 6. Claim 1 is exemplary:
1. A method executable in user equipment having content
playbackcapability to update a recorded advertising content
associated with a recorded program content, the method
comprising:
establishing a communication link of the user equipment
via a communication network;
prior to playback of the recorded program content,
determining to solicit updated advertising content for the
recorded program content, including determining whether the
advertising content of the recorded program content includes
outdated time sensitive advertising content by comparing a
current date or time with at least one of an expiration date or a
time window of the advertising content;
when the advertising content accessible by the user
equipment includes outdated time sensitive advertising content,
soliciting the updated advertising content for the recorded
program content, including:
transmitting, via the communication link, a first
request for updated advertising content from an original
source of the recorded program content; and
transmitting, via the communication link, a second
request for updated advertising content from a second
source of advertising content;
when the updated advertising content is available from at
least one of the original source of the recorded program content
or the second source of advertising content, receiving the
updated advertising content via the communication link;
updating the recorded program content with the updated
advertising content; and
presenting the playback of the recorded program content
with the updated advertising content.
Appeal 2018-001432
Application 12/948,943

3

Rejection2
Claims 1–9, 11, 13, 17–26, and 29 are rejected under 35 U.S.C.
§ 101 because they are directed to patent-ineligible subject matter. Final
Act. 2–10.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in this case.
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,

2 Throughout this opinion, we refer to the (1) Final Office Action dated
December 28, 2016 (“Final Act.”); (2) Appeal Brief dated April 28, 2017
(“Appeal Br.”); and (3) Examiner’s Answer dated September 6, 2017
(“Ans.”).
Appeal 2018-001432
Application 12/948,943

4
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
Appeal 2018-001432
Application 12/948,943

5
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes)
(Step 2A, Prong 1); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”)
§§ 2106.05(a)–(c), (e)–(h)) (9th ed., rev. 08.2017, 2018)
(Step 2A, Prong 2).
Appeal 2018-001432
Application 12/948,943

6
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). “Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
In this case, the Examiner finds:
The additional elements involving functionality performed by
the generic computing technology, as described above, include,
as examples, but are not limited to: establishing, determining,
comparing, soliciting, transmitting, receiving, updating,
presenting, monitoring, recording, replacing, inserting and
processing of/to/with/on data, information, and/or content as
more particularly described within Claims 1-9, 11, 13, 17- 26
and 29. These additional elements involving functionality
performed by the generic computing technology are well-
understood, routine or conventional computing functions.
Appeal 2018-001432
Application 12/948,943

7
Final Act. 9. Appellant argues the Examiner fails to provide evidence
to support the above findings. See Appeal Br. 12.
We agree with Appellant, because the Examiner has not provided
sufficient evidence required by Berkheimer to support the above findings.
See Berkheimer, 881 F.3d at 1369. In particular, the Examiner has not
provided any of the four categories of information required by the USPTO
Memorandum, dated April 19, 2018, of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .

Berkheimer Memorandum at 3–4.
In the Answer, the Examiner cites to In re TLI Communications LLC
Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016) as evidence that “claims 1–
9, 11, 13, 17–26 and 29 simply add conventional, well-known and routine
computer and/or networking components to implement an abstract idea
using generalized, well-known, routine and conventional computing and/or
networking functions.” Ans. 3 (emphases added). To the extent the claimed
user equipment and network components are generic hardware, we
Appeal 2018-001432
Application 12/948,943

8
nevertheless conclude the Examiner has not sufficiently developed the
record to show how TLI Communications is sufficiently on point in showing
that all of the claimed functions are well-understood, routine and
conventional, because in TLI Communications, “representative claim 17 is
drawn to the concept of classifying an image and storing the image based on
its classification” and “the claims . . . are . . . directed to the abstract idea of
classifying and storing digital images in an organized manner.” TLI
Communications LLC Patent Litigation, 823 F.3d at 611, 613.
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner’s
rejection of claims 1–9, 11, 13, 17–26, and 29 on procedural grounds.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–9, 11, 13, 17–
26, and 29 under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter.

In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–9, 11, 13, 17–
26, 29
101 Eligibility 1–9, 11, 13, 17–
26, 29

REVERSED