Joseph SpearsDownload PDFPatent Trials and Appeals BoardDec 1, 20212020003193 (P.T.A.B. Dec. 1, 2021) Copy Citation 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. 12/697,013 01/29/2010 Joseph L. Spears 012810-0002-999 1133 20583 7590 12/01/2021 Jones Day 250 Vesey Street New York, NY 10281-1047 EXAMINER WILLIS, AMANDA LYNN ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 12/01/2021 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): japarker@jonesday.com ncgeorge@jonesday.com wtokmakidis@jonesday.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH L. SPEARS ________________ Appeal 2020-003193 Application 12/697,013 Technology Center 2100 ____________ Before JAMES R. HUGHES, ERIC S. FRAHM, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claim 1, which is the only claim pending in this application. Claims 2‒55 have been canceled. See Appeal Br. 24 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 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 IPAR, LLC. Appeal Br. 1. Appeal 2020-003193 Application 12/697,013 2 STATEMENT OF THE CASE Introduction Appellant’s application relates to dynamic management of content, content-related data, and metadata. Spec. 1:4‒5. Claim 1 reads as follows: 1. A method, comprising: receiving from a first content provider over a computer network, at a platform for distributing content from a plurality of content providers via a common content access portal using one or more processors, data for first content; generating a first access alternative corresponding to the first content, wherein the first access alternative is based upon the data for the first content, and wherein the first access alternative includes a set of one or more first requirements that must be met by a user to access the first content; generating a second access alternative corresponding to an enhanced version of the first content, wherein the second access alternative includes a set of second requirements that must be met by the user to access the enhanced content; receiving a selection of the first access alternative by the user at the common content access portal via a user viewing device, wherein the selection of the first access alternative generates first additional data for the first content; upon selection of the first access alternative by the user, providing content associated with the first access alternative from the common content access portal to the user’s viewing device over the computer network; following fulfillment of the first requirements and receipt of the first content by the user, dynamically generating a third access alternative based on the selection of the first alternative, wherein the third access alternative is based upon the generated first additional data for the first content, and wherein the third alternative includes a second mechanism to access the enhanced version for a period of time, the third access alternative including a set of one or more third requirements that must be met by the user, wherein a magnitude associated with the third Appeal 2020-003193 Application 12/697,013 3 requirements plus a magnitude associated with the first requirements is greater than a magnitude associated with the second requirements, and wherein the magnitude associated with the third requirements is less than the magnitude associated with the second requirements; upon selection of the third access alternative by the user, suspending the first access alternative for the period of time, wherein said suspending halts access to the first content by the user in favor of the enhanced version for the period of time, wherein said suspending includes transmitting a signal from the common content access portal to the user viewing device that prevents access to the first content for a duration of the suspension; monitoring a clock to determine a completion of the third access alternative upon expiration of the period of time, wherein a trigger signal is generated upon completion; automatically transmitting the trigger signal across the computer network to the user viewing device, the trigger signal reinstating the first alternative upon completion of the third access alternative, wherein said automatically reinstating no longer prevents access to the first content and restores access to the first content to the user when the third access alternative is completed, wherein the trigger signal further prevents access to the enhanced version. The Examiner’s Rejections Claim 1 stands rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4‒8. Claim 1 stands rejected under pre-AIA 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Final Act. 8‒13. Appeal 2020-003193 Application 12/697,013 4 Claim 1 stands rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Walker (US 2005/0027622 A1; Feb. 3, 2005) and Kwan (US 2008/0147530 A1; June 19, 2008). Final Act. 13‒19. ANALYSIS 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. 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. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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. Alice, 573 U. S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, 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, 69 (1972)). Concepts Appeal 2020-003193 Application 12/697,013 5 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. (15 How.) 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 176; 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 attempting to limit the use of the formula to a particular technological environment.” Id. (citation omitted) (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 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to Appeal 2020-003193 Application 12/697,013 6 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. In January 2019, the PTO published revised guidance on the application of § 101. USPTO’s Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 Under that 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). 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. See Revised Guidance. 2 The Office’s current eligibility guidance may also be found in the most recent update to the Manual of Patent Examination Procedure (MPEP), Ninth Edition, Revision 10.2019 (revised June 2020). See MPEP §§ 2103 through 2106.07(c). Appeal 2020-003193 Application 12/697,013 7 Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. See Revised Guidance. Claim 1 recites a “method.” Appellant does not argue the Examiner erred in concluding claim 1 falls within the four statutory categories of patentable subject matter. We agree with the Examiner’s conclusion because claim 1 falls within the process category. Revised Guidance Step 2A, Prong 1 Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claim recites 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). See Revised Guidance. The Examiner determines claim 1 recites fundamental economic principles or practices, legal interactions, and managing interactions between people. Final Act. 4. In particular, the Examiner determines the generation of content offers, as recited in claim 1, is a fundamental economic practice. Id. at 5. The Examiner determines presenting these offers to users is an interaction between people and part of the fundamental economic practice of selling products to customers. Id. The Examiner determines receipt of the selection of the offer and receipt of payment are also part of the fundamental economic practice of selling products to customers. Id. The Examiner determines suspension and reinstatement of the first alternative is the completion of legal interactions between the customers and providers. Id. Appeal 2020-003193 Application 12/697,013 8 Appellant does not specifically argue that the Examiner errs in determining claim 1 recites an abstract idea. See Appeal Br. 18‒20. We agree with the Examiner that the identified limitations, under their broadest reasonable interpretation, recite fundamental economic principles or practices, legal interactions, and managing interactions between people, which are each categories of abstract ideas under the Revised Guidance. Revised Guidance Step 2A, Prong 2 Under Step 2A, Prong 2 of the Revised Guidance, we next determine whether the claim recites additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). The Examiner determines that the “additional elements” recited in claim 1 include: a computer network, at a platform for distributing content from a plurality of content providers via a common content access portal using one or more processors, . . . at the common content access portal via a user viewing device. . . from the common content access portal to the user's viewing device over the computer network; . . . includes transmitting a signal from the common content access portal to the user viewing device that prevents access to the first content for a duration of the suspension; [and] . . . automatically transmitting the trigger signal across the computer network to the user viewing device. We agree with the Examiner that these additional elements do not constitute additional elements that integrate the exception into a practical application. To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the judicial exception with a particular machine (see MPEP § 2106.05(b)), affect Appeal 2020-003193 Application 12/697,013 9 a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)). See Revised Guidance. Appellant argues claim 1 is directed to “automatically handling content upgrades with corresponding suspension of access to a first alternative during active period [sic] for the upgraded content and corresponding reinstatement of the first alternative following the active period for the upgraded content.” Appeal Br. 18. Appellant argues the Examiner improperly takes the identified additional elements out of context and does not consider the claim as a whole. Id. at 19‒20. Appellant argues the claim recites technical limitations involving the transmission of data across networks and technically enabling or disabling access to content. Id. at 20. According to Appellant, these non-abstract limitations impose meaningful limits on the claim. Id. Appellant argues the claim can be performed in myriad ways outside the scope of the detailed, technical claim. Id. Appellant has not persuaded us of Examiner error. Claim 1 recites generating first and second access alternatives and allowing a user to select between these alternatives. When the user selects the first alternative, a third alternative is dynamically created that includes requirements of a magnitude less than the second alternative. When the user selects the third alternative, the first alternative is temporarily suspended during the duration of the third alternative, then the first alternative is ultimately reinstated. Thus, claim 1 recites an improvement to a business process of presenting offers to users, Appeal 2020-003193 Application 12/697,013 10 including a dynamically generated third offer to entice a user. Claims whose focus is “not a physical-realm improvement but an improvement in wholly abstract ideas,” are not eligible for patenting. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018); see also Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1346 (Fed. Cir. 2018) (“It is well-settled that placing an abstract idea in the context of a computer does not ‘improve’ the computer or convert the idea into a patent-eligible application of that idea.”). Appellant’s argument that the claim recites technical limitations is unpersuasive. The technical limitations identified by Appellant involve the use of general purpose computing elements according to their general purpose. These limitations do not reflect improvements in networking or computer functionality, and none of these technical limitations “enables a computer . . . to do things it could not do before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (emphasis added). Further, even though the claim recites technical limitations, they still recite abstract ideas that, but for the generic computer components, could be performed mentally or with pen and paper. See Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”); Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that Appeal 2020-003193 Application 12/697,013 11 required the use of a computer and still found that the underlying, patent- ineligible invention could be performed via pen and paper or in a person’s mind.”). We are further guided by our reviewing court’s decision in Trading Technologies International, Inc. v. IBG LLC, 921 F.3d 1378 (Fed. Cir. 2019). In Trading Technologies, the Federal Circuit affirmed the Board’s decision that the challenged claims were not patent eligible under 35 U.S.C. § 101, because the claims were directed to a “business problem” to provide traders additional information, such as profit and loss data, on an existing trading screen. Id. at 1382. The Court held that this was not a technological solution because it “improv[ed] the trader, not the functioning of the computer.” Id. at 1383. The Court also affirmed the Board’s conclusion that the claims were directed to an unpatentable abstract idea of calculating and displaying information that “is nothing more than ‘mere automation of manual processes using computers,’” and held that the claims failed to recite an inventive concept because the claimed trading screen simply took the prior art trading screen and added profit and loss values along the axis. Id. at 1384. Here, the claims similarly improve the business process of presenting offers to users. Like in Trading Technologies, the claimed solution automates the manual process of presenting these offers, and Appellant has not persuasively identified any improvement to the functioning of the claimed computer. Thus, Appellant has not persuaded us of Examiner error with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore, conclude the judicial exception is not integrated into a practical application under the Revised Guidance. Appeal 2020-003193 Application 12/697,013 12 Revised Guidance Step 2B Under Step 2B of the Revised Guidance, we next determine whether the claim recites an “inventive concept” that “must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than “computer functions [that] are ‘well- understood, routine, conventional activit[ies]’ previously known to the industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting Mayo, 566 U.S. at 73). Appellant argues claim 1 recites technical limitations that impose meaningful limits on the recited abstract ideas. See Appeal Br. 20. As explained above, Appellant’s argument is unpersuasive because claim 1 recites an improvement to an abstract idea, not an improvement to computer technology. Appellant has not persuasively identified any “inventive concept” sufficient to transform the claim from an abstract idea to a patent- eligible application. For these reasons, we agree with the Examiner (see Final Act. 7‒8; Ans. 18‒21) that the claim does not recite an “inventive concept” sufficient to transform the claim from an abstract idea to a patent-eligible application. We, therefore, sustain the patent-ineligible subject matter rejection of claim 1. Written Description Claim 1 stands rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement for several reasons. Final Act. 8‒13. Appeal 2020-003193 Application 12/697,013 13 First, the Examiner finds the Specification does not reasonably convey to an ordinarily skilled artisan that applicant was in possession of the limitations: “receiving from a first content provider . . . , at a platform for distributing content from a plurality of content providers via a common content access portal” and “receiving a selection of the first access alternative by the user at the common content access portal via a user viewing device. . . upon selection of the first access alternative by the user, providing content associated with the first access alternative from the common content access portal to the user’s viewing device over the computer network” because the Specification does not state from where content is received or mention any type of portal or distributing platform. Final Act. 9‒10. Appellant argues the Specification describes the “common access portal” in the form of the user interfaces depicted in Figures 4‒9 and describes the “platform for distributing content” in the form of the server and network architecture depicted in Figure 1. Reply Br. 2. Appellant has persuaded us of Examiner error. “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulates, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). Figure 4 depicts an interface for a user to access content from a variety of content providers. Figure 1 depicts a network and server architecture that is described in the Specification as operating the common access portal. See, e.g., Spec. 7:24‒8:12. We agree with Appellant that an ordinarily skilled artisan would understand from these Appeal 2020-003193 Application 12/697,013 14 figures and the associated descriptions that the Specification conveys with reasonable clarity to skilled artisans that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991). Second, the Examiner finds the Specification does not reasonably convey to an ordinarily skilled artisan that the applicant was in possession of the following limitations: wherein the first access alternative includes a set of one or more first requirements that must be met by a user to access the first content; generating a second access alterative corresponding to an enhanced version of the first content, wherein the second access alternative includes a set of second requirements that must be met by the user to access the enhanced content; . . . . . . generating a third access alternative based on the selection of the first alternative, wherein the third access alternative is based upon the generated first additional data for the first content . . . ; [and] following fulfillment of the first requirements and receipt of the first content by the user, dynamically generating a third access alternative based on the selection of the first alternative, wherein the third access alternative . . . including a set of one or more third requirements that must be met by the user, wherein a magnitude associated with the third requirements plus a magnitude associated with the first requirements is greater than a magnitude associated with the second requirements, and wherein the magnitude associated with the third requirements is less than the magnitude associated with the second requirements. Final Act. 9‒12. In particular, the Examiner finds the Specification describes two alternatives that correspond to the claimed first and third alternatives, but Appeal 2020-003193 Application 12/697,013 15 does not describe an alternative that corresponds to the claimed second alternative. Id. at 9. The Examiner further finds the Specification does not describe any form of “enhanced content” as recited for the second and third alternatives (see id. at 10) and does not describe any requirements, fulfillment of requirements, or generation of offers in response to the fulfillment of requirements (see id. at 10‒11). The Examiner finds the Specification also fails to describe any form of “magnitude” as claimed. Id. at 11. Appellant argues the Specification supports these disputed limitations. See Appeal Br. 9‒15; Reply Br. 3‒7. In particular, Appellant argues the Specification describes an example where a user rents content (a first access alternative) for $5.00 (first requirements having a first magnitude). Reply Br. 5 (citing Spec. 13:15‒27). After the user has rented the content, a new offer is dynamically generated for purchase of the content (third access alternative) for $11.00 (third requirements with a third magnitude), where the base purchase price of the content (second access alternative) was $15.00 (second requirements with a second magnitude). Id.; see also Spec. 9:6‒18. We agree with Appellant that the Specification reasonably conveys to an ordinarily skilled artisan that the applicant was in possession of these disputed limitations. Third, the Examiner finds the Specification does not reasonably convey to an ordinarily skilled artisan that the applicant was in possession of the limitation, “wherein the third alternative includes a second mechanism to access the enhanced version for a period of time” because the Specification does not recite any particular mechanism or explain what the second mechanism is. Final Act. 11; Ans. 10‒11. Appeal 2020-003193 Application 12/697,013 16 Appellant argues that “a second mechanism” under its broadest reasonable interpretation can be construed as “way” such that the third alternative includes a second way to access the enhanced version for a period of time. Reply Br. 6. Appellant argues there is no dispute that the Specification discloses multiple access alternatives that provide different ways of accessing enhanced versions of content. Id. Appellant has not persuaded us of Examiner error. Claim 1 recites “dynamically generating a third access alternative based on the selection of the first alternative.” The third access alternative “is based upon the generated first additional data for the first content,” “includes a second mechanism to access the enhanced version for a period of time,” and “includ[es] a set of one or more third requirements that must be met by the user.” Thus, the recited “second mechanism” exists in addition to the requirement that the content to be accessed is the “enhanced version” and exists in addition to the “one or more third requirements.” Appellant’s example that illustrates the claimed first, second, and third access alternatives and their respective requirements (see Appeal Br. 14‒15) demonstrates that the third access alternative (purchase content for $11.00) differs from the second access alternative (purchase content for $15.00) in terms of the magnitude of the requirements, but otherwise the third access alternative appears identical to the second access alternative. We agree with the Examiner that the Specification does not explicitly recite a “second mechanism” by which the third access alternative accesses the enhanced content. See Ans. 10‒11. Nor does the Specification explain how the access mechanism for the third access alternative differs from the first or second access alternatives. Accordingly, we agree with the Examiner that Appeal 2020-003193 Application 12/697,013 17 the Specification does not reasonably convey to an ordinarily skilled artisan that the applicant was in possession of the limitation, “wherein the third alternative includes a second mechanism to access the enhanced version for a period of time.” Fourth, the Examiner finds the Specification does not reasonably convey to an ordinarily skilled artisan that the applicant was in possession of the limitation, “upon selection of the first access alternative by the user, providing content associated with the first access alternative from the common content access portal to the user’s viewing device over the computer network” because the Specification makes no mention of providing content to the user. Final Act. 10. Appellant argues the Specification demonstrates providing content to the user in Figure 4, which depicts the user accessing content for viewing or download. Reply Br. 4. We agree with Appellant. Figure 4 depicts a common access portal that presents a movie to a user. Accordingly, we do not agree with the Examiner that the Specification fails to reasonably convey that the applicant was in possession of this limitation. Fifth, the Examiner finds the Specification does not reasonably convey to an ordinarily skilled artisan that the applicant was in possession of the limitations: upon selection of the third access alternative by the user. . . , wherein said suspending includes transmitting a signal from the common content access portal to the user viewing device that prevents access to the first content for a duration of the suspension; monitoring a clock to determine a completion of the third access alternative upon expiration of the period of time, wherein a trigger signal is generated upon completion; [and] Appeal 2020-003193 Application 12/697,013 18 automatically transmitting the trigger signal across the computer network to the user viewing device, the trigger signal reinstating the first alternative upon completion of the third access alternative, wherein said automatically reinstating no longer prevents access to the first content and restores access to the first content to the user when the third access alternative is completed, wherein the trigger signal further prevents access to the enhanced version. Final Act. 11‒13. In particular, the Examiner finds the Specification does not mention any trigger signal, any clock performing monitoring, or any transmission of a signal from the common access portal regarding suspending access. Id. The Examiner finds the Specification is silent regarding how the suspension is performed. Id. at 12. Appellant argues that original claim 20 expressly recites suspension and automatic reinstatement of access alternatives for downloadable content. Appeal Br. 15. Appellant argues the Specification further discloses the manner in which suspension and reinstatement occurs, quoting as follows: Additionally, in some implementations, one or more additional licensing packages 204 can be dynamically generated and presented to the user based upon user interaction with the system. For example, as noted above, a content creator can dynamically offer the user an up-sell or a cross-sell based upon a user selection. In some implementations, when a user executes a first license package 204 (e.g., rents content), and accepts an offer to execute a second license package 204 (e.g., purchase the rented content), the first license can expire upon the execution (e.g., acceptance) of the second offer. In other implementations, when a user executes a first licensing package 204 (e.g., purchase of a standard definition version of a film), and accepts an offer to execute a second license package 204 (e.g., rent a high definition version of the film), the first license can run concurrently with the second offer. In still other implementations, when a user executes a first licensing package 204 (e.g., purchase of a standard definition version of a film), Appeal 2020-003193 Application 12/697,013 19 and accepts an offer to execute a second license package 204 (e.g., rent a high definition version of the film), the first license can be suspended for the duration of the second offer. For example, the first license can be selectively or automatically reinstated upon completion of the second offer. Appeal Br. 15‒16 (quoting Spec. 10:23‒11:6). Appellant has not persuaded us of Examiner error. The quoted portions of the Specification describe suspending access alternatives and reinstating access alternatives. However, we agree with the Examiner that the Specification does not provide details commensurate with the scope of the claim. That is, the Specification does not describe the common access portal “transmitting a signal . . . to the user viewing device” or “monitoring a clock to determine a completion of the third access alternative.” Nor does the Specification describe trigger signals, as claimed. Thus, although these limitations may have been obvious to an ordinarily skilled artisan in light of the Specification’s disclosure, the Specification nevertheless does not reasonably convey to an ordinarily skilled artisan that the applicant was in possession of these disputed limitations. See ICU Medical, Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009). Obviousness Appellant argues the Examiner erred in rejecting claim 1 as unpatentable over Walker and Kwan. Appeal Br. 17‒18; Reply Br. 7‒10. In particular, Appellant argues Kwan does not teach or suggest “upon selection of the third access alternative by the user, suspending the first access alternative for the period of time, wherein said suspending halts access to the first content by the user in favor of the enhanced version for the period of time.” Appeal Br. 17‒18. According to Appellant, Kwan teaches a temporary transfer of a license for an application from one device to another Appeal 2020-003193 Application 12/697,013 20 device. Reply Br. 9 (citing Kwan Fig. 2). Appellant argues this mere license transfer does not involve different alternatives and suspending the first access alternative upon selection of the third access alternative, as claimed. Id. at 10. Appellant has not persuaded us of Examiner error. The Examiner finds, and we agree, Kwan teaches a temporary license transfer from a first device to a second device where the license is locked on the first device while it is transferred to the second device. Ans. 15 (citing Kwan ¶ 58). The Examiner further finds, and we agree, Kwan teaches the transfer of licenses may involve upgraded license rights, such that the temporarily-transferred license may be different in scope than the original license. Id. (citing Kwan ¶¶ 58, 96‒98). In other words, Kwan teaches the original license (first access alternative) is suspended for the duration of the transferred, upgraded license (third access alternative). Id. Appellant’s argument regarding Kwan does not persuade us of Examiner error because Appellant has not persuasively identified error in the Examiner’s findings regarding the upgraded license. Accordingly, we sustain the obviousness rejection of claim 1. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 101 Eligibility 1 1 112 Written Description 1 1 103(a) Walker, Kwan 1 Overall Outcome 1 Appeal 2020-003193 Application 12/697,013 21 TIME PERIOD FOR RESPONSE 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. § 41.50(f) (2019). AFFIRMED Copy with citationCopy as parenthetical citation