Joseph Spears

Patent Trials and Appeals Board

Dec 1, 2021

2020003193 (P.T.A.B. Dec. 1, 2021)

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.
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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
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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.
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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
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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
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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).
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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.
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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
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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,
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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
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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.
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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.
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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
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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
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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.
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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
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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]
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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),
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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
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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