Ostergren, Brian Hunter. et al.

Patent Trials and Appeals Board

Jul 1, 2020

2018005970 (P.T.A.B. Jul. 1, 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.
13/247,861 09/28/2011 Brian Hunter Ostergren 318617.02 8816
69316 7590 07/01/2020
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
LIDDLE, JAY TRENT
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN HUNTER OSTERGREN,
TRISHA EILEEN STOUFFER, JONATHAN TODD DAVID, and
GREGORY JOSEPH CANESSA
____________

Appeal 2018-005970
Application 13/247,861
Technology Center 3700
____________

Before JEREMY M. PLENZLER, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision, filed January 11, 2017 (“Non-Final Act.”), to reject
claims 1, 2, 6, 7, 9–13, 15–19, and 21–23 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more. Claims 3 and 4 have been
withdrawn; claims 5, 8, 14, and 20 have been canceled. Appellant’s counsel
appeared for an oral hearing on March 12, 2020. A transcript of that hearing
is in the record. 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(a). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Brief (“Appeal Br.”) 2, filed July 11,
2017.
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BACKGROUND
Appellant’s disclosure relates to automatically downloading digital
content to a computing device. Spec. ¶ 9. This automatic downloading is
summarized generally as involving the following steps. Id. “Digital content
that is available from a remote content server is checked to determine if any
digital content matches criteria specified for downloading.” Id. After a
match for a particular digital content is found, which has not been previously
downloaded, the digital content is added to a download queue. Id. “The
digital content specified in the download queue is transferred to the
computing device.” Id.
Claims 1, 17, and 18 are independent, from which the remaining
claims depend. Illustrative claim 1 is reproduced below.
1. A method of obtaining new digital content on a
computing device, the method comprising:
on the computing device, computer-recognizing that
autonomously operable digital content that satisfies at least one
criterion for automatic downloading is available on one or more
remote content servers;
on the computing device, loading a history of
autonomously operable digital content versions previously
downloaded to the computing device;
on the computing device, generating a download queue
of autonomously operable digital content which satisfies the at
least one criterion for automatic downloading;
based on the history of autonomously operable digital
content versions previously downloaded to the computing
device, on the computing device, excluding from the download
queue any new versions of autonomously operable digital
content items that have been previously downloaded to the
computing device; and
automatically downloading contents of the download
queue to the computing device.
Appeal Br. 18 (Claims App.).
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JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Yet
the Supreme Court has “long held” that this provision contains an important
implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas
are not patentable.” Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U. S. 576, 589 (2013). These three concerns are “judicially created
exceptions to § 101,” or more concisely, “judicial exceptions.” McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016).
Thus, an “abstract idea” is a judicial exception to subject matter (e.g., a
method) that would otherwise be deemed patent eligible under 35 U.S.C.
§ 101.
THE ALICE TEST
In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the
Supreme Court provided a two-step test to detect when an attempt is being
made to patent an abstract idea in isolation. Id. at 217–18. In Alice step one,
a determination is made as to whether the claim at issue is “directed to” an
abstract idea. Id. at 218. When analyzing a claim under Alice step one,
attention can be given to whether an abstract idea recited in the claim has
been integrated into a practical application “thereby ‘transform[ing]’ them
into a patent-eligible invention.” Id. at 217 (referencing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). While a
judicial exception (e.g., an abstract idea) cannot be patented, “an
application” of a judicial exception “to a known structure or process may
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well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175,
187 (1981); see also Bilski v. Kappos, 561 U.S. 593 (2010).
If the claim at issue is “directed to” an abstract idea, Alice step two
must be performed. See Alice, 573 U.S. at 217–18. In the second step of the
Alice test, a determination is made as to whether “additional elements” in the
claim, both individually and as an ordered combination, contribute
“significantly more” than the abstract idea. Id. When analyzing a claim
under Alice step two, attention is given to whether additional elements, and
any ordered combination thereof, are “well-understood,” “routine,” or
“conventional.” Id. at 225.
2019 § 101 GUIDANCE
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with specific steps for discerning whether a
claim passes the Alice test for patent eligibility. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). These
steps are “[i]n accordance with judicial precedent” and consist of a
two-pronged Step 2A and a Step 2B. Id. at 52.
ANALYSIS
Appellant argues claims 1, 2, 6, 7, 9–13, 15–19, and 21–23 as a single
group. See Appeal Br. 8–16. As a result, we select claim 1 as
representative, and the remaining claims stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner determined that the claims are directed to ineligible
subject matter under 35 U.S.C. § 101. Non-Final Act. 2–4. The Examiner
found independent claim 1 to be “directed to a judicial exception (i.e., a law
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of nature, a natural phenomenon, or an abstract idea) without significantly
more.” Id. at 2. According to the Examiner, the limitations of claim 1 “are
directly analogous to claims of downloading customized content for an
individual which has already been determined to be abstract.” Id. at 3 (citing
Affinity Labs of Texas, LLC, v. Amazon.com, 838 F.3d 1266 (Fed. Cir.
2016)). In addition, although claim 1 repeatedly refers to a “computing
device,” the Examiner found that that device failed to offer “significantly
more” to the recited abstract idea because “the computing device has no
limitations that make it anything more than a generic purpose computer.”
Id.
Appellant contends claim 1 is “not directed to any sort of abstract
idea,” but instead is “directed to an improvement in computer functionality.”
Appeal Br. 10. Appellant contends “claim 1 describes a method by which a
computing device can automatically download new digital content from one
or more remote content servers.” Id. “Because downloading of digital
content inherently requires expenditure of computing resources (e.g.,
processing cycles, network bandwidth, data storage space), [the] claimed
automatic downloading is also restricted to digital content that satisfies at
least one criterion for automatic downloading, and that has not been
previously downloaded to the computing device.” Id. at 11. Appellant
contends that, “[u]nlike the Affinity Labs claims, Appellant’s claims are
directed to a specific problem that arises in the field of computer
technology––namely, that automatic downloading of digital content can
result in the unnecessary consumption of processing cycles, network
bandwidth, and data storage space of a computing device.” Id. at 14. “By
solving this problem, [Appellant contends that the] claims represent an
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improvement to the functioning of a computer, rather than the application of
computer technology to practices outside the realm of computer
technology.” Id. Appellant contends the improvement to the functionality
of a computer is derived from “provid[ing] the user easy access to new
digital content . . . without unnecessarily expending computing resources to
download redundant, previously-downloaded digital content.” Id. at 15. For
the following reason, we are not persuaded the Examiner erred.
Step 2A – Prong One
Per the 2019 § 101 Guidance, we begin our analysis with the first
prong of Step 2A (“Prong One”) where we determine whether the claim
“recites” an abstract idea. 2019 § 101 Guidance, 84 Fed. Reg. at 54. The
Guidance “extracts and synthesizes key concepts identified by the courts as
abstract ideas,” and these concepts include “[m]ental processes––concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” Id. at 52. “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.” Id.
at 52 n.14.
Software-related claims are often analyzed “by asking whether the
claims focus on a ‘specific asserted improvement in computer capabilities’
instead of on ‘a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.’” Ubisoft Entertainment, S.A. v.
Yousician OY, 2020 WL 3096369, *2 (Fed. Cir. June 11, 2020) (quoting
Finjan, Inc. v. BlueCoat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)).
Because information is itself intangible, the Federal Circuit has “treated
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collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas.” Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016). “In a similar vein, [it has] treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.” Id. at 1354. For example, the Federal Circuit has held that
tailoring the provision of information to a user’s characteristics is an abstract
concept. British Telecommunications PLC v. IAC/Interactive Corp., 2020
WL 2892601, *2 (Fed. Cir. June 3, 2020) (citing Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); Affinity
Labs, 838 F.3d at 1271 (Fed. Cir. 2016)). Indeed, Appellant acknowledges
that the “mental process” category of the 2019 § 101 Guidance is the
appropriate category for some steps in claim 1. See, e.g., Tr. 5:19.
The process steps of claim 1 are directed to: (1) “recognizing . . .
digital content that satisfies at least one criterion for automatic downloading
is available;” (2) “loading a history of . . . digital content versions previously
downloaded;” (3) “generating a download queue of . . . digital content which
satisfies the at least one criterion for automatic downloading;” (4) “based on
the history of . . . [the] content versions previously downloaded . . .
excluding from the download queue any new versions of . . . [the] content
items that have been previously downloaded;” and (5) “downloading
contents of the download queue.” Appeal Br. 18 (Claims App.). These
steps describe concepts normally performed in the human mind. The first
step is an evaluation of what information is available. The second step is an
evaluation of what information had been obtained previously. The third step
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is an evaluation of what information may be requested. The fourth step is an
evaluation of what information can be removed from the information that
may be requested. The fifth step is to receive the resulting information for
the narrowed request.
Thus, independent claim 1 recites mental processes followed to
customize the retrieval of content for an individual. We agree with the
Examiner that these steps, therefore, recite an abstract idea. Consequently,
we proceed to the second prong of Step 2A (“Prong Two”) of the Guidance.
See id. at 54.
Step 2A – Prong Two
In Prong Two, we evaluate whether a claim contains additional
elements that “integrate” the abstract idea “into a practical application.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 52.) “[A]dditional elements” are
“claim features, limitations, and/or steps that are recited in the claim beyond
the identified judicial exception.” (Id. at 55, n.24) Thus, the “additional
elements” in independent claim 1 are those “beyond” the abstract idea of
customizing the retrieval of content for an individual.
When an additional element in a claim is a “computer,” the relevant
question is not whether the claim requires the computer to accomplish a
recited function. Alice, 573 U.S. at 223. Rather, “the relevant question” is
whether the claim does more than simply “instruct the practitioner to
implement the abstract idea” on a computer. Id. at 225. The mere recitation
of a computer in the claim, and/or words simply saying “apply” the abstract
idea “with a computer,” will not transform the abstract idea into a
patent-eligible invention. Id. at 223. In short, the sheer introduction of a
computer into the claim is not enough to “impart patent eligibility.” Id.
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Independent claim 1 recites a “computing device” and a “remote
content server.” Appeal Br. 18 (Claims App.). These computer components
are configured to “automatically” perform the customized retrieval of
content using steps discussed above. Thus, claim 1 simply instructs the
practitioner to implement abstract-idea-imbedded steps with a computer.
Consequently, under Prong Two of Step 2A, the additional elements
in independent claim 1 do not integrate the recited abstract idea into a
practical application, and we proceed to Step 2B.
Step 2B
In Step 2B, we evaluate whether “additional elements recited in the
claim[] provide[] ‘significantly more’ than the recited judicial exception.”
See 2019 § 101 Guidance, 84 Fed. Reg. at 56. More particularly, we evaluate
whether these additional elements “add[] a specific limitation or combination
of limitations that are not well-understood, routine, conventional activity,” or
whether they instead “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” Id. The additional elements must
consist of something other than a conventional arrangement of conventional
components to qualify as “significantly more” under the Alice test for patent
eligibility. Id.
The 2019 § 101 Guidance requires us to look at independent claim 1’s
additional elements not only individually, but also in combination. See 2019
§ 101 Guidance, 84 Fed. Reg. at 54. Indeed, the Federal Circuit has held
that it is possible for “an inventive concept” to reside in “the non-
conventional and non-generic arrangement of known, conventional pieces,”
such as “a set of generic computer components.” Bascom Glob. Internet
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Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Here, however, claim 1 does not specify any specific arrangement,
operation, or coordination of the computing device and server to perform the
customized retrieval beyond having them perform their conventional
operations to implement the recited steps.
The Specification notably states that the computing system relied
upon to describe a preferred embodiment of the invention “is but one
example of a suitable computing system” and that the invention is not to “be
interpreted as having any dependency or requirement relating to any one or
combination of illustrated components.” Spec. ¶ 20. Appellant has failed to
demonstrate how the recited steps of claim 1 change the way a computer
operates, but instead focus on the benefits derived from simply using the
computer as a tool to implement the recited steps to automate the
downloading digital content. Consequently, under Step 2B, the additional
elements in independent claim 1 do not provide significantly more than the
recited abstract idea (customized retrieval of content). We therefore agree
with the Examiner that independent claim 1 fails the Alice test for patent
eligibility.
The Appellant’s Arguments
Appellant contends, based upon DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) and Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016), that claim 1 recites patent eligible subject
matter. Appeal Br. 8–13. First, Appellant contends, “like the patent-eligible
claims from Enfish, [claim 1 is] directed to an improvement in computer
functionality, and accordingly [is] not directed to any sort of abstract idea.”
Id. at 10. Second, Appellant contends, “[s]imilar to the claims of DDR
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Holdings, the claims of the instant application have nothing to do with the
performance of some pre-Internet-world business practice,” but “are directed
instead to practices for downloading of digital content that have no pre-
Internet-world analog.” Id. at 13. We do not find either contention
persuasive.
Appellant contends that claim 1 “improve[s] computer functionality
by automating the download of digital content (e.g., computer games) to a
computer.” Reply Br. 2. Notably, however, Appellant has failed to
demonstrate how the recited steps of claim 1 change the way a computer
operates, but instead focus on the benefits derived from simply using the
computer as a tool to implement the recited steps to automate the
downloading digital content.
In Enfish, the Federal Circuit held that the claims were directed to the
way a computer operates because “the claims [were] not simply directed to
any form of storing tabular data, but instead [were] specifically directed to a
self-referential table for a computer database.” 822 F.3d at 1337. In that
case, the claims recited expressly an allegedly innovative self-referential
table that was “a specific type of data structure designed to improve the way
a computer stores and retrieves data in memory.” Id. at 1339. Appellant has
not persuasively shown claim 1 includes any limitation analogous to the
ones in Enfish that changed the way a computer operates to improve its
functionality. Claim 1 instead is more akin to the type of claims that Enfish
recognized as not improving the way a computer operates because it is
simply adding conventional computer components to a well-known practice
(e.g., customizing a request and retrieval of information to only new
information that someone has not previously received). See id. at 1338. The
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level of generality of the recited elements in claim 1 does “no more than
describe a desired function or outcome, without providing any limiting detail
that confines the claim to a particular solution to an identified problem,”
which the Federal Circuit has held to be confirmation that the claim is
“directed to an abstract idea, not to a concrete embodiment of an idea.”
Affinity Labs, 838 F.3d at 1269.
Similarly, we disagree with Appellant that the subject matter of claim
1 is similar to the claims in DDR Holdings because it is directed to practices
for downloading digital content that has no pre-Internet-world analog.
Claim 1 recites steps that identify what information is available, identify
what information that has not been obtained previously, and retrieve that
information determined to be available and new. We agree with the
Examiner that such a process “is notoriously well known outside of the
computer industry and thus is not an inherent problem solely related to
computers.” Final Act. 5. By contrast, in DDR Holdings, the invention was
directed specifically to avoiding a website visitor from being “instantly
transported away from a host’s website after ‘clicking’ on an advertisement
and activating a hyperlink.” 773 F.3d at 1257. The claims in that case
recited limitations that addressed this problem by creating a “hybrid web
page that merges content associated with the products of the third-party
merchant with the stored ‘visually perceptible elements’ from the identified
host website.” Id. As a result, “the visitor is no longer transported to the
third party’s website.” Id. In view of the differences in claimed subject
matter in DDR Holdings and claim 1 here, we are not persuaded that
Appellant’s claims are necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computers.
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Thus, after careful consideration of the Appellant’s arguments, we
still agree with the Examiner that independent claim 1 is directed to a
judicial exception without significantly more. As such, we sustain the
rejection of claim 1 under § 101, including claims 2, 6, 7, 9–13, 15–19 and
21–23, which fall with claim 1.
Summary
We sustain the Examiner’s rejection of claims 1, 2, 6, 7, 9–13, 15–19,
and 21–23 under 35 U.S.C. § 101.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 6, 7,
9–13, 15–
19, 21–23
101 Eligibility 1, 2, 6, 7,
9–13, 15–
19, 21–23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED