RICHARDS, Ronald et al.

Patent Trials and Appeals Board

Dec 3, 2019

14662924 - (D) (P.T.A.B. Dec. 3, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/662,924 03/19/2015 Ronald RICHARDS 5887-690U1 2135
570 7590 12/03/2019
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
PHILADELPHIA, PA 19103
EXAMINER
STOLTENBERG, DAVID J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/03/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONALD RICHARDS, CHARLES JAROS, and
ANTHONY ALESIA
____________

Appeal 2018-008018
Application 14/662,924
Technology Center 3600
____________

Before BIBHU R. MOHANTY, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 13–21. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
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 AMI
Entertainment Network, LLC. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a method and device for
including bonus credits based on credits consumed at a given jukebox venue
within one session (Spec., para. 4). Claim 15, reproduced below with the
italics added, is representative of the subject matter on appeal.

15. A method for awarding bonus credits to a user of a mobile
device for purchasing songs for play on a first jukebox in a jukebox
network, the plurality of jukeboxes being in communication with a
central server and being part of a jukebox network, the method
comprising:
receiving a first purchase message from the mobile device at
the central server, the first purchase message including first location
information, first user information including identification of a first
user, first payment information and first song identification
information;
determining, based on at least the first location information
that the mobile device is in communication with the first jukebox;
initiating a first session upon receipt of the first payment
information, the first session having a predetermined timeframe, the
first session being calculated and tracked by the central server;
transmitting a first purchase message to the mobile device from
the central server including a first confirmation of payment, first song
play information and first bonus information;
receiving a second purchase message from the mobile device at
the central server, the second purchase message including second
location information, second user information including identification
of the first user, second payment information and second song
identification information;
determining, based on at least the second location information
that the mobile device is in communication with one of the plurality of
jukeboxes;
initiating a second session upon receipt of the second payment
information, the second session having a second predetermined
timeframe, the second session calculated and tracked by the central
server;
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receiving a third purchase message from the mobile device at
the central server, the third purchase message including third location
information identifying the first jukebox, third user information
including identification of the first user, third payment information
and third song identification information; and
resetting the first session to the predetermined timeframe, the
first session being reset by the central server.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–11 and 13–21 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1–11 and 13–21 are rejected under 35 U.S.C. § 102(b)
as anticipated by Dion (US 2012/0158531 A1, published June 21, 2012).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 15 is improper
because the claim is not directed to an abstract idea but rather to tangible
components (Reply Br. 1–3). The Appellant argues further that the claim is
“significantly more” than the alleged abstract idea (Appeal Br. 9–11; Reply

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Br. 6, 7). The Appellant argues further that claim 15 is patentable in view of
Amdocs Ltd. v. Openet Telecom, 841 F.3d 1288 (Fed Cir. 2016) and the
analysis set forth in that case (Appeal Br. 6–9; Reply Br. 3–6).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–6, 15, 16; Ans. 3–5).
We agree with the Examiner. 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, 67 (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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (internal 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.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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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, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also 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 Guidance.
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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 4 states that the invention generally
relates to a device and method to include bonus credits consumed at a given
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jukebox venue within one session. Here, the Examiner has determined that
the claim sets forth “awarding bonus credits to a mobile device user for
playing songs on a jukebox by facilitating the delivery of a message from a
user for purchasing of songs, the message including location information
such as a jukebox location, user identification information, payment
information, and song identification, and purchasing songs during a session
in an iterative fashion” which is related to basic economic practices or
theories such as advertising and marketing and a judicial exception (Final
Act. 3, 4).
We substantially agree with the Examiner. We determine that the claim sets
forth the subject matter in italics above, which describes the concept of
awarding bonus credits to the user depending on the purchases made, which
is a certain method of organizing human activity and fundamental economic
practice, i.e., a judicial exception. Here, the concept is to award bonus
credits for multiple purchases which is a fundamental economic practice in
being a commercial interaction and agreement and related to marketing
activities. In buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) it was held that claims drawn to creating a contractual relationship are
directed to an abstract idea. In Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1333 (Fed. Cir. 2015) it was held that determining a price, using
organizational and product group hierarchies was held to be an abstract idea.
In OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) it was held that offer-based price optimization was directed to an
abstract idea. Thus, we consider the claim to set forth a judicial exception as
identified above.
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We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in claim 15 the steps of [1] “receiving a first purchase
message from the mobile device”; [2] “determining, based on at least the
first location information that the mobile device is in communication with
the first jukebox”; [3] “initiating a first session upon receipt of the first
payment information”; [4] “transmitting a first purchase message to the
mobile device”; [5] “receiving a second purchase message from the mobile
device”; [6] “determining, based on at least the second location information
that the mobile device is in communication with one of the plurality of
jukeboxes”; [7] “initiating a second session upon receipt of the second
payment information”; [8] “receiving a third purchase message from the
mobile device”; and [9] “resetting the first session to the predetermined
timeframe,” are merely steps performed by a generic computer that do not
improve computer functionality. That is, these recited steps [1]–[9] do not
purport to improve the functioning of the computer itself but are merely
generic functions performed by a conventional processor. Likewise, these
same steps [1]–[9] listed above do not improve the technology of the
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technical field and merely use generic computer components and functions
to perform the steps. Also, the recited method steps [1]–[9] above do not
require a “particular machine” and can be utilized with a general purpose
computer, and the steps performed are purely conventional. In this case the
general purpose computer is merely an object on which the method operates
in a conventional manner. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited steps
[1]–[9] fail to provide meaningful limitations to limit the judicial exception
and rather are mere instructions to apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. Rather the
claim uses well-understood, routine, and conventional activities previously
known in the art and they are recited at a high level of generality. The
Specification at paragraph 17 for example describes using conventional
computer components such as mobile devices including a cellphone, tablet,
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or smart phone, servers, and databases. The claim specifically includes
recitations for a mobile device and central server to implement the method
but these computer components are all used in a manner that is well-
understood, routine, and conventional in the field. The Appellant has not
shown these claimed generic computer components, which are used to
implement the claimed method, are not well-understood, routine, or
conventional in the field. The Appellant has not demonstrated that the
computers described in the Specification at paragraph 17 for instance, are
not general purpose computer components known to perform similar
functions in a well-understood manner. Here, the claim has not been shown
to be “significantly more” than the abstract idea.
The Appellant cites to DDR Holdings, LLC v. Hotels, L.P., 773 F.3d
1245 (Fed. Cir. 2014) and argues that the claim is patent eligible (Appeal
Br. 5). We disagree as the Appellant has not shown how the claimed subject
matter is rooted in technology given that the Specification describes only the
use of generic computer equipment used in routine, conventional, and
generic manner.
The Appellant at page 5 of the Appeal Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claims are patent eligible but the claims in that case were not similar in
scope to those here and were in contrast directed to a self-referential data
table.
The Appellant at page 5 of the Appeal Brief has also cited to McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) but
the claims in that case are distinguished from this case in being directed to
rules for lip sync and facial expression animation.
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We note the point about pre-emption (Appeal Br. 9). While pre-
emption “might tend to impede innovation more than it would tend to
promote it, thereby thwarting the primary object of the patent laws” (Alice,
573 U.S. at 216 (quoting Mayo, 566 U.S. at 71), “the absence of complete
preemption does not demonstrate patent eligibility” (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., 788 F.3d at 1362–63, cert. denied, 136 S. Ct. 701 (2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 102(b)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation for the tracking of
payment to play songs or videos on the mobile device based on “the
predetermined schedules including a session calculated and tracked by the
central server” and “the central server configured to extend the
predetermined timeframe based on receipt of payment information from the
mobile device to purchase at least one of the songs and videos during the
session” (Appeal Br. 11).
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In contrast, the Examiner has determined that the cited claim
limitation is shown by Dion at Figures 2 and 19C; and paragraphs 103, 113,
114, 121, 160–169, 177, and 264 (Ans. 5–7).
We agree with the Appellant. “A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Here, the
above cited claim limitation is disclosed in the citations to Dion above. For
example, Dion at paragraph 114 discloses giving credits based on purchasing
drinks, for example, but not the specific claim limitations for tracking of
“predetermined schedules including a session calculated and tracked by the
central server” or “extend[ing] the predetermined timeframe based on receipt
of payment information from the mobile device to purchase at least one of
the songs and videos during the session.” Dion at paragraph 121 discloses
extending a playlist, but this does not show an extension based on payment
of songs in combination with the other cited claim elements. Thus, based on
the record before us, each and every limitation set forth in the claim has not
been shown in the anticipation rejection and for this reason, the rejection of
claim 1 and its dependent claims is not sustained. Claim 15 contains a
similar limitation and the rejection of this claim and its dependent claims is
sustained for the same reasons given above.

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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–11 and 13–21 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–11 and 13–21 under 35 U.S.C. § 102(b) as anticipated by
Dion.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–11, 13–21 101 Eligibility 1–11, 13–21
1–11, 13–21 102 Dion 1–11, 13–21
Overall
Outcome
1–11, 13–21

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.
§ 1.136(a)(1)(iv).

AFFIRMED