Rock, Eric

Patent Trials and Appeals Board

Dec 30, 2019

14223815 - (D) (P.T.A.B. Dec. 30, 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.
14/223,815 03/24/2014 Eric Rock AVIVI.0104 2060
22858 7590 12/30/2019
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
AUGUSTINE, VICTORIA PEARL
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
12/30/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte ERIC ROCK
________________

Appeal 2019-002190
Application 14/223,815
Technology Center 3600
________________

Before ERIC S. FRAHM, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–9, 11–19, and 21–29.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
INVENTION
The invention relates to integrating multimedia audio/video sources
for presentation to a user on mobile and non-mobile devices. Spec. 4:10–11.
Claim 1 is illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Vivify Health, Inc. is the real
party in interest. Br. 3.
2 Claims 10, 20, and 30 are cancelled. Br. 20, 22, 25.
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l. A dynamic video scripting system comprising:
(a) host computer system (HSC);
(b) mobile user device (MUD);
(c) computer communication network (CCN); and
(d) operator interface computer (OIC);
wherein
said HCS is configured with a graphical user interface
(GUI) operable to accept commands by said RCS to define a
video script network (VSN) on said GUI;
said VSN comprises an interconnected network of GUI
scripting icons (GSIs) selected from a group consisting of:
audio/video content (AVC), decision-based content (DBC), user
query/response (UQR), and asynchronous event trigger (AET);
said HCS is configured to translate said VSN into a video
script dataset (VSD) describing the interconnection and function
of said GSIs, wherein the VSD references data retrieved from a
media database (MDB) and the VSN describes sequencing of
multimedia content retrieved from the MDB and interaction of
the multimedia content with a user, wherein the VSN further
permits internal video threads within the VSD to perform
additional operations associated with the user and displayed
video without interaction from the user;
said HCS is configured to transmit said VSD to said MUD
over said CCN;
said MUD is configured to execute a mobile scripting
engine (MSE) operating under control of said MUD, wherein the
MSE interprets the VSD and retrieves the multimedia content
from the MDB for presentation to the user on the MUD;
said MSE is configured to execute said VSD to control the
display and input functions of said MUD;
said MSE is configured to implement a user interface
context (UIC) on said MUD that dynamically presents a display
on said MUD and accepts input from said MUD based on
execution of said VSD by said MSE, wherein the UIC defines
integration of the multimedia content on the MUD; and
said UIC is triggered for activation by a patient healthcare
plan (PHP) executing within the context of said MUD, wherein
the PHP is configurable from the OIC and comprises additional
GSIs for translation and incorporation into the VSD, wherein the
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additional GS Is coordinate presentation of user input and output
functions of the MUD to provide an integrated user input/output
data collection and display.

Appeal Br. 18–19 (Claims Appendix) (emphases added).

REJECTION
Claims 1–9, 11–19, and 21–29 stand rejected under 35 U.S.C. § 101
as being directed to patent ineligible subject matter. Non-Final Act. 2–11.

ANALYSIS
Claims 1–9, 11–19, and 21–29 Rejected Under 35 U.S.C. § 101
A. Legal Principles
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. Id. 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
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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
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 187; see also id. at 192 (“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. (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
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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
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). 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
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(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 Memorandum.
B. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We, therefore, conclude the emphasized portions of claim
1, reproduced above (see supra at 1–3) do not recite mathematical concepts
or certain methods of organizing human activities. The closest grouping of
abstract idea that the emphasized portions of claim 1 falls into is “concepts
performed in the human mind.”
Claim 1 (reproduced above at supra 1–3) does not recite mathematical
concepts, because there are no mathematical relationships, formulas,
equations, or calculations analyzed or performed in the claim. Claim 1 also
does not recite mental processes, because the limitations “translat[ing] said
VSN into a video script dataset (VSD) describing the interconnection and
function of said GSIs, wherein the VSD references data retrieved from a
media database (MDB) and the VSN describes sequencing of multimedia
content retrieved from the MDB and interaction of the multimedia content
with a user, wherein the VSN further permits internal video threads within
the VSD to perform additional operations associated with the user and
displayed video without interaction from the user” and “interpret[ing] the
VSD” is not something that can be practically performed in the human
mind––this operation exists exclusively in the realm of computers. Finally,
claim 1 does not recite any of the methods of organizing human activity
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identified in the Revised Guidance. That is, claim 1 relates to performing a
comparison operation by a file system application, not fundamental
economic principles or practices, commercial or legal interactions, or
managing personal behavior or relationships or interactions between people.
See Revised Guidance. Accordingly, we determine claim 1 does not recite
an abstract idea because none of the limitations fall within the enumerated
categories of abstract ideas under the Revised Guidance.
Independent claims 11 and 21 recite similar features as independent
claim 1. Accordingly, we do not sustain the Examiner’s rejection of:
(1) independent claims 1, 11, and 21; and (2) dependent claims 2–9, 12–19,
and 22–29 under 35 U.S.C. § 101.
Because the present claims do not recite an abstract idea, we need not
proceed to step 2A, prong 2. Rather, our analysis ends here.

CONCLUSION

REVERSED

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9, 11–19,
21–29
101 Eligibility 1–9, 11–19,
21–29