Steven Dennis. Flinn et al.

Patent Trials and Appeals Board

Aug 20, 2019

13270019 - (D) (P.T.A.B. Aug. 20, 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.
13/270,019 10/10/2011 Steven Dennis Flinn Many-09A4 5775
53928 7590 08/20/2019
MANYWORLDS, INC.
IP DEPARTMENT
5476 BRIDLE CREEK LANE
BRENHAM, TX 77833
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
08/20/2019 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 STEVEN DENNIS FLINN and
NAOMI FELINA MONEYPENNY

____________

Appeal 2018-003233
Application 13/270,0191
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 5, 14, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is ManyWorlds, Inc.
(Appeal Br. 3.)
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CLAIMED SUBJECT MATTER
Appellants’ “invention relates to extending the business process
paradigm so as to make processes more explicitly adaptive over time.”
(Spec. 1, ll. 8–9.)
Claims 5, 14, and 20 are independent claims and are the only claims
on appeal. Claim 5 is illustrative. It recites:
5. A method comprising:
contributing a plurality of usage behaviors to a usage
function through use of a mobile processor-based device;
interacting with a media instance executed on the mobile
processor-based device, wherein the media instance comprises a
plurality of video elements, wherein the plurality of video
elements are automatically selected for inclusion in, and
arranged in a storyline sequence in, the media instance in
accordance with an inference of a preference based, at least in
part, on the plurality of usage behaviors; and
interacting with the media instance, wherein the plurality
of video elements are selected for inclusion in the media instance
in accordance with the inference of the preference, wherein the
inference of the preference is based, at least in part, on usage
behaviors associated with a plurality of users.

REJECTION
Claims 5, 14, and 20 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.

ANALYSIS
Claim 5
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
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requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, 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 USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
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Here, the Examiner determines that claim 5 is “directed to the abstract
idea of determining and presenting a media instance.” (Final Action 3.)
Specifically, the Examiner determines that this is “similar to concepts
involving an idea of itself, and human activity relating to concepts involving
delivering user-selected media content to portable devices,” “concepts
involving organizing information,” “and concepts involving data
recognition, collection, storage and management.” (Id.)
Appellants disagree and argue “that independent claim 5 is not
directed to an abstract idea.” (Appeal Br. 11.) Specifically, Appellants
argue that the Examiner’s approach is in error as it “results in a
determination that essentially the entire set of claim elements of claim 5
constitutes an abstract idea to which the claim is purportedly directed,” and
that it would “leave[] little to nothing for consideration at Step 2B of the
Alice subject eligibility test.” (Id.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
‘their character as a whole is directed to excluded subject
matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates to extending the business process paradigm so as to make processes
more explicitly adaptive over time.” (Spec. 1, ll. 8–9.) Claim 5 provides
further evidence. Claim 5 recites “contributing a plurality of usage
behaviors to a usage function,” “interacting with a media instance . . .
compris[ing] a plurality of video elements, wherein the video elements are
automatically selected . . . , and arranged in a storyline . . . in accordance
with an inference of a preference based, at least in part, on the plurality of
usage behaviors,” “and interacting with the media instance.” None of the
steps recite technological implementation details. Instead, they describe
functional results to be achieved by any means. In short, claim 5 is directed
to managing personal behavior or relationships by organizing/arranging
information, in this case, video elements. Thus, we agree with the Examiner
that claim 5 is directed to the abstract idea of certain methods of organizing
human activity. (See Final Action 3; see also Bridge and Post, Inc. v.
Verizon Commc’ns, Inc., No. 2018-1697, slip op. at 6–9 (Fed. Cir.
July 5, 2019) (nonprecedential) (deciding media content to provide to a user
by retrieving usage patterns for the user’s device, generating a user profile
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based on the usage patterns, and analyzing the data, including the user
profile, determined to be directed to an abstract idea).)
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241.
Claim 5 recites “contributing” data “through use of a mobile
processor-based device,” and “interacting” with “the mobile processor-based
device.” Although claim 5 also recites that “the plurality of video elements
are automatically selected for inclusion in, and arranged in a storyline
sequence in, the media instance in accordance with an inference of a
preference based, at least in part, on the plurality of usage behaviors,”
claim 5 does not recite how the automatic selection, arrangement, or
inference elements are performed. Nor is it clear whether the automatic
selection, arrangement, or inference are performed by the processor in the
mobile processor-based device. The processor in the processor-based device
obtains/contributes data, and provides for interacting with the device, i.e.,
accepts inputs. These are routine processor functions.
Even if the processor in the mobile device performs the automatic
selection, arrangement, and inference, these are simply steps of analyzing
and selecting/outputting data. These steps that could be performed in the
mind. These are also routine processor functions. Courts “have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
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ideas.” Elec. Power Grp., 830 F.3d at 1353. “In a similar vein, [courts]
have 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. Additionally, the
Federal Circuit has “recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.” Id.
The Specification discloses that the execution of these routine
computer steps can be performed by generic computer components. (See
Spec. 103, ll. 3–28.) And, we do not see how the recitation of a generic
“mobile processor-based device,” even in conjunction with the recited
functions, “ensure[s] ‘that the [claim] is more than a drafting effort designed
to monopolize the [abstract idea].” Alice, 573 U.S. at 221 (alterations in
original) (quoting Mayo, 566 U.S. at 77). In short, claim 5 merely uses a
generic mobile processor-based device as a tool to perform the abstract idea.
Appellants argue that the “inferential capabilities applied to usage
behaviors” distinguishes Appellants’ invention and that the Examiner failed
to fully consider these capabilities in the subject matter eligibility analysis.
(Appeal Br. 12.) We disagree. The Examiner specifically noted that “the
inferences are merely determined based on usage behaviors (i.e., analyzing
collected data).” (Answer 14.) And, as discussed above, this merely
involves routine processor functions and does not transform the claim into
patent eligible subject matter. (See id. at 13; see also Bridge and Post, Inc.,
slip op. at 15–17.)
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Appellants also argue that “subject matter eligibility rests on a
concern of avoiding long prevalent building blocks of human ingenuity
being tied up,” i.e., concerns of preemption. (Appeal Br. 11.) We do not
find this argument persuasive. Preemption is not a separate test.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Additionally, Appellants seek to analogize claim 5 to the claims in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016). (See Appeal Br. 13) Specifically, Appellants argue that “claim 5
also clearly represents an improvement to a technological process--
specifically, a recommender system that beneficially adapts computer-based
video to the preferences of users by automatically inferring users’
preferences . . . .” (Id.) We disagree.
Claim 5 simply uses a generic processor to perform the abstract idea,
i.e., certain methods of organizing human activity. This does not improve
the processor. Nor does claim 5 recite technological implementation details.
In contrast, “[t]he claimed improvement [in McRO] was to how the physical
display operated (to produce better quality images).” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other words, in
McRO, data was used to improve the technology, i.e., the display
mechanism. Here, although claim 5 recites, e.g., contributing/inputting data,
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interacting with the mobile device, analyzing and selecting
data/automatically selecting video elements, and interacting with data,
Appellants do not sufficiently explain how these steps improve the
technology. Claim 5 merely recites the functional results to be achieved,
e.g., “automatically select[ing]” the video elements. Claim 5 does not,
however, recite “a particular way of programming or designing the software
. . . , but instead merely claim[s] the resulting systems.” Apple, Inc., 842
F.3d at 1241. “Indeed, the claim language here provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it. Our law demands more.” Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Moreover, “[i]t has been clear since Alice that a claimed invention’s
use of the ineligible concept to which it is directed cannot supply the
inventive concept that renders the invention ‘significantly more’ than that
ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018). In other words, “[i]f a claim’s only ‘inventive
concept’ is the application of an abstract idea using conventional and well-
understood techniques, the claim has not been transformed into a patent-
eligible application of an abstract idea.” Id. at 1290–91.
In view of the above, we agree with the Examiner that claim 5 is
directed to an abstract idea.
Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (citing Mayo, 566 U.S. at 72–73).
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Appellants argue that the elements of claim 5, “considered
individually, much less considered with respect to their particular
arrangement with other claim elements, would clearly not be considered
routine and conventional at the time of the invention.” (Appeal Br. 15.) We
do not find this argument persuasive.
Taking the claim elements separately, the functions performed by the
generic “mobile processor-based device” are purely conventional. Providing
for contributing/inputting data, analyzing and selecting data, and interacting
with data, are basic computer functions. They are well-understood, routine,
and conventional functions previously known to the industry. See Elec.
Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement
for performing the claimed functions of gathering, analyzing, and displaying
in real time by use of anything but entirely conventional, generic technology.
The claims therefore do not state an arguably inventive concept . . . .”); see
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic processor of
Appellants’ claimed invention adds nothing that is not already present when
the limitations are considered separately. For example, claim 5 does not, as
discussed above, purport to improve the functioning of the mobile processor-
based device itself. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 5 amounts to nothing
significantly more than an instruction to apply the abstract ideas using a
generic mobile processor-based device performing routine computer
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functions. That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 5.

Claim 14
Appellants argue that “[c]laim 14 is a system version of essentially the
same limitations as claim 5, and Appellants’ arguments with respect to
claim 5 above also apply to claim 14.” (Appeal Br. 15.)
For the reasons discussed above, we do not find Appellants’
arguments persuasive and, thus, we are not persuaded that the Examiner
erred in rejecting claim 14.

Claim 20
Claim 20 is a system claim. Appellants present substantially the same
arguments with regard to claim 20 as with regard to claim 5. (See Appeal
Br. 16–20.) However, claim 20 recites “a computer-implemented
explanatory function that provides a reason to the recipient of the media
instance for the selection of at least one video element of the plurality of
video elements for inclusion in the media instance” and “a computer-
implemented explanatory function that provides a reason to the recipient of
the media instance for the sequential arrangement of at least two video
elements of the plurality of video elements.” Appellants argue that the
Examiner did not address these claim elements. (Appeal Br. 17.)
We do not find this argument persuasive. The Examiner discusses
these limitations (see Answer 11–12), and determines them, and the other
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elements of claim 20, to be, like claim 5, “concepts involving organizing
information.” (Id. at 12.) As with claim 5, and as discussed above, none of
the steps recite technological implementation details. Instead, they describe
functional results to be achieved by any means.
For the reasons discussed above with regard to claims 5 and 14, we do
not find Appellants’ arguments persuasive and we are not persuaded that the
Examiner erred in rejecting claim 20.

DECISION
The Examiner’s rejection of claims 5, 14, and 20 under 35 U.S.C.
§ 101 is affirmed.
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