Telefonaktiebolaget L M Ericsson (PUBL)Download PDFPatent Trials and Appeals BoardJul 31, 202014618598 - (D) (P.T.A.B. Jul. 31, 2020) Copy Citation 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. 14/618,598 02/10/2015 Raj Nair P43772-US2 6856 28240 7590 07/31/2020 THE DANAMRAJ LAW GROUP, P.C. TURLEY LAW CENTER, SUITE 810 6440 N. CENTRAL EXPRESSWAY DALLAS, TX 75206 EXAMINER TOLENTINO, RODERICK ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 07/31/2020 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): betty@danamraj.com dlg-admin@danamraj.com shreen@danamraj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAJ NAIR, KEVIN J. MA, and MIKHAIL MIKHAILOV _____________ Appeal 2019-002875 Application 14/618,598 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, MARC S. HOFF, and JOHN D. HAMANN, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1–20. We have jurisdiction over the pending claims 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) (2018). According to Appellant, the real party in interest is Ericsson AB. See Appeal Br. 1. Appeal 2019-002875 Application 14/618,598 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention “relates to digital rights management in a network environment,” including “a user device and method used on the user device to securely provide the content keys that are used to encrypt streaming content.” Spec. ¶ 1. Representative Claim 1 1. A method operating at a user device for securing streaming content decryption, the method comprising: receiving at the user device a manifest for requested content, the manifest providing a Content Encryption Key (CEK) that is encrypted using a first public Key Encryption Key (KEK), a corresponding first private KEK being stored in secure storage on the user device; decrypting, inside a secure processing zone on the user device, the CEK using the first private KEK to create a decrypted content key; decrypting, inside the secure processing zone, requested content using the decrypted content key to form decrypted content; and providing the decrypted content to a decoder on the mobile user device. Claims Appendix, Appeal Br. 28 (emphasis added regarding the “receiving” step disputed under anticipation Rejection B). 2 We herein refer to the Non-Final Office Action, mailed Apr. 16, 2018 (“Non-Final Act.”); Appeal Brief, filed Sept. 17, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed Dec. 28, 2018 (“Ans.”); and the Reply Brief, filed Feb. 28, 2019 (“Reply Br.”). Appeal 2019-002875 Application 14/618,598 3 Evidence The prior art relied upon by the Examiner as evidence is: Name Reference Date Matsuyama et al. (“Matsuyama”) US 2002/0027992 Al Mar. 7, 2002 Devadas et al. (“Devadas”) US 2006/0210082 Al Sept. 21, 2006 Pedlow, JR. (“Pedlow”) US 2006/0274898 Al Dec. 7, 2006 Kozuka et al. (“Kozuka”) US 2013/0145481 Al June 6, 2013 Futa et al. (“Futa”) US 2014/0013453 Al Jan. 9, 2014 Jannard et al. (“Jannard”) US 2014/0196079 Al July 10, 2014 Van Brandenburg et al. (“Van Brandenburg”) US 2016/0198202 Al July 7, 2016 Rejections Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1–20 101 Eligibility B 1, 2, 12, 20 102(a)(2) Jannard C 3, 4, 7, 10, 11, 13, 14 103 Jannard, Futa D 5 103 Jannard, Futa, Pedlow Appeal 2019-002875 Application 14/618,598 4 E 6 103 Jannard, Futa, Kozuka F 8, 15, 17–19 103 Jannard, Futa, Matsuyama G 9 103 Jannard, Futa, Van Brandenburg H 16 103 Jannard, Futa, Matsuyama, Devadas Claim Grouping Based on Appellant’s arguments (Appeal Br. 6–11) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of Rejection A under 35 U.S.C. § 101 of claims 1–20 on the basis of representative claim 1. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). Prior Decision PTAB Appeal 2017-007400, Application No. 14/618,598, decided January 31, 2018 (Examiner reversed). Analysis In reaching this Decision, we consider all evidence presented and all arguments actually made by Appellant. Rejection A under 35 U.S.C. § 101 of Claims 1–20 USPTO 35 U.S.C. § 101 Guidance On January 7, 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of 35 U.S.C. § 101 in the Federal Register, Vol. 84, No. 4 (“January 2019 Memorandum”). This January 2019 Memorandum was updated by the October 2019 Revised Patent Subject Matter Eligibility Guidance (“October 2019 Memorandum”), Appeal 2019-002875 Application 14/618,598 5 which was made available on the USPTO website.3 Under the January 2019 Memorandum, we first look to whether the claim recites: (1) (see January 2019 Memorandum, Fed. Reg. at 54, Step 2A — Prong One) 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) (see January 2019 Memorandum, Fed. Reg. at 54–55, Step 2A — Prong Two) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).4 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. 3 The Office issued a further memorandum on October 17, 2019 (the October 2019 Memorandum) clarifying guidance of the January 2019 Memorandum in response to received public comments. See https:// www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” January 2019 Memorandum, Fed. Reg. at 51. 4 This evaluation is performed by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See January 2019 Memorandum, 84 Fed. Reg. at 53– 54 Section III (A)(2). Appeal 2019-002875 Application 14/618,598 6 See January 2019 Memorandum, Fed. Reg. at 56, Step 2B. Because there is no single definition of an “abstract idea” under Alice step 1, the January 2019 Memorandum, Fed. Reg., synthesizes, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the “abstract idea” exception includes the following three groupings: 1. Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; 2. Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and 3. Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See January 2019 Memorandum, 84 Fed. Reg. at 52. According to the January 2019 Memorandum, 84 Fed. Reg. at 53, “[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not “directed to” a judicial exception (abstract idea), and thus are patent eligible, if “the claim as a whole integrates the recited judicial exception into a Appeal 2019-002875 Application 14/618,598 7 practical application of that exception.” See January 2019 Memorandum, 84 Fed. Reg. at 53. For example, limitations that are indicative of integration into a practical application include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP § 2106.05(h). See January 2019 Memorandum, 84 Fed. Reg. at 54–55, Prong Two. Appeal 2019-002875 Application 14/618,598 8 January 2019 Memorandum, Step 2A, Prong One the Judicial Exception In reviewing the prosecution history, we note Appellant did not have the benefit of the Director’s January 2019 Memorandum until the Reply Brief was filed on Feb. 28, 2019. Therefore, we consider Appellant’s arguments that pertain to the January 2019 Memorandum as timely in the Reply Brief. Under the 2019 Memorandum, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts; (b) mental steps; and (c) certain methods of organizing human activities. The Examiner concludes the claims recite an abstract idea, because: the claim describes an abstract idea of processing and distributing content. The concept described in said claims is similar to the concepts found by the courts to be abstract ideas of encoding and decoding image data (See RecogniCorp. (Fed Cir. 2017) and processing and distributing content Affinity Labs of Texas LLC v. Amazon.com Inc. (Fed. Cir. 2016) for details). Non-Final Act. 3. Independent Claim 1 In Table One below, we identify in italics the specific claim limitations that we conclude recite an abstract idea. We also identify in bold the additional (non-abstract) claim elements that we find are generic computer components: Appeal 2019-002875 Application 14/618,598 9 TABLE ONE Independent Claim 1 2019 Memorandum [a] A method operating at a user device for securing streaming content decryption, the method comprising: 5 [b] receiving at the user device a manifest for requested content, the manifest providing a Content Encryption Key (CEK) that is encrypted using a first public Key Encryption Key (KEK), a corresponding first private KEK being stored in secure storage on the user device; Receiving a manifest for requested content is insignificant extra-solution activity (i.e., data gathering). See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g). [c] decrypting, inside a secure processing zone on the user device, the CEK using the first private KEK to create a decrypted content key; Abstract Idea: decrypting the CEK using the first private KEK to create a decrypted content key is a mathematical operation that can be performed alternatively by a person as a mental process. See January 2019 Memorandum, 84 Fed. Reg. at 52. [d] decrypting, inside the secure processing zone, requested content Abstract Idea: decrypting requested content using the decrypted content 5 A method falls under the statutory subject matter class of a process. See 35 U.S.C. § 101 (“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 requirements of this title.”). Appeal 2019-002875 Application 14/618,598 10 Independent Claim 1 2019 Memorandum using the decrypted content key to form decrypted content; and key to form decrypted content is a mathematical operation that can be performed alternatively by a person as a mental process. See January 2019 Memorandum, 84 Fed. Reg. at 52. [e] providing the decrypted content to a decoder on the mobile user device. providing the decrypted content to a decoder on the mobile user device is insignificant post-solution activity. See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g). Abstract Idea Appellant contends: Appellant asserts that “receiving at the user device a manifest for requested content,” “decrypting ... a content encryption key,” “decrypting ... requested content using the decrypted content encryption key,” and “providing the decrypted content to a decoder on the mobile user device” cannot be properly analogized as mathematical concepts, methods of organizing human activity, or mental processes, as required under Prong 1 of Step 2A Analysis of the Guidance. These elements of Claim 1 are not key concepts that have been identified by the courts as abstract. Reply Br. 3. We disagree with Appellant. As identified above in Table One, the decrypting step “c” of claim 1 recites an abstract idea. We conclude “decrypting . . . the CEK using the first private KEK to create a decrypted content key” is a mathematical operation that can be performed alternatively Appeal 2019-002875 Application 14/618,598 11 by a person as a mental process. See January 2019 Memorandum, 84 Fed. Reg. at 52. Similarly, we conclude the additional step “d” of “decrypting” recites a mathematical operation that can be performed alternatively by a person as a mental process. Id. We note that merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Because independent claim 1 recites an abstract idea, as identified in Table One, supra, and because remaining independent claims 12 and 20 each recite similar language of commensurate scope, we conclude all claims 1–20 recite an abstract idea, as identified above, under Step 2A, Prong One. Therefore, we proceed to Step 2A, Prong Two. January 2019 Memorandum, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Additional Limitations Pursuant to the 2019 Memorandum, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See January 2019 Memorandum, 84 Fed. Reg. at 54–55. Appeal 2019-002875 Application 14/618,598 12 The Examiner finds: “the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea.” Ans. 5. We have identified steps “b” and “e” in claim 1 as insignificant “extra” and post-solution activity, respectively. See supra Table One. See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g). The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . . adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). We additionally find the “user device” and “mobile user device”6 recited in independent claim 1, the “user device” and the “processor” recited in independent claim 12, and the “client device” and “user device” recited in independent claim 20 are additional limitations that are generic computer components. 6 We note there is no antecedent basis in claim 1 for “the mobile user device” even though “a user device” is recited in the preamble. (emphasis added). We leave this issue to the consideration of the Examiner in the event of further prosecution of this application. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02 [R-11.2013]. Appeal 2019-002875 Application 14/618,598 13 MPEP § 2106.05(a) Appellant contends that “[c]laim 1 integrates the concepts that the Examiner has alleged are directed to a judicial exception into a practical application that involves sending encrypted content encryption keys to a user device over a non-secure connection in a specific manner.” Reply Br. 4. Appellant additionally contends: “In an alternate practical application, the claimed method can add additional security even when a secure connection is available and used.” Id. However, in reviewing the Appeal Brief and Reply Brief, we find Appellant does not advance any specific, substantive arguments explaining how the claimed generic computer components aid the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method to improve the recited processor(s), memory device(s), user device(s), mobile user device(s), network(s), or server(s). See Claims 1–20. See MPEP § 2106.05(a). We note the “‘mere automation of manual processes using generic computers’ . . . ‘does not constitute a patentable improvement in computer technology,’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)). Because Appellant’s claim limitations use generic computer components as a tool to perform generic computer functions, we conclude these limitations do not integrate the abstract idea into a practical application. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223–24 (2014). Accordingly, on this record, we conclude independent claim 1, and independent claims 12 and 20, which recite similar limitations of Appeal 2019-002875 Application 14/618,598 14 commensurate scope, do not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). MPEP § 2106.05(c), 2106.05(e) Appellant advances no arguments that any of the method claims on appeal are tied to a particular machine, or transform an article to a different state or thing. See MPEP § 2106.05(c). MPEP § 2106.05(e) Meaningful Claim Limitations Appellant does not argue that claim 1 (or any other claim) recites certain “meaningful” claim limitations, such as those of the types addressed under MPEP § 2106.05(e), that impose meaningful limits on the judicial exception.7 Appellant does not present substantive arguments explaining how the judicial exceptions are applied or used in some meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. MPEP § 2106.05(f) Merely including instructions to implement an abstract idea on a computer, or Merely using a computer as a tool to perform an abstract idea 7 See January 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e): “[A]ppl[ying] or us[ing] the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” (emphasis added). Appeal 2019-002875 Application 14/618,598 15 We conclude Appellant’s claimed invention merely implements the abstract idea using generic computer components. As discussed above, we find the “user device” and “mobile user device” recited in independent claim 1, the “user device” and the “processor” recited in independent claim 12, and the “client device” and “user device” recited in independent claim 20 are additional limitations that are generic computer components. Therefore, we conclude Appellant’s claims merely use a generic programmed computer as a tool to perform an abstract idea. MPEP § 2106.05(g) Adding insignificant extra-solution activity to the judicial exception As discussed above, we conclude that independent claim 1 recites extra or post-solution activities that courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); see also January 2019 Memorandum, 84 Fed. Reg. at 55 n.31. For example, we have identified steps “b” and “e” in claim 1 as reciting insignificant “extra” and post-solution activity, respectively, as shown in Table One above. See also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). That is, these limitations use a generic computer component that performs a generic computer function as a tool to perform an abstract idea. Thus, these limitations do not integrate the abstract idea into a practical application. See Alice, 573 U.S. at 223–24. Instead, these limitations perform insignificant extra-solution activities. Cf. Apple, Inc. v. Appeal 2019-002875 Application 14/618,598 16 Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with the Board that printing and downloading generated menus are insignificant post- solution activities). See also Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (streaming audio/visual data over a communications system like the Internet held patent ineligible.). MPEP § 2106.05(h) Generally linking the use of the judicial exception to a particular technological environment or field of use The Supreme Court guides: “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92). Appellant argues that the claims do not involve preemption. Even if one were to argue that the claims are directed to an alleged abstract idea, an assertion that Applicant does not concede, the pending claims do not seek up to tie up any such judicial exception due to the specific particular useful applications described above. It should be appreciated that without such application, the distribution of encrypted programs and associated encryption keys for decrypting those programs would be markedly less secure. Appeal Br. 8 (emphasis added). To the extent that Appellant advances arguments regarding a lack of preemption in the Appeal Brief (Appeal Br. 8), our reviewing court provides applicable guidance: “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, Appeal 2019-002875 Application 14/618,598 17 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 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”). Nor do claims 1–20 on appeal present any other issues as set forth in the 2019 Memorandum regarding a determination of whether the additional generic computer elements integrate the judicial exception into a practical application. See January 2019 Memorandum, 84 Fed. Reg. at 55. Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)– (h)), we conclude claims 1–20 do not integrate the judicial exception into a practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept — Step 2B Under the 2019 Memorandum, 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 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field; or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See MPEP § 2106.05(d). Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) Berkheimer was decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the PTO issued the Memorandum titled: “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Appeal 2019-002875 Application 14/618,598 18 Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memorandum”).8 The Berkheimer Memorandum provided specific requirements for an Examiner to support with evidence any finding that claim elements (or a combination of elements) are well-understood, routine, or conventional. The Examiner, under Step 2B, finds several additional elements recited in the claims were well-understood, routine, and conventional at the time of Appellant’s invention. In particular, the Examiner finds: Generic computer components [are] recited as performing generic computer functions that are well understood, routine and conventional activities [that] amount to no more than implementing the abstract idea with a computerized system. Non-Final Act. 3 (emphasis added). As Berkheimer evidence, the Examiner cites to several case authorities in support: The combination of steps/elements is no more than the sum of their parts, and provides nothing more than mere decoding of encoded content using generic computing/network devices. Therefore, the claims do not provide significantly more. See RecogniCorp. (Fed. Cir. 2017), for details; see also [Intellectual] Ventures LLC v. Symantec Corp. (Fed. Cir. 2016) and Affinity Labs of Texas LLC v. Amazon.com Inc. (Fed. Cir. 2016). Non-Final Act. 4 (emphasis added). In the Appeal Brief, Appellant contends the “Examiner has not cited an express statement in the specification or a statement made by the applicant during prosecution that demonstrates the allegedly well- 8 Available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF. Appeal 2019-002875 Application 14/618,598 19 understood, routine, conventional nature of the additional element(s).” Appeal Br. 10. But the Examiner has provided (Non-Final Act. 4) Berkheimer evidence of type two, i.e., “[a] citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” Berkheimer Memorandum 4. However, Appellant does not further address Step 2B (Inventive Concept) or Berkheimer in the Reply Brief (2–4). Nor does the Reply Brief further traverse the Examiner’s specific Berkheimer findings regarding the court decisions cited on page 4 of the Non-Final Action. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, based upon our review of the record, we find the Appellant has not persuasively or substantively addressed the Examiner’s specific findings under Step 2B, regarding the generic computer components and functions as found by the Examiner on pages 3–4 of the Non-Final Action. See Reply Br. 2–4. Accordingly, on the record before us, Appellant has not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional, when the claim limitations are considered both individually and as an ordered combination. See MPEP § 2106.05(d). In light of the foregoing, and under the 2019 Memorandum, we conclude that each of Appellant’s claims 1–20, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. Therefore, Appeal 2019-002875 Application 14/618,598 20 we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims 1–20. Rejection B under § 102 of Claims 1, 2, 12, and 20 Issue under § 102 Issue: Under 35 U.S.C. § 102(a)(2), we focus our analysis on the argued “receiving” step and the claimed “manifest” that we find is dispositive regarding anticipation Rejection B of independent claims 1, 12, and 20. Did the Examiner err by finding Jannard expressly or inherently discloses the disputed, dispositive step: receiving at the user device a manifest for requested content, the manifest providing a Content Encryption Key (CEK) that is encrypted using a first public Key Encryption Key (KEK), a corresponding first private KEK being stored in secure storage on the user device[,] within the meaning of representative independent claim 1? (emphasis added). 9 We note independent claim 20 recites an identical step or act of receiving. Independent “user device” claim 12 recites similar language of commensurate scope. 9 We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-002875 Application 14/618,598 21 The Examiner’s Finding of Anticipation The Examiner relies upon Jannard’s description, at paragraphs 37, 60, and 124, and Figure 4, as anticipating the claim 1 step of “receiving” including the disputed “manifest.” See Non-Final Act. 6; Ans. 7. The Examiner reads the claimed “manifest” on at least one of Jannard’s “encryption envelopes” described at paragraph 60. The Examiner finds Jannard’s paragraph 60 describes generating: [an] encryption envelope [manifest] for each intended recipient player; [the] first content key K1 [CEK] can be encrypted using a global public key; par. 0060; each player has corresponding private keys and a global private key [KEK] to allow full unwrapping or decryption of the content keys). Non-Final Act. 6 (emphasis added in bold; emphasis in italics omitted). Appellant disputes the Examiner’s findings. Appellant focuses on the claim term “manifest” and urges that “nothing in [Jannard’s] paragraph [0037] discloses, teaches, or even suggest[s] anything that can be fairly analogized with the claimed ‘manifest,’ much less a manifest ‘providing a Content Encryption Key (CEK) that is encrypted using a first public Key Encryption Key (KEK).’” Appeal Br. 13 (quoting pertinent part of claim 1) (emphasis added). Appellant also traverses the Examiner’s findings regarding paragraph 60 of Jannard: At most, paragraph [0060] describes a first content key being encrypted by a global public key (creating a first encryption envelope) and further encrypted by an intended recipient's public key (creating a second encryption envelope). The same can be done with a second content key. A distributor can then unwrap the second encryption envelope and encrypt another exterior encryption envelope for each intended recipient player. The Appeal 2019-002875 Application 14/618,598 22 intended recipient player can unwrap both envelopes with corresponding private keys and a global private key to decrypt content assets. Appeal Br. 13 (emphasis added). Further regarding Jannard, Appellant contends: nothing in paragraph [0060] discloses, teaches, or even suggest anything that can be fairly analogized with the claimed “manifest,” much less a manifest “providing a Content Encryption Key (CEK) that is encrypted using a first public Key Encryption Key (KEK)" or that “a corresponding first private KEK being stored in secure storage on the user device,” as claimed. Appeal Br. 13–14 (emphasis omitted). Appellant also traverses Jannard’s paragraph 124. See Appeal Br. 14. Claim Construction Claim 1 defines the disputed term “manifest” in terms of its intended purpose, and in terms of what it provides: “a manifest for requested content, the manifest providing a Content Encryption Key (CEK) that is encrypted using a first public Key Encryption Key (KEK).” (emphasis added). We turn to the Specification for further context regarding the claim term “manifest,” and find no explicit limiting definition. Although the Specification discloses that the “[u]se of manifest files for streaming delivery of segmented content is generally known” (Spec. ¶ 5), we find the best description of the claimed “manifest” is found in paragraph 30 of the Specification, with reference to Appellant’s Figure 2A: Appeal 2019-002875 Application 14/618,598 23 FIG. 2A depicts a method 200A for a securing a content encryption key provided in a manifest file. The method begins with receiving (205) a manifest for requested content; the manifest providing an encrypted CEK [(“Content Encryption Key”)] that has been used to encrypt the streaming media for transmission. As shown in system 100’ of FIG. 1B, content control server 102 sends the CEK to security client 106 over connection 131A. In at least one embodiment, content control server 102 provides the encrypted CEK to security client 106 via a third party (not specifically shown) that inserts the encrypted CEK into the manifest and provides the manifest to the CDN [(“Content Delivery Network”)] for delivery to user device 101. . . . In addition to providing the CEK, the manifest can provide multiple bitrates for viewing the requested media stream and the means to request content at each available bitrate. Spec. ¶ 30 (emphasis added). Turning to the evidence, we note paragraph 59 of Jannard begins the description of Jannard’s Figure 4, and is reproduced here in pertinent part: FIG. 4 illustrates a block diagram of multiple layers of encryption configured to limit access to an asset encryption key. Content keys K1, K2 can be encrypted one or more times and are not generally fully unwrapped or decrypted until they are delivered to the target playback device. Because only authorized devices contain the global player private key SK-RR, a content distributor does not generally decrypt the content keys Kl, K2. Jannard ¶ 59 (emphasis added). Jannard’s paragraph 60 (re: Fig. 4), as relied upon by the Examiner (Non-Final Act. 6; Ans. 7), describes at least one encryption envelope that the Examiner reads on the claimed manifest: A first content key Kl 415 can be encrypted using a global public key PK-RR, creating a first encryption envelope 410. This first envelope 410 can be further encrypted using an Appeal 2019-002875 Application 14/618,598 24 intended recipient’s public key, which in this case can be PK-D1, corresponding to distributor 1 450. This generates a second envelope 405. Similarly, a second content key K2 430 can be encrypted in two envelopes 420, 425 using the same public keys. . . . This can allow players to decrypt corresponding assets encrypted with the symmetric content keys Kl, K2. Jannard ¶ 60 (emphasis added). Although “[a]n anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991), we note that Jannard uses the literal term “manifest” elsewhere (in paragraphs 88–90), which the Examiner has not relied upon, nor distinguished from, the claimed “manifest.” Even though Jannard’s paragraph 60 describes that “[a] first content key Kl 415 can be encrypted using a global public key PK-RR, creating a first encryption envelope 410” (emphasis added), we note that Jannard’s paragraph 60 describes using not just one, but at least two encryption envelopes (410,405), and paragraph 59 describes “multiple layers of encryption configured to limit access to an asset encryption key.” (emphasis added). Thus, at the device (player 1) level, as depicted in Jannard’s Figure 4 (460a), we understand the player 1 device uses private keys and a global private key to “decrypt [the] corresponding assets encrypted with the symmetric content keys K1, K2.” Jannard ¶ 60. Appeal 2019-002875 Application 14/618,598 25 Is Jannard an Anticipating Reference? Although we find Jannard is a close reference, the dispositive question before us is whether Jannard is an anticipating reference given that it uses multiple layers of encryption, including two encryption envelopes (410, 405), and two encrypted keys (K1, K2) (Jannard ¶ 59–60). On this record, we find some degree of speculation would be required to affirm the Examiner’s anticipation Rejection B of independent claims 1, 12, and 20 over Jannard, regarding the claimed “manifest.” 10 We decline to engage in speculation. Claim 1 (emphasis added). Therefore, based upon our review, we find the Examiner has not fully developed the record to show that a “manifest” as claimed is expressly or inherently anticipated by Jannard’s “encryption envelope 410” as described in paragraph 60, and as depicted in Figure 4A, and also mentioned in paragraph 124. We need not decide the issue of whether the Jannard’s “encryption envelope 410” (¶ 60) might suggest the claimed “manifest,” because the Examiner sets forth an anticipation rejection for each independent claim 1, 12, and 20, instead of an obviousness rejection. To the extent the Examiner may determine that an obviousness rejection may be applicable to the independent claims in the event of further prosecution, we note that Appellant admits: “this invention deals with the 10 In anticipation, “the Board must compare the construed claim to a prior art reference and make factual findings that ‘each and every limitation is found either expressly or inherently in [that] single prior art reference.”’ In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Appeal 2019-002875 Application 14/618,598 26 field of ‘streaming content.’ It is well-known in the art of ‘streaming content’ that ‘manifest files’ are used to indicate to a user device from which to retrieve the streaming content.” Appeal Br. 14 (emphasis added).11 Even considering that Appellant’s Specification also describes that the “[u]se of manifest files for streaming delivery of segmented content is generally known” (Spec. ¶ 5 (emphasis added)), we are constrained on this record to reverse the Examiner’s anticipation Rejection B, because we can only consider on appeal the description and drawings found within the four corners of Jannard as evidence. We note that evidence of what was well known in the art at the time of the invention may be relied upon by the Examiner to establish a prima facie case of obviousness under 35 U.S.C. § 103. However, such evidence has no relevance with respect to showing anticipation under 35 U.S.C. § 102 over Jannard in this appeal. In the event of further prosecution, we bring to the Examiner’s attention a discussion of the use of a literal “manifest” in paragraphs 88–90 of Jannard, as discussed above. Because the Examiner has not relied upon paragraphs 88–90 as evidence, nor distinguished the “manifest” described in Jannard (id.) from the claimed “manifest,” we decline to do so here in the first instance. We note the Board “is basically a board of review — we review . . . rejections made by patent examiners.” Ex parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). 11 Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02. Appeal 2019-002875 Application 14/618,598 27 Therefore, based upon a preponderance of the evidence, we are constrained on this record to reverse the Examiner’s anticipation Rejection B of independent claim 1 over Jannard. As noted above, independent claim 20 recites an identical step or act of “receiving.” Independent “user device” claim 12 recites similar language of commensurate scope. Accordingly, for the same reasons discussed above regarding claim 1, we also reverse the Examiner’s anticipation Rejection B of independent claims 12 and 20. Because we have reversed the anticipation Examiner’s Rejection B of each independent claim on appeal, for the same reasons we reverse the Examiner’s anticipation Rejection B of dependent claim 2. Remaining § 103 Rejections C–H of all Remaining Dependent Claims In light of our reversal of Rejection B of independent claims 1, 12, and 20, supra, we also reverse obviousness Rejections C–H of all remaining dependent claims which variously and ultimately depend therefrom. On this record, the Examiner has not shown how the additionally cited secondary references overcome the aforementioned deficiencies of Jannard, as discussed above regarding claim 1. CONCLUSIONS Under the Director’s 2019 Memorandum, as governed by relevant case law, we conclude that claims 1–20, as rejected under 35 U.S.C. § 101, are directed to patent-ineligible subject matter. Appeal 2019-002875 Application 14/618,598 28 The Examiner erred in rejecting claims 1, 2, 12, and 20, as being anticipated under 35 U.S.C. § 102(a)(2), over Jannard. The Examiner erred in rejecting claims 3–11 and 13–19, as being obvious under 35 U.S.C. § 103, over the cited combinations of references. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed A 1–20 101 Eligibility 1–20 B 1, 2, 12, 20 102(a)(2) Jannard 1, 2, 12, 20 C 3, 4, 7, 10, 11, 13, 14 103 Jannard, Futa 3, 4, 7, 10, 11, 13, 14 D 5 103 Jannard, Futa, Pedlow 5 E 6 103 Jannard, Futa, Kozuka 6 F 8, 15, 17–19 103 Jannard, Futa, Matsuyama 8, 15, 17–19 G 9 103 Jannard, Futa, Van Brandenburg 9 H 16 103 Jannard, Futa, Matsuyama, Devadas 16 Overall Outcome 1–20 Appeal 2019-002875 Application 14/618,598 29 FINALITY AND 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation