Thomas J. Gilg et al.

Patent Trials and Appeals Board

Apr 2, 2020

14235261 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/235,261 01/27/2014 Thomas J Gilg 83791284 8073
22879 7590 04/02/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS J. GILG, LARRY MULL,
JUN GU, and TAMMY FUCHIGAMI
____________________

Appeal 2018-008919
Application 14/235,2611
Technology Center 3600
____________________

Before CARL W. WHITEHEAD JR., JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1 and 3–17. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. According to Appellant, the real party in interest is Hewlett-
Packard Development Company, LP. Appeal Br. 1.
2 Our Decision refers to the Specification (“Spec.”) filed January 27, 2014,
as amended on December 31, 2014, the Final Office Action (“Final Act.”)
mailed November 29, 2017, the Appeal Brief (“Appeal Br.”) filed April 2,
2018, the Examiner’s Answer (“Ans.”) mailed July 13, 2018, and the Reply
Brief (“Reply Br.”) filed September 13, 2018.
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CLAIMED INVENTION
The claims are directed to publishing content in printed or electronic
form as publications. Spec. Abstract, ¶ 1. Prior to delivering content for
production, the content must be qualified to ensure that it meets or exceeds
some predetermined standard. Id. ¶ 8. A content service performs partial
qualification (a “sanity check”), which is less comprehensive and
computationally intensive than complete qualification, to establish a
likelihood that content can be used to produce a given publication. Id. ¶ 23.
A catalog service then advertises partially-qualified publications as available
for production, and only when the publication is ordered does the content
service completely qualify the publication. Id. ¶¶ 9, 23.
Claims 1, 6, and 11 are independent. Appeal Br. 14–18 (Claims
Appendix). Claim 1 recites a “method,” claim 6 recites a “system” and
claim 11 recites a “computer readable medium.” Claims 6 and 11 are
similar in substance to claim 1. The remaining claims are dependent from
one of these three claims. Appeal Br. 15–19 (Claims Appendix). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for late content qualification, comprising:
obtaining, by a computing device, metadata and content
for each of a plurality of publications, each content being an
electronic data file of a predetermined format;
partially qualifying, by the computing device, content of
each publication by determining that a likelihood of successful
conversion of the content to a different format is greater than a
threshold;
after partially qualifying the content of each publication,
advertising, by the computing device, the availability of just the
plurality of publications for production that have been partially
qualified without first confirming that the content for any of the
plurality of publications can be completely qualified;
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just after receiving an order for one of the publications that
have been advertised, completely qualifying, by the computing
device, the content for the ordered one of the publications,
wherein completely qualifying the content for the ordered one of
the publications comprises:
determining that the content is convertible to the
different format specified by the order;
in response to determining that the content is
convertible to the different format such that the content is
successfully qualified, converting the content to the
different format; and
fulfilling, by the computing device, the order with
qualified content after having qualified the content, comprising:
when the order is for a printed publication,
physically generating the printed publication of the
qualified content of the order using the different format of
the content to which the content has been converted;
when the order is for an electronic publication,
electronically generating the electronic publication of the
qualified content of the order using the different format of
the content to which the content has been converted,
wherein partially qualifying the content of each
publication is less computationally intensive than completely
qualifying the content.

Appeal Br. 14–15 (Claims Appendix).

REJECTIONS
(1) Claims 1 and 3–17 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 2–7.
(2) Claims 1 and 3–17 stand rejected under AIA 35 U.S.C. § 103
based on Katz (US 2008/0282171 A1, published Nov. 13, 2008), Boenau
(US 9,053,190 B1, issued June 9, 2015), and Herrington
(US 2005/0033657 A1, published Feb. 10, 2005). Final Act. 7–27.

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ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever 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.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343,
1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–18). The first step is to determine
whether the claim is directed to a judicial exception to patent eligibility,
specifically, an abstract idea, law of nature, or natural phenomenon. Id.
(citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis
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proceeds to the second step of the Alice/Mayo test in which we “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 (internal quotation marks
omitted) (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to
the second step, however, if the first step of the Alice/Mayo test yields a
determination that the claim is directed to patent-eligible subject matter.
USPTO Step 1—Categories of Invention in 35 U.S.C. § 101
The Patent Office revised its guidance for how to apply the
Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”). Step 1
of the Revised Guidance (which is unchanged from the prior guidance) is to
review the claims to determine whether they fall within one of the
enumerated categories of invention under § 101.
Claims 1, 3–5, 16, and 17 recite “method[s]” which qualify as
“processes” under § 101. Claims 6–10 recite “system[s]” which qualify as
“machines” under § 101. Claims 11–15 recite “non-transitory
computer[-]readable medi[a]” which qualify as “manufactures” under § 101.
Thus, the claims satisfy Step 1 of the subject matter eligibility
analysis, and we proceed to USPTO Step 2A, which is the first step in the
Alice/Mayo test.
In our subsequent § 101 analysis, we group all claims together and
select claim 1 as representative of the group, as Appellant has done. See
Appeal Br. 5; 37 C.F.R. § 31.47(c)(1)(iv). Accordingly, all claims stand or
fall with claim 1. We will address the claims generally where possible, but
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when it is helpful to refer to explicit claim language, we will refer to claim 1
only.
USPTO Step 2A—Alice/Mayo Step 1 (Are the Claims Directed to a Judicial
Exception?)
In Step 2A of the Revised Guidance, we determine if the claims are
“directed to” a judicial exception. Step 2A of the Revised Guidance
corresponds to the first step of the Alice/Mayo test but is in part changed
from the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74618–74633 (Dec. 16, 2014), by separating the first step into two
prongs. We address these prongs in order below.
USPTO Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
In Step 2A, Prong One, of the Revised Guidance we determine
whether the claims recite a judicial exception including (a) mathematical
concepts; (b) certain methods of organizing human activity; or (c) mental
processes. Revised Guidance, 84 Fed. Reg. at 51–52.
The Examiner determines: “Claims 1 and 3–17 are directed to the
abstract idea of obtaining metadata and content for publications, advertising
the availability of products, attempting to qualify for an ordered one of the
publication[s] and fulfilling the order with qualified content.” Final Act. 3.
The Examiner determines the abstract idea is “An Idea of Itself.” Final Act.
4. This, however, is not one of the enumerated categories of abstract ideas
under the Revised Guidance.
We instead determine that the claims recite abstract ideas of
publishing, qualifying (partially or completely) content of publications for
production, advertising publications for production, and fulfilling orders for
qualified content. These abstract ideas fall under the categories of “certain
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methods of organizing human activity” and “mental processes” in the
Revised Guidance, 84 Fed. Reg. at 52.
Specifically, the recited steps of claim 1 are part of publishing
content, which is a fundamental economic practice similar to Bilski’s
hedging and Alice’s risk mitigation. Id. Activities similar to publishing
have been found to be abstract ideas by our reviewing court. Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) (wirelessly
delivering regionally broadcasted radio or television content to electronic
device located outside region of that content, was abstract idea); Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir.
2017) (method of routing information was abstract idea). Accordingly, we
conclude that publishing content is an abstract idea falling under the
category of “certain methods of organizing human activity.” 84 Fed. Reg. at
52.
Qualifying content for production is likewise an abstract idea. For
example, our reviewing courts have found similar claims to recite abstract
ideas. Examples of these cases include Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016) (receiving e-mail and other
data file identifiers, characterizing the e-mail based on identifiers, and
communicating characterization); Intellectual Ventures I LLC v. Capital One
Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017) (retrieving, manipulating,
updating, creating, and displaying extensible markup language (XML)
documents for a mobile application interface and firewall system); In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016) (taking,
transmitting, and organizing digital images); Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed.
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Cir. 2014) (extracting data from documents, recognizing specific
information, and storing that information in memory of automated teller
machine). All of these cases involve some sort of assessment or
characterization of content similar to the claimed qualifying. Furthermore,
the claimed qualifying involves format conversion which has been held
abstract as a “mental process.” Gottschalk v. Benson, 409 U.S. 63, 68
(1972) (converting binary-coded numerals into pure binary numerals
determined to be abstract); 84 Fed. Reg. at 52.
Claim 1 further recites advertising publications for production. In
addition to being itself a form of publishing content, under the Revised
Guidance, it is also a “fundamental economic practice” and a “commercial
or legal interaction” (including agreements in the form of contracts; legal
obligations; advertising; marketing or sales activities or behaviors).
84 Fed. Reg. at 52. Cases from our reviewing court further support that
advertising publications for production is a “fundamental economic
practice” and a “commercial or legal interaction” recognized as the judicial
exception of “certain methods of organizing human activity” in the Revised
Guidance. Id.; Customedia Techs., LLC v. Dish Network Corp.,
951 F.3d 1359, 1362 (Fed. Cir. 2020) (claims recited abstract idea of using a
computer to deliver targeted advertising to a user); Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2015) (showing an advertisement
before delivering free content determined to be an abstract idea).
Similarly, fulfilling orders for qualified content is part of a publishing
process, and for reasons noted, is an abstract idea. Fulfilling orders is also a
commercial or legal interaction, specifically, a sales activity, under our
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reviewing court’s decisions and the Revised Guidance. 84 Fed. Reg. at 52;
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
Accordingly, we conclude that claim 1 recites the abstract ideas of
publishing, qualifying (partially or completely) content of publications for
production, advertising publications for production, and fulfilling orders for
qualified content, which are “certain methods of organizing human activity”
and “mental processes” recognized as judicial exceptions under the Revised
Guidance. Id.
We thus proceed to USPTO Step 2A, Prong Two, of the Alice/Mayo
test to determine whether the abstract idea embodied in the claims is
integrated into a practical application.
USPTO Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two, of the Revised Guidance, we (a) identify
whether there are any additional elements recited in the claim beyond the
judicial exception, and (b) evaluate those additional elements individually
and in combination to determine whether the claim as a whole integrates the
judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. at 54–55 (“Prong Two”).
We determine that Appellant’s claimed additional elements (e.g.,
“computing device,” “system,” “hardware,” “catalog service,” “content
service,” and “computer readable medium”) integrate the judicial exception
into a practical application. Specifically, these additional elements
implement the judicial exceptions in conjunction with a particular machine
or manufacture that is integral to the claims. Revised Guidance, 84 Fed.
Reg. at 55. For example, the “computing device” is used to perform every
step of claim 1 such that it is integrally used to perform the method. The
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recited “computing device” does not merely perform the basic input,
processing, and output functions that a computer would be expected to
perform, but carries out specific “obtaining,” “partially qualifying,”
“advertising,” “completely qualifying, and “fulfilling” steps as recited in
claim 1. The computing device thus “play[s] a significant part in permitting
the claimed method to be performed, rather than function solely as an
obvious mechanism for permitting a solution to be achieved more quickly.”
See Versata Development Grp. v. SAP Am., 793 F.3d 1306, 1335 (Fed. Cir.
2015). Accordingly, the additional elements implement the judicial
exceptions in conjunction with a particular machine or manufacture that is
integral to the claims. See Eibel Process Co. v. Minnesota & Ontario Paper
Co., 261 U.S. 45, 64–65 (1923) (Fourdrinier machine used gravity, but in
conjunction with other elements, to achieve high speed and avoid waves and
ripples in paper stock fed through the machine).
The claims, when viewed as a whole, recite additional elements or
combinations thereof that amount to integration of the abstract ideas recited
in these claims into a practical application. Accordingly, our § 101 analysis
ends here, and we do not proceed to Step 2B of the subject matter eligibility
test, corresponding to step two of Alice/Mayo.
Conclusion on Section 101 Analysis
We conclude that the claims recite judicial exceptions, namely, the
abstract ideas of publishing, qualifying (partially and completely) content of
publications for production, advertising publications for production, and
fulfilling orders with qualified content. The claims, however, recite a
practical application of those abstract ideas and are thus patent-eligible
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subject matter under § 101. Thus, we do not sustain the Examiner’s
rejection of claims 1 and 3–17 under § 101.

§ 103 Rejection
A patent claim is unpatentable under 35 U.S.C. § 103 if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
At the outset, we note that merely quoting or emphasizing claim
language and asserting it is different from prior art references is insufficient
to constitute an argument. See 37 C.F.R. § 41.37(c)(1)(iv) (2013) (“The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant.” (Emphasis added.)). Furthermore, “[i]t is
not the function of [the Board] to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991).
Accordingly, in the following analysis, we only address Appellant’s
contentions that are articulated with sufficient particularity and supported by
sufficient explanation as to constitute cognizable allegations of specific
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reversible Examiner error and thereby amount to actual arguments.
Arguments that Appellant did not make in the Briefs are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
In response to the Examiner’s § 103 rejection, Appellant argues for
patentability of all claims together as one group. Appeal Br. 8. We select
claim 1 as representative of the group and specifically address only this
claim in our analysis. See 37 C.F.R. § 41.37(c)(1)(iv).
Partially Qualifying Content
Claim 1 recites “partially qualifying, by the computing device, content
of each publication by determining that a likelihood of successful conversion
of the content to a different format is greater than a threshold.” Appeal Br.
14 (Claims Appendix). The Examiner finds this limitation disclosed by
Herrington. Final Act. 9–10 (citing Herrington ¶¶ 34, 63–65, 86–92, 119,
133, 144); Ans. 10–11. Appellant argues Herrington fails to teach or suggest
this “partially qualifying” step. Appeal Br. 10–11.
We give claims their broadest reasonable interpretation consistent
with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). “[P]artially qualifying” is described in the
Specification as a “sanity check” to determine a likelihood that content can
be used to produce a given publication, and it is less comprehensive and
computationally intensive than “completely qualifying” content.
Spec. ¶¶ 22, 23. For example, PDF content may be examined for true
vectors, fonts, and pictures, which can be used to produce an eReader
publication, as opposed to PDF content which is all page scans, from which
an eReader publication is more difficult to produce. Id.
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The Examiner states that the cited paragraphs of Herrington teach that
content feeds have formats, and that “[t]he content feed for each distribution
partner can be formatted according to individual needs and demands.” Final
Act. 9–10 (citing Herrington ¶ 133); Ans. 7. We agree with the Examiner
that Herrington’s content feed must be in a partially qualified format before
it is formatted according to individual needs and demands into a completely
qualified format to present to the user. In Herrington, it would not make
sense to offer content to a user without a likelihood that the content can be
used to produce a customized content feed according to individual needs and
demands. Accordingly, we agree with the Examiner that Herrington teaches
and suggests the claimed “partially qualifying” step.
Other parts of Herrington also support our conclusion: ¶ 33 (“Because
the personalized content management and personalization systems herein do
not require incoming media content to arrive according to fixed methods and
formats, the media platforms provided herein accepts incoming feeds from a
variety of content providers in a variety of content formats.”); ¶¶ 34–35
(delivery of personalized email notifications and information in delivery
formats that can be accessed and viewed from alternative user interfaces)
¶ 65 (“[t]he selected and suggested content items can pass through the
presentation engine for customized viewing by a user (see FIG. 3)”); ¶ 87
(“[t]he KeepMedia Platform can be designed to give the user a consistent
look-and-feel throughout many personalized levels within the KeepMedia
website.”); ¶ 144 (“Depending on the type of platform a partner is running or
otherwise supports, there may be a preferred or required format used that is
only able to accept particular character encodings.”); Fig. 3 (showing (2)
personalization engine and (3) presentation engine for generating content
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feeds); Fig. 15 (showing “Feed Output Formatting Process” with “Final feed
output formatted based upon multiple criteria” including “Format of Output
–Fields to Include –Template for file (XML, csv, etc.) –Character
encoding”).
Viewing the facts of this case from another angle, Appellant does not
dispute that the combination of Katz, Boenau, and Herrington teaches the
“completely qualifying” step recited in claim 1. See generally Appeal Br.
The “completely qualifying” step necessarily subsumes the “partially
qualifying” step. Case law establishes that omission of an element and its
function is obvious if the function of the element is not desired.
MPEP § 2144.04; Ex parte Wu, 10 USPQ2d 2031 (BPAI 1989) (obvious to
omit certain salt from primary reference where function attributed to salt is
not desired or required); In re Larson, 340 F.2d 965 (CCPA 1965) (omission
of additional framework and axle which served to increase the cargo
carrying capacity of prior art mobile fluid carrying unit would have been
obvious if this feature was not desired); In re Kuhle, 526 F.2d 553 (CCPA
1975) (deleting a prior art switch member and thereby eliminating its
function was obvious expedient). Likewise, here, performing “partially
qualifying” because part of what constitutes “completely qualifying” is not
desired at an earlier step in the method fails to render the claim nonobvious.
Advertising
Claim 1 recites “after partially qualifying the content of each
publication, advertising, by the computing device, the availability of just the
plurality of publications for production that have been partially qualified
without first confirming that the content for any of the plurality of
publications can be completely qualified.” Appeal Br. 14 (Claims
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Appendix). The Examiner finds this “advertising” step taught by Katz.
Final Act. 9 (citing Katz ¶¶ 11–13, 81, 96). Appellant argues “the applied
art does not teach advertising the availability of products for production
without first confirming that content for any publication can be qualified.”
Appeal Br. 9.
Katz (¶ 81) teaches “[t]he source of the content comprised in the
advertising box module may be content entered by the Zlog producer 200.”
Katz (¶ 96) further teaches “the Zlog producer 200 . . . selects continuously
updated content stored on the database 440.” Since, according to the
teachings of Herrington, content is understood to be formatted in some
“partially qualifying” way before user customization corresponding to the
“completely qualifying” step, the advertising of the content necessarily
occurs after the “partially qualifying” step but before the “completely
qualifying” step. Accordingly, Appellant’s argument is not persuasive.
Less Computationally Intensive
Claim 1 recites “wherein partially qualifying the content of each
publication is less computationally intensive than completely qualifying the
content.” Appeal Br. 15 (Claims Appendix). The Examiner finds this
limitation taught by Herrington. Final Act. 10 (citing Herrington ¶¶ 133,
144). Appellant argues the cited paragraphs of Herrington fail to teach the
recited claim language. Appeal Br. 11.
As noted, Herrington (¶ 133) teaches that content feeds have formats,
and that “[t]he content feed for each distribution partner can be formatted
according to individual needs and demands.” Fitting Herrington into the
language of the claimed invention, “partially qualifying” content existing
before user customization necessarily requires less computation than
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“completely qualifying” content produced after user customization. See
KSR, 550 U.S. at 421 (”A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). Thus, Appellant’s argument is not
persuasive to show Examiner error.
Just After Receiving Order, Determining Content Convertible to Different
Format
Claim 1 recites “just after receiving an order for one of the
publications that have been advertised, completely qualifying . . . the content
for the ordered one of the publications,” where such qualification includes
“determining that the content is convertible to the different format specified
by the order.” Appeal Br. 14 (Claims Appendix). The Examiner finds this
limitation taught by Boenau. Final Act. 11–12 (citing Boenau 1:15–18; 2:5–
18; 13:45–61; 18:32–46). Appellant argues that Boenau fails to teach or
suggest determining that the content is convertible to a different format
specified by the order occurs just after receiving the order. Appeal Br. 11–
12.
Appellant’s argument requires detailed consideration of Boenau.
Boenau (13:52–61) teaches that a new custom book may be created from a
published custom book so that updates can be made. Boenau (14:45–50)
discusses subscriptions and books purchased by the student, suggesting
those subscriptions or books were in some way advertised to the student.
Thus, a new custom book may have been advertised before updates are made
to it.
Boenau (18:4–5) teaches the user may initiate publication of the new
custom book, which may be considered a form of “order” under the broadest
reasonable interpretation (in some places, the Specification mentions orders
in conjunction with consumers; in other places, it does not—see, e.g., Spec.
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¶ 9). Boenau (18:38–42) teaches an administrator’s clicking of an
“Approve” button in the Figure 27 interface results in publication of the new
custom book. Boenau’s Figure 27 shows the “Format” as “Online
Publication” which the Administrator approves by clicking the “Approve”
button. Approving the new custom book for publication “completely
qualifies” that book, including its format, for publication.
The claimed phrase “just after receiving an order” is highly
subjective. In any event, one would surmise an administrator would not
delay in approving a book for publication. Boenau (8:11–14) further states
“publishing can include transforming the content in files 160, user generated
content files and system generated content files to a specified format. For
example, files 160 and 161 for the new custom book can be transformed into
.pdf files.” One would assume that if the files are converted to a specified
format, the publishing system determined that the files were so convertible.
Putting these Boenau teachings together, we agree with the Examiner
that Boenau teaches the claimed feature.
Conclusion for § 103 Rejection
We previously determined that claim 1 is representative of all claims
as Appellant does not separately argue the others. Appellant’s arguments
fail to persuade us that the Examiner errs in the rejection of claim 1.
Accordingly, we sustain the Examiner’s rejection of claims 1 and 3–17
under § 103.

DECISION
The Examiner’s rejection of claims 1 and 3–17 under 35 U.S.C. § 101
is reversed.
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The Examiner’s rejection of claims 1 and 3–17 under 35 U.S.C. § 103
is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–17 101 Eligibility 1, 3–17
1, 3–17 103 Katz, Boenau, Herrington 1, 3–17
Overall
Outcome
1, 3–17

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