Apple Inc.

Patent Trials and Appeals Board

Mar 2, 2021

2020004136 (P.T.A.B. Mar. 2, 2021)

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.
14/722,019 05/26/2015 Thomas Alsina P23958US1
(119-1525US1)
6294
61947 7590 03/02/2021
Apple - Blank Rome
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
SAX, TIMOTHY P
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/02/2021 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS ALSINA, AUGUSTIN J. FARRUGIA,
EDWARD T. SCHMIDT, GIANPAOLO FASOLI, and
SEAN B. KELLY
____________

Appeal 2020-004136
Application 14/722,019
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 1–5, 7–20, and 24–27. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Apple Inc. as the real party in interest.
Appeal Br. 4.
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THE INVENTION
Appellant claims a technology which pertains to sharing content
items, and more specifically pertains to sharing purchased content items
amongst members of a group of linked user accounts. (Spec. ¶ 2).
Claim 1 is representative of the subject matter on appeal.
1. A method for sharing a content item, comprising:
receiving, from a content management system, by a client
device, a first content item, wherein:
the client device is associated with a first user account of
a group of linked user accounts, the first content item is assigned
to a second user account from the group of linked user accounts,
and the first content item is tagged with a first account identifier
identifying the second user account;
receiving a first digital rights management (DRM) key
associated with the first content item, instead of a second DRM
key, wherein the first DRM key indicates a relationship between
the first user account and the second user account, and wherein
the second DRM key indicates that a device is authorized to
access the content item;
identifying, by the client device, the first content item as a
shared content item by the second user account based on a
comparison between the first account identifier and a second
account identifier identifying the first user account; and
accessing, by the client device and based on the
identifying, the shared content item using the first DRM key.
THE REJECTIONS
Claims 1–5, 7–20, and 24–27 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1–5, 7–20, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Aggarwal (US 8,613,108 B1, issued Dec. 17, 2013),
Evans (US 2014/0229544 A1, published Aug. 14, 2014), and Crowley (US
2008/0154903 A1, published June 26, 2008).
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Claims 25, 26, and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aggarwal, Evans, Crowley, as applied to claims 1, 8, and
15 above, in further view of Rogers (US 2014/0372743 A1 published Dec.
18, 2014).
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–5, 7–20, and 22–27 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is
there in the claims before us?” . . . To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. . . . [The Court] described step two of this
analysis 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
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Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to the abstract
idea of copyright protection that includes steps for protecting content, and
therefore is a process that deals with commercial or legal interaction. (Non-
Final Act. 8–9.) The Examiner finds that the client device, processor,
memory, and computer readable storage medium, merely uses a computer as
a tool to perform the abstract idea so the judicial exception is not integrated
into a practical application. The Examiner also finds the claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements of using a
client device, processor, memory, and the computer readable storage
medium to perform the steps amounts to no more than using a computer or
processor to automate and/or implement the abstract idea. Therefore,
according to the Examiner, the use of the additional elements does no more
than employ a computer as a tool to automate and/or implement the abstract
idea. (Non-Final Act. 10.)
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The Specification discloses that the present invention pertains to
sharing content items and more specifically pertains to sharing purchased
content items amongst members of a group of linked user accounts. (Spec.
¶ 2). As such, the Specification clearly discloses that the invention relates to
sales activity. The Specification also discloses that oftentimes access to
purchased content is restricted to the user account that purchased the content
clearly indicating that the invention relations to legal rights to content.
Consistent with this disclosure in the Specification, claim 1 recites
“the client device is associated with a first user account,” “a second user
account from the group of linked user accounts.” These recitations are
related to accounts and thus clearly pertain to sales activity. Claim 1 also
recites “first digital rights management (DRM) key associated with the first
content item,” and “wherein the second DRM key indicates that a device is
authorized to access the content item,” which clearly relates to steps for
protecting legal rights to access content. (Claim 1 (emphasis added).)
We, thus, agree with the Examiner’s findings that claim 1 is directed
to controlling the behavior of persons concerning the legal authorization to
share content. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are
directed to an abstract idea. Controlling the behavior of persons concerning
content sharing is a method of organizing human behavior, which is not
eligible subject matter. See Alice, 573 U.S. at 218–19.
Also, we find the steps of receiving a content item (receiving data),
receiving a DRM key (receiving data), identifying first content item as a
shared content item (analyzing data), accessing the shared content
(displaying data) constitute “analyzing information by steps people go
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through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, we find that claim 1 recites the abstract ideas of
methods of organizing human activity and in the alternative, a mental
process.
Turning to the second prong of the “directed to test”, claim 1 requires
a “client device.” The recitation of the words “client device” does not
impose “a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance 84 Fed. Reg. at 54. We find no indication in the Specification, nor
does Appellant directs us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
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functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the client device, or other technology, does not recite a
particular machine or manufacture that is integral to the claim, and does not
transform or reduce a particular article to a different state or thing. Id. Thus,
claim 1 is directed to judicial exceptions that are not integrated into a
practical application and thus claim 1 is directed to “abstract ideas.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer in the form of a client device2 into the
claims does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same

2 The Specification discloses that the client device may be a desktop or
workstation, a business server, a laptop, smart phone or tablet. (Spec. ¶ 30).
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deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 1] does more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; 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”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
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other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018) (citation omitted).
Considered as an ordered combination, the client device of
Appellant’s claims adds nothing that is not already present when the steps of
claim 1 are considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the client device itself. As we stated above, the claims do not effect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. (See, e.g., Spec. ¶ 30). Thus, claim 1 at issue amounts to nothing
significantly more than instructions to apply the abstract idea of protecting
content using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 226.
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We have reviewed all the arguments (Appeal Br. 15–19; Reply Br. 2–
5) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 1 recites a specific improvement in
computer-related technology by providing a specific, improved way to share
purchased content items amongst members of a group of linked user
accounts. According to Appellant any judicial exception recited in the
claims is integrated into a practical application because the claimed method
is an improvement to conventional DRM content access systems because the
DRM key indicates a relationship between the first and second user accounts
and therefore allows the relationship between the two user accounts to be
severed while maintaining the relationship between other user accounts.
(Appeal Br. 16–17). This argument is not persuasive because claim 1 does
not recite that the relationships can be severed while maintaining
relationships between other user accounts. In fact, claim 1 does not recite
any function for the relationship data included in the DRM key.
Along these same lines, we agree with the Examiner that claim 1 does
not include a recitation of additional elements that are significantly more
than the abstract idea. In this regard, we do not agree with Appellant that
claim 1 recites a non-conventional and non-generic implementation of DRM
systems such as the prior art to which uses access control policy of a file
system to implement a sort of DRM but is silent with respect to shared or
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group access. (Appeal Br. 17–18). To the extent Appellant maintains that
the limitations of claim 1 necessarily amount to “significantly more” than an
abstract idea because the claimed apparatus is allegedly patentable over the
prior art, Appellant misapprehends the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “‘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 (alteration in original). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo,
566 U.S. at 90.
We do not agree with Appellant that the invention of claim 1 does not
relate to any form of contractual relationship or obligation between any
parties. (Reply Br. 3). A contractual relationship exist between the party that
provides the digital rights to the content and the parties that are sharing the
content. The Specification is clear that the provider of the content provides
the conditions under which it can be viewed and shared by disclosing that
access to purchased content items is restricted by the content provider to the
user account that purchased the content item. Sharing occurs under an
agreement between the users and the content provider.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We will also sustain this rejection as it is
directed to the remaining claims because Appellant has not argued the
separate eligibility of these claims.
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REJECTIONS UNDER 35 U.S.C. § 103
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims 1–5, 7–20, and 24 are obvious in view of the prior art
cited by the Examiner.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the prior art does not disclose “wherein the first
DRM key indicates a relationship between the first user account and the
second user account” (Appeal Br. 20). We agree with the Examiner’s
response to this argument found on page 7 of the Answer and adopt same as
our own. In this regard, in our opinion, there is insufficient evidence on the
record showing a functional relationship between (a) the indication of the
DRM key that indicates relationships between the first and second user, and
(b) the method steps recited in claim 1. Absent such evidence, it is
reasonable to characterize such information about the relationship between
the first and second user as patentably-inconsequential subject matter. See
Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative). Cf. In
re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material
is not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability). See
also In re Jie Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011) (non-precedential).
The rationale is to “prevent[] the indefinite patenting of known products by
the simple inclusion of novel, yet functionally unrelated limitations.” King
Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
(citation omitted).
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We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the prior art does not disclose that the client
device identifies the first content item as a shared content item by the second
user account. (Appeal Br. 20). The Examiner relies on Evans for teaching
this subject matter. (Non-Final Act. 12). Appellant argues that in Evans, it is
the server not the client device that performs this identification. We agree
with the Examiner’s response to this argument found on page 9 of the
Answer that Evans discloses this subject matter and adopt same as our own.
In this regard, we find that Figure 1 of Evans depicts several client devices
110, 112, and 114 and Figure 2 depicts a computer system 200 used in
content sharing. Evans discloses that the computer system may be a user
device. (Evans ¶ 22). Evans further discloses that the client device checks
for a friend association between the requesting user and the owner to
determine content that may be shared. (Evans ¶ 85). We also agree with the
Examiner that the determination of whether a user is a friend requires a
comparison between the users’ identifiers such as the user passwords and
emails. (Evans ¶ 34).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to claims 2–5, 7–
9, 15, 16, and 24 because Appellant has not argued the separate patentability
of these claims.
We will also sustain the rejection of claims 25, 26, and 27 because
Appellant makes the same arguments in response to this rejection as were
made in response to the rejection of claim 1.
We will not sustain the rejection of claims 10 and 17 because we
agree with Appellant that the prior art does not disclose the client device
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disabling the first content that is a shared content item. (Appeal Br. 23). The
Examiner relies on paragraph 50 of Crowley for teaching this subject matter.
(Non-Final Act. 15). Appellant argues that although Crowley addresses a
remote server deleting the disassociated member’s group data to prevent
access by the disassociated member from accessing the group data, Crowley
does not address disabling by the client device. We agree. We find that
paragraph 50 of Crowley discloses that it is the remote server, not the local
device that deletes items previously sent by the remote server to the member
who is no longer a member of the group.
In view of the foregoing, we will not sustain the rejection as it is
directed to claims 10 and 17 and dependent claims 11–14 and 18–20
dependent respectively thereon.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–5, 7–20,
and 24–27 under 35 U.S.C. § 101.
We conclude that the Examiner did not err in rejecting claims 1–5, 7–
9, 15, 16, and 24–27 under 35 U.S.C. § 103.
We conclude that the Examiner did err in rejecting claims 10–14 and
17–20 under 35 U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1–5, 7–20, and 24–27 is
affirmed.
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Bas
is
Affirmed Reversed
1–5, 7–20,
24–27
101 Eligibility 1–5, 7–20,
24–27

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1–5, 7–20,
24
103 Aggarwal, Evans,
Crowley
1–5, 7–9,
15, 16, 24
10–14,
17–20
25, 26, 27 103 Aggarwal, Evans,
Crowley, Rogers
25, 26, 27
Overall
Outcome
1–5, 7–20,
24–27

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