Apple Inc.Download PDFPatent Trials and Appeals BoardMar 2, 20212020004136 (P.T.A.B. Mar. 2, 2021) 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. 14/722,019 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. Appeal 2020-004136 Application 14/722,019 2 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). Appeal 2020-004136 Application 14/722,019 3 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. Appeal 2020-004136 Application 14/722,019 4 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.) Appeal 2020-004136 Application 14/722,019 5 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 Appeal 2020-004136 Application 14/722,019 6 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 Appeal 2020-004136 Application 14/722,019 7 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). Appeal 2020-004136 Application 14/722,019 8 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 Appeal 2020-004136 Application 14/722,019 9 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. Appeal 2020-004136 Application 14/722,019 10 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 Appeal 2020-004136 Application 14/722,019 11 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. Appeal 2020-004136 Application 14/722,019 12 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). Appeal 2020-004136 Application 14/722,019 13 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 Appeal 2020-004136 Application 14/722,019 14 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 Appeal 2020-004136 Application 14/722,019 15 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 Copy with citationCopy as parenthetical citation