Ex Parte Chatfield et al

Patent Trial and Appeal Board

Jun 24, 2016

12244052 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/244,052 10/02/2008 Keith Marshall Chatfield
12675 7590 06/28/2016
Cesari & Reed, LLP -
Seagate Technology LLC
1114 Lost Creek Boulevard
Suite 430
Austin, TX 78746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 100-STL13610 1280
EXAMINER
KIM, STEVENS
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
usptomail@cesari-reed.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH MARSHALL CHATFIELD and MARK ALAN PASTOR
Appeal2014-000527
Application 12/244,052
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 7, 9, 10, 12, and 21-33 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2014-000527
Application 12/244,052
THE INVENTION
The Appellants' claimed invention is directed to a system and method
for providing a media content exchange service. (Spec. 1: 5-7). Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method comprising:
receiving a request from a user for a replacement copy of
a specific media content at a content server, the request
including an indication from the user that the user has an
original copy of the specific media content;
providing the replacement copy of the specific media
content to the user via the content server based on the request
before verifying media validation information for the specific
media content;
receiving media validation information from the user at
the content server to validate the original copy of the specific
media content; and
initiating or not initiating a payment action from the user
based on the media validation information.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
van Zoest
Cronce
Peters
US 6,496,802 B 1
US 7,483,860 B2
US 2009/0204855 Al
The following rejections are before us for review:
Dec. 17, 2002
Jan.27,2009
Aug. 13, 2009
1. Claims 1-3, 7, 9, 10, 12, and 21-33 stand rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
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Appeal2014-000527
Application 12/244,052
2.
,..,,.. • -1 ,...,. ,_, r'\. -1 A .. ,..... -1 ,...,. ,...,. 1 , .. • , .. .. ,...,. ,_ TT r"I ""
ciam1s 1-j, 1, "}, iu, ana Ll-jj' stana reJectea unaer j) u.~.L.
§ 103(a) as being unpatentable over van Zoest and Cronce.
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over van Zoest, Cronce2, and Peters.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence3.
ANALYSIS
Rejections under 35 U.S.C. § 101
The Examiner has rejected the claims under 35 U.S.C. § 101 as being
drawn to ineligible subject matter (Ans. 3---6). The Examiner has determined
that the claims are directed to an abstract idea of validation of media
validation information received from a user and initiating or not initiating a
payment action from a user based on the media validation information (id.).
In contrast, the Appellants have argued that this rejection is improper
(Reply Br. 1-5).
1 The listing of claim 12 in this rejection at page 9 of the Final Rejection is
considered a typographical error as it is not listed in the body of the rejection
and instead included in the separate rejection at page 20. Also, the listing of
claim 11 at page 13 of the Final Rejection is considered an error as the claim
is canceled (Appeal Br. 15).
2 The omission of Cronce from this rejection is considered an error as claim
12 depends from claim 1.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-000527
Application 12/244,052
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an "inventive concept," an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id. at 2358.
Here, the claim is directed to the abstract idea of conditional payment
based on media validation information and also to a fundamental economic
practice of paying for media. We next consider whether additional elements
transform the nature of the claim into a patent-eligible application of the
abstract idea, e.g., whether the claim does more than simply instruct the
practitioner to implement the abstract idea over the Internet, using generic
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Appeal2014-000527
Application 12/244,052
computer components. We conclude that it does not. The recited method
steps of claim 1 fail to transform the nature of the claim as they are directed
to generic computer structures for storing and transferring information. For
this reason, this rejection of claim 1 is sustained. The Appellants have
provided the same arguments for the remaining claims, and the rejection of
these claims is sustained as well.
Rejections under 35 U.S.C. § 103(a)
Independent claim 1 requires "providing the replacement copy of the
specific media content ... based on the request before verifying media
validation information for the specific media content."
The Appellants argue that the rejection of claim 1 is improper
because, inter alia, "van Zoest never teaches providing media content before
verifying validation information."
The Examiner has however determined that the rejection is proper and
finds this limitation in van Zoest at column 20, lines 22----67 (Ans. 9).
We agree with the Appellants. Here the cited claim limitation
requires that a replacement copy is provided before the verification of the
corresponding request. The above citations to van Zoest fail to disclose this.
At column 20, lines 22-39, van Zoest describes an embodiment wherein
validation is performed based on a counter. Each time a request for content
is received, the system compares the current value of the counter to a
threshold. If the counter exceeds the threshold, then the user's request is not
validated. If the counter does not exceed the threshold, the work is provided
and the counter is incremented. After the providing is complete, the counter
is decremented. At column 20, lines 40-49, van Zoest discloses another
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Appeal2014-000527
Application 12/244,052
embodiment wherein the validation of each request is performed based on a
session identifier included in each request. In both of these embodiments,
each request for content results in a new validation (i.e., based on the
counter or session identifier) that is performed before the content is provided
in response to that particular request. At column 20, lines 50-67, van Zoest
discloses that"[ o ]nee the Content Delivery System 152 validates a user," the
system searches for the content and, if the content can be located, it is
provided to the user. Thus, it is clear that Content Delivery System 152 does
not provide the content until the corresponding request has been validated.
In other words, subsequent requests for the same or different content result
in distinct validation operations being performed before the corresponding
content is provided. For these reasons the rejection of claim 1 and its
dependent claims 2, 3, 7, 9, 10, 12, and 21-2 6 is not sustained.
Independent claims 27 and 32 contain similar limitations, and the
rejection of claims 27 and 32 suffers from the same deficiency as the
rejection of claim 1. Therefore, the rejection of claims 27 and 32 and their
dependent claims 28-31 and 33 is not sustained for the same reasons.
CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting the claims under 3 5 U.S. C. § 101.
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a).
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Appeal2014-000527
Application 12/244,052
DECISION
The Examiner's decision to reject claims 1-3, 7, 9, 10, 12, and 21-33
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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