Ex Parte Haminton et al

Patent Trial and Appeal Board

Nov 13, 2017

13792371 (P.T.A.B. Nov. 13, 2017)

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.
13/792,371 03/11/2013 Rick A. Haminton II END920080357US2JEN106611 3623
26681 7590 11/15/2017
Driggs, Hogg, Daugherty & Del Zoppo Co., L.P.A.
38500 CHARDON ROAD
DEPT. IEN
WILLOUGHBY HILLS, OH 44094
EXAMINER
BORISSOV, IGORN
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
usptocommunications@driggslaw.com
carole@driggslaw.com
mwheeler @ driggslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMINTONII, PAUL A. MOSKOWITZ,
BRIAN M. O'CONNELL, and CLIFFORD A. PICKOVER
Appeal 2017-001501
Application 13/792,371
Technology Center 3600
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rick A. Haminton II et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from a rejection of claims 1, 2, 4—15, and 17—22.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants submit the real party in interest is International Business
Machines Corporation. Appeal Br. 2.
Appeal 2017-001501
Application 13/792,371
CLAIMED SUBJECT MATTER
Appellants’ invention relates to “utilizing digital media as a function
of environmental impact data” of the digital media. Spec. 12. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer implemented method for providing digital
media content with an embedded environmental impact data
value, the method comprising executing on a central processing
unit the steps of:
determining a first environmental impact value for a first
digital multimedia item that comprises a tangible machine-
readable article and a digital multimedia file stored thereon as a
total of an amount of energy used in creating the first digital
multimedia item, an amount of energy used to physically deliver
the tangible machine-readable article to a user, and an amount of
energy used to recycle or dispose of the tangible machine-
readable article;
encoding the determined first environmental impact value;
and
embedding the encoded first environmental impact value
within digital data stored on the first digital multimedia item for
decoding by a receiver of the first digital multimedia item.
THE REJECTION2
Claims 1, 2, 4—15, and 17—22 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2 A rejection of claims 1, 4—15, and 17—22 under 35 U.S.C. § 103(a) as
unpatentable over Svensson (US 2003/0146924 Al, published Aug. 7,
2003), Evevsky (US 2009/0313060 Al, published Dec. 17, 2009), Rhoads
(US 2007/0250195 Al, published Oct. 25, 2007), and Daken (US
2009/0254387 Al, published Oct. 8, 2009) is withdrawn in the Answer.
Ans. 3. A rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Svensson, Evevsky, Rhoads, and Daken is also withdrawn in the
Answer. Id.
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Application 13/792,371
DISCUSSION
The Examiner finds that the claims are ineligible for patent protection
under§ 101 because they “describe the concept of recording energy usage
and assessing environmental impact during creating and recycling of a
multimedia item,” which is an abstract idea. Final Act. 2. According to the
Examiner the limitations including determining a first environmental impact
value “do not add significantly more to the exception.” Id. at 3.
Appellants argue that following USPTO guidance with respect to the
two part test (the “Alice test”) for determining whether a claim recites
patent-eligible subject matter {see Alice Corp. Pty, Ltd. v. CLS BankInt'l,
134 S. Ct. 2347, 2355 (2014)), “the ‘significantly more inquiry’ in the Step
2B analysis defined in the 2014 Interim Guidance provides ‘an additional
pathway to eligibility.’” Appeal Br. 4. According to Appellants,
determining impact value is performed “via non-conventional routines that
are unknown in the prior art,” and that “pursuant to consideration (5) of the
Step 2B analysis ‘Significantly More’ considerations ... the claim
limitations ‘add a specific limitation other than what is well-understood,
routine and conventional in the field.’” Id. at 5. Appellants, thus, assert that
“consideration (5) of the Step 2B analysis establishes and supports a finding
that the claimed inventions at issue are statutory subject matter under 35
USC 101.” Id.
The Examiner responds that using generic computer components to
perform the recited steps “does not constitute a meaningful limitation that
would amount to significantly more than the judicial exception,” because
“claim 1 [only] requires [] gathering information about energy used during a
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Application 13/792,371
life cycle of a multi-media item, and embedding said information into the
media items for decoding by a receiver.” Ans. 6. The Examiner states that
“[u]nder the ‘broadest reasonable interpretation’ said determining could be
understood as simply selecting or accessing a pre-stored (pre-defmed) values
from a database - the Internet, or entered by an operator into the computer,”
and, thus, “does not constitute significantly more.'” Ans. 7.
Appellants reply that after the filing of the Appeal Brief and prior to
the Examiner’s Answer, the Federal Circuit provided additional guidance for
determining patent eligibility under 35 U.S.C. § 101 including Bascom
Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Reply Br. 2.3 Appellants assert that the claims are analogous to the claims in
Bascom, because “the claims do not preempt the use of a general abstract
idea (here, providing digital media content with embedded environmental
impact data values), [] on the Internet or on generic computer components
performing conventional activities.” Reply Br. 7. Appellants point out that
“the claimed steps act in concert” and thus, the “claims are not ‘well-
understood,’ ‘routine’ or ‘conventional’ in the field of ‘providing media
items.’” Id. According to Appellants, the claims “carve out a specific
implementation, utilizing and requiring the specifically claimed impact value
as defined by the specifically claimed combination of limitations,” and, thus,
“comprise statutory subject matter under 35 USC [§] 101.” Reply Br. 7—8.
We agree with Appellants that the claims, when considered as an
ordered combination of steps, recite more than the abstract idea of providing
digital media content with embedded environmental impact data values
3 We note that the Examiner does not address the Federal Circuit’s holding
in Bascom in the Answer. See Ans. passim.
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Appeal 2017-001501
Application 13/792,371
along with the requirement to perform it on the Internet, or to perform it on a
set of generic computer components. Nor do the claims preempt all ways of
providing digital media content with embedded environmental impact data
values on the Internet; rather, they recite a specific, discrete implementation
of the abstract idea of providing digital media content with embedded
environmental impact data values.
Providing digital multimedia content on the Internet is a known
concept (see Spec. 13) as is embedding data (see Spec. 122). Appellants,
however, describe how their particular arrangement of elements is a
technical improvement over prior art ways of providing such digital media
content with specific embedded environmental impact data values. See
Appeal Br. 7—8. Appellants note that prior environmental impact data was
accessible from an “external” location as separate values and did not total
the values in one location and embed the data in the media being used. Id. at
7 (citing Svensson || 39 and 43). According to Appellants, the prior art
only supplies “general teachings” of embedding data. Id. at 8. In contrast,
the invention improves how the data is organized (total amount of energy
relating to a first digital multimedia item) and presented to the user
(embedded within digital data stored on the first digital multimedia item)
and then decoded by a receiver of the same first digital multimedia item.
See Reply Br. 9.
We agree with Appellants, and determine that the specific manner in
which the first digital multimedia item is implemented with respect to (1)
determining an environmental impact value of the multimedia item, (2)
embedding data on the multimedia item, and (3) decoding by a receiver of
the multimedia item “do[es] not preempt the use of the abstract idea of’
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Application 13/792,371
providing digital media content with embedded environmental impact data
values on the Internet or on generic computer components performing
conventional activities, because each of the three above-noted items need to
be implemented and are presented as an “ordered combination of claim
limitations that transform the abstract idea” of providing digital media
content with embedded environmental impact data values “into a particular,
practical application of that abstract idea.” Bascom 827 F.3d at 1352.
Accordingly, we do not sustain the rejection under 35U.S.C. § 101 of
claims 1, 2, 4—15, and 17—22 as directed to non-statutory subject matter.
DECISION
The Examiner’s decision rejecting claims 1,2, 4—15, and 17—22 under
35 U.S.C. § 101 is reversed.
REVERSED
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