Ex Parte Herold

Patent Trial and Appeal Board

Jul 28, 2017

13423001 (P.T.A.B. Jul. 28, 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.
13/423,001 03/16/2012 June R. HEROLD 10587.0415.01000 1056
100692 7590
Oath Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
AMORIN, CARLOS E
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUNE R. HEROLD
Appeal 2015-008281
Application 13/423,001
Technology Center 2400
Before ERIC S. FRAHM, LINZY T. McCARTNEY, and
JOHN D. HAMANN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
38—58. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-008281
Application 13/423,001
STATEMENT OF THE CASE
The present patent application concerns “controlling distribution of
information related to digital items that are shared with users over a
computer network.” Specification 1:7—8, filed March 16, 2012 (“Spec.”).
Claims 38, 48, and 58 are independent. Claim 38 illustrates the claimed
subject matter:
38. A method, performed at least in part by at least one
hardware processor, for sharing digital items with
communication identities, the method comprising:
receiving, from a user interface, first instructions to grant
each communication identity of a group of communication
identities access to a digital item;
enabling each communication identity of the group to
access the digital item based on the first instructions;
receiving, from the user interface, second instructions to
grant a first communication identity of the group access to view
an annotation associated with the digital item;
enabling, by the at least one hardware processor, the first
communication identity to view the annotation associated with
the digital item based on the second instructions;
receiving, from the user interface, third instructions to
deny a second communication identity of the group access to
view the annotation associated with the digital item; and
denying, by the at least one hardware processor, the
second communication identity access to view the annotation
associated with the digital item based on the third instructions,
while still enabling the second communication identity to access
the digital item based on the first instructions.
Appeal Brief 16—17, filed February 3, 2015 (“App. Br.”).
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REJECTIONS
Claims 38—58 stand rejected under 35U.S.C. § 101 as directed to
nonstatutory subject matter. Answer 10—11, mailed July 15, 2015 (“Ans.”).1
Claims 38, 39, 41—43, 46-49, 51—53, and 56—58 stand rejected under
35 U.S.C. § 102(e) as anticipated by Siegel et al. (US 2011/0184828 Al;
July 28, 2011) (“Siegel”). Final Office Action 4—8, mailed June 3, 2014
(“Final Act.”).
Claims 40, 44, 45, 50, 54, and 55 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Siegel and Feinberg et al. (US 2013/0239021
Al; September 12, 2013) (“Feinberg”). Final Act. 8—10.
ANALYSIS
Section 101 Rejection
With respect to this rejection, Appellant argues claims 38—58 together.
See Reply Brief 8—11 filed September 15, 2015 (“Reply Br.”). We select
claim 3 8 as representative of these claims and decide the appeal as to this
rejection based on claim 38. See 37 C.F.R. § 41.37(c)(l)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
. . ., the Board may select a single claim from the group . . . and may decide
the appeal as to the ground of rejection with respect to the group ... on the
basis of the selected claim alone.”).
Appellant contends the Examiner improperly rejected claims 38—58
under 35 U.S.C. § 101. See Reply Br. 8—11. Appellant argues the Examiner
did not “explain how [the] claims are ‘directed to’ an abstract idea” or
1 The Examiner withdrew an earlier rejection of claims 38-47 under
35 U.S.C. § 101 in light of this rejection. Ans. 9.
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Application 13/423,001
consider the claims as a whole. Reply Br. 8, 9. According to Appellant, the
claims do not concern an abstract idea, and even if they did, the claims
would be patent eligible because the claims amount to significantly more
than an abstract idea. Reply Br. 8—11.
We find Appellant’s arguments unpersuasive. Section 101 of the
Patent Act provides that “[wjhoever 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.” 35 U.S.C. § 101. The Supreme
Court has explained that this provision is subject to a long-standing, implicit
exception: “[ljaws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014). The Court has set forth a two-part inquiry to determine whether this
exception applies. First, we must determine if the claim at issue is directed
to one of those patent-ineligible concepts. Alice, 134 S. Ct. at 2355.
Second, if the claim is directed to one of those patent-ineligible concepts, we
must 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.” Alice, 134 S. Ct. at
2355 (quotation marks omitted) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72 (2012)).
We first consider whether the Examiner properly concluded claim 38
is directed to an abstract idea. The Examiner concluded the plain language
of claim 3 8 makes clear the claim is directed to the abstract idea of “basic
data access control protocol.” See Ans. 10.
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Application 13/423,001
Appellant has not persuaded us that the Examiner erred. The Federal
Circuit has explained that the abstract-idea inquiry requires “looking at the
‘focus’ of the claims, their “‘character as a whole’” to determine if the
claims are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Claim 38 recites a method “for
sharing digital items with communication identities” that uses “at least one
hardware processor” and instructions received from a “user interface.” See
App. Br. 16—17. The claimed method shares digital items by (1) granting a
group of communication identities access to a digital item, (2) granting a
particular communication identity access to an annotation associated with
the digital item, and (3) denying another communication identity access to
the annotation while still allowing the identity to access the digital item. See
App. Br. 16—17. As the plain language of claim 38 makes clear, the focus of
the claim is on controlling access to digital items and their associated
annotations or, as the Examiner put it, the method is focused on a “basic data
access control protocol.” Ans. 10.
The Federal Circuit has concluded that similar claims are directed to
abstract ideas. For example, in Smartflash LLC v. Apple Inc., the Federal
Circuit agreed with a district court that the claims at issue recited methods
“for controlling access to content data, such as various types of multimedia
files, and receiving and validating payment data.” Smartflash LLC v. Apple
Inc., No. 2016-1059, 2017 WF 786431, at *4 (Fed. Cir. Mar. 1, 2017)
(nonprecedential). The Federal Court concluded these claims were “directed
to the abstract idea of conditioning and controlling access to data based on
payment.” Smartflash, 2017 WF 786431, at *4. Similarly, in Prism Techs.
LLC v. T-Mobile USA, Inc., the Federal Circuit concluded claims reciting
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Application 13/423,001
systems and methods of controlling access to protected computer resources
were directed to the patent-ineligible abstract idea of “providing restricted
access to resources.” Prism Techs. LLC v. T-Mobile USA, Inc., No. 20lb-
2031, 2017 WL 2705338, at *1-2 (Fed. Cir. June 23, 2017)
(nonprecedential). And in Ultramercial, Inc. v. Hulu, LLC, the Federal
Circuit concluded claims that included the steps of “restricting public access
to media,” “allowing the consumer to access to the media,” and “allowing
the consumer access to the media if the ad is interactive” were also directed
to an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—
15 (Fed. Cir. 2014).
The method for sharing digital items recited in claim 3 8 is not
meaningfully different from the claimed methods of controlling data access
discussed in Smartflash, Prism Techs, and Ultramercial. This is sufficient to
establish claim 38 is directed to an abstract idea. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (explaining that
when determining whether claims are directed to an abstract idea, “both this
court and the Supreme Court have found it sufficient to compare [the] claims
at issue to those claims already found to be directed to an abstract idea in
previous cases”); see also Amdocs (Israel) Limited vs. Openet Telecom, Inc.,
841 F3d 1288, 1294 (Fed. Cir. 2016) (explaining that the “decisional
mechanism courts now apply” for deciding if claims are directed to an
abstract idea “is to examine earlier cases in which a similar or parallel
descriptive nature can be seen”).
Despite these similarities, Appellant contends claim 38 is not directed
to an abstract idea “as evidenced by the recited elements . . . and the fact that
[it does]. . . not threaten to ‘tie up’ the alleged abstract idea of ‘data access
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control.’” Reply Br. 8. Appellant also argues that claim 38 is not directed to
an abstract idea because the claim does not concern “a fundamental
economic practice, a method of organizing human activities, an idea of itself
or a mathematical relationship.” Reply Br. 8 (quotation marks omitted).
Appellant has provided no persuasive evidence or reasoning to support these
arguments. Appellant has not identified the “recited elements” that allegedly
establish claim 38 is directed to patent-eligible subject matter, nor has
Appellant adequately explained why claim 3 8 does not preempt the
identified abstract idea. See Reply Br. 8—9. In any event, even if we were to
agree that claim 38 does not “threaten to ‘tie up’ the alleged abstract idea of
‘data access control,”’ the fact that the claim does not preempt the concept
of “data access control” does not make the claim patent eligible. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015)
(“[Tjhat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”). And as noted above, the Federal Circuit has concluded that
similar claims are directed to an idea. Nothing in claim 3 8 requires a
different outcome.
We next consider whether the Examiner correctly concluded claim 38
does not include 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,
134 S. Ct. at 2355 (quotation marks omitted) (quoting Mayo, Inc., 566 U.S.
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Application 13/423,001
at 72—73). The Examiner explained claim 38 does not include an “inventive
concept” because claim 38 simply recites performing an abstract idea using a
generic computer and does not improve “the functioning of the computer
itself’ or add “meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment or field of use.” Ans.
11 (emphasis omitted).
We agree. Claim 38 recites performing the abstract idea with “at least
one hardware processor” and instructions received from “a user interface.”
See App. Br. 16—17. Appellant’s written description and the cited art
establish that these components were well known to those of ordinary skill
in the art, as were the recited “digital items” and “communication identities.”
Appellant’s written description discloses that it was well known to “install
communications software necessary to access and use [an] instant messaging
service” and that an instant messaging “participant list. . . includes . . .
communications identities.” Spec. 1:13—14. Feinberg discloses that a
hardware platform can “include one or more processors” and depicts various
aspects of an instant messaging user interface. Feinberg 137, Figs. 4—27.
And Siegel explains that “distribution of annotations of digital works may be
limited to users having an appropriate authorization credential that, when
presented . . . and validated enables the user to receive the requested
annotation.” Siegel 147. Claim 38 simply recites using known elements to
perform “conventional steps, specified at a high level of generality, which is
insufficient to supply an inventive concept.” Ultramercial, 772 F.3d at 716
(quotation marks omitted) (quoting Alice, 134 S. Ct. at 2357).
Appellant argues that claim 3 8 recites an inventive concept because
the claim “provide[s] a solution to problems specifically arising in the realm
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of computerized systems and networks” and “enhances the functionality of
computer technology in order to overcome the identified technological
problem.” Reply Br. 10. But as noted above, claim 38 recites using known
elements to perform conventional steps, which is not enough to provide the
necessary inventive concept. An inventive concept “requires more than
simply stating an abstract idea while adding the words ‘apply if or ‘apply it
with a computer.’” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1332 (Fed. Cir. 2015) (quoting Alice, 134 S. Ct. at 2358). And “the
prohibition on patenting an ineligible concept cannot be circumvented by
limiting the use of an ineligible concept to a particular technological
environment.” Versata, 793 F.3d at 1332.
For the above reasons, we sustain the Examiner’s rejection of claims
38-58 under 35 U.S.C. § 101.
Section 102 and 103 Rejections
Appellant contends Siegel does not disclose “receiving, from the user
interface, third instructions to deny a second communication identity of the
group access to view the annotation associated with the digital item” as
recited in claim 38 and similar limitations recited in independent claims 48
and 58. See App. Br. 12—13, 17; Reply Br. 4—5. Appellant argues the
Examiner improperly found Siegel inherently discloses this limitation. See
Reply Br. 4—5.
We find Appellant’s arguments persuasive. The Examiner found
“Siegel clearly discloses the idea of denying access to an annotation ... if
the [associated] authorization credential... is not valid.” Ans. 15 (citing
Siegel H37, 47, 72). The Examiner found the claimed limitation “an
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inherent element to the access control mechanism taught by Siegel.” Ans.
15. But the cited portions of Siegel simply disclose that a user may supply
authorization credentials that provide access to the user’s annotations. See
Siegel 172. If another user presents the proper authorization credential,
Siegel’s system grants that user access to the annotation. See Siegel 147.
This process does not inherently require “receiving, from the user interface,
third instructions to deny . . . access to view the annotation,” as required by
claim 38.
Based on the record before us, we do not sustain the Examiner’s
anticipation rejection of independent claims 38, 48, and 58 and dependent
claims 39, 41—43, 46, 47, 49, 51—53, 56, and 57. We also do not sustain the
Examiner’s obviousness rejection of dependent claims 40, 44, 45, 50, 54,
and 55, as the rejection does not address the deficiency discussed above. If
prosecution continues, the Examiner remains free to consider whether the
disputed “receiving” limitation would have been obvious in light of Siegel or
any other prior art references.
DECISION
We affirm the Examiner’s rejection of claims 38—58 under 35 U.S.C.
§ 101. We reverse the Examiner’s anticipation rejection of claims 38, 39,
41—43, 46-49, 51—53, and 56—58 and obviousness rejection of claims 40, 44,
45, 50, 54, and 55. Because we have affirmed at least one ground of
rejection with respect to each claim on appeal, we affirm the Examiner’s
decision. See 37 C.F.R. § 41.50(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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