Ex Parte Hug

Patent Trial and Appeal Board

May 4, 2017

11322314 (P.T.A.B. May. 4, 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.
11/322,314 12/30/2005 Joshua D. Hug P49997X5 5399
76973 7590 05/08/2017
The Law Offices of Christopher K. Gagne
Post Office Box 2069
Leander, TX 78646
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/08/2017 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):
gagnelaw @ att.net
inteldocs_docketing @ cpaglobal. com
Christopher.k.gagne @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA D. HUG
Appeal 2015-0059671
Application 11/322,3142
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from a rejection of claims 1—
9, 11—19, 21—29, and 31—33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 23, 2013) and Reply Brief (“Reply Br.,” filed May 22, 2015), as well as
the Examiner’s Final Office Action (“Final Act,” mailed Mar. 28, 2013) and
Answer (“Ans.,” mailed Apr. 9, 2015).
2 Appellant identifies Intel Corporation as the real part in interest.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed invention “relates to enabling an action and, more
particularly, to enabling an action in response to received feedback.” Spec.
12. Claims 1,11, and 21 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of media content distribution comprising:
processing, via a server computer, a user-generated rating
identifier, received via a personal media device, the rating
identifier corresponding to media content of a digitally encoded
media data file previously rendered by the personal media
device, the media data file comprising a radio track with limited
access rights;
determining, via the server computer, whether the rating
identifier indicates a positive rating;
in response to determining that the rating identifier
indicates a positive rating, generating, via the server computer,
an offer to increase access rights to the media content of the
media data file;
transmitting the offer to the personal media device; and
increasing access to the media content of the media data
file according to the offer, in response to receiving indication of
acceptance of the offer.
REJECTIONS
Claims 1—9, 11—19, 21—29, and 31—33 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.3
Claims 1—9, 11—19, and 21—29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Reisman (US 7,406,436 Bl, iss. July 29, 2008),
Drosset (US 2002/0188746 Al, pub. Dec. 12, 2002), and Ellis
(US 2004/0116088 Al, pub. June 17, 2004).
3 The Examiner made this rejection as a new ground of rejection in the
Answer.
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Application 11/322,314
Claims 31—33 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Reisman, Drosset, Ellis, and Yeager (US 7, 328, 243 B2, iss. Feb. 5,
2008).
ANALYSIS
Non-Statutory Subject Matter
As an initial matter, we disagree with Appellant’s assertion that the
Examiner’s rejection is inadequate as a matter of law. Reply Br. 3. The
Federal Circuit has held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.” In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (citation omitted). All that is
required of the Office is to set forth the statutory basis of the rejection, as
well as any reference on which the rejection relies, in a sufficiently articulate
and informative manner as to meet the notice requirement of § 132. Id. at
1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(“Section 132 is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.”).
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the two-step framework set forth in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012)
and reiterated in Alice Corporation Pty. Ltd. v. CIS Bank International, 134
S. Ct. 2347, 2355 (2014), which considers, in the first step, whether the
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Application 11/322,314
claims are directed to a patent-ineligible concept, e.g., an abstract idea, and
then, in a second step, whether there is an inventive concept—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea. Specifically, the Examiner
found the claims are directed to the abstract ideas of “a method of processing
data,” “determining a rating,” “transmitting an offer,” and “increasing access
to media content.” Ans. 2. The Examiner also found that the claims do not
include additional elements that are sufficient to amount to significantly
more that the abstract idea because the additional elements are no more than
instructions to implement the idea on the computer and/or generic computer
structure that performs generic computer functions that are well-understood,
routine, and conventional. Id. The Examiner’s rejection, thus, satisfies the
notice requirement of § 132 and establishes a prima facie case so as to shift
the burden to Appellant to show why the claims are patent-eligible.
Appellant has not carried this burden.
Appellant contends that the claims achieve technical operations,
advantages, and solutions analogous to the patent-eligible claims in DDR
Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 3—
4. For example, Appellant asserts that the claimed invention involves
modifying and/or reformatting a media content track to give effect to a
user’s rating identifier, which implicates technological inter- and intra­
device operations and achieves a technological advantage. Id. at 4 (citing
claim 9).
Contrary to Appellant’s contention, we see no parallel between the
present claims and those in DDR Holdings. In DDR Holdings, the Federal
Circuit determined that the claims addressed the problem of retaining
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Application 11/322,314
website visitors who, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be transported instantly away from a
host’s website after clicking on an advertisement and activating a hyperlink.
DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the
claims were directed to statutory subject matter because they claim a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” Id.
Here, the claimed invention recites generic computer components,
and, unlike the situation in DDR Holdings, there is no indication that the
claimed functions involve something other than the normal, expected, and
routine computer functions of processing and transmitting data. In
particular, we fail to see how reformatting a media content track to give
effect to the user’s rating identifier requires any unconventional reformatting
technique outside of routine computer functioning. Rather, reformatting a
media content track is a way of implementing on a computer the
nontechnical solution of enabling an action in response to a user’s rating. As
such, the claimed invention does not involve a solution necessarily rooted in
computer technology to overcome a problem specific to the realm of
computer networks, but instead embodies the use of generic computer
components in a conventional manner to perform an abstract idea, which, as
the Court in DDR Holdings explained, is not patent eligible. DDR Holdings,
773 F.3d 1256 (“[Tjhese claims in substance were directed to nothing more
than the performance of an abstract business practice on the Internet or using
a conventional computer. Such claims are not patent-eligible.”).
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In view of the foregoing, Appellant has not persuaded us that the
Examiner erred in rejecting claims 1—9, 11—19, 21—29, and 31—33 under 35
U.S.C. § 101. Accordingly, we sustain the Examiner’s rejection.
Obviousness
Independent claims 1 and 11 and dependent claims 2—9, 12—19, 32, and 33
The Examiner relies on Reisman for teaching “increasing access to the
media content of the media data file according to the offer,” as recited in
independent claims 1 and 11. Final Act. 4 (citing Reisman, claim 30).
Appellant has persuaded us that Reisman fails to teach this limitation.
Appeal Br. 13—14.
Reisman teaches providing incentives, such as a monetary payment, a
discount on a purchase, and a credit, to a user in exchange for rating an item.
Reisman, 7:15—20, claim 30. According to the Examiner, the disclosed
incentives are increased access. Ans. 5—6. Yet, the Examiner has not
explained, and we fail to see, how the disclosed incentives relate to access to
an item.
In view of the foregoing, we do not sustain the rejection of
independent claims 1 and 11 and dependent claims 2—9 and 12—19 under 35
U.S.C. § 103(a). Claims 32 and 33 also depend from independent claims 1
and 11, respectively, and the Examiner does not rely on Yeager in any way
that would cure the deficiency of the rejection of independent claims 1 and
11. Accordingly, we similarly do not sustain the rejection of dependent
claims 32 and 33.
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Independent claim 21 and dependent claims 22—29 and 31
Appellant contends that the combined teachings of the prior art fail to
disclose “the rating identifier corresponding to media content of a digitally
encoded media data file previously rendered by the personal media device,
the media data file comprising a radio track with limited access rights,” as
recited in independent claim 21. Appeal Br. 14—17. In doing so, Appellant
breaks this limitation into three parts, but Appellant’s argument as to why
each part is missing from the prior art is the same: the prior art fails to
disclose a radio track with limited access rights. Id. at 15—17. This
argument is not persuasive at least because the claimed radio track
constitutes nonfunctional descriptive material that may not be relied on to
distinguish over the prior art for purposes of patentability.
The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes of patentability. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983). In applying the printed matter doctrine, the first step is to
determine whether the limitation is, in fact, directed to printed matter, i.e.,
whether the limitation claims the content of information. In re Distefano,
808 F.3d 845, 848 (Fed. Cir. 2015). If so, “one must then determine if the
matter is functionally or structurally related to the associated physical
substrate, and only if the answer is ‘no’ is the printed matter owed no
patentable weight.” Id. at 851.
Here, independent claim 21 recites that the radio track with limited
access rights is the content of a digitally encoded media data file, and as
such, the claimed radio track is printed matter. Ans. 3. The relevant inquiry
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then is whether the recitation that the media content comprises a radio track
with limited access rights is functionally or structurally related to the
claimed system. We agree with the Examiner that it is not because there is
no evidence that the media content being a radio track with limited access,
as opposed to some other type of content, affects the structure or function of
the claimed system. Id. As such, the claimed media content, i.e., a radio
track with limited access rights, constitutes non-functional descriptive
material.
Appellant further argues that the prior art fails to disclose “an offer to
increase access rights to the media content of the media data file,” as recited
in independent claim 21. Appeal Br. 17—18. In particular, Appellant asserts
that the incentives recited in Reisman are not an offer to increase access
rights to the media content. Id. at 18.
Appellant’s argument is unpersuasive because it relies on the content
of the offer, namely, increased access rights, which is nonfunctional
descriptive material. The content of the offer is printed matter, and there is
no evidence that the content of the offer being increased access rights affects
the structure or the function of the claimed system. As such, we agree with
the Examiner that the claimed content of the offer, i.e., increased access
rights, constitutes non-functional descriptive material that may not be relied
on for patentability. Ans. 6.
In view of the foregoing, we sustain the rejection of independent
claim 21 under 35 U.S.C. § 103(a). Appellant does not present separate
arguments for dependent claims 22—29 and 31 apart from the arguments for
independent claim 21 (Appeal Br. 19), and we, therefore, sustain the
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rejection of claims 22—29 and 31 for the same reasons as independent
claim 21.
DECISION
The Examiner’s decision to reject claims 1—9, 11—19, 21—29, and 31—
33 under 35 U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 1—9, 11—19, 32, and 33
under 35 U.S.C. § 103(a) is reversed.
The Examiner’s decision to reject claims 21—29 and 31 under 35
U.S.C. § 103(a) 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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