Ex Parte Joao

Patent Trial and Appeal Board

Apr 19, 2018

13200446 (P.T.A.B. Apr. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/200,446 09/23/2011
7590 04/20/2018
RAYMOND A. JOAO, ESQ.
122 BELLEVUE PLACE
YONKERS, NY 10703
FIRST NAMED INVENTOR
Raymond Anthony Joao
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.
RJ902 4426
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
MAILDATE DELIVERY MODE
04/20/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND ANTHONY JOAO
Appeal2016-004470 1
Application 13/200,4462
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claim 1. We have jurisdiction under§ 6(b ).
We AFFIRM.
1 Our Decision references Appellant's Specification ("Spec.," filed Sept. 23,
2011) and Appeal Brief ("Br.," filed Aug. 28, 2015), as well as the
Examiner's Final Office Action ("Final Act.," mailed Feb. 26, 2015) and
Answer ("Ans.," mailed Feb. 10, 2016).
2 Appellant identifies GTJ Ventures, LLC as the real party in interest. Br. 1.
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Application 13/200,446
SUBJECT MATTER ON APPEAL
The invention "pertains to a digital television broadcasting apparatus
and method for providing information in a digital television and/or Internet
convergent environment." Spec. 1. 3 Claim 1 is the sole claim on appeal and
is reproduced below, with paragraphing added:
Claim 1. A digital television broadcast apparatus,
compnsmg:
a database, wherein the database stores a plurality of news
stories, wherein each news story of the plurality of news stories
can be received or obtained from any one of any number of
content providers, wherein each news story of the plurality of
news stories contains video information and audio information,
and further wherein each news story of the plurality of news
stories is capable of being transmitted on, over, or via, a digital
television broadcast network, on, over, or via, the Internet or the
World Wide Web, and on, over, or via, a cellular communication
network or a wireless communication network, and further
wherein the database stores ratings information regarding a news
story or news stories of the plurality of news stories;
a memory device, wherein the memory device stores
information regarding a request by an individual to receive an
alert message regarding a posting of a news story in the database,
wherein the request to receive an alert message contains
information regarding a search criteria;
a processor specially adapted for processing information
regarding digital television broadcasting content, wherein the
processor detects a posting of a news story in the database,
wherein the processor determines if the news story satisfies the
search criteria and, if the search criteria is satisfied, the processor
generates an alert message containing information regarding the
posting or the storing of the news story and ratings information
regarding the news story; and
3 Appellant's Specification does not include line or paragraph numbering, so
we refer to the Specification by page number.
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a transmitter, wherein the transmitter transmits the alert
message to a communication device associated with the
individual, wherein the alert message is transmitted to the
communication device on, over, or via, a digital television
broadcast network, on, over, or via, the Internet or the World
Wide Web, or on, over, or via, a cellular communication network
or a wireless communication network.
REFERENCES
The Examiner relies on the following prior art in rejecting the claim
on appeal:
Del Sesto
Anaya et al. ("Anaya")
Wiser et al. ("Wiser")
US 6,985,882 Bl
US 7,454,372 Bl
US 2010/0031162 Al
REJECTIONS
Jan. 10,2006
Nov. 18, 2008
Feb.4,2010
The Examiner makes the following rejections, which are before us on
appeal:
claim 1under35 U.S.C. § 101 as non-statutory subject matter; and
claim 1under35 U.S.C. § 103(a) as unpatentable over Anaya,
Del Sesto, and Wiser.
ANALYSIS
Non-Statutory Subject Matter
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 implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct.
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2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting claim 1 as non-statutory subject matter, i.e., subject matter
judicially excepted from statutory subject matter, the Examiner analyzes the
claim using this two-step framework. Final Act. 2-5. Pursuant to the first
step, the Examiner determines that the claim is directed to "providing
information in a digital television and internet convergent function," which
is a fundamental economic practice and a method of organizing human
activity, and, therefore, an abstract idea. Id. at 3. Under the second step, the
Examiner determines that the elements of the claim do not amount to
significantly more than the abstract idea because they do not effect an
improvement to another technology or technical field or improve the
functioning of a computer itself. Id. at 5. The Examiner also determines
that the claim simply links the use of the abstract idea to a particular
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technological environment, and that the claim amounts to instructions to
apply the abstract idea on generic computer. Id.
As an initial matter, we are not persuaded of error by Appellant's
argument that claim I does not preempt or monopolize the abstract idea.
Br. IO, I5-I6. Although preemption may be the concern behind the judicial
exceptions to statutory subject matter, preemption is not the test for
eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability. For this
reason, questions on preemption are inherent in and resolved by the § I 0 I
analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d I37I, I379
(Fed. Cir. 20I5) (citation omitted). Accordingly, we consider Appellant's
arguments under the two-step patent-eligibility analysis.
Pursuant to the first step, Appellant asserts that claim I is not directed
to an abstract idea, but rather to an inventive, novel, and nonobvious digital
television broadcast apparatus. Br. IO. Appellant's argument does not
apprise us of error.
At the outset, we note our reviewing court has explained that "not
every claim that recites concrete, tangible components escapes the reach of
the abstract-idea inquiry." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d
607, 6I I (Fed. Cir. 20I6) (citations omitted). Consequently, the fact that
claim I is directed to a digital television broadcast apparatus does not
preclude a determination that the claim is directed to an abstract idea.
We further note that patentability over the prior art in accordance with
35 U.S.C. §§ I02 or I03 is not the test for patent-eligibility under§ IOI.
See, e.g., Diamond v. Diehr, IOI S. Ct. I048, I058 (198I) ("The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
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relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter."). That said,
novelty in the implementation of an abstract idea can affect patent-eligibility
under the second step. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014) ("[N]ovelty in implementation of the idea is a factor to
be considered only in the second step of the Alice analysis.''). Accordingly,
we address Appellant's argument regarding the alleged novelty and
nonobviousness of the claimed invention under the second step.
In regard to the first step of the patent-eligibility analysis where we
determine whether a claim is directed to excluded subject matter, e.g., an
abstract idea, our reviewing court has explained that "the 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter.'" Enfish, LLC v. lviicrosc~ft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Netvvork,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). For computer-implemented
inventions in particular, such as the present invention, "the first step in the
Alice inquily ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Id. at 1335-36.
Here, claim 1 recites: storing a plurality of news stories and ratings
information for the news stories; storing information regarding a request by
an individual to receive an alert message for a posting of a news story,
wherein the request to receive an alert message includes search criteria;
detecting a posting of a news story and determining whether the news story
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satisfies the search criteria; if the news story satisfies the search criteria,
generating an alert message containing information regarding the news story
and ratings information for the news story; and transmitting the alert
message. Thus, the claimed invention enables an individual to receive an
alert upon the posting of a news story that satisfies the criteria in the
individual's request. See also Br. 13-14 (acknowledging that the digital
television broadcast apparatus "allows an individual to request and be
provided, in a broadcast television and Internet-convergent environment,
with an alert message containing information regarding the posting or the
storing of a news story and ratings information regarding that news story").
Furthermore, as Appellant points out (Br. 10), claim 1 additionally
recites a digital television broadcast apparatus comprising a database,
memory device, processor, and transmitter. There is no indication, however,
that the claimed components are something other than generic computing
components. Cf Spec. 35-36 (describing central processing computer 10),
Fig. 2.
Moreover, Appellant's Specification does not describe an
improvement to the computer capabilities of the claimed invention. Rather,
the Specification explains that the claimed invention addresses a drawback
associated with conventional broadcasting services, namely individuals
having to rely on news reporting services that typically gather and
disseminate news stories in a fashion or order geared toward maximizing
advertising revenues. Id. at 2. As a result, an individual interested in a
particular news story may have to watch the better part of a television news
broadcast before the story is presented. Id. By the same token, stories of a
particular interest might be gathered by different news reporting services and
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therefore not available to an individual watching one news broadcasting
service. Id. The Specification further explains that the invention resolves
this drawback by providing information in a convergent environment. Id. at
3.
Accordingly, the claimed invention uses the recited computing
components to perform the functions that enable an individual to receive an
alert upon the posting of a news story that satisfies the criteria in the
individual's request. The focus of the claimed invention is not on an
improvement in computer capabilities, but rather on a process for providing
information relating to broadcasted news stories for which computing
devices are invoked merely as tools. Appellant, therefore, does not apprise
us of error in the Exam in er' s determination that the character of c 1aim 1, as a
whole, is directed to "providing information in a digital television and
internet convergent function."
Appellant does not refute that "providing information in a digital
television and internet convergent function" is an abstract idea. See Ans. 2-
3 (comparing the concept of "providing information in a digital television
and internet convergent function" to other concepts the courts have held to
be abstract ideas). Consequently, Appellant does not apprise us of error in
the Examiner's determination that claim 1 is directed to the abstract idea of
"providing information in a digital television and internet convergent
function."
Turning to the second step of the patent-eligibility analysis, Appellant
alleges that claim 1 recites an inventive concept under the second step for
essentially the same reason Appellant argues that claim 1 is not directed to
an abstract idea under the first step. Namely, Appellant contends the claim
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recites an inventive, novel, and nonobvious digital television broadcast
apparatus such that the claim is directed to a particular application. Br. 12-
15. Appellant's argument does not apprise us of error in the Examiner's
determination pursuant to the second step.
Although the second step of the patent-eligibility analysis is tenned a
search for an "inventive concept," the analysis is not an evaluation of
novelty or nonobviousness, 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, 134 S. Ct at 2355 (quoting lvfayo, 132 S. Ct. at
1294). The question in the second step is not whether the claimed invention
is novel, but rather whether the implementation of the abstract idea involves
"more than performance of 'well-understood, routine, [and] conventional
acUvWes previously known to the industry.''' Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347---48
(Fed. Cir. 2014) (quoting Alice, 134 S. Ct at 2359),
Here, claim 1 recites a computer-implemented invention. Namely,
claim 1 recites a digital television broadcast apparatus comprising a
database, memory device, processor, and transmitter. See also Spec. 6
("Any number of central processing computers can be utilized in the
apparatus of the present invention in order to perform the operations and/ or
functions described herein as being provided by the apparatus of the present
invention."). As set forth above, however, there is no indication that the
claimed computing components are something other than generic computing
components. Cf Spec. 35-36 (describing central processing computer 10),
Fig. 2. Also, there is no indication that the performance of the recited
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functions, i.e., storing news stories, ratings information, and an individual's
request including search criteria, detecting the posting of a news story,
determining whether a news story satisfies the search criteria, generating an
alert message, and transmitting the alert message to the individual, requires
something apart from computer functions that are well-known, routine, and
conventional activities, such as storing, receiving, processing, and
transmitting data. As such, we fail to see how the claimed invention is
something other than the generic computer implementation of the abstract
idea, which is not sufficient to transform the invention into a patent-eligible
application. See Alice, 134 S. Ct. at 2358 ("[W]holly 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."' (quoting Mayo,
132 S. Ct. at 1297)).
Furthermore, claim 1 includes limitations relating to broadcasting. In
particular, claim 1 recites storing a plurality of news stories and ratings
information and processing information regarding digital television
broadcasting content. As such, claim 1 is linked to the field of broadcasting
by only the nature of the data, which is not sufficient to transform the
invention into a patent-eligible application. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("[M]erely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.").
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In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that claim 1 is patent-ineligible, i.e., judicially
excepted from statutory subject matter. Accordingly, we sustain the
rejection of claim 1 under 35 U.S.C. § 101.
Obviousness
Appellant argues that the Examiner has not provided sufficient
reasons for combining the teachings of the cited prior art such that the
Examiner is using hindsight to reconstruct the claimed invention. Br. 17-22.
We are not persuaded of error.
In rejecting claim 1, the Examiner finds Anaya discloses the invention
substantially as claimed. Final Act. 6-8. Although Anaya discloses a
database storing a plurality of news stories, the Examiner acknowledges
Anaya does not disclose that each news story contains video information and
audio information and is capable of being transmitted on, over, or via a
digital television broadcast network, the Internet, the World Wide Web, a
cellular communication network, or a wireless network. Id. at 8. For this,
the Examiner relies on Del Sesto (id. at 8-9), and determines it would have
been obvious to a person of ordinary skill in the art to modify the teachings
of Anaya to include Del Sesto' s teaching of audio and video information that
is capable of being transmitted over a network Sesto "to allow sellers to
download content from the storage to their own systems via the SMOS
network for convenience and easy access" (id. at 9).
Here, the Examiner is proposing to modify the data stored in Anaya's
database to include the data taught by Del Sesto. A person of ordinary skill
in the art would have understood that making data capable of transmission
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over a network would make the data more accessible. As such, the
Examiner has provided a reason supported by rational underpinning for
modifying Anaya's data to include Del Sesto's data containing audio and
video information and being capable of transmission over a network.
The Examiner also finds that Anaya discloses transmitting an alert to
a communication device, but does not disclose that the communication
device is associated with an individual. Final Act. 7-8. For this, the
Examiner relies on Del Sesto (id. at 9-10), and determines it would have
been obvious to modify Anaya's disclosure to include Del Sesto's teaching
of transmitting an alert to an individual's communication device "in order to
reach the communication device associated with the individual, and further
reach users with alert messages of newly acquired information or update the
users with current messages" (id. at 10). A person of ordinary skill would
have appreciated that associating a communication device with a user would
enable an alert to more easily reach the individual. Accordingly, the
Examiner has provided a reason supported by rational underpinning for
modifying Anaya's communication device to be a communication device
associated with an individual, as taught by Del Sesto.
Lastly, the Examiner finds Anaya and Del Sesto do not disclose that
the database stores ratings information for the news stories, and the
Examiner relies on Wiser for teaching the claimed ratings information.
Final Act. 10. The Examiner determines it would have been obvious to
combine the teachings Anaya and Del Sesto with Wiser' s teaching of storing
ratings information "to allow the recommendation engine to match content
to the viewer's individual interests and preferences." Id. Indeed, a person of
ordinary skill would have understood that including ratings information
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would allow for more acute matching of the stored information to the
individual's interests and preferences. Thus, the Examiner's reason for
combining the teachings of the references is supported by rational
underpinning.
In view of the foregoing, Appellant does not apprise us of Examiner
error. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner's decision to reject claim 1 under 35 U.S.C. § 101 is
affirmed.
The Examiner's decision to reject claim 1 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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