Ex Parte Knight

Patent Trial and Appeal Board

Dec 8, 2014

10869082 (P.T.A.B. Dec. 8, 2014)

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.
10/869,082 06/17/2004 Andrew F. Knight 022 6141
42067 7590 12/08/2014
Andrew Knight
1 Walnut Street
Lewiston, ME 04240
EXAMINER
COBURN, CORBETT B
ART UNIT PAPER NUMBER
3714
MAIL DATE DELIVERY MODE
12/08/2014 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 ANDREW F. KNIGHT
____________

Appeal 2011-011334
Application 10/869,0821
Technology Center 3700
____________

Before EDWARD A. BROWN, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Andrew F. Knight (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–25. We have jurisdiction under
35 U.S.C. § 6(b).

1 Appellant is identified as the real party in interest. Appeal Br. 1.
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Claimed Subject Matter
Claims 1, 24, and 25 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A process of relaying a story having a timeline and a
unique plot involving characters, comprising:
indicating that a first character experiences déjà vu to
mask an actual event.
Appeal Br. 81, Claims App.
Reference
The Examiner relies upon the following prior art reference:
Any movie recorded on a DVD or book. Ans. 3.
Rejections
Appellant seeks review of the following rejections:
I. Claims 1–25 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter and
II. Claims 1–252 are rejected under 35 U.S.C. § 103(a) as
unpatentable over any movie recorded on a DVD or book.
SUMMARY OF DECISION
We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 1–25 under 35 U.S.C.
§ 112, second paragraph, as indefinite.

2 Claims 1–21 are rejected under this ground as part of a new ground of
rejection in the Examiner’s Answer. Ans. 3, 18.
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We AFFIRM the Examiner’s rejection of claims 1–25 under
35 U.S.C. § 101. We designate our affirmance as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
We REVERSE, pro forma, the Examiner’s rejections under 35 U.S.C.
§ 103(a).
OPINION
New Ground of Rejection – Indefiniteness
We enter a new ground of rejection of claims 1–25 under 35 U.S.C.
§ 112, second paragraph, because the terms “indicating,” recited in
independent claims 1 and 25, and “an indication,” recited in independent
claim 24, respectively, are indefinite for failing to “particularly point out and
distinctly claim[] the subject matter which applicant regards as his
invention.”3 35 U.S.C. § 112, second paragraph.
We interpret the claim language, where necessary, giving the claims
their broadest reasonable interpretation in light of the Specification.
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). The ordinary and
customary meaning of “indicate” is “to point out or show.” CHAMBERS 21ST
CENTURY DICTIONARY (2001), available at
http://search.credoreference.com/content/entry/chambdict/indicate/0?
searchId=02992c9c-0dfc-11e4-8ccb-0aea1e3b2a47&result=0 (last visited
October 10, 2014). In the context of claim 1, for example, the step is thus
interpreted as “pointing out or showing that a first character experiences déjà
vu to mask an actual event.” Although at first glance, “indicating” may not

3 While we focus our discussion on the term “indicating,” recited in
claim 1, our analysis is equally applicable to the term “an indication,”
recited in claim 24.
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appear indefinite, Appellant’s Specification reveals the difficulty underlying
the interpretation of the term in the context of the present application:
As well known by those of ordinary skill in the art, there are
many ways to indicate a fact in a movie or a book without any
explicit words to that effect at all: circumstance,
cinematography, subtly suggestive newspaper headlines,
suggestive words by the protagonist or other characters, etc.,
can all be indicative of that fact.
Spec. 20 (emphasis added). As reflected in Appellant’s Specification, the
claim language “experiences déjà vu to mask an actual event” can be
indicated “without any explicit words to that effect.” Id. Thus, while
explicit words may indicate the recited actions of the first character, so too
may “circumstance” and “cinematography,” in which explicit words to that
effect are not used.
In our view, Appellant’s Specification expands upon how the
“indicating” step of the claim may be performed to such an extent where
there is “no objective definition identifying a standard for determining
when” a method of relaying a story actually “indicat[es]” a certain fact (e.g.,
“a first character experiences déjà vu to mask an actual event” as recited in
claim 1). See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350 (Fed. Cir. 2005), abrogated by, Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120 (2014);4 Interval Licensing LLC v. AOL, Inc., 2014 WL

4 While the Supreme Court in Nautilus disagreed with the standard for
determining indefiniteness as applied by the U.S. Court of Appeals for the
Federal Circuit in Datamize, the Court did not suggest any disagreement
with the holding in Datamize that a completely subjective construction of a
term renders the term indefinite. See generally Nautilus, 134 S. Ct. 2120.
Although in the context of litigation based on an issued patent, the standard

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4435871, at *5 (Fed. Cir. Sept. 10, 2014) (“Although absolute or
mathematical precision is not required, it is not enough . . . to identify some
standard for measuring the scope of the phrase. . . . [Rather, t]he claims,
when read in light of the specification and prosecution history, must provide
objective boundaries for those of skill in the art.”) (citations and quotations
omitted). We find the discussion in Datamize analogous to the
circumstances here.5
As in Datamize, whether a person performing the claimed method has
indicated a certain fact solely depends upon the subjective opinion of the
person purportedly practicing the invention. See Datamize, 417 F.3d at 1350
(citing In re Musgrave, 431 F.2d 882, 893 (CCPA 1970)). Additionally,
there is no objective way to determine whether that person succeeded in
“indicating” a certain fact.6 In other words, the public would not be notified

enunciated in Nautilus for determining definiteness—whether a patent’s
claims “viewed in light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention with reasonable
certainty” (id. at 2129)—is arguably less of a hurdle to establishing
indefiniteness than the “insolubly ambiguous” standard applied in Datamize.
Thus, we have no reason to suspect that, had the analysis in Datamize been
performed under the “reasonable certainty” standard, the Federal Circuit
would have reached a different result.
5 In addition to our discussion herein, we recognize that, in Datamize,
the Federal Circuit agreed with the district court construction that the
ordinary meaning of “aesthetically pleasing” “includes ‘having beauty that
gives pleasure or enjoyment’ or, in other words, ‘beautiful[,]’” but
concluded that the phrase was indefinite. 417 F.3d at 1348.
6 Another possibility is to ask whomever the fact was intended to be
relayed to whether the fact was actually indicated or not. This approach,
however, merely results in the subjective opinion of the individual to whom
the story was intended to be relayed.
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“of the patentee’s right to exclude since the meaning of the claim language
would depend on the unpredictable vagaries of any one person’s opinion of”
whether a certain fact was indicated. Id. “[A] claim term, to be definite,
requires an objective anchor.” Id. Here, we have none.
Ultimately, our conclusion rests upon the finding that the terms
“indicating” and “an indication” in the context of the claims “fail[] to
delineate the scope of the invention using language that adequately notifies
the public of the patentee’s right to exclude.” Id. at 1353. In the context of
the claims and Specification, “indicating” and “an indication” are not clear
and unambiguous or “reasonabl[y] precis[e].” See In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014) (“The USPTO, in examining an application, is
obliged to test the claims for reasonable precision according to these
principles.”).7
Accordingly, we conclude that claims 1–25 are indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention. 35 U.S.C. § 112, second paragraph.
Rejection I
The Examiner concludes that claims 1–25 are directed to a non-
statutory abstract idea and hence ineligible subject matter for patenting
under 35 U.S.C. § 101. Ans. 3. The Examiner initially relies upon a variety
of reasons as to why the claims are directed to ineligible subject matter, but
narrows the focus in the Answer to the analysis provided by the Supreme

7 This decision should not be read as concluding that the terms
“indicating” and “an indication” are indefinite in each and every context.
Our conclusion is based on the specific use of the terms in the claims on
appeal and discussion of the terms in the Specification.
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Court in Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010), which was decided
while the briefing in this appeal was ongoing. In particular, the Examiner
determines that “[i]n many ways, [a storyline] is analogous to a
mathematical algorithm. . . . [i]t is an abstract idea -- the notion behind the
story. And any number of stories can be built using the same storyline.”
Id. at 19. The Examiner concludes that claims 1–20 “seek[] to preempt all
practical uses for a storyline.” Id. at 3.
Appellant raises several arguments in response to this rejection, but
we focus on the Reply Brief because the arguments directed to Bilski are
provided therein. In particular, Appellant asserts that “[f]or all intents and
purposes, the Bilski opinion is useless.” Reply Br. 5. Appellant explains
that the Supreme Court held that “the Federal Circuit’s machine-or-
transformation test is a test but not the test.” Id. Further, Appellant
contends that “the Supreme Court’s explanation of why Appellant’s claims
are unpatentable abstract ideas is vacuous.” Id. Appellant asserts that the
concurring opinion in Bilski supports the notion that the “the legal construct
of ‘abstract idea’ is directly associated with mathematical algorithms.” Id.
Thus, according to Appellant, because “[a] fictional storyline is not a
mathematical algorithm[,] the claimed methods in the present application are
not abstract ideas.” Id.
Appellant argues the eligibility of the claims in specific groups and
we address each group below after discussing the current legal framework
for assessing whether a claim is directed to patent eligible subject matter.
Section 101 of the Patent Act defines the subject matter eligible for
patent protection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347,
2354 (2014). It provides: “Whoever invents or discovers any new and
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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’s “precedents provide three specific exceptions to § 101’s broad
patent-eligibility principles: ‘laws of nature, physical phenomena, and
abstract ideas.’” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting
Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). “Phenomena of
nature, though just discovered, mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.” Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1293 (2012) (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., the
Supreme Court set forth a “framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct.
at 2355. As reiterated by the Supreme Court in Alice Corp:
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, we consider the elements of each 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. We have described
step two of this analysis as a search for 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.”
Id. (citations omitted).
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Claims 1–218
First, claim 1 is directed to a process of relaying9 a story and recites
one “indicating” step.10 Thus, the claim is directed to the abstract idea of
relaying (passing on, e.g., such as by telling) a story.11 In determining the
first step of this analysis, we are not persuaded by Appellant’s argument that

8 Appellant does not separately argue claims 1–21. Appeal Br. 4–46;
Reply Br. 4–6. We select claim 1 as representative. Accordingly, claims 2–
21 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
9 The ordinary and customary meaning of “relaying” is “receiv[ing] and
pass[ing] on.” CHAMBERS 21ST CENTURY DICTIONARY (2001), available at
http://search.credoreference.com/content/entry/chambdict/relay_1/0?searchI
d=945a6d93-0e89-11e4-80fa-0aea1e24c1ac&result=0 (last visited July 18,
2014). In the context of the claims and Specification, however, the term
appears more analogous to “passing on” rather than requiring receiving and
passing on. Thus, the process of telling someone a story (which passes on a
story, whether or not that person telling the story received the story from
another or created the story) would fall within the scope of relaying a story
as understood in the context of the claims and Specification.
10 Although we conclude in the new ground of rejection that the term
“indicating” is indefinite, that conclusion does not preclude us from reaching
the question of whether the claims are directed to non-statutory subject
matter under § 101 because we focus our analysis here on the narrow context
where the elements of the story relayed are explicitly written or spoken.
Even in that narrow, arguably more definite (i.e., explicitly writing is more
definite than using “circumstance” to indicate a particular fact of a story),
context, we conclude that claim 1 is directed to non-statutory subject matter
for the reasons explained herein.
11 Storytelling is similar to an example given by the Federal Circuit in
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (2013), vacated,
WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014). In
Ultramercial, the Federal Circuit indicated that while “the word poem is
concrete, poetry is [abstract].” Id. at 1343. Specifically, as applied here,
while the word story may be concrete, storytelling (i.e., relaying a story) is
abstract.
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abstract ideas are limited to mathematical algorithms. See Alice Corp. at
2356–57 (rejecting Petitioner’s argument that the abstract-ideas category is
confined to preexisting, fundamental truth[s] that exis[t] in principle apart
from any human action (citations and quotations omitted; alterations in
original)).
Second, the elements of claim 1, individually and “as an ordered
combination[,]” do not transform the nature of the claim into a patent-
eligible application. While claim 1 includes a step “indicating” certain
elements of the story, the step is insufficient “to ensure that the patent
[application] in practice amounts to significantly more than a patent upon the
[ineligible concept] [of relaying a story] itself.” Alice Corp., 134 S. Ct.
at 2355 (second alteration in original). In other words, there is no “inventive
concept.” Id.
Additionally, claim 1’s method step “can be performed in the human
mind, or by a human using a pen and paper.” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (relying on the
Supreme Court’s decision in Gottschalk v. Benson, 409 U.S. 63, 67 (1972),
for the proposition that “methods which can be performed mentally, or
which are the equivalent of human mental work, are unpatentable abstract
ideas”). For example, the “indicating” step can be performed either in the
human mind, or by a human writing down that a character experiences déjà
vu to mask an actual event.12 Thus, in light of the analysis explained in

12 Appellant has not argued that the preamble is limiting, and we do not
believe it is. That being said, even if it were limiting, “relaying a story” can
also be performed by a human writing down a story and giving it to another
human.

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Alice Corp. and CyberSource, claim 1 is not directed to patent-eligible
subject matter at least because it is a mental process and hence an abstract
idea.
Further, the Supreme Court recognized that, although not the sole test,
the “machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101.” Bilski, 130 S. Ct. at 3227. Here, claim 1 is not tied
to a particular machine or apparatus and does not transform a particular
article into a different state or thing. Id. at 3226 (citation omitted); see also
Digitech Image Techs. v. Elecs. for Imaging, Inc., slip op. at 11
(Fed. Cir. July 11, 2014) (finding the method claims directed to an abstract
idea in-part because they are “not tied to a specific structure or machine”).
In addition, storytelling is not a “new and unforeseen invention” or an
“emerging technolog[y]” that poses a difficulty in deciding whether the
claim qualifies as a patentable “process.” Bilski, 130 S. Ct. at 3227–28.

Appellant, however, contends that “indicating” is “an active step that
is not a ‘process of human thinking’ and does not ‘depend . . . on human
intelligence alone.’” Appeal Br. 37 (citing In re Comiskey, 499 F.3d 1365,
1377–78 (Fed. Cir. 2007)). As noted above, Appellant’s Specification
states, “there are many ways to indicate a fact in a movie without any
explicit words to that effect at all: circumstance, cinematography, subtly
suggestive newspaper headlines, suggestive words by the protagonist or
other characters, etc. can all be indicative of that fact.” Spec. 18. The
Specification also states that “[e]ach of the steps may comprise indicating in
a written or video form.” Id. at 1. Thus, as with “step (b)” of CyberSource,
which the Federal Circuit determined could be performed by a person
“writing down a list of credit card transactions made from a particular IP
address,” 654 F.3d at 1372, so too could the “indicating” steps of claim 1 be
performed by writing.
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Thus, the machine-or-transformation test provides further support for our
conclusion that claim 1 is directed to non-statutory subject matter.
Accordingly, we sustain the Examiner’s rejection of claims 1–21 as
directed to non-statutory subject matter.
Claim 22
Claim 22 recites:
22. The process as claimed in claim 1, wherein said process
is a process of displaying a motion picture having a timeline
and a unique plot, comprising:
displaying a video representation of an actor acting as
said first character;
displaying a video representation of an indication that
said first character experiences déjà vu to mask an actual event;
and
displaying a video representation of an indication that
said actual event would, absent said déjà vu, at least one of the
following: cause said first character substantial emotional
trauma; and be a reminder of a past traumatic experience of said
first character.
Appeal Br. 86, Claims App.
As reflected above, claim 22 narrows claim 1 to “a process of
displaying a motion picture” and adds three “displaying” steps. While
narrower than the process recited in claim 1, the addition of these
“displaying” steps constitutes “insignificant postsolution activity,”13 which
does not transform the unpatentable abstract idea of relaying a story, as

13 Claim 22’s steps may also be considered an attempt to limit claim 1 to
a particular technological environment, i.e., displaying a motion picture that
relays a story. Regardless, the particular technological environment of
claim 22 does not transform the unpatentable abstract idea of relaying a
story into a patentable process.
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recited in claim 1, into a patentable process. See Bilski, 130 S. Ct. at 3230
(“the prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity’”).14
Accordingly, we sustain the Examiner’s rejection of claim 22 as
directed to non-statutory subject matter.
Claim 23
Claim 23 recites:
23. The process as claimed in claim 1, wherein said process
is a process of creating a motion picture having a timeline and a
unique plot, comprising:
providing a set;
providing a video camera configured to video at least a
portion of said set;
inciting a first actor to act as said first character,
inciting said first actor to indicate that said first character
experiences déjà vu to mask an actual event;
creating a first video segment via said video camera by
filming said indication by said first actor;
inciting a second actor to act as a third character;

14 Appellant asserts that claim 22 is tied to a particular machine—a
video machine—and that it transforms video information/data into a visual
depiction. Appeal Br. 52–55. Even though claim 22 is directed to a process
of displaying a motion picture, no machine or apparatus is expressly recited
in the claim. Additionally, we are unconvinced that displaying a video
representation transforms a particular article into a different state or thing.
Even if we were to assume that claim 22 were tied to a particular machine
and that it recites a transformation of a particular article into a different state
or thing, we would nonetheless conclude that claim 22 is directed to non-
statutory subject matter because it recites insufficient postsolution activity,
which does not transform the abstract idea of relaying a story into a
patentable process.
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inciting said second actor to indicate that said third
character discovers that said first character experiences déjà vu
to mask actual events;
creating a second video segment via a video camera by
filming said indication by said second character;
editing and combining at least part of at least said first
and second video segments to form a motion picture; and
storing said motion picture on an information storage
medium.
Appeal Br. 86–87, Claims App.
As reflected above, claim 23 recites a process of creating a motion
picture, and narrows claim 1 to the use of a video camera, and the steps of
providing a set, providing a video camera, inciting an actor to act a certain
way, creating and editing video segments, and storing the segments
combined as a motion picture on an information storage medium. The
question before us is whether the additional elements of claim 23 as
compared to claim 1, individually and as an ordered combination transform
the nature of the claim into a patent-eligible application.
Taking the claim elements separately, each step of the process is
“purely convention.” Alice Corp., 134 S. Ct. at 2359 (quotation omitted).
Using a video camera to create a video segment amounts to making a video
recording (or movie)—one of the most basic functions of a video camera.
See id. (noting that “[u]sing a computer to create and maintain ‘shadow’
accounts amounts to electronic recordkeeping—one of the most basic
functions of a computer”) (citation omitted); see also Planet Bingo, LLC v.
VKGS LLC, 576 Fed. Appx. 1005, 1008 (Fed. Cir. 2014) (holding the claims
ineligible even though they “require[d] ‘a computer with a central
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processing unit,’ ‘a memory,’ ‘an input and output terminal,’ ‘a printer,’
[and] in some cases ‘a video screen’”).15 The same is true with respect to the
other steps of the claim—each of the providing, creating, inciting, editing,
and storing steps are “‘well-understood, routine, conventional activit[ies]’
previously known to the industry.” Id. (citing Mayo, 132 S. Ct. at 1294).16
Considered “as an ordered combination,” these steps “ad[d] nothing
. . . that is not already present when the steps are considered separately.” Id.
Viewed as a whole, claim 23 simply recites the concept of creating a movie.
The claim does not “purport to improve the functioning of” the video camera
or other device, nor does the claim “effect an improvement in any other
technology or technical field.” Id. at 2359–60 (citation omitted); see
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)
(reiterating the Supreme Court’s approach in Alice Corp). Thus, the
additional elements of claim 23 are “not ‘enough’ to transform an abstract
idea into a patent-eligible invention.” Alice Corp., 134 S. Ct. at 2360
(citation omitted).
Accordingly, we sustain the Examiner’s rejection of claim 23 as
directed to non-statutory subject matter.

15 Although nonprecedential, Planet Bingo is persuasive. Fed. Cir.
R. 32.1; see Fed. R. App. Pro. 32.1(a).
16 We take Official Notice that these steps are well-understood, routine,
conventional activities previously known to the movie industry. MPEP
§ 2144.03 (9th ed., Mar. 2014).
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Claim 24
Claim 24 recites:
24. An information storage medium containing information
of a story having a timeline and a unique plot involving
characters, said information comprising:
an indication that a first character experiences déjà vu to
mask an actual event; and
an indication that said actual event would, absent said
déjà vu, at least one of the following: cause said first character
substantial emotional trauma; and be a reminder of a past
traumatic experience of said first character.
Appeal Br. 87, Claims App.
As reflected above, claim 24 is directed to an information storage
medium containing information. Claim 24, however, does not contain any
limitations directed to the structure or physical composition of the
information storage medium. While the information storage medium may be
a book or a DVD, the broadest reasonable interpretation of information
storage medium is much broader. In fact, the phrase literally covers
anything that stores information. As such, “information storage medium”
reads on the human brain, a naturally occurring phenomena, and is thus
directed to non-statutory subject matter. See Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116–20 (2013) (holding that
naturally occurring DNA, even if isolated, is directed to non-statutory
subject matter); see also Diamond v. Chakrabarty, 447 U.S. 303, 309–10
(1980) (drawing a distinction between naturally occurring and nonnaturally
occurring compositions of matter); MPEP § 2106 I (9th ed., Mar. 2014)
(same).
Accordingly, we sustain the Examiner’s rejection of claim 24 as
directed to non-statutory subject matter.
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Claim 25
Claim 25 recites:
25. A program product for relaying a story having a timeline
and a unique plot involving characters, said product comprising
machine-readable program code for causing, when executed, a
machine to perform the following process steps:
indicating that a first character experiences déjà vu to
mask an actual event; and
indicating that said actual event would, absent said déjà
vu, at least one of the following: cause said first character
substantial emotional trauma; and be a reminder of a past
traumatic experience of said first character.
Appeal Br. 88, Claims App.
As reflected above, claim 25 is drafted in what has become known as
Beauregard format, named for In re Beauregard, 53 F.3d 1583
(Fed. Cir. 1995). CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1287 (Fed. Cir. 2013) (Lourie, J., concurring) (“Claims in Beauregard
format formally recite a tangible article of manufacture—a computer-
readable medium, such as a computer disk or other data storage device—but
such claims also require the device to contain a computer program for
directing a computer to carry out a specified process.”). For the same
reasons explained in CLS Bank Int’l, claim 25 is equivalent to the method it
recites for § 101 purposes. Id. at 1287–88; see also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1266, 1375 (Fed. Cir. 2011) (holding that
“the ‘computer readable medium’ limitation . . . does not make the otherwise
unpatentable method patent-eligible under § 101”). Thus, because the first
indicating step recited in claim 25 is identical to the indicating step recited in
claim 1, our discussion of claim 1 is equally applicable here. Further, the
second indicating step suffers from the same deficiencies as the first—the
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claim remains directed to the abstract idea of relaying a story, the elements
of the claim individually and as an ordered combination lack an inventive
concept, and the second step can be performed in the human mind or by a
human using a pen and paper.
Accordingly, for the reasons we explained in the context of discussing
the rejection of claim 1 supra, we sustain the Examiner’s rejection of
claim 25 as directed to non-statutory subject matter.
We designate our affirmance of Rejection I as a NEW GROUND OF
REJECTION so as to provide Appellant with a full and fair opportunity to
respond to the thrust of the rejection because the reasoning upon which we
rely differs somewhat from the reasoning articulated by the Examiner.
Rejection II
The Examiner concludes that any movie recorded on a DVD or book
would have rendered the subject matter of claims 1–25 obvious to one of
ordinary skill in the art at the time of the invention. Ans. 3, 17–18.
As discussed in the context of the New Ground of Rejection,
claims 1–25 each recite the terms “indicating” or “an indication,” which we
conclude are indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention.
35 U.S.C. § 112, second paragraph. Thus, the prior art rejection under
§ 103(a) must fall, pro forma, because it is necessarily based on speculative
assumptions as to the scope of the claims. See In re Steele, 305 F.3d 859,
862–63 (CCPA 1962).17

17 If Appellant elects to reopen prosecution in light of the new ground of
rejection, the Examiner should consider whether the process claims (claims

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–25 under
35 U.S.C. § 101, and designate our affirmance as a NEW GROUND OF
REJECTION.
We REVERSE, pro forma, the Examiner’s decision rejecting
claims 1–25 under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 1–25 as
indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

1–23) would have been obvious in light of prior art processes for relaying a
story (e.g., a process of writing a book, or recording or making a motion
picture) rather than obvious in light of a prior art product such as a “movie
recorded on a DVD” as the rejection currently stands.
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If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment, or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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