Ex Parte Knight

Patent Trials and Appeals Board

Dec 8, 2014

10722473 - (D) (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.
10/722,473 11/28/2003 Andrew F. Knight 009 7986
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 2011-011140
Application 10/722,4731
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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

1 Appellant is identified as the real party in interest. App. Br. 1.
Appeal 2011-011140
Application 10/722,473

2

Claimed Subject Matter
Claims 1 and 17 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 a character’s desire at a first time in said
timeline for at least one of the following: a) to remain asleep or
unconscious until a particular event occurs; and b) to forget or
be substantially unable to recall substantially all events during
the time period from said first time until a particular event
occurs;
indicating said character’s substantial inability at a time
after said occurrence of said particular event to recall
substantially all events during the time period from said first
time to said occurrence of said particular event; and
indicating that during said time period said character was
an active participant in a plurality of events.
Appeal Br. 102, Claims App.
Reference
The Examiner relies upon the following prior art reference:
Any movie recorded on a DVD. Misc. Comm. (mailed Apr. 28, 2011)
at 1; Ans. 17–18.
Rejections
Appellant seeks review of the following rejections:
I. Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter and
II. Claims 1–202 are rejected under 35 U.S.C. § 103(a) as
unpatentable over any movie recorded on a DVD.

2 The Final Rejection includes a rejection of claims 7–15 and 17–20

Appeal 2011-011140
Application 10/722,473

3

SUMMARY OF DECISION
We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 1–20 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We AFFIRM the Examiner’s rejection of claims 1–20 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 rejection under 35 U.S.C.
§ 103(a).
OPINION
New Ground of Rejection – Indefiniteness
We enter a new ground of rejection of claims 1–20 under 35 U.S.C.
§ 112, second paragraph, because the terms “indicating,” recited in
independent claim 1, and “an indication,” recited in independent claim 17,
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.

under this ground. Final Office Action (mailed Aug. 28, 2008) at 2
(incorporating the rejections from the April 15, 2008, Office Action, which
includes a rejection of these claims under this ground). Claims 1–6 and 16
are rejected under this ground as part of a new ground of rejection in the
Examiner’s Answer. Ans. 18–19; see also Misc. Comm. (mailed Apr. 28,
2011) at 1 (indicating the same).
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 17.
Appeal 2011-011140
Application 10/722,473

4

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 first step is
thus interpreted as “pointing out or showing a character’s desire at a first
time in said timeline for at least one of the following: a) to remain asleep or
unconscious until a particular event occurs; and b) to forget or be
substantially unable to recall substantially all events during the time period
from said first time until a particular event occurs.” Although at first glance,
“indicating” may not appear indefinite, Appellant’s Specification reveals the
difficulty underlying the interpretation of the term in the context of the
present application:
[A]s well known by those of ordinary skill in the art, 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. 17 (emphasis added). As reflected in Appellant’s Specification, the
claim language “a character’s desire at a first time in said timeline . . . to
remain asleep or unconscious until a particular event occurs” 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.
Appeal 2011-011140
Application 10/722,473

5

In our view, Appellant’s Specification expands upon how the
“indicating” steps 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 character’s desire . . . to remain asleep . . . until a particular event occurs”
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 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

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
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.
Appeal 2011-011140
Application 10/722,473

6

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
“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

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.
Appeal 2011-011140
Application 10/722,473

7

obliged to test the claims for reasonable precision according to these
principles.”).7
Accordingly, we conclude that claims 1–20 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 1–20 are directed to a non-
statutory abstract idea and hence ineligible subject matter for patenting
under 35 U.S.C. § 101. Ans. 4. 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
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 20. The Examiner concludes that claims 1–20 “seek[] to preempt all
practical uses for a storyline.” Id. at 4.
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

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.
Appeal 2011-011140
Application 10/722,473

8

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
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.,
Appeal 2011-011140
Application 10/722,473

9

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).
Claims 1–6 and 168
First, claim 1 is directed to a process of relaying9 a story and recites
three “indicating” steps.10 Thus, the claim is directed to the abstract idea of

8 Appellant does not separately argue claims 1–6 and 16. Appeal Br. 4–
46; Reply Br. 4–6. We select claim 1 as representative. Accordingly, claims
2–6 and 16 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,

Appeal 2011-011140
Application 10/722,473

10

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
abstract ideas are limited to mathematical algorithms. See Alice Corp., 134
S. Ct. 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 steps “indicating” certain

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.
Appeal 2011-011140
Application 10/722,473

11

elements of the story, the steps are 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, each of claim 1’s method steps “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 first “indicating” step can be performed either in
the human mind, or by a human writing down a character’s desire at a first
time in said timeline for at least one of the following: a) to remain asleep or
unconscious until a particular event occurs; and b) to forget or be
substantially unable to recall substantially all events during the time period
from said first time until a particular event occurs.12 The same is true of the

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.
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

Appeal 2011-011140
Application 10/722,473

12

second and third “indicating” steps. Thus, in light of the analysis explained
in 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.
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 1–6 and
16 as directed to non-statutory subject matter.

other characters, etc. can all be indicative of that fact.” Spec. 17. The
Specification also states that “[e]ach of the steps may comprise indicating in
a written form or a video form.” Id. at 6. 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.
Appeal 2011-011140
Application 10/722,473

13

Claim 7
Claim 7 recites:
7. A process of relaying a story as in claim 1, wherein each
of said steps of indicating comprises indicating in a written
form.
Appeal Br. 103, Claims App.
As reflected above, claim 7 narrows claim 1 to a process where each
of the indicating steps of claim 1 are indicated in a written form. While
narrower than the process recited in claim 1, claim 7 could be performed by
an individual simply writing down each of the previously recited indicating
steps. The addition of “indicating in a written form” constitutes
“insignificant postsolution activity,” which does not transform the
unpatentable abstract idea of relaying a story, as 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’”).13
Accordingly, we sustain the Examiner’s rejection of claim 7 as
directed to non-statutory subject matter.

13 Appellant asserts that claim 7 requires a physical transformation
because even if performed with pen and paper, “the physical object (paper)
is transformed by the pen’s ink.” Appeal Br. 53. Similar to the discussion
of step (b) in CyberSource, 654 F.3d at 1372–73, the ability to perform the
steps of claim 1 by writing, as recited in claim 7, does not render claim 7 any
less abstract.
Appeal 2011-011140
Application 10/722,473

14

Claims 8 and 1014
Claim 8 recites:
8. A process of relaying a story as in claim 1, wherein each
of said steps of indicating comprises indicating in a video form.
Appeal Br. 103, Claims App.
For the same reasons discussed with respect to claim 7, claim 8’s
addition of “indicating in a video form” constitutes “insignificant
postsolution activity,” which does not transform the unpatentable abstract
idea of relaying a story, as recited in claim 1, into a patentable process. See
Bilski, 130 S. Ct. at 3230.
Accordingly, we sustain the Examiner’s rejection of claims 8 and 10
as directed to non-statutory subject matter.
Claim 9
Claim 9 recites:
9. A process of relaying a story as in claim 8, wherein said
process is a process of displaying a motion picture having a
time line and a unique plot, comprising:
displaying a video representation of an actor acting as
said character;
displaying a video representation of said actor indicating
at said first time in said timeline a desire for said at least one of
a) and b);
displaying a video representation of an indication that
said particular event has occurred at a second time in said time
line;
displaying a video representation of said actor indicating
at a time after said second time a substantial inability to recall

14 Appellant does not separately argue claims 8 and 10. Appeal Br. 54–
64; Reply Br. 5–7. We select claim 8 as representative. Accordingly,
claim 10 stands or falls with claim 8. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-011140
Application 10/722,473

15

substantially all events during the time period from said first
time to said second time; and
displaying a video representation of an indication that
during said time period said character was an active participant
in a plurality of events.
Appeal Br. 104, Claims App.
As reflected above, claim 9 narrows claim 8 to “a process of
displaying a motion picture” and adds five “displaying” steps. While
narrower than the process recited in claim 8, the addition of these
“displaying” steps constitutes “insignificant postsolution activity,”15 which
does not transform the unpatentable abstract idea of relaying a story, as
recited in claims 1 and 8, into a patentable process. See Bilski, 130 S. Ct. at
3230.16
Accordingly, we sustain the Examiner’s rejection of claim 9 as
directed to non-statutory subject matter.

15 Claim 9’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 9 does not transform the unpatentable abstract idea of relaying a story
into a patentable process.
16 Appellant asserts that claim 16 is tied to a particular machine—a
video machine—and that it transforms video information/data into a visual
depiction. Appeal Br. 71–72. Even though claim 9 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 9 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 9 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.
Appeal 2011-011140
Application 10/722,473

16

Claim 11
Claim 11 recites:
11. A process of relaying a story as in claim 8, wherein said
process is a process of creating a motion picture having a time
line and a unique plot, comprising:
providing a set;
providing a video camera configured to video at least a
portion of said set;
inciting an actor to act as said character;
inciting said actor to indicate at said first time in said
timeline a desire for said at least one of a) and b);
creating a first video segment via said video camera by
filming said indication by said actor at said first time;
inciting said actor to indicate at a time after said
occurrence of said particular event a substantial inability to
recall substantially all events during the time period from said
first time to said occurrence of said particular event;
creating a second video segment via a video camera by
filming said indication by said actor at said time after said
occurrence of said particular event;
creating a third video segment of an indication that
during said time period said character was an active participant
in a plurality of events;
editing and combining at least part of at least said first,
second, and third video segments to form a motion picture; and
storing said motion picture on an information storage
medium.
Appeal Br. 105, Claims App.
As reflected above, claim 11 recites a process of creating a motion
picture, and narrows claim 8 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 11 as
Appeal 2011-011140
Application 10/722,473

17

compared to claim 8, 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
processing unit,’ ‘a memory,’ ‘an input and output terminal,’ ‘a printer,’
[and] in some cases ‘a video screen’”).17 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).18
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 11 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

17 Although nonprecedential, Planet Bingo is persuasive. Fed. Cir.
R. 32.1; see Fed. R. App. Pro. 32.1(a).
18 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).
Appeal 2011-011140
Application 10/722,473

18

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 11 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 11 as
directed to non-statutory subject matter.
Claims 12–1519
Claim 12 recites:
12. A process of relaying a story as in claim 8, wherein said
process is a process of creating a motion picture having a
timeline and a unique plot, comprising:
inciting an actor to act as said character;
inciting said actor to indicate at said first time in said timeline a
desire for said at least one of a) and b);
indicating that said particular event has occurred at a
second time in said timeline; and
inciting said actor to indicate at a time after said second
time a substantial inability to recall substantially all events
during the time period from said first time to said second time.
Appeal Br. 105–06, Claims App.
As reflected above, claim 12 is similar to claim 11 in that it adds
inciting steps to claim 8. Claim 12 also includes a further indicating step.
Claim 12, however, does not include the recitations of the use of a video
camera, and the steps of providing a set, providing a video camera, creating

19 Appellant does not separately argue claims 12–15. Appeal Br. 84–92;
Reply Br. 5–7. We select claim 12 as representative. Accordingly,
claims 13–15 stand or fall with claim 12. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-011140
Application 10/722,473

19

and editing video segments, and storing the segments combined as a motion
picture on an information storage medium as recited in claim 11. For the
same reasons explained in our discussion of claims 8 and 11, the addition of
two inciting steps and a further indicating step fail to transform the
unpatentable abstract idea of relaying a story, as recited in claims 1 and 8,
into a patentable process. See Bilski, 130 S. Ct. at 3230.
Accordingly, we sustain the Examiner’s rejection of claims 12–15 as
directed to non-statutory subject matter.
Claims 17–2020
Claim 17 recites:
17. An information storage medium containing information
of a story having a timeline and a unique plot involving
characters said information comprising:
an indication of a character’s desire at a first time in said
timeline for at least one of the following: a) to remain asleep or
unconscious until a particular event occurs; and b) to forget or
be substantially unable to recall substantially all events during
the time period from said first time until a particular event
occurs;
an indication that said particular event has occurred at a
second time in said timeline;
an indication of said character’s substantial inability at a
time after said second time to recall substantially all events
during the time period from said first time to said second time;
and
an indication that during said time period said character
was an active participant in a plurality of events.
Appeal Br. 107, Claims App.

20 Appellant does not separately argue claims 17–20. Appeal Br. 92–96;
Reply Br. 5–7. We select claim 17 as representative. Accordingly,
claims 18–20 stand or fall with claim 17. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-011140
Application 10/722,473

20

As reflected above, claim 17 is directed to an information storage
medium containing information. Claim 17, however, does not contain any
limitations directed to the structure or physical composition of the
information storage medium. While claims 18 and 20, which depend from
claim 17, reveal that the information storage medium can be a book or a
DVD,21 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 claims 17–20 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.

21 Appellant’s Specification discloses a book, DVD, VCD disk, and
VHS tape as non-limiting examples of an information storage medium.
Spec. 9.
Appeal 2011-011140
Application 10/722,473

21

Rejection II
The Examiner concludes that any movie recorded on a DVD would
have rendered the subject matter of claims 1–20 obvious to one of ordinary
skill in the art at the time of the invention. Ans. 17–19.
As discussed in the context of the New Ground of Rejection,
claims 1–20 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) as applied to these claims 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).22
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–20 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 1–20 under 35 U.S.C. § 103(a).
We enter a NEW GROUND OF REJECTION of claims 1–20 as
indefinite under 35 U.S.C. § 112, second paragraph, for failing to

22 If Appellant elects to reopen prosecution in light of the new ground of
rejection, the Examiner should consider whether the process claims (claims
1–16) 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.
Appeal 2011-011140
Application 10/722,473

22

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. . . .

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)

Klh