Ex Parte Marcella et al

Patent Trial and Appeal Board

Aug 21, 2018

13315105 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/315, 105 12/08/2011
16000 7590 08/23/2018
Comcast
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Philip Marcella
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.
26141.001 lUl 7003
EXAMINER
ENGLAND, SARA M
ART UNIT PAPER NUMBER
2172
NOTIFICATION DATE DELIVERY MODE
08/23/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP MARCELLA, CHRISTOPHER MCKENNA,
and JOHN RIVIELLO
Appeal2018-001166 1
Application 13/315, 105
Technology Center 2100
Before ERIC B. CHEN, ADAM J. PYONIN, and PHILLIP A. BENNETT,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 4--10, 12, 14, 16, 17, 19, and 24--26, which are all of
the pending claims.
We AFFIRM.
1 Comcast Cable Communications, LLC is identified as the real party in
interest. App. Br. 1.
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Application 13/315, 105
STATEMENT OF THE CASE
Introduction
The Application is directed to "distinguish[ing] a classification of user
in order to deliver a unique experience for each class of user without
utilizing conventional 'cookies."' Spec. ,r 2. Claims 1, 9, and 16 are
independent. Claim 1 is reproduced below for reference:
1. A method comprising:
providing, by a computing device, an address element and
a class identifier;
receiving, by the computing device, a request for a file,
wherein the request comprises the address element and the class
identifier, wherein the class identifier comprises a time element,
and wherein the time element represents a date that the class
identifier was initially provisioned;
comparing, by the computing device, the class identifier to
a comparator element comprising a time period;
providing, by the computing device, a first file if the time
element is within the time period; and
providing, by the computing device, a second file if the
time element is outside the time period, wherein the first file is
different from the second file.
References and Re} ections
Claims 1, 2, 4--10, 12, 14, 16, 17, 19, and 24--26 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception to patent eligibility.
Final Act. 2.
Claims 1, 2, 4--10, 12, 14, 16, 17, 19, and 24--26 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Gordon (US 2004/0181490
Al; Sept. 16, 2004) and Steele (US 7,016,875 Bl; Mar. 21, 2006). Final
Act. 3.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
A. Patent Eligibility
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
statute, however, includes an implicit exception: laws of nature, natural
phenomena, and abstract ideas are not patentable. See, e.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court,
in Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 82-83
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," e.g., to an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the inquiry proceeds to the
second step, where the elements of the claims are considered "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78).
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Application 13/315, 105
The Examiner finds the claims are patent ineligible under 35 U.S.C.
§ 101. See Ans. 10-11. Specifically, the Examiner's analysis (quotations
omitted) is the following:
In regards to 101, the examiner noted an abstract idea
comparing new and stored information and using rules to identify
options. For clarification, The examiner notes the "comparing by
the computing device the class identifier to a comparator element
comprising a time period" constitutes comparing new and stored
information (Classen). The "providing by the computing device
a first file if the class identifier is within the comparator element
and providing by the computing device a second file if the class
identifier is outside the comparator element, wherein the first file
is different from the second file." Constitutes rules that identify
options (SmartGene ). The first two steps of the claim providing
... and receiving ... could be construed as collecting known and
stored information (Classen). Even if they were not construed
that way, they do not provide anything constituting "significantly
more".
Furthermore, the decision from FairWaming illustrates
how a process that has been done for decades incorporating a
computer does not improve the existing technological process.
Id.; see also Final Act. 10-11.
Appellants argue the Examiner's rejection "mischaracterizes the
claims and ignores the functional limitations of the claims" (Reply Br. 2)
and "[ s ]uch reasoning ... is not sufficient to establish a prima facie rejection
under section 101" (App. Br. 9). Appellants further contend the claimed
steps "provide improvement over conventional approaches by providing
more efficient data retrieval from a content host," and "it cannot be said that
this functionality is a 'well-known business practice[]' to which
'conventional computer components' were applied." App. Br. 11.
We are persuaded by Appellants' arguments. "The second step of the
Alice test is satisfied when the claim limitations involve more than
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performance of well-understood, routine, [and] conventional activities
previously known to the industry," and"[ w ]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination." Berkheimer v. HP Inc., 881 F.3d 1360,
1367, 1369 (Fed. Cir. 2018) (quotations omitted). On this record, we do not
sustain the Examiner's determination that the claims are directed to patent
ineligible subject matter. Even if we were to agree with the Examiner that
the claims are directed to an abstract idea, we cannot sustain the rejection
because the Examiner provides no support for the conclusion that the
"claim(s) does/do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because there are no
elements that constitute more than general purpose hardware." Final Act. 2.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claim 1, or the remaining claims which are rejected under the
same reasomng.
B. Obviousness
Appellants argue the Examiner fails to demonstrate claim 1 is obvious
over Gordon and Steele. App. Br. 4. We are not persuaded the Examiner
errs, however. We adopt the Examiner's findings and conclusions with
respect to the obviousness rejection as our own, and we add the following
primarily for emphasis.
i. Every Element
Appellants argue the "combined references fail to disclose every
element of claim 1." Reply Br. 3 ( emphasis omitted). Appellants contend
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Gordon does not teach the recited "class identifier," because Gordon's
request count is a value calculated by a host system, and is neither
"'provided"' nor "'received [in a] request [comprising] the address element
and the class identifier (request count)."' App. Br. 13. Appellants further
argue Steele provides only a "mere mention of [a] date comparison," and
thus "a mere combination of the two references would not necessarily show
or suggest using a time element and a time period as a basis of comparison
for determining which file is to be sent to a requesting client." App. Br. 15.
We are not persuaded the Examiner errs in finding the limitations of
claim 1 "would have been obvious to one of ordinary skill in the art, having
the teachings of Gordon and Steele before [them] at the time the invention
was made." See Final Act. 4--5; see also In re Keller, 642 F.2d 413,425
( CCP A 1981) ("The test for obviousness is not ... that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.").
Here, the Examiner finds, and Appellants do not challenge, that "the
claims do not define a secondary device or host system, only mere mention
of 'a computing device"' and "[t]he Computing device provides this
information, although, it is not clear to whom it is provided to, or whether it
is internally provided within the system." Ans. 14. Thus, we agree with the
Examiner that "[i]f the Host system of Gordon is interpreted as the
computing device, it provides the address element and class id, it receives a
request for a file with a URL as the address element and a U semame as the
Class ID." Id.; see also Gordon Fig. 3. Gordon teaches a "URL (address
element) and a usemame associated with a Request count for that particular
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Application 13/315, 105
usemame (a class identifier)," and a "count for particular usemame is
compared." Ans. 12 (citing Gordon ,r,r 15, 28). We agree, and note Gordon
further teaches these techniques are used for controlling access to files, and
such control may "allows a content owner to keep control of the number of
times content decryption may occur, the time period during which content
decryption is available." Gordon ,r 3; see also Final Act. 4.
Steele, as relied on by the Examiner, teaches "partial access to
content, where when the time expires for the period of validity, the content
may no longer be available in the way it was before." Ans. 13; Steele 9:58-
67 ("the term 'ticket' refers to a temporary authorization-for at least partial
access to a consumer's information account ... [correlated with] any period
of validity associated with the ticket"). Steele's ticket can include the "time
and date," and may be used in a web page request "including the ticket as a
parameter in the URL." Steele 10:10-23. We find the references teach or
suggest the claim limitations, as understood by an artisan of ordinary skill in
light of the Specification. See Final Act. 11-12; see also Spec. ,r 48 ("when
the address element 110 is typed into a web address bar of the web browser
106 of a particular user device 102, the class identifier 112 for the particular
user device 102 is automatically appended to the address element 110 in
order to return a particular file."). 2
2 Separately, we note claim 1 is a method claim that contains conditional
limitations: the providing steps are conditional based on the comparison
step results. See Ex parte Schulhauser, No. 2013-007847, 2016 WL
6277792, at *4 (PT AB Apr. 28, 2016) (precedential) ( discussing
construction of conditional limitations in method claims).
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ii. Motivation to Combine
Appellants argue "the motivation relied upon by the Office Action is
not rationally supported." Reply Br. 4. Appellants contend the "user-
defined permissions captured by the 'ticket' in Steele would necessarily
change the fundamental operation of Gordon as it would circumvent the
'usemame/password' accessibility model of Gordon by granting access to
data to services having access to a ticket." App. Br. 16. Further, Appellants
contend the Examiner's reasoning, such as "'to obtain a time based identifier
to determine which file to deliver to the user[,]' is insufficient rationale to
support a prima facie case of obviousness as it is a mere restatement of the
claim elements at issue." App. Br. 17.
We are not persuaded the Examiner errs. We agree with the Examiner
that, rather than changing the fundamental operation of the references,
"Steele and Gordon can be combined" as claimed. Ans. 15. The Examiner
finds one of ordinary skill would be motivated to "track user access and
regulate usage as a commonly preferred method, even suggested by Gordon
(Par. 3), also suggesting motivation for generating this current time stamp in
order to assess the current settings as known in the prior art to be a real time
representation of media rights settings." Ans. 16; see also Gordon ,r 7
( describing various paradigms for authentication may be used); Steele 10: 8-
9 ( describing the use of standard authentication techniques). We find the
Examiner's analysis to be reasonable and sufficient to support the
determination of obviousness. From the record before us, we do not find
that combining the prior art was "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
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art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007).
Accordingly, we are not persuaded the Examiner errs in finding the
cited references teach or suggest the limitations of claim 1. We sustain the
Examiner's obviousness rejection of claim 1, and claims 2, 4--10, 12, 14, 16,
17, 19, and 24--26, which are not separately argued. See App. Br. 18.
DECISION
The Examiner's decision rejecting claims 1, 2, 4--10, 12, 14, 16, 17,
19, and 24--26 under 35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 1, 2, 4--10, 12, 14, 16, 17,
19, and 24--26 under 35 U.S.C. § 103(a) is affirmed.
Because we have affirmed at least ground of rejection for each claim
on appeal, we affirm the Examiner's decision to reject claims 1, 2, 4--10, 12,
14, 16, 17, 19, and 24--26. 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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