Ex Parte Montemayor et al

Patent Trials and Appeals Board

Jun 4, 2019

13629525 - (D) (P.T.A.B. Jun. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/629,525 09/27/2012
15093 7590 06/06/2019
Kilpatrick Townsend & Stockton/Qualcomm
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
Oscar A. Montemayor
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.
141958 (899586) 6752
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/06/2019 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):
ipefiling@kilpatricktownsend.com
ocpat_uspto@qualcomm.com
qcomins t@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OSCAR A. MONTEMAYOR and
DAVID DONAHUE
Appeal 2018-001810
Application 13/629,525 1
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-5 and 8-18, which are all claims pending in the
application. Appellants have canceled claims 6 and 7. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Qualcomm
Incorporated. App. Br. 1.
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Application 13/629,525
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"techniques for confining [digital] content to a device." Spec. ,r 7.
Exemplary Claim
Claim 11, reproduced below, exemplifies the subject matter on appeal
(emphases added to contested prior-art limitations):
11. A method for managing access to digital content
over a computer network, the method comprising:
detecting, by at least one processor, a device identifier
included in a request from a remote device for digital content,
the device identifier being associated with the remote device;
generating, by at least one processor, a digital receipt in
response to the request, in response to a determination that the
remote device is authorized to receive the digital content;
including, by at least one processor, the device identifier
with the digital receipt, the digital receipt with the device
identifier confining use of the digital content to the remote
device associated with the device identifier;
determining, by at least one processor, whether the
digital receipt is valid, after a request for transmission of the
digital content and the digital receipt are received via the
computer network from the remote device; and
sending, by at least one processor, the digital content to
the remote device via the computer network, in response to
determining that the digital receipt is valid, the digital content
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 8, 2017); Reply Brief ("Reply Br.," filed Dec. 8, 2017); Examiner's
Answer ("Ans.," mailed Nov. 3, 2017); Final Office Action ("Final Act.,"
mailed Apr. 10, 2017); and the original Specification ("Spec.," filed
Sep. 27, 2012).
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playable by the remote device when (i) the digital receipt,
including the device identifier, and (ii) the digital content
simultaneously reside at the remote device.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Willey US 2003/0065918 Al Apr. 3, 2003
Bi et al. ("Bi") US 2004/0024688 Al Feb. 5,2004
Yen et al. ("Yen") US 2005/0038753 Al Feb. 17,2005
Liu et al. ("Liu") US 2007/0219917 Al Sept. 20, 2007
Zhang et al. ("Zhang") US 2007/0282751 Al Dec. 6, 2007
Rejections on Appeal
RI. Claims 1-5 and 8-18 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2.
R2. Claims 1, 2, 4, 8, 9, 11, 12, 14, 16, and 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Yen,
Zhang, and Bi. Final Act. 5.
R3. Claims 3, 13, and 18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Yen, Zhang, Bi, and Liu. Final
Act. 31.
R4. Claims 5, 10, and 15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Yen, Zhang, Bi, and Willey.
Final Act. 40.
3
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CLAIM GROUPING
Based on Appellants' arguments (App. Br. 4---6) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1-5 and 8-18 on the basis of
representative claim 11; and we also decide the appeal of obviousness
Rejection R2 of claims 1, 2, 4, 8, 9, 11, 12, 14, 16, and 17 on the basis of
representative claim 11. Remaining claims 3, 5, 10, 13, 15, and 18 in
Rejections R3 and R4, not argued separately, stand or fall with the
respective independent claim from which they depend. 3
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to Rejections RI through R4 of claims 1-5 and 8-18 for the specific reasons
discussed below. We highlight and address specific findings and arguments
regarding claim 11 for emphasis as follows.
1. § 101 Rejection RI of Claims 1-5 and 8-18
Issue 1
Appellants argue (App. Br. 4--6; Reply Br. 2) the Examiner's rejection
of claim 11 under 35 U.S.C. § 101 as being directed to patent-ineligible
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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subject matter is in error. These contentions present us with the following
ISsue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
We first note "[ w ]hether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo." SiRF Tech., Inc. v. Int'!
Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
However, the Federal Circuit has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1353-54 (Fed.
Cir. 2016) ( collecting cases). At the same time, "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Abstract ideas may include, but
are not limited to, fundamental economic practices, methods of organizing
human activities, and mathematical formulas or relationships. Alice 573
U.S. at 217-21. Under this guidance, we must therefore ensure at step one
that we articulate what the claims are directed to with enough specificity to
ensure the step one inquiry is meaningful. Id. at 217 ("[W]e tread carefully
in construing this exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alteration in original) ( quoting Mayo,
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566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
B. USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07 /pdf/
2018-28282.pdf).
Under that Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human interactions such as a fundamental
economic practice, or mental processes); 5 and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-
(c), (e}-(h)). 6
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(d)); or
5 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
6 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
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( 4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. 7
See Guidance.
Step 2A(i)-Abstract Idea
Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
7 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance. 8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii)-Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
8 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
9 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017].
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(3) MPEP § 2106.05(c) Particular Transfonnation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05([) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment 10
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 11 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination). 12 Therefore, if a claim has been
10 MPEP §§ 2106.05(a), (b), (c), and (e) are indicative of integration into a
practical application, while MPEP §§ 2106.05([), (g), and (h) relate to
limitations that are not indicative of integration into a practical application.
11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
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determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself). 13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 14
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir.
2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
14 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
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In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s ) ....
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
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which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Based upon our de nova review of the record in light of recent
Director Policy Guidance with respect to patent-eligible subject matter
rejections under 35 U.S.C. § 101, we reverse the rejection of claims 1-5
and 8-18 for the specific reasons discussed below. We highlight and
address specific findings and conclusions regarding claim 11 for emphasis as
follows.
Step 1
Claim 11, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined exemplary claim 11 is directed to
"performing the longstanding practice and business activity of licensing
products." Ans. 7. Further, the Examiner determined claim 11 is directed to
"generating and managing digital receipts or licenses." Final Act. 3.
We find claim 11 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de nova, whether
claim 11 recites an abstract idea based upon the Revised Guidance.
Claim 11 recites "[a] method for managing access to digital content
over a computer network," wherein the method includes the steps of:
(1) "[D]etecting ... a device identifier included in a request
from a remote device for digital content, the device identifier being
associated with the remote device."
(2) "[G]enerating ... a digital receipt in response to the request,
in response to a determination that the remote device is authorized to
receive the digital content."
(3) "[I]ncluding ... the device identifier with the digital receipt,
the digital receipt with the device identifier confining use of the
digital content to the remote device associated with the device
identifier."
( 4) "[D]etermining ... whether the digital receipt is valid after
a request for transmission of the digital content and the digital receipt
are received ... from the remote device."
(5) "[S]ending ... the digital content to the remote device ... ,
in response to determining that the digital receipt is valid, the digital
content playable by the remote device when (i) the digital receipt,
including the device identifier, and (ii) the digital content
simultaneously reside at the remote device."
Claims App 'x.
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The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses the invention as
"techniques for confining content to a device." Spec. ,r 7.
Appellants' Abstract provides additional description of the invention:
Disclosed herein are a system, non-transitory computer-
readable medium, and method for confining content. A digital
receipt is generated in response to a request for content. An
identifier associated with the remote device sending the request
is included in the digital receipt such that use of the content is
confined to the remote device.
Spec. 11.
Under the broadest reasonable interpretation standard, 15 and aside
from the "digital" or computer-related aspects, we conclude the claim as a
whole recites steps that would ordinarily occur when managing distribution
of content based upon a receipt or license to determine whether "the
requesting party has the authority to make the request and utilize the
functions." See Final Act. 3.
For example, "detecting ... a device identifier included in a request
from a remote device for digital content" ( step (1)) and "generating ... a
15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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digital receipt in response to the request" (step (2)) would be common steps
in accessing digital content. Further, "determining ... whether the digital
receipt is valid" ( step ( 4)) and "sending ... the digital content to the remote
device" ( step ( 5)) are also common steps in accessing digital content
involving licensed content.
Thus, under Step 2A (i), we generally agree with the Examiner that
claim 11 recites an abstract idea, and we particularly conclude claim 11
recites certain methods of organizing human activity. Specifically, claim 11
recites a business/legal interaction, i.e., license enforcement, which we
further note may be performed without a computer using pen and paper.
Aside from the digital nature of the content being licensed, this type of
activity, i.e., license enforcement of content, includes longstanding conduct
that existed well before the advent of computers and the Internet, and could
be carried out by a human with pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). 16
16 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[t]he Board's
slight revision of its abstract idea analysis does not impact the patentability
analysis." Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math)
to another abstract idea ... does not render the claim non-abstract."); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
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We conclude claim 11, as a whole, under our Revised Guidance,
recites a judicial exception of certain methods of organizing human activity,
i.e., a legal and/or commercial interaction, and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the "practical application" Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
In addition to the abstract steps recited in limitations (1), (2), (4) and
(5) identified in Step 2A(i), supra, claim 11 further recites (emphasis added)
Step (3): "including . .. the device identifier with the digital receipt, the
digital receipt with the device identifier confining use of the digital content
to the remote device associated with the device identifier."
For the reasons discussed below, we conclude limitation (3) integrates
the abstract idea into a practical application as determined under at least one
of the MPEP sections cited above. 17
Appellants' Specification discloses:
In block 306, the identifier associated with the remote
device may be included with the digital receipt or attestation.
As noted above, this identifier may uniquely identify the remote
17 See, e.g., MPEP § 2106.05(a) "Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field," and
§ 2106.05(e) "Other Meaningful Limitations."
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device such that access to the digital content or electronic
product is confined to the device. As such, the digital content or
electronic product may be inoperative if copied to another
device. Furthermore, the digital content or electronic product
may be inoperative on another device even if the digital receipt
is also copied thereto. The identifier included in the receipt may
ensure that the content is operative in the device authorized to
receive the content.
Spec. ,r 17.
Appellants argue:
Claim 1, 18 for example, is directed to patentable subject
matter because it recites a system that restricts access to digital
content to only a particular computing device under specific
conditions .... Preventing (or allowing) access to digital
content using digital access controls solve a problem
"necessarily rooted in computer technology. "DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
Specifically, the scheme prevents a user who actually has a
digital copy of a work from accessing the work unless he also
has the correct technical access mechanisms, whose creation
and distribution are the focus of the claim.
App. Br. 5 ( emphasis added). Appellants further contend:
The Final Office Action's (and Advisory Action's) focus
on the creation of a license agreement misses the point of the
claimed technology. Instead the claims are directed to ways to
render a digital work unusable unless access is specifically
authorized via the technical mechanisms recited in the pending
claims, including generating and providing the claimed access
controls.
App. Br. 6 (emphasis added).
18 Independent system claim 1 recites, in pertinent part, commensurate
limitations as exemplary claim 11 (independent method claim). Therefore,
we find Appellants' arguments with respect to claim 1 apply equally to
claim 11.
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We find Appellants' argument persuasive that carrying out the step of:
"including ... the device identifier with the digital receipt ... [ and]
confining use of the digital content to the remote device associated with the
device identifier" (step (3)) provide improvements to the underlying
technology or technical field, namely, digital content license enforcement
systems. See MPEP § 2106.05(a) or, alternatively,§ 2106.05(e) "Other
Meaningful Limitations."
With respect to these other meaningful limitation, we find guidance in
MPEP § 2106.05(e), which summarizes and relies upon our reviewing
courts' holdings in Diamond v. Diehr, cited supra, and Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
( decision on remand from the Supreme Court, which had vacated the lower
court's prior holding of ineligibility in view of Bilski v. Kappas).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use
of the (abstract idea) mathematical equation to the practical application of
molding rubber products. MPEP § 2106.05( e) ( citing Diehr, 450 U.S. at
184, 187).
In Classen, the Court held that, although the analysis step was an
abstract mental process that collected and compared known information, the
(practical application) immunization step was meaningful because it
integrated the results of the analysis into a specific and tangible method that
resulted in the method "moving from abstract scientific principle to specific
application." MPEP § 2106.05(e) (citing Classen, 659 F.3d at 1066-68).
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We find this other meaningful limitation identified above provides a
technological improvement to digital content license enforcement systems
(i.e., "render[ing] a digital work unusable unless access is specifically
authorized via the technical mechanisms"). App. Br. 6. Accordingly, we
conclude, when the claim is considered as a whole, the recited judicial
exception is integrated into a practical application as determined under either
MPEP sections 2106.06(a) or 2106.05(e) cited above, such that claim 11 is
patent-eligible.
Because claim 11 is directed to a patent-eligible concept, this
concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the§ 101 rejection of claim 11, and grouped claims 1-5, 8-10, and
12-18 which stand therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1, 2, 4, 8, 9, 11, 12, 14, 16, and 17
Issue 2
Appellants argue (App. Br. 6-7; Reply Br. 2--4) the Examiner's
rejection of claim 11 under 35 U.S.C. § 103(a) as being obvious over the
combination of Yen, Zhang, and Bi is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method for managing access to digital content over a
computer network" that includes, inter alia, the steps of "determining, by at
least one processor, whether the digital receipt is valid, after a request for
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transmission of the digital content and the digital receipt are received via the
computer network from the remote device," wherein "the digital content [is]
playable by the remote device when (i) the digital receipt, including the
device identifier, and (ii) the digital content simultaneously reside at the
remote device," as recited in claim 11 ( emphasis added)?
Analysis
The Examiner finds Zhang teaches or suggests the contested
"determining" step. Final Act. 22-23 ( citing Zhang ,r,r 19-20, ,r,r 23-26 and
,r,r 28-33). Additionally, the Examiner relies upon Bi as teaching "the
digital receipt or license[ s,] ... the device identifier[,] and the digital content
to simultaneously reside in the remote device." Final Act. 26 ( citing Bi
,r,r 123, 141 and 171).
Appellants contend the cited passages of Yen, Zhang, and Bi do not
mention that a license ( or digital receipt) is sent from a client ( or a remote
device) for validation. Appellants specifically contend:
The error in the Final Office Action's (and Advisory Action's)
analysis is apparent from the language it uses to describe
Zhang: "Thus the license itself can reside on the client or
remote device and can be sent from the client itself to
determine ifit is valid." Office Action, p. 7. Irrespective of
whether the client could send the license, it does not.
Zhang describes a device referred to as a "media gateway
device" or "MGD," which can service multiple clients in a local
area network. Zhang, ,r,r 18-19. The Final Office Action has
alleged that the functionality provided by the MGD discloses
the claimed "fulfillment module." Final Office Action, p. 7; see
also Advisory Action, p. 3 ....
According to Zhang, when a client sends a request to the
MGD to view content, the MGD services the request by using
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its own locally-stored license information - local license 114
and additional, locally stored data referred to as "remaining
rights list" or "RRL" - to ensure there remain sufficient rights
to allow the client device to view the requested content. MGD
... acquires the local license 114. The MGD then obtains and
uses the license index 130 to retrieve the remaining digital
rights data 122 (i.e., the current status) from the RRL file 116 to
validate if the device 106 is authorized to access the requested
content."). If the local license and the RRL indicate sufficient
rights are available to view the requested content, the MGD
downloads the requested content to the client device along with
the required decryption keys. Zhang, ,r 24. Thus, the MGD does
not receive from the client device ( or any other remote device)
a "digital receipt." The local license 114 is stored locally on the
MGD and thus is not received from a remote device. Similarly,
the RRL is stored locally on the MGD and is also not received
from a remote device. Thus, Zhang does not cure the
deficiencies of Yen in combination with Bi.
App. Br. 6-7.
The Examiner finds:
[ A ]s shown in Zhang the remote device or the client device can
and does store the license. Thus the client can send the license
to the server for it to be validated. Zhang Page 2, paragraphs
[0019]-[0020], Page 3, paragraphs [0025]-[0026]; teach that
either the client or the MGD can contain the license. Thus the
license itself can reside on the client or remote device and can
be sent from the client itself to determine if it is valid.
Ans. 12.
We disagree with the Examiner's finding that Zhang discloses
"determining, by at least one processor, whether the digital receipt is valid,
after a request for transmission of the digital content and the digital receipt
are received via the computer network from the remote device," as recited in
claim 11 ( emphasis added). We disagree with the Examiner because Zhang
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does not teach that the remote device sends the digital receipt anywhere;
Zhang only teaches that the remote device stores the digital receipt.
For essentially the same reasons argued by Appellants (id.), we
reverse the Examiner's rejection of independent claim 11, and also the
rejection of independent claims 1 and 8, which recite the disputed limitations
in commensurate form. For the same reasons, we also reverse the rejections
of all claims that depend therefrom. 19
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the disputed limitations such that we do
not sustain the Examiner's obviousness rejection of independent claim 11,
and grouped claims 1, 2, 4, 8, 9, 12, 14, 16, and 17 which stand therewith.
See Claim Grouping, supra.
3. Rejections R3 and R4 of Claims 3, 5, 10, 13, 15, and 18
In light of our reversal of Rejection R2 of independent claims 1, 8,
and 11, supra, we also reverse obviousness Rejections R3 and R4 under
§ 103 of claims 3, 5, 10, 13, 15, and 18, all of which variously and
ultimately depend from claims 1, 8, and 11. On this record, the Examiner
has not shown how the additionally cited secondary Liu and Willey
references overcome the aforementioned deficiencies with the combination
of Yen, Zhang, and Bi, as discussed above regarding claim 11.
19 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants' other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on "a
single dispositive issue").
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CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1-5 and 8-18 are patent-eligible under 35 U.S.C. § 101, and we do
not sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejections R2
through R4 of claims 1-5 and 8-18 under 35 U.S.C. § 103(a) over the cited
prior art combinations of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1-5 and 8-18.
REVERSED
25