Ex Parte Pestoni et al

Patent Trial and Appeal Board

May 25, 2018

12119706 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/119,706 05/13/2008
66932 7590 05/30/2018
IP AUTHORITY, LLC
RAMRAJ SOUNDARARAJAN
7432 Alban Station Blvd, Suite B250
Springfield, VA 22150
FIRST NAMED INVENTOR
Florian Pestoni
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.
ARC920000106US2 3544
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
ram@ip-authority.com
brandi@ip-authority.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN PESTONI and DALIT NAOR
Appeal2016-004766
Application 12/119,706
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-9. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
Appeal 2016-004 7 66
Application 12/119,706
BACKGROUND
Appellants' invention is directed to a method and article of
manufacture for "protecting and upgrading digital content in a digital
content distribution system through the use of content insurance." Spec. 2,
lines 8-9.
Claim 1 is illustrative:
1. A method of providing content insurance for distributed
digital content to a consumer of said digital content, said
insurance used, at a later time, to upgrade said digital content to
a new digital format or replace said digital content in an
original format upon loss of said digital content, said method
implemented by a processor by executing instructions stored in
a storage, said method implemented by said processor
compnsmg:
said processor executing instructions to receive a request
from said consumer to purchase said content insurance on
digital data representative of specified digital content;
said processor executing instructions to store information
uniquely identifying said consumer and specified digital content
for which said content insurance is purchased;
said processor executing instructions to receive a request
from said consumer to retrieve digital data representative of
specified digital content;
said processor executing instructions to determine if said
requested specified digital content is the same as said specified
digital content for which content insurance was purchased, said
determination made utilizing said stored information, and
wherein, when said requested specified digital content is
the same as said specified digital content for which said content
insurance was purchased, said processor executing instructions
to retrieve said requested digital data of specified digital content
in more than one digital format.
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Application 12/119,706
The Examiner relies on the following prior art references as evidence
of unpatentability:
Ginter et al.
(hereinafter "Ginter")
McCabe
Stefik et al.
(hereinafter "Stefik")
us 5,982,891
US 2002/0095317 Al
US 6,708,157 B2
Appellants appeal the following rejections:
Nov. 9, 1999
July 18, 2002
Mar. 16,2004
Claims 1-9 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter (Ans. 3).
Claims 1-9 are rejected under 35 U.S.C. § I03(a) as unpatentable over
Stefik in view of McCabe and further in view of Ginter.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
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Application 12/119,706
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an "inventive concept"-an element
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Application 12/119,706
or combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101."). Accordingly, the mental
processes recited in the claims, e.g., assimilating information, creating a
hypothetical resource, mapping hypothetical and actual resources,
determining a minimum parameter increase and reconciling a parameter
increase with a scheduling policy, remain unpatentable, even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. Id. at 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that ''collecting information, analyzing it, and
displaying certain results of the collection and analysis" are ''a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claims that focus on specific asserted improvements to computer
technology have been found to be not abstract. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
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Application 12/119,706
(finding claims not abstract because they "focused on a specific asserted
improvement in computer animation").
ANALYSIS
Rejection under 35 USC§ 101
The Examiner determines that the claims are directed to upgrading
digital content through the use of content insurance. Ans. 3. The Examiner
states that the claims are directed to a fundamental economic practice or an
idea of itself, and that the additional elements do not amount to significantly
more than the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner has not considered each claim
element individually and as an ordered combination to determine whether
the additional elements transform the nature of the claims into patent eligible
subject matter. Specifically, Appellants argue that the Examiner has not
considered the steps of uniquely identifying consumer and digital content
and executing instructions to retrieve the requested digital data in more than
one digital format and thus the Examiner did not attempt to identify an
inventive concept. Appeal Br. 12-13. Appellants argue that these
recitations demonstrate that the Appellants foresaw the issue of changing
formats and provided a solution.
It is not true that the Examiner did not consider these recitations. The
Examiner addressed whether the claims recite an inventive concept by
holding that the claims do not include recitations that are significantly more
than the abstract idea because the claims do not include an improvement to
another technology or technical field and the claims do not improve the
functioning of the computer. Specifically, the Examiner found that the
limitations are merely instructions to implement the abstract idea of a
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Application 12/119,706
computer. We agree with this determination of the Examiner and note that
the problem advanced by the Appellants' argument related to changing
digital formats is not a technical problem and the claims do not solve any
technical problems related to different digital formats. Rather the claims are
directed to the business problem related to owning digital content in
different and changing digital formats.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the rejection as it is directed to the remaining
claims because the Appellants have not addressed the separate eligibility of
these claims.
Rejection under 35 USC§ 103
The Examiner rejected claims 1-9 under 35 U.S.C. § 103(a) as being
unpatentable over Stefik in view of McCabe and Ginter. Fin. Act. 3. In
response to this rejection, Appellants argue that the Examiner's Advisory
Action of July 3, 2014 was procedurally improper because the Examiner
states in the Advisory Action that the arguments regarding the 35 U.S.C.
§ 103 rejection are "moot since the claims have been amended to cite new
claim limits which substantially change the scope of claims." The
Appellants argue that this wording of the Examiner is confusing and it is not
clear what prior art the Examiner is relying on to reject the claims.
We agree with the Examiner that the propriety of the Advisory Action
is a procedural issue that is a petitionable matter not an appealable matter.
In addition, as the Examiner did not withdraw the rejection of the claims
under 35 U.S.C. § 103 as stated in the Final Rejection, the claims are still
subject to the § 103 rejection. In the Answer, the Examiner made it clear that
the claims are still subject to the § 103 rejection of the Final Rejection and
stated that this rejection has not been responded to in the Brief. Ans. 5---6.
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In the Reply Brief, the Appellants again do not respond to the rejection.
Therefore, we conclude that the claims 1-9 remain rejected under 35 U.S.C.
§ 103 as made in the Final Rejection. As the Appellants have not presented
arguments directed to this rejection, we summarily affirm this rejection.
DECISION
The decision of the Examiner is affirmed.
TIME PERIOD
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)(l).
AFFIRMED
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