Ex Parte Stallings et al

Patent Trial and Appeal Board

Aug 31, 2018

13281943 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/281,943 10/26/2011
25537 7590 09/05/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Heath Stallings
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.
20070319Cl 2703
EXAMINER
KARW AN, SIHAR A
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEATH STALLINGS, JAPAN MEHTA, and DON REL YEA
Appeal2016-006557
Application 13/281,943 1
Technology Center 2400
Before JASON V. MORGAN, SCOTT B. HOW ARD, and JOYCE CRAIG,
Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-8, 10-13, and 20-25. Claims 9 and 14--19 are
canceled. App. Br. 30-31. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Invention
Appellants disclose "providing a program guide that includes a matrix
of cells associated with a plurality of media content instances and providing
1 Appellants identify Verizon Communications Inc. as the real party in
interest. App. Br. 3.
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Application 13/281,943
a condensed program guide that includes a condensed matrix of a subset of
the cells and a plurality of interstitial symbols." Abstract.
Exemplary Claim (key limitations emphasized)
1. A method comprising:
providing, by a computing device, a program guide that includes a
matrix of cells associated with a plurality of media content instances,
the matrix of cells arranged along a time axis; and
providing, by the computing device, a condensed program guide that
includes a condensed matrix of a subset of the cells and a plurality of
interstitial symbols, the condensed matrix of the subset of the cells
and the plurality of interstitial symbols arranged along a loose time
axis, each interstitial symbol in the plurality of interstitial symbols
representing a single cell that is included in the matrix of the cells and
that is excluded from the condensed matrix of the subset of the cells.
Rejections
The Examiner rejects claims 1-8, 10-13, and 20-23 on the ground of
non-statutory obviousness-type double-patenting based on claims 1-28 of
Stallings et al. (US 8,051,447 B2; issued Nov. 1, 2011) ("Stallings '447").
Final Act. 6.
The Examiner rejects claims 1-8, 10-13, and 20-24 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Adv. Act. 2. 2
The Examiner rejects claims 1-8, 10-13, and 20-25 under 35 U.S.C.
§ I03(a) as being unpatentable over Wroblewski (US 2006/0250358 Al;
published Nov. 9, 2006) and Gossweiler et al. (US 2008/0270886 Al;
published Oct. 30, 2008) ("Gossweiler"). Final Act. 6-13.
2 Herein, all references to "Adv. Act." are to the Advisory Action of August
31,2015.
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OBVIOUSNESS-TYPE DOUBLE-PA TENTING
Appellants do not present arguments with respect to the Examiner's
obviousness-type double-patenting rejection of claims 1-8, 10-13, and 20-
23. See App. Br. 27. Accordingly, we summarily affirm this rejection.
35 U.S.C. § 101
Findings and Contentions
The Examiner concludes claim 1 is directed to an abstract idea. Adv.
Act. 2. Specifically, the Examiner interprets claim 1 as being directed to an
idea of itself based on individual recitations being directed to: (1) a generic
computer; (2) performing generic computer functions; (3) collecting and
comparing known information; ( 4) comparing new and stored information
and using rules to identify options; ( 5) using categories to organize and store
information; and (6) data recognition and storage. Ans. 5.
Appellants contend the Examiner erred because "the Advisory Action
merely recites boilerplate language in attempting to set forth the § 101
rejection." App. Br. 25. Appellants note the Examiner's analysis in the
Answer is partially directed to recitations found in amendments to claim 1
that were proposed (Amend. After Final 2 (July 31, 2015) ), but not entered
(Adv. Act. 1). Reply Br. 15. Appellants further argue the Examiner's
"approach of individually mapping the elements of claim 1 to alleged
abstract concepts is fundamentally flawed." Id. at 15-16. That "the
Mayo/Alice analysis requires accurately summarizing what the claim as a
whole is directed to and then considering whether the claim falls into one of
the categories" representing a judicial exception to statutory subject matter.
Id. at 16.
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Analysis
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2355 (2014). The Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
"from those that claim patent-eligible applications of those concepts." Id.
(citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66
(2012)). The evaluation follows a two-part analysis: (1) determine whether
the claim is directed to a patent-ineligible concept, e.g., an abstract idea; and
(2) if a patent-ineligible concept is present in the claim, determine whether
any element, or combination of elements, in the claim is sufficient to ensure
that the claim amounts to significantly more than the patent-ineligible
concept itself. See Alice, 134 S. Ct. at 2355.
It is important to "tread carefully" when wielding 35 U.S.C. § 101 as
an "invalidity tool, since 'all inventions ... embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas."' Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018)
(alteration in original) (quoting Alice, 134 S. Ct. at 2354). For example, the
presence of an abstract concept within a claimed invention does not, by
itself, render a claim abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326 (Fed. Cir. 2017) (citing Diamond v. Diehr, 450 U.S. 175,
192 ( 1981)) ("In confirming patentability, the Supreme Court focused not on
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Application 13/281,943
the presence of a mathematical formula but on the subject matter of the
claims as a whole"), cert. denied, 138 S. Ct. 672 (2018). Similarly, even
though adding one abstract idea to another abstract idea does not render a
claim non-abstract (see RecogniCorp, 855 F.3d at 1327), patent claims must
be "considered as a whole" in ascertaining whether they are invalid as being
directed to non-statutory subject matter (Alice, 134 S. Ct. at 2355 n.3
(quoting Diehr, 450 U.S. at 188)).
Here, the Examiner's analysis under 35 U.S.C. § 101 falls short. In
neither the Advisory Action nor the Answer does the Examiner properly
identify what abstract concept claim 1, as a whole, purportedly
encompasses.
We agree with Appellants that the Examiner's Advisory Action§ 101
analysis can be characterized as "boilerplate." See App. Br. 25. The
Examiner summarizes § 101 law, as understood in light of Alice, without
analyzing the claimed invention itself. Adv. Act. 2; see also Ans. 4.
We also agree with Appellants that the Examiner erred by
"individually mapping the elements of claim 1 to alleged abstract concepts."
Reply Br. 15-16. The Examiner divides claim 1 into seven parts, then maps
each part to one or two abstract ideas. Ans. 5. However, the Examiner does
not identify what abstract idea the claim as a whole represents. Id.
Even when a claim represents a combination of multiple abstract
ideas, the proper analysis under Alice requires an analysis of what patent-
ineligible concept the claim as a whole encompasses. Cf RecogniCorp, 855
F.3d at 1326-27 (a claim that combined mathematics with encoding and
decoding was still directed, as a whole, to the abstract idea of encoding and
decoding image data).
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For these reasons, the Examiner's analysis under 35 U.S.C. § 101 fails
to show that claim 1 is directed to a patent-ineligible concept such as an
abstract idea. Therefore, we agree with Appellants that the Examiner fails to
show that claim 1 is directed to patent-ineligible subject matter.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claim 1, and claims 2-8, 10-13, and 20-24, which are similarly
rejected.
35 U.S.C. § 103(a)
Findings and Contentions
In rejecting claim 1 as obvious, the Examiner concludes that
Wroblewski's on-demand view, with a double-shadow used to indicate
hidden objects or nested sub-groups, combined with Gossweiler's arrays or
grids with folds, renders obvious the claimed invention, including: (1)
providing a program guide that includes a matrix of cells arranged along a
time axis and (2) providing a condensed program guide that includes a
condensed matrix of a subset of the cells and a plurality of interstitial
symbols arranged along a loose time axis. See Final Act. 7 ( citing
Wroblewski Fig. 14; Gossweiler Fig. lB); see also Wroblewski ,r,r 91-92;
Gossweiler ,r 48; Ans. 15-22. Specifically, the Examiner relies on
Gossweiler' s use of graphics as an alternative to the display of a hidden time
period (Ans. 17 (citing Gossweiler ,r 40); Final Act. 2-3) and Wroblewski's
double-shadows (Ans. 15-16 (reproducing Wrobelewski Fig. 14 with
annotations emphasizing the Examiner's reliance on the double-shadows);
Final Act. 5-6). The Examiner concludes it would have been obvious to an
artisan of ordinary skill to combine these teachings in the claimed manner
"for the purpose of a program guide." Final Act. 7 (emphasis omitted); see
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also Reply Br. 15 ("the examiner cannot be denied the use of common
sense").
Appellants contend the Examiner erred by failing to clearly articulate
"the reasons why it would have been obvious for one of ordinary skill in the
art to have modified [an] on-demand view such as that illustrated in FIG. 14
of Wroblewski to include a time axis or a loose time axis allegedly disclosed
by Gossweiler." App. Br. 9. In particular, Appellants contend:
It is clear from FIG. 14 of Wroblewski that the representative
items of Wroblewski are arranged in groups according to genre
for the purpose of facilitating a user exploring media content
according to genre in an on-demand context. Modifying the
features illustrated in the embodiment shown in FIG. 14 of
Wroblewski to somehow be arranged along a time axis or a loose
time axis would frustrate the purpose of FIG. 14 of Wroblewski
at least because the groupings according to genre would
necessarily be disrupted. In addition, by disrupting the groupings
according to genre, such a modification would change the
principle of operation of the embodiment shown in FIG. 14 of
Wroblewski by changing FIG. 14 from an on-demand interface
to some other interface that includes a time axis, which would
necessarily render the embodiment of FIG. 14 inoperable for its
intended purpose.
Reply Br. 8-9; see also App. Br. 19-20.
Analysis
As Appellants correctly note, Wroblewski's Figure 14 illustrates an
on-demand view that uses representative items grouped according to genre.
App. Br. 9, 19; see also Wroblewski Fig. 14, ,r 91 ("A single forward scroll
click will move the target object from the first group 1102 (Genre A) to the
next group 1110 (Genre B)"). "Selecting one of the groups will zoom into
that group." Wroblewski ,r 92. Zooming in opens a view with additional
representative items grouped according to sub-genres of the selected group
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or genre. Id. Fig. 15 (illustrating a zoomed-in view with groups representing
Genre A: 1, Genre A:2, etc.). Gossweiler, in contrast, illustrates a television
programming grid having a channel axis and a time axis. See Gossweiler
Fig. lB, if 45.
We agree with Appellants that the Examiner's findings and
explanation do not show that it would have been obvious to an artisan of
ordinary skill to combine the cited teachings and suggestions of Wroblewski
and Gossweiler in the claimed manner. The Examiner concludes that the
claimed would have been obvious "for the purpose of a program guide"
(Final Act. 7) or as a matter of common sense (Reply Br. 15). However, the
Examiner fails to address, persuasively, Appellants' reasonable contention
that it would not have been obvious to modify Wrobleweski's on-demand,
genre-centric view by arranging a matrix of cells along a time axis or a
condensed matrix of a subset of the cells along a loose time axis. See, e.g.,
App. Br. 9.
The Examiner proffers that Appellants' lengthy submission of art
purportedly related to Wroblewski and Gossweiler evinces that it would
have been obvious to an artisan of ordinary skill to combine their teachings
and suggestions "because applicant feels strongly that the arts are of the
same field and are relevant." Final Act. 3 (emphasis omitted); see also Ans.
19. Evidence that the cited art teachings are directed to familiar elements
and known methods can show that a combination is likely to have been
obvious when the combination "does no more than yield predictable results."
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). However, the
Examiner's findings merely show that certain features of Wroblewski and
Gossweiler would have been familiar to an artisan of ordinary skill. The
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Examiner's findings and explanation fail to show that any known methods
for combining the cited Wroblewski and Gossweiler would, with
predictably, have resulted in the claimed invention. See, e.g., Final Act. 7.
For these reasons, we agree with Appellants the Examiner does not
show that it would have been obvious to an artisan of ordinary skill to
combine the cited teachings and suggestions in the manner recited in
claim 1. Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1, and claims 2-8, 10-13, and20-25, which the Examiner
similarly rejects based on the combined teachings and suggestions of
Wroblewski and Gossweiler. See, e.g., Final Act. 11.
DECISION
We affirm the Examiner's decision rejecting claims 1-8, 10-13, and
20-23 on the ground of obviousness-type double-patenting.
We reverse the Examiner's decision rejecting claims 1-8, 10-13, and
20-24 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-8, 10-13, and
20-25 under 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1-8, 10-13,
and 20-23 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
We reverse the Examiner's decision rejecting claims 24 and 25.
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.
§ 41.50(±).
AFFIRMED-IN-PART
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