Ex Parte Svendsen

Patent Trial and Appeal Board

Apr 3, 2015

11757079 (P.T.A.B. Apr. 3, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HUGH SVENDSEN
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Appeal 2012-010845
Application 11/757,079
Technology Center 2400
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Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
GARTH D. BAER, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-010845
Application 11/757,079

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–36. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 13, and 25 under appeal read as follows
(formatting added):
1. A method of propagating a media item recommendation
comprising the steps of:
[(A)] receiving from a recommender via a network a first media
item recommendation message, wherein the first media item
recommendation message comprises a media item identifier of a
media item and presence information of the recommender;
[(B)] sending the first media item recommendation message to
a first recipient via the network;
[(C)] receiving via the network a second media item
recommendation message from the first recipient, wherein the second
media item recommendation message comprises the media item
identifier and the presence information of the recommender adapted
by the first recipient; and
[(D)] sending the second media item recommendation message
to a second recipient via the network.

13. A system for propagating a media item recommendation,
comprising:
[(A)] a control system, wherein the control system is adapted
to:
[(i)] receive from a recommender, via a network, a first
media item recommendation message comprising a media item
identifier of a media item and presence information of the
recommender;
[(ii)] send the first media item recommendation message
to a first recipient via the network;
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[(iii)] receive, via the network, a second media item
recommendation message from the first recipient, wherein the
second media item recommendation message comprises the
media item identifier and the presence information of the
recommender adapted by the first recipient; and
[(iv)] send the second media item recommendation
message to a second recipient via the network.

25. A computer-readable medium embodied in a non-transitory
article of manufacture, comprising instructions for instructing a
computer to:
[(A)] receive from a recommender a first media item
recommendation message comprising a media item identifier of a
media item and presence information of the recommender;
[(B)] send the first media item recommendation message to a
first recipient;
[(C)] receive a second media item recommendation message
from the first recipient, wherein the second media item
recommendation message comprises the media item identifier and the
presence information of the recommender adapted by the first
recipient; and
[(D)] send the second media item recommendation message to a
second recipient.

Rejections
1. The Examiner rejected claims 1–36 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Partovi (US 2008/0052371 A1),
Farouki (US 2006/0259355 A1), and Howard (US 2008/0176562 Al).
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1
Separate patentability is argued for claim 3. Claims 2, 4–14, 16–26, and
28–36 are grouped with claim 1; Claims 15 and 27 are grouped with claim 3.
Except for our ultimate decision, claims 2 and 4–36 are not discussed further
herein.
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Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because none of the cited references, either alone
or in combination, disclose or suggest a second recommendation message
having information that was in a first recommendation message. Br. 7–12.
2. Appellant also contends that the Examiner erred in rejecting claim 3
under 35 U.S.C. § 103(a) because none of the cited references, either alone
or in combination, disclose or suggest that a first recipient of a first
recommendation message modifies presence information claim. Br. 12–13.

Issue on Appeal
Did the Examiner err in rejecting claims 1 and 3 as being obvious?

ANALYSIS
We agree with the Appellant’s above-recited contentions.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1–36 under 35 U.S.C. § 101, as being directed to ineligible subject matter.
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We address claims 1–36 under 35 U.S.C. § 101 to highlight that, under
Alice, where claims distinguish over conventional prior art based solely on
information content (in this case, the information content of the received
first and second message) with conventional prior art limitations appended
thereto, the appended conventional prior art limitations may not be enough
to supply an inventive concept. This interrelationship of information content
and 35 U.S.C. § 101 was previously noted by our reviewing court in
discussing the printed matter doctrine. See In re Miller, 418 F.2d 1392,
1396 (CCPA 1969) (“[Examiner’s] characterization of printed matter as
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Legal Principles
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“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.”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be eligible for patent protection. Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In
Mayo, the Court stated that “to transform an unpatentable law of nature into
a patent-eligible application of such a law, one must do more than simply
state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct.
at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a

‘unpatentable’ is beside the point; no attempt is here being made to patent
printed matter as such. The fact that printed matter by itself is not patentable
subject matter, because [it is] non-statutory, is no reason for ignoring it when
the claim is directed to a combination.”).
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patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
1298, 1297). In other words, the second step is to “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. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). “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. at 2357
(brackets in original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition
against patenting an abstract idea “cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593,
610–11 (2010) (citation and internal quotation marks omitted). The Court in
Alice noted that “‘[s]imply appending conventional steps, specified at a high
level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive
concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300,
1297, 1294).
Analysis
We apply the framework as set forth by the Court in Mayo and
reaffirmed by the Court in Alice for determining whether claims 1–36 are
directed to patent-eligible subject matter.
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Step one: Are the claims at issue directed to a patent-ineligible
concept?
We conclude that they are: Claims 1–36 are directed to the abstract
idea of a first and second “message” each having content “information” (i.e.,
data) comprising “a media item identifier of a media item and presence
information.” “Data in its ethereal, non-physical form is simply information
that does not fall under any of the categories of eligible subject matter under
section 101.” Digitech Image Techs., LLC v. Elec. for Imaging, Inc., 758
F.3d 1344, 1350 (Fed. Cir. 2014). Our conclusion, that claims 1–36 are
directed to a patent-ineligible concept, is reinforced by Appellant’s argument
directed to the Examiner’s rejection of claim 1 under 35 U.S.C. § 103.
Appellant’s arguments are focused solely on the information content of the
messages contained in claim 1. “None of the cited references, either alone
or in combination, disclose or suggest a second recommendation message
having information that was in a first recommendation message.” Br. 8. As
we noted above, according to Alice, the question to be settled next is whether
claim 1 recites an element, or combination of elements, that is enough to
ensure that the claim is directed to significantly more than an abstract idea.
Step two: Is there something else in the claims that ensures that they
are directed to significantly more than a patent-ineligible concept?
We conclude that claims 1–36, which merely require generic
“network,” “control system,” and “computer-readable medium”
implementation, fail to transform that abstract idea into a patent-eligible
invention.
Taking the claim elements separately, these generic computer network
elements are purely conventional. These claimed generic elements are well-
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understood, routine, conventional elements previously known to the
industry. In short, the claims do no more than require generic computer
network elements to perform generic computer network functions.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the elements
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of sending and receiving particular data as performed by a
generic computer network. The claims do not, for example, purport to
improve the storage operation of the computer network itself, e.g., an
inventive data structure is used. Nor do they effect an improvement in any
other technology or technical field, e.g., a computer program for performing
inventive functions is stored on the generic computer storage media.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of sending and receiving particular
abstract data using some unspecified, generic computer network elements.
That is not enough to transform an abstract idea into a patent-eligible
invention.
None of the hardware recited by the claims offers a meaningful
limitation beyond generally linking the use of the data to a particular
technological environment, that is, implementation via computer networks.
Simply appending a conventional computer network, control system, or
computer-readable medium, specified in general terms, is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2357–60. These recitations are similar to the recitation of a
conventional “computer” discussed in Alice.

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37 C.F.R. § 41.50(b)
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 grounds 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. . . .

CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 1–36 as being unpatentable under 35 U.S.C. § 103(a).
(2) We reject claims 1–36 as being directed to ineligible subject
matter under 35 U.S.C. § 101.
(3) Claims 1–36 are not patentable.

DECISION
The Examiner’s rejection of claims 1–36 is reversed.
New grounds of rejection are entered for claims 1–36.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)
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