Ex Parte Warner

Patent Trial and Appeal Board

Feb 2, 2017

14092166 (P.T.A.B. Feb. 2, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/092,166 11/27/2013 JASON MICHAEL WARNER 201304928.01 9488
36738 7590 02/06/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
750 B STREET TENG, LOUIS C
SUITE 3120
SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
02/06/2017 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):
Noelle@rogitz.com
eofficeaction @ appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON MICHAEL WARNER
Appeal 2016-001672
Application 14/092,1661
Technology Center 2400
Before JUSTIN BUSCH, CARL L. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—14. Claims 15—20 are withdrawn from
consideration. We have jurisdiction over the pending rejected claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Sony Corporation as the real party in interest. (App.
Br. 2.)
Appeal 2016-001672
Application 14/092,166
THE INVENTION
Appellant’s disclosed and claimed invention is directed to controlling
user access to media content based on user profiles, device information, and
content information. (Abstract.)
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. An apparatus, comprising:
at least one computer memory that is not a transitory signal
and that comprises instructions executable by at least one
processor for:
accessing plural user profiles associated with an
establishment, the user profiles being electronically stored in a
single computer and each user profile being associated with a
respective user affiliated with the establishment;
accessing device information stored in the computer
pertaining to plural devices in the establishment;
accessing content information stored in the computer and
pertaining to plural media content;
receiving, at a communication input, a user request for first
content, the request containing a request from a first user for first
content;
based at least in part on the content information and a first
user profile associated with the user request satisfying, or not, a
test, determining whether the first user associated with the first
user profile is authorized to access the first content;
responsive to a determination that the first user is not
authorized to access the first content, denying the request for first
content and causing a user interface (UI) to be presented
indicating at least one alternate content the first user is authorized
to access; and
responsive to a determination that the first user is
authorized to access the first content, determining, based at least
in part on the user profile and/or device information, a first
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Application 14/092,166
device different from the apparatus and that the first user is
authorized to use and that can present the first content, and
returning, through a communication channel, a control signal
containing information indicating that the first user can use the
first device to play the first content.
REJECTIONS
The Examiner rejected claims 1—14 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. (Final Act. 9—12.)
The Examiner rejected claims 1, 2, 4—6, 8, 9, and 11—13 under
35 U.S.C. § 102(a)(1) as being anticipated by Capuozzo, et al. (US
2010/0161818 Al, pub. June 24, 2010). (Final Act. 13-17.)
The Examiner rejected claims 3,7, 10, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Capuozzo. (Final Act. 18—19.)
ISSUES ON APPEAL
Appellant’s arguments in the Briefs present the following issues:2
Issue One: Whether the Examiner erred in rejecting claims 1—14 as
directed to non-statutory subject matter. (App. Br. 5—8.)
Issue Two: Whether the Examiner erred in finding Capuozzo
discloses the seventh and eighth limitations of independent claim 1:
[seventh element] responsive to a determination that the
first user is not authorized to access the first content, denying the
request for first content and causing a user interface (UI) to be
2 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed Aug. 17, 2015); the Reply
Brief (filed Nov. 18, 2015); the Final Office Action (mailed Aug. 5, 2015);
and the Examiner’s Answer (mailed Nov. 17, 2015) for the respective
details.
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Application 14/092,166
presented indicating at least one alternate content the first user is
authorized to access; and
[eighth dement] responsive to a determination that the
first user is authorized to access the first content, determining,
based at least in part on the user profile and/or device
information, a first device different from the apparatus and that
the first user is authorized to use and that can present the first
content, and returning, through a communication channel, a
control signal containing information indicating that the first user
can use the first device to play the first content.
(App. Br. 8-10.)
Issue Three: Whether the Examiner erred in finding Capuozzo
discloses the additional limitations of dependent claims 4 and 11. (App. Br.
11.)
Issue Four: Whether the Examiner erred in finding Capuozzo
discloses the independent claim 8 limitation:
responsive to determining that the first user is not
authorized to access the first content using the first device, and/or
responsive to determining that the first device cannot present the
first content, presenting a user interface (UI) indicating at least
one alternate device that the user is authorized to access to
present the first content.
(App. Br. 11-12.)
Issue Five: Whether the Examiner erred in finding Capuozzo teaches
or suggests the additional limitations of dependent claims 3 and 10. (App.
Br. 12.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred. We disagree with Appellant’s arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
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Application 14/092,166
the Examiner in the Final Office Action from which this appeal is taken
(Final Act. 9-19) and (2) the corresponding findings and reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief (Ans. 4—10). We concur with the applicable conclusions reached by
the Examiner, and emphasize the following.
Issue One
The Examiner rejected the claims as directed to non-statutory subject
matter, applying the 2014 Interim Guidance on Patent Subject Matter
Eligibility (79 Fed. Reg., No. 241, Dec. 2014). (Final Act. 10, 12.) The
Supreme Court has “set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd.
v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo Collaborative
Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1296—1297 (2012)).
According to the framework, the inquiry must first determine whether the
claims at issue are directed to one of those concepts (i.e., laws of nature,
natural phenomena, and abstract ideas). Id. If so, the second step of the
framework is to “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(Citing Mayo, 132 S. Ct. at 1298, 1297). The second step of the framework
also is characterized as “a search for an ‘inventive concept’” — an element
or combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. (citing Mayo, 132 S.
Ct. at 1294).
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The Examiner concludes the claims “describe the abstract idea of
indicating that a user may access content based on user and device
information.” (Final Act. 9, 11.) The Examiner further concludes, “[t]he
limitations that narrow the idea, such as receiving a user request, retrieving
the various information from a computer, determining whether the user is
authorized before approving/denying the request, and presenting a UI with
the result do not make the concept less abstract.” (Final Act. 9.) Although
the claims include computer components — “processor,” “computer
memory,” “communication input,” and “user interface” — which implement
the abstract subject matter of the claims, the Examiner concludes the
computer implementation is “conceptually no different from a list of steps
written down with pencil and paper for execution by a human being.” (Final
Act. 12.)
In regard to the second step of the Section 101 analysis, the Examiner
concludes:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the limitations are merely instructions to
implement the abstract idea on a computer and require no more
than a generic computer to perform generic computer functions
that are well-understood, routine and conventional activities
previously known to the industry (e.g. accessing data, receiving
requests, returning control signals). The request-response and
determination mechanisms are generic computing operations
that do not enhance the functionality of the computer. Further,
the claims do not recite an improvement to another technology
or technical field, an improvement to the functioning of the
computer itself, or meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment.
(Final Act. 10.)
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Appellant argues the Examiner errs because the Examiner used
different articulations of the abstract idea of the claims in an earlier
rejection. (App. Br. 5.) We are not persuaded the differences in wording are
significant or otherwise provide grounds for finding error. Appellant further
argues the claims do not relate to contractual relations or other subject
matter held ineligible under Section 101, and therefore, the Examiner has
“embark[ed] on an illegitimate, because non-sanctioned, expansion of the
realm of patent-ineligibility.” (App. Br. 6.) The Federal Circuit has
explained that, in determining whether claims are patent-eligible under §
101, “the decisional mechanism courts now apply is to examine earlier cases
in which a similar or parallel descriptive nature can be seen—what prior
cases were about, and which way they were decided.” Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016).3 Accordingly, the Examiner’s analysis is well within the bounds set
out by applicable authorities. E.g., Ultramercial, Inc. v. Hulu, LLC, 111
F.3d 709 (Fed. Cir. 2014) (distribution of copyrighted media); Digitech
Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014) (digital image processing); Planet Bingo, LLC v. VKGS LLC, 576
Fed.Appx. 1005 (Fed. Cir. 2014) (computerized game).
Appellant also argues the claims are “tied to a machine,” are
“necessarily rooted in computer technology,” and do not “preempt the
allegedly abstract ideas.” (App. Br. 6—7.) In addition, Appellant argues,
3 The Federal Circuit also noted in that decision that “examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts.”
Amdocs, 841 F.3d at 1294 n.2 (citation omitted).
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with respect to the second step of the analysis, that the claims recite
“specific and meaningful responses and determinations.” (App. Br. 7.)
We agree with the Examiner that the claimed subject matter is
directed to a patent ineligible concept, which the Examiner characterizes as
“indicating that a user may access content based on user and device
information.” (Final Act. 9.) The Examiner correctly observes:
[T]he steps recited in the claims ... state that the request is a user
request for first content without specifying how the request is
received and the contents of the request, the determination is
based at least in part on a first user profile associated with the
request and the content information without specifically stating
the comparisons or steps involved in making the determination,
and the response is made by returning a control signal indicating
that the user can use the first device to play the first content
without specifically stating the contents of the “control signal,”
how it is transmitted, how it is used, etc.
(Ans. 6.) The claimed subject matter represents abstract operations that can
be performed either mentally or with “pencil and paper.” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011)
(internal citation and quotation omitted). Moreover, Appellant’s argument
that the claims do not preempt “existing or future DRM [(digital rights
management)] schemes that do not cascade determinations of authorization”
(App. Br. 6), is also not persuasive. “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). We are not persuaded the Examiner
errs in concluding the concept of cascading determinations of authorization
— i.e., determining user authorization and device authorization — is itself
an abstract idea.
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Regarding the second step of the framework, we agree with the
Examiner that the recitation of the use, for example, of processors and
memory in the claims fails to transform the abstract idea into a patent-
eligible invention. As the Supreme Court explains, regarding the second
step of the framework, “the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 134 S. Ct. at 2358. Stated in other words, “if a . . . recitation of a
computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on
... a computer,’ . . . that addition cannot impart patent eligibility.” Id.
(citing Mayo, 132 S.Ct at 1301). We agree with the Examiner, “[t]he claims
do not include meaningful limitations beyond generally linking the abstract
idea to a DRM environment and do not include any specific limitations other
than what is well-understood, routine, and conventional in the field.” (Ans.
5.)
Issue Two
With respect to the eighth element of claim 1, Appellant argues
Capuozzo does not disclose “determining a first device that the first user is
authorized to use and that can present the first content.” (App. Br. 9.) To
the contrary, Capuozzo specifically provides:
At reference 310, a determination is made that the user is
authorized to access the content rendering device or the content
storing device of the second home network 310. For example, if
Jane is requesting to watch one of the movies on Bob’s home
network 102a, the system 100 may access Bob’s policy
information 116a and 116b to check that Jane is authorized to use
Bob’s rendering device (e.g., his movie player) or any other of
Bob’s devices (e.g., a movie storage device) needed by Jane to
view the movie.
(Capuozzo 175 (emphasis omitted), see also Tflf 55, 67, 76, claim 17.)
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With respect to the seventh element of claim 1, Appellant argues
Capuozzo does not disclose presenting alternate content in response to a
determination that the user is not authorized to access the requested content.
(App. Br. 10.) The Examiner relies on the disclosure in Capuozzo of the
ability of the user to submit a browsing request — e.g., a query for media
content based on specific titles — in response to which the user is presented
with a list of content “to which she has access.” (Final Act. 14; Capuozzo
50, 67, 82, 89—91, 97.) The Examiner cites to a disclosed example
involving two users, Jane and Bob:
[W]hen Jane makes the content browsing request to view all
content she has access to, the home network server must use the
policy information set by Bob to deny access to content that Bob
did not authorize for Jane in order to return the list requested by
Jane. The resulting list presented to Jane in a UI fits the claim
language of presenting content the first user is authorized to
access when the first user is not authorized to access a content
that was requested by the first user.
(Ans. 8.) We agree with the Examiner, under a broad but reasonable
interpretation of the claim limitation, this example discloses presenting
alternate content in response to a determination that the user is not
authorized to access requested content. (Id.)
Issue Three
Claim 4 additionally requires “the request for first content is from a
second device, and the instructions are executable to establish the control
signal by presenting a message on the second device to use the first device to
play the content,” and claim 11 recites a similar limitation. (App. Br. 15,
17.) The Examiner relies on the disclosure in Capuozzo of a user interface
displaying a list of available devices in response to a request. (Final Act. 17;
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Capuozzo 92—93.) Appellant argues Capuozzo does not disclose
presenting a message. (App. Br. 11.) However, the cited passage
specifically refers to “receipt of the available Tenderers list.” (Capuozzo
193.) The absence of the occurrence of the word “message” is irrelevant.
In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (“this is not an ‘ipsissimis
verbis’ test”) (internal citation omitted).
Issue Four
With respect to the element at issue in claim 8, Appellant argues
Capuozzo “say[s] nothing about a UI, much less the one explicitly recited in
Claim 8.” App. Br. 11. The Examiner relies on the disclosure discussed
above, wherein the user can submit a browsing request, and in response the
user is presented with — in addition to a list of accessible content — also an
“available Tenderers list.” (Final Act. 14; Capuozzo Tflf 90—93.) We find no
error in the Examiner’s analysis based on this disclosure, and again relying
on the example of the users, Jane and Bob:
The reasoning is similar to that described in response to [the
seventh element of claim 1] regarding the list of content
accessible to Jane. Capuozzo’s authorization of access to a
respective home network includes access to particular content
and access to particular devices, as mentioned above (par. [0075]
and [0076] provide examples of the system checking that Jane is
authorized to use Bob’s rendering device (e.g., his movie player)
or content storing device). The resulting list presented to Jane in
a UI fits the claim language of presenting at least one alternate
device the user is authorized to access to present the first content
when the first user is not authorized to access a first content that
was requested by the first user and/or when a first device cannot
present the first content (claim 8, last 4 lines).
(Ans. 9.)
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Issue Five
Appellant argues the Examiner resorts to improper hindsight analysis
in the obviousness rejection of claims 3 and 10. (App. Br. 12.) This
argument is unpersuasive as conclusory. We agree with the Examiner:
[I]t would have been obvious to one of ordinary skill in the art at
the time the invention was filed to present a success message on
the first device to indicate that the device can play the content.
Displaying such messages to indicate success or failure of a
request is well-known in the art to provide the advantage of
informing the user of the outcome of a user request.
(Ans. 10.) Appellant does not point to any evidence of record that the
claimed subject matter would be “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-19
(2007)). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We are persuaded the
claimed subject matter exemplifies the principle that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
CONCFUSION
For the reasons stated above, we sustain the Section 101 rejection of
the pending claims. Also for the reasons stated above, we sustain the
anticipation rejection of claims 1, 4, 8, and 11, and the obviousness rejection
of claims 3 and 10.
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We also sustain the anticipation rejection of claims 2, 5, 6, 9, 12, and
13, and the obviousness rejection of claims 7 and 14, which rejections are
not argued separately with particularity.
DECISION
We affirm the Examiner’s rejections of claims 1—14.
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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