George Arriola et al.

Patent Trials and Appeals Board

Oct 2, 2019

13659767 - (D) (P.T.A.B. Oct. 2, 2019)

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.
13/659,767 10/24/2012 George Arriola SCEA16100US03 5716
102383 7590 10/02/2019
Trellis IP Law Group/ Sony Corp.
1900 Embarcadero Road, Suite 109
Palo Alto, CA 94303
EXAMINER
TRAPANESE, WILLIAM C
ART UNIT PAPER NUMBER
2171
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
docket@trellislaw.com
effei@trellislaw.com
megan@trellislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE ARRIOLA, CARSTEN SCHWESIG,
BRIAN JOHNSON, and MICHAEL BAUERLY

Appeal 2018-008552
Application 13/659,767
Technology Center 2100
____________

Before MICHAEL J. STRAUSS, GREGG I. ANDERSON, and
MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which are all the pending claims.
See Final Act. 1; Appeal. Br. 10–24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to refer to the “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as SONY
CORPORATION and SONY NETWORK ENTERTAINMENT
INTERNATIONAL LLC. Appeal Br. 3.
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Introduction
Appellant states the “invention is related in general to software and
more specifically relates to user interfaces and accompanying methods for
facilitating user access to and interaction with electronic books.” Spec. ¶ 2.
Claim 1 is illustrative of the claims on appeal:
1. A method for accessing books, the method
comprising the following acts performed by an electronic
computing device:
displaying a band of plural adjacent tiles on a display
screen operably connected to the electronic computing device,
wherein each tile represents one or more books;
accepting a signal from a user input device to scroll the
band on the display screen in a direction; and
spatially arranging adjacent tiles as viewed on the display
screen based on a sorting rule, wherein the sorting rule includes
arranging each tile in the band in accordance with recency of
use, wherein recency of use is determined by the combination
of a time of downloading and a time of use of a book associated
with each tile in the band.
Appeal Br. 21 (Claims App’x).
Rejections and References
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as directed
to a judicial exception (i.e., an abstract idea) without reciting significantly
more. Final Act. 2.
The Examiner rejected claims 1, 3, 4, 6, 8, and 18–20 under 35 U.S.C.
§ 103 as unpatentable over Enomoto (US 2006/0288308 A1; pub. Dec. 21,
2006), Tremblay (US 2012/0324383 A1; pub. Dec. 20, 2012), Arora (US
2003/0018972 A1; pub. Jan. 23, 2003), Hutson (US 2008/0046599 A1; pub.
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Feb. 21, 2008), and Apparao (US 2005/0028104 A1; pub. Feb. 3, 2005).
Final Act. 3–7.
The Examiner rejected claim 5 under § 103 as unpatentable over
Enomoto, Tremblay, Arora, Hutson, Apparao, and Kilroy (US
2012/0151351 A1; pub. June 14, 2012). Final Act. 7–8.
The Examiner rejected claims 2, 7, 9, and 15–17 under § 103 as
unpatentable over Enomoto, Tremblay, Arora, Hutson, Apparao, and Tse
(US 2013/0021281 A1; pub. Jan. 24, 2013). Final Act. 8–12.
The Examiner rejected claim 10 under § 103 as unpatentable over
Enomoto, Tremblay, Arora, Hutson, Apparao, and Haynes (US 2011/
0145744 A1; pub. June 16, 2011). Final Act. 12–13.
The Examiner rejected claim 11 under § 103 as unpatentable over
Enomoto, Tremblay, Arora, Hutson, Apparao, Haynes, and Saito (US 2004/
0140975 A1; pub. July 22, 2004). Final Act. 13–14.
The Examiner rejected claim 12 under § 103 as unpatentable over
Enomoto, Tremblay, Arora, Hutson, Apparao, Haynes, Saito, and Tse (US
2013/0021281 A1; pub. Jan. 24, 2013). Final Act. 14–15.
The Examiner rejected claim 13 under § 103 as unpatentable over
Enomoto, Tremblay, Arora, Hutson, Apparao, and Mathes (US 7,908,284
B1; iss. Mar. 15, 2011). Final Act. 15–16.
The Examiner rejected claim 14 under § 103 as unpatentable over
Enomoto, Tremblay, Arora, Hutson, Apparao, Mathes, and Yazdani (US
2011/0153330 A1; pub. June 23, 2011). Final Act. 16–17.
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The § 101 Rejection
For the § 101 rejection, Appellant contends the Examiner erred based
on claim 1, which therefore is representative of all claims for this rejection.2
Appeal Br. 10–11; 37 C.F.R. § 41.37(c)(1)(iv).
General § 101 Law and the USPTO 2019 Guidance
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 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, 71–73 (2012)). In accordance with that framework,
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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).

2 There are two other independent claims (49 and 55), both of which include
limitations analogous to the limitations of claim 29 that provide the basis for
our decision for the § 101 rejection. See App. Br. 47–50 (Claims App’x).
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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 concepts (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). In
Diamond v. Diehr, the claim at issue recited a judicial exception in the
category of mathematical concepts, but the Supreme Court held that “[a]
claim drawn to subject matter otherwise statutory does not become
nonstatutory simply because it uses a mathematical formula.” 450 U.S. 175,
176 (1981).
If the claim is “directed to” an abstract idea, we turn 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 (internal citation 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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requiring generic computer implementation fails to transform that
abstract idea into a patent-eligible invention.” Id. at 212.
In early 2019, the USPTO recently published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“Revised Guidance”). Under
the Revised 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
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of organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (MPEP) § 2106.05(a)–(c), (e)–(h)).3
See 84 Fed. Reg. at 52, 54–55. 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
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner’s Determinations and Appellant’s Contentions
The Examiner determines claim 1 is directed to the abstract idea of
“sorting a list of tiles that represent books.” Final Act. 2 (further determining
claim 1 does “not include additional elements that are sufficient to amount to
significantly more than the judicial exception”). Appellant contends the
Examiner erred because “claim 1 recites limitations that define a specific
book-accessing method in terms of a sequence of steps.” Appeal Br. 10.
Appellant contends the idea of claim 1 “is not an abstract idea, but a specific
technological method that results in one particular sequential arrangement of
representations of books on a screen.” Id. The Examiner responds, finding
the relevant limitations of steps of claim 1 boil down to (1) “displaying data
in an organized manner,” with “[t]he data being books organized in tiles on a

3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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screen”; (2) “merely receiving input in order to manipulate the data
displayed;” and (3) “logic used for organizing the data”. Ans. 4.
Our Analysis
Alice/Mayo Step One, 2019 Guidance Step 2A Prong One
In discerning ideas recited by claims according to the Alice/Mayo
framework, it is improper to express such ideas in a way “untethered from
the language of the claims.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1337 (Fed. Cir. 2016). Here, as its preamble explains, claim 1 recites “[a]
method for accessing books, the method comprising the following acts
performed by an electronic computing device.” In other words, the preamble
indicates the claim is directed a method for accessing electronic books.
Artisans of ordinary skill would recognize electronic books as technological
field. See Spec. 2–4 (in discussing the background of the invention, focusing
on technology issues for electronic book software).
Keeping in mind the caveat from Enfish, we first summarize the steps
recited in the body of claim 1 as follows. The “displaying” step focuses on
displaying “a band of . . . adjacent tiles . . . wherein each tile represents one
or more books.” The “accepting” step focuses on “scroll[ing] the band on the
display.” The “spatially arranging” step focuses on “a sorting rule” that uses
“recency of use” and “time of use of a book associated with each tile in the
band.”
We determine4 that the foregoing recited limitations, collectively,
describe (recite) an idea for arranging displayed tiles in an electronically

4 “Whether a claim is drawn to patent-eligible subject matter is an issue of
law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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scrollable band of tiles, based on tile attributes. See, e.g., Spec ¶¶ 26–27.
This idea, which focuses on the idea of displaying “an electronically
scrollable band of tiles,” is neither a mathematical concept, a method of
organizing human activity, nor a mental process, as those categories are
explained in the Revised Guidance. See 84 Fed. Reg. at 52; see id. nn. 12–
15. In other words, we determine claim 1 does not recite a patent-ineligible
abstract idea under and according to prong one of step 2A of the Revised
Guidance.
Accordingly, we do not sustain the Examiner’s § 101 rejection of
claims 1–20.
The § 103 Rejections
Appellant argues Examiner error in the § 103 rejection of the
independent claims 1, 19, and 20 as a group, from which we select claim 1
as representative. App. Br. 12–17; 37 C.F.R. § 41.37(c)(1)(iv). Appellant
presents no separate arguments for the § 103 rejections of claims 2–9 and
13–18, which accordingly stand or fall with claim 1. App. Br. 17; 37 C.F.R.
§ 41.37(c)(1)(iv). Appellants separately argue the patentability of dependent
claim 10. App. Br. 18–19 (presenting no separate arguments for claims 11
and 12, which depend from (and stand or fall with) claim 10).
Claim 1 (and Claims 2–9 and 13–20)
In rejecting claim 1, the Examiner relies on Arora, in view of
Enomoto, for teaching “spatially arranging adjacent tiles as viewed on the
display screen based on a sorting rule, wherein the sorting rule includes
arranging each tile in the band in accordance with . . . a time of use of a book
associated with each tile in the band” as recited. See Final Act. 4 (citing
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Arora ¶ 39), 7 (explaining claims 19 and 20 are “rejected under similar
rationale”). Appellant contends that, regardless whether Arora “teaches that
tiles may be selected for display based on attributes,” Arora does so only for
“attributes that do not include time of use” and “[n]either spatial
arrangement on a display nor time of use as a sorting criterion are
involved.” Appeal Br. 12–13. Appellant contends in particular that Arora’s
teaching of generating a “most watched” channel by determining the total
viewing times of viewing of the channels does not teach the “time of use”
aspect of the first disputed limitation. Appeal Br. 14.
Appellant does not persuade us of reversible error by the Examiner.
The cited references must be considered for entirety of what they teach and
suggest to one skilled in the art. See, e.g., In re Hedges 783 F.2d 1038, 1039
(Fed. Cir. 1986) (citing In re Wesslau, 353 F.2d 238, 241 (CCPA 1965)).
Further, each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, Tremblay, which the Examiner cites in the rejection of claim 1,
discloses “sorting data items based on . . . most recent” and presenting
sortable displays of information sorted “based on a variety of sort criteria
such as for example most used, most recent, author, creation date, type,
alphabetic name, etc.” Tremblay ¶¶ 8, 9 (identifying such sorting as basic
computerized functionality in the background and summary of the
invention). Artisans of ordinary skill would have understood Tremblay’s
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sorting of items based on “most recent” items teaches (or at least suggests)
sorting based on the most recent time of use of the items.
Appellant also does not persuade us of reversible error in the
Examiner’s finding that the cited art teaches or suggests spatial arrangement
of tiles, as recited. See Appeal Br. 12–15 (contending there is no teaching
that Arora’s grid of images for “channel displays” “are ever spatially
arranged on the display screen based on any of user-selected attributes”). As
the Examiner finds, and Appellant does not contest, Enomoto teaches the
display of “a band of plural adjacent tiles on a display screen . . ., wherein
each tile represents one or more books.” Final Act. 3 (citing Enomoto ¶ 39).
The Examiner relies on Arora, in view of Enomoto, for teaching “spatially
arranging adjacent tiles as viewed on the display screen based on a sorting
rule,” as recited. Final Act. 4 (citing Arora ¶ 39). It is the combined
teachings of Enomoto and Arora that the Examiner determines renders
obvious the spatial arrangement of tiles based on a sorting rule, as recited.
One cannot show nonobviousness by attacking references individually when
the rejection is based on a combination of references. Keller, 642 F.2d at
425. Further, Appellant’s contention that Arora fails to teach arrangement
“based on any of user-selected attributes” (Appeal Br. 15) is unpersuasive
because it is not commensurate with the scope of the claim.
Appellant also contends the Examiner errs in the “interpretation of
Hutson as teaching that the sorting rule that governs the spatial arrangement
of tiles viewed on a display screen may include arranging each item based
on the time of downloading.” App. Br. 14. This is unpersuasive because the
Examiner does not rely on Hutson for teaching spatial arrangement of tiles.
See Final Act. 5 (explaining the rejection relies on Hutson for its teaching of
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“arranging items based on a sorting rule, wherein the sorting rule includes
arranging each item in accordance with a time of downloading of an item”
(citing Hutson ¶ 33).
Appellant further contends the Examiner erred because of
the sorting rule requirement that the displayed tiles be spatially
arranged based on recency of use of the corresponding book.
Apparao, cited by the Examiner in this regard, at most teaches
that a navigation history listing the URL’s of user-accessed
websites, and the recency of that access, may be created and
stored. Neither spatial arrangement on a display nor recency
of use of corresponding content as a sorting criterion are
involve[d].”
Appeal Br. 13; see also id. at 15 (specifically contending Apparao does not
teach “a sorting rule based on recency of use, wherein recency of use is
determined by the combination of a time of downloading and a time of use
of a book associated with each tile in the band). This contention also is
unpersuasive. As discussed above, the rejection relies on Enomoto and
Arora for teaching “spatial arrangement” of tiles. The rejection also relies on
Arora, not Apparao alone, for the “time of use” requirement. See Final Act.
4 (finding “Arora teaches arranging items based on a sorting rule, wherein
the sorting rule includes arranging each item in accordance with a time of
use”). Vis-à-vis Apparao, the rejection relies upon it only for teaching “that
the items are sorted on a recency of use.” Final Act. 5 (citing Apparao
¶¶ 43–52) (explaining “Apparao teaches items can be ranked based on a
number of factors of an item, including time of use, recency, type of use,
etc.). We discern no error in this finding. See, e.g., Apparao ¶ 48 (explaining
that ranking (or sorting) of items “tak[es] into account the recency,
frequency, average duration of visits”).
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Appellant furthermore contends that “the Examiner’s suggested
motivations to apply the teachings of Arora and Apparao to those of
Enomoto as modified by Tremblay and Hutson is flawed.” Appeal Br. 15;
see also id. at 16. We again are unpersuaded of Examiner error.
In making a proposed combination of teachings, the Examiner must
articulate “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007) (“The obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
. . .”). Here, the Examiner satisfies the In re Kahn standard, as exemplified
by the following determinations:
It would have been obvious to one of ordinary skill in the art,
having the teachings of Enomoto and Tremblay before him at
the time the invention was made, to modify the menu system of
Enomoto to include the sorting by metadata of Tremblay in
order to obtain a menu system that sorts items based on meta-
data. One would have been motivated to make such a combina-
tion because it reduces the time it takes a user to find an item.
. . .
It would have been obvious to one of ordinary skill in the art,
having the teachings of Enomoto, Tremblay, and Arora before
him at the time the invention was made, to modify the menu
system of Enomoto to include the sorting by view time of Arora
in order to obtain a menu system that sorts items based on
viewing. One would have been motivated to make such a
combination because it reduces the time it takes a user to find
an item as a frequently viewed item is more likely to be
desirable to the user.
Final Act. 4; see also id. at 5–6 (making similar determinations related to
Hutson and Apparao).
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Accordingly, we sustain the § 103 rejection of claim 1 and, along with
it the § 103 rejections of claims 2–9 and 13–20. In doing so, as consistent
with the foregoing, we adopt as our own the Examiner’s findings and
reasoning in the rejection of claim 1.
Claim 10 (and Claims 11 and 12)
Claim 10, which depends indirectly from claim 1, recites “in response
to the selection of a tile of the band, displaying an enlarged representation of
the selected tile when a book associated with the selected tile has not yet
been accessed.” App. Br. 22 (Claims App’x). The Examiner finds that
Haynes, in view of the combined teachings of Enomoto, Tremblay, Arora,
Hutson, and Apparao, teaches this disputed limitation by its “teach[ing of]
displaying unread message in an enlarged format.” Final Act. 12 (citing
Haynes ¶ 32 (explaining “Haynes teaches displaying unread message in an
enlarged format)). Appellant contends Haynes is deficient because Haynes’s
teaching of enlarging font size does not constitute “displaying an enlarged
representation of the selected tile,” as recited, and “there is no teaching or
suggestion of any change in font size happening in response to a selection
of the corresponding message box” in Haynes. App. Br. 18.
Appellant’s argument is unpersuasive. As the Examiner responds, and
we agree, Haynes teaches claim 10’s recited requirements for “in response to
selection” and “displaying an enlarged representation.” Ans. 8–9 (citing
Haynes Fig. 2, ¶¶ 25, 32). In particular, we discern no reversible error
because Appellant does not persuasively explain how or why the Examiner
errs in mapping (a) “[s]electing the taskbar element to view the available
messages,” as taught by Haynes, to claim 10’s recited “in response to the
selection” requirement, and (b) Haynes’ teaching of “[e]nlarging the font of
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a message” to claim 10’s recited “display an enlarged representation”
requirement for a not yet accessed item. Id. In view the combined teachings
of Enomoto and Arora related to displaying a band of tiles and spatially
arranging tiles according to a sorting rule, as discussed above, Appellant
does not persuade us the Examiner erred in determining the additional
teachings of Haynes, in combination with the other cited art, renders claim
10 obvious. KSR, 550 U.S. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”) (see also id. at 418–20).
Accordingly, we sustain the § 103 rejections of claims 10–12. In
doing so, as consistent with the foregoing, we adopt as our own the
Examiner’s findings and reasoning in the rejection of claim 10.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–20 § 101 1–20
1, 3, 4, 6, 8,
and 18–20
§ 103
Enomoto, Tremblay, Arora,
Hutson, and Apparao
1, 3, 4, 6, 8,
and 18–20

5 § 103
Enomoto, Tremblay, Arora,
Hutson, Apparao, and Kilroy
5
2, 7, 9, and
15–17
§ 103
Enomoto, Tremblay, Arora,
Hutson, Apparao, and Tse
2, 7, 9, and
15–17

10 § 103
Enomoto, Tremblay, Arora,
Hutson, Apparao, and Haynes
10
11 § 103 11
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Claims
Rejected
Basis Affirmed Reversed
Enomoto, Tremblay, Arora,
Hutson, Apparao, Haynes, and
Saito
12 § 103
Enomoto, Tremblay, Arora,
Hutson, Apparao, Haynes,
Saito, and Tse
12
13 § 103
Enomoto, Tremblay, Arora,
Hutson, Apparao, and Mathes
13
14 § 103
Enomoto, Tremblay, Arora,
Hutson, Apparao, Mathes, and
Yazdani
14
Overall
Outcome
1–20

AFFIRMED