Harman International Industries, Incorporated

Patent Trials and Appeals Board

May 8, 2020

14620653 - (D) (P.T.A.B. May. 8, 2020)

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.
14/620,653 02/12/2015 Levi PEARSON HARM 0354 PUS 8386
109676 7590 05/08/2020
Brooks Kushman P.C./Harman
1000 Town Center
Twenty Second Floor
Southfield, MI 48075
EXAMINER
DEWAN, KAMAL K
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEVI PEARSON
____________

Appeal 2019-002205
Application 14/620,653
Technology Center 2100
____________

Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.

THOMAS, 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. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Harman
International Industries, Incorporated. Appeal Br. 1.
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The present invention relates generally to media content playback.
See Spec. ¶ 1.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A media apparatus for mapping a plurality of media files
across multiple media sources, comprising:
a database of previously stored content information including a
plurality of previously stored content entries, each content entry
including a previously stored filename and previously stored
metadata;
a controller programmed to:
receive first content information representative of at least
one first media file from at least one first media source, the first
content information including a first media filename for the at
least one first media file;
determine if the first media filename matches the
previously stored filename;
derive first metadata from the first content information;
and determine if the first metadata matches any of the
previously stored metadata in response to determining that the
first media filename failed to match the previously stored
filename to associate the first media file with one of the
previously stored content entries.

Appellant appeals the following rejections:
R1. Claims 1–20 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
14–15.
R2. Claims 1–3, 8–10, and 15–17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Priyadarshi (US 2009/0307258 A1, Dec.
10, 2009) and Gorman (US 2016/0070888 A1, Mar. 10, 2016). Final Act.
16–26.
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R3. Claims 4, 11, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Priyadarshi, Gorman, and Knight (US
2013/0060841 A1, Mar. 7, 2013). Final Act. 27–28.
R4. Claims 5–7, 12–14, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Priyadarshi, Gorman, and Wessling (US
2011/0113037 A1, May 12, 2011). Final Act. 28–32.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court 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, 75–77 (2012)). In accordance with the 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
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, 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 formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods 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 MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent apparatus claims 1 and 8, and similarly,
non-transitory computer-readable medium claim 15, the Examiner
determines that the claims are directed to “obtaining and comparing
intangible data” (Final Act. 14), which we conclude are mental processes,
which is a type of abstract idea.
Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC 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”); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Claim 1 recites at least the following limitations: (1) “receive first
content information . . . including a first media filename,” (2) “determine if
the first filename matches the previously stored filename,” (3) “derive first
metadata from the first content information,” (4) “determine if the first
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metadata matches any previously stored metadata.” These limitations, under
their broadest reasonable interpretation, recite mental processes because the
limitations all recite steps that people can perform using their minds and/or
by using pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d at 1372–73 (determining that a claim whose “steps can be
performed in the human mind, or by a human using a pen and paper” is
directed to an unpatentable mental process). This is true even if the claim
recites that a generic computer component performs the acts. See, e.g.,
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015) (“Courts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.”); see also Revised
Guidance 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”).
These limitations, under their broadest reasonable interpretation,
encompass acts people can perform using their minds or pen and paper
because people can perform the “receive” step by simply looking at the
recited content information, i.e., looking at “a list of files located locally
within the user device 105.” See Spec. ¶ 34. People can also perform the
“determine” steps by looking at the first media filename/metadata and
observing whether they match previously looked at filename/metadata, i.e.,
find an “exact or near exact match.” See Spec. ¶¶ 38, 42. Finally, people
can “derive” metadata by merely using pen and paper to describe the first
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content information, i.e., “this metadata may include the artist, song,
performance name, etc.” See Spec. ¶ 42.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites an abstract idea, which we conclude are
“mental processes.”
Step 2A—Prong 2 (integration into Practical Application)2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “media files,” “media sources,” “database,” and “controller”) do not:
(1) improve the functioning of a computer or other technology; (2) are not

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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applied with any particular machine (except for a generic computer); (3) do
not effect a transformation of a particular article to a different state; and
(4) are not applied in any meaningful way beyond generally linking the use
of the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
In the Appeal Brief, Appellant fails to provide any arguments directly
related to integrating the judicial exception into a practical application.
Specifically, Appellant does not direct our attention to anything in the
Specification that indicate that the invention provides an improvement in the
controller’s technical functionality. Moreover, nothing in the claims,
understood in light of the Specification, requires anything other than off-the-
shelf and conventional media files, media sources, databases, and
controllers. See Spec. ¶¶ 21–23. Therefore, the claims are directed not to
any technological improvement, but to the results of applying an abstract
idea.
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
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Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.

See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant contends “the Examiner has not proven that such claimed
concepts are well known in the industry” (Appeal Br. 4), because “[t]o the
contrary, the cite[d] references fail to teach or suggest the claim recitations.”
Id.
However, we find no element or combination of elements recited in
Appellant’s claim 1 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. For instance, Appellant has not adequately explained how claim
1 is performed such that it is not a routine and conventional function of a
generic computer, as noted by the Examiner. See Final Act. 15.
Furthermore, a finding of novelty or non-obviousness does not require
the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is a search for “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.”’ Alice,
573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery
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does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Also, the Examiner determines, and we agree, that “the mere
derivation of metadata is considered using generic computer data function[s]
using generic processor 130 to obtain metadata from [a] media file[,]
[because] [t]he limitation is described generically.” Ans. 5. For example,
Appellant’s Specification generically discloses that “[t]he processor 130
may be a hardware based electrical device such as a computing device that is
capable of executing instructions to perform the operation noted herein. . . .
The processor 130 may include a controller (not shown) and may contain the
database 120.” See Spec. ¶ 22.
Thus, the Examiner provided a rational basis for the conclusion that
generic components are carrying out the claimed invention. Such an
analysis is a factual determination. See Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018) (“Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination.”). Specifically, the Examiner’s noting the generic
nature of the component parts recited in the claims provides sufficient
evidence of a generic computer system used to implement the abstraction.
See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1057 (Fed.
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Cir. 2017) (“Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.”); Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017) (explaining that “[o]ur law demands more” than claim language that
“provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it”).
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 1–20 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice, its progeny, and the Revised Guidance.

Rejection under § 103(a)
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellant’s
arguments. We concur with Appellant’s conclusion that the Examiner erred
in finding that the combination of the references, particularly Priyadarshi,
teaches or suggests determining if the first metadata matches any of the
previously stored metadata in response to determining that the first media
filename failed to match the previously stored filename, as set forth in the
claims. See claim 1.
As identified by Appellant:
Priyadarshi is silent as to any matching of metadata within the
context of claim 1. Claim 1 also requires that such
determination is made “in response to determining that the first
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media filename failed to match the previously stored filename
to associate the first media file with one of the previously stored
content entries.” Priyadarshi fails to mention, and the
Examiner does not allege that it does, any failure to match
filenames. Thus, Priyadarshi cannot match metadata in
response to filenames failing to match.
Appeal Br. 5.
Priyadarshi merely discloses:
The GUID for example is used to locate metadata objects that
would be found in another media file. . . . In one embodiment,
if the GUID referenced in the metadata track is in the media
file, the playback device or engine would search through its
local content library for the referenced to media file. If the
referenced media file is not found, the playback device can
request the file from a media server.
Priyadarshi ¶ 73. In other words, at best Priyadarshi discloses that a
metadata object is found in multiple media files, and if a particular media
file is not found, a request is made for the file from a media server.
However, we agree with Appellant that the cited portions of Priyadarshi
does not match metadata in response to filenames failing to match, as
required by the claims. See Appeal Br. 5.
Thus, we disagree with the Examiner’s finding that Priyadarshi
teaches the aforementioned argued limitations, as recited in each of the
independent claims. The Examiner also has not found any of the other
references of record teach this feature. Because we agree with at least one of
the arguments advanced by Appellant, we need not reach the merits of
Appellant’s other arguments. Accordingly, we will not sustain the
Examiner’s obviousness rejection of claims 1–20.

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CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claims 1–20 as being unpatentable under 35 U.S.C. § 103.
However, the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–3, 8–10,
15–17
103 Priyadarshi,
Gorman
1–3, 8–10,
15–17
4, 11, 18 103 Priyadarshi,
Gorman, Knight
4, 11, 18
5–7, 12–14, 19,
20
103 Priyadarshi,
Gorman, Wessling
5–7, 12–
14, 19, 20
Overall
Outcome
1–20

Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED