Joseph E. Scott

Patent Trials and Appeals Board

Nov 20, 2019

14198200 - (D) (P.T.A.B. Nov. 20, 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.
14/198,200 03/05/2014 Joseph E. Scott 20131311 6202
25537 7590 11/20/2019
VERIZON
PATENT MANAGEMENT GROUP
1320 NORTH HOUSE ROAD
9TH FLOOR
ARLINGTON, VA 22201-2909
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
11/20/2019 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH E. SCOTT
___________

Appeal 2018-002842
Application 14/198,200
Technology Center 3600
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR., and
ERIC B. CHEN, Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6–9, 11, 12, 14–16, 21–25, and
27–29. Claims 2, 5, 10, 13, 17–20, and 26 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to sharing of content (e.g. video) by a user
device that is participating in an ad hoc network via a short range local
wireless connections. (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A method, comprising:
[i] joining, by a user device and via direct wireless connections
with other user devices, an ad hoc network including the other user
devices, the joining including:
[a] communicating through a radio access network
(RAN) of a cellular wireless network, obtaining device
discovery information, via the communication through the
RAN of the cellular wireless network, the device discovery
information including location information of the other user
devices, and
[b] initiating the direct wireless connections, to form the
ad hoc network, based on the obtained location information;

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Verizon
Communications, Inc. (Appeal Br. 2.)
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[c] receiving, by the user device, a content stream from
the cellular wireless network;
[ii] transmitting, by the user device and via the ad hoc network,
an indication of the content stream, received from the cellular
wireless network, to the other user devices in the ad hoc network;
[iii] receiving, by the user device and from one or more of the
other user devices in the ad hoc network, a request for the content
stream;
[iv] forwarding, by the user device and via the ad hoc network,
the content stream to the one or more of the other user devices in the
ad hoc network, to provide the content stream to the one or more other
user devices without using the cellular wireless network to transmit
the content stream to the one or more other user devices; and
[v] presenting, by the user device, the content stream.

REFERENCES
Name Reference Date
Collet et al. US 2010/0161752 Al June 24, 2010
Hall et al. US 2013/0157692 Al June 20, 2013
Knapp US 2013/0232435 A1 Sept. 5, 2013
Kumar et al. US 8,576,846 B2 Nov. 5, 2013
Shaw et al. US 2013/0322268 A1 Dec. 5, 2013

REJECTIONS
Claims 1, 3, 4, 6–9, 11, 12, 14–16, 21–25, and 27–29 stand rejected
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Claims 1, 3, 4, 7, 9, 12, 14, 21–23, and 27–29 stand rejected under
35 U.S.C. § 103 as unpatentable over Collet and Hall.
Claims 8 and 15 stand rejected under 35 U.S.C. § 103 as unpatentable
over Collet, Hall, and Shaw.
Claims 11, 24, and 25 stand rejected under 35 U.S.C. § 103 as
unpatentable over Collet, Hall, and Kumar.
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Claims 6 and 16 stand rejected under 35 U.S.C. § 103 as unpatentable
over Collet, Hall, and Knapp.

OPINION
We are persuaded by Appellant’s arguments (Appeal Br. 23) that the
Examiner has not satisfied the proper burden for making a prima facie case
for patent ineligibility under 35 U.S.C. § 101.
The Examiner determined the following:
Claim 1, similarly as determined in Cyberfone’s inventive
concept is directed toward data transmission and therefore
abstract. Here the subject matter of claim 1, as reasonably
broadly construed, falls into a familiar class of claims “directed
to” a patent ineligible concept directed toward data transmission
and presentation which is concept well-established.
(Final Act. 18.) Likewise, the Examiner determined that claim 1 is “similar
to the abstract concept to the process of comparing data that can be
performed mentally, (see Smartgene).” (Id. at 2.) We agree that the
Examiner has not satisfied the proper burden for a prima facie case.
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 that framework,
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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.”).
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, 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.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook); see also, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
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 (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 requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
Under that 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 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) (9th ed.
2019)).
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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 84 Fed. Reg. 56.
Although the Examiner generally states that select limitations from
independent claim 1 are analogous to “comparing data that can be performed
mentally” with a citation to SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App’x 950, 955 (Fed. Cir. 2014) and “data transmission and
presentation” with a citation to Cyberfone Systems, LLC v. CNN Interactive
Group, Inc., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014), these statements
does not demonstrate that the identified limitations fall within the subject
matter groupings of abstract ideas of mathematical concepts, certain
methods of organizing human activity, or mental processes. See 84 Fed.
Reg. at 56. In particular, the Examiner has not explained how the limitations
“[i][a] obtaining device discovery information . . . the device discovery
information including location information of the other user devices” and
“[i][b] initiating the direct wireless connections, to form the ad hoc network,
based on the obtained location information” are merely mental processes.
Accordingly, we are persuaded by Appellant’s arguments that:
It appears that the Examiner is overly abstracting the specific
features of claim 1 to make the erroneous conclusion that
claim 1 is directed to abstract subject matter. Claim 1 does not
abstractly cover all techniques for presenting content at a user
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device. Rather claim 1 recites a specific technique in which a
user device can receive and forward content using both a
cellular network and an ad hoc network formed via direct
wireless connections with other user devices. These recitations
are clearly not abstract.
(Appeal Br. 23.)
Thus, we do not sustain the rejection of independent claim 1 under
35 U.S.C. § 101. Claims 3, 4, 6–8, 21, 27, and 28 depend from independent
claim 1. We do not sustain the rejection of claims 3, 4, 6–8, 21, 27, and 28
under 35 U.S.C. § 101 for the same reasons discussed with respect to
independent claim 1.
Independent claims 9 and 23 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 9 and 23, as well as dependent claims 11, 12, 14–16, 22,
24, 25, and 29, for the same reasons discussed with respect to claim 1.

§ 103 Rejection—Collet and Hall
We are persuaded by Appellant’s arguments (Appeal Br. 12; see also
Reply Br. 4) that the combination of Collet and Hall would not have
rendered obvious independent claim 1, which includes the limitations
“joining, by a user device and via direct wireless connections with other user
device,” “receiving, by the user device, a content stream from the cellular
wireless network,” and “transmitting, by the user device and via the ad hoc
network, an indication of the content stream, received from the cellular
wireless network, to the other user devices in the ad hoc network.”
The Examiner found that Figure 1 of Collet, which illustrates peer-to-
peer clients (e.g., nodes 111, 112, 113), servers 100 or 101, connected via
Internet network 120 or alternatively, a mobile telephony network,
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correspond to the limitations “joining, by a user device and via direct
wireless connections with other user device,” “receiving, by the user device,
a content stream from the cellular wireless network,” and “transmitting, by
the user device and via the ad hoc network, an indication of the content
stream, received from the cellular wireless network, to the other user devices
in the ad hoc network.” (Final Act. 48–49; see also Ans. 12–14.) We do not
agree with the Examiner’s findings.
Collet relates to “administrating a peer-to-peer file sharing network.”
(¶ 3.) Figure 1 of Collet, reproduced below, illustrates an exemplary P2P
system, which includes n peer-to-peer clients (e.g., nodes 111, 112, 113),
servers 100 or 101, and Internet network 120. (¶ 29.)

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Collet explains that “[a]ll communications occur via the Internet network
120 in this example (any other network can be used, including mobile
telephony network).” (Id.)
Although the Examiner cited to the n peer-to-peer clients of Collet
and the alternative mobile telephony network of Collet (id.), the Examiner
has provided insufficient evidence to support a finding that Collet teaches
the limitations “joining, by a user device and via direct wireless connections
with other user device,” “receiving, by the user device, a content stream
from the cellular wireless network,” and “transmitting, by the user device
and via the ad hoc network, an indication of the content stream, received
from the cellular wireless network, to the other user devices in the ad hoc
network.” In particular, while Figure 1 of Collet illustrates nodes 111, 112,
and 113 (e.g., “P2P Client #1”), the Examiner has not identified which node
is the claimed “user device,” much less the limitation “joining, by a user
device and via direct wireless connections with other user device.”
Moreover, the Examiner had not explained how the mobile telephony
network of Collet, which can be substituted for Internet network 120, would
functionally cooperate with nodes illustrates nodes 111, 112, and 113, to
teach the limitations “receiving, by the user device, a content stream from
the cellular wireless network,” and “transmitting, by the user device and via
the ad hoc network, an indication of the content stream, received from the
cellular wireless network, to the other user devices in the ad hoc network.”
Thus, on this record, the Examiner has not shown that Collet teaches the
limitations “joining, by a user device and via direct wireless connections
with other user device,” “receiving, by the user device, a content stream
from the cellular wireless network,” and “transmitting, by the user device
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and via the ad hoc network, an indication of the content stream, received
from the cellular wireless network, to the other user devices in the ad hoc
network.” In addition, Hall does not cure the above noted deficiencies of
Collet.
Thus, we are persuaded by Appellant’s arguments, as follows:
Collet does not mention an ad hoc network, and Collet does not
use a cellular wireless network to receive content, by a user
device, and then forward the content via an ad hoc network (or
any other network). More particularly, Collet does not describe
or suggest, as is recited in claim 1, joining, by a user device and
via direct wireless connections with other user devices, an ad
hoc network. Collet also does not describe or suggest using the
ad hoc network to forward content received over a cellular
wireless network.
(Appeal Br. 12 (emphasis omitted).)
Claim 1 recites two distinct networks: a cellular wireless
network (over which the content stream is received by the user
device); and the ad hoc network (which the user device uses to
forward the content stream to other user devices). Collet, in
contrast, describes using a P2P network to distribute content.
(Reply Br. 4.)
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 103. Claims 3, 4, 7, 21, 27, and 28 depend from
independent claim 1. We do not sustain the rejection of claims 3, 4, 7, 21,
27, and 28 under 35 U.S.C. § 103 for the same reasons discussed with
respect to independent claim 1.
Independent claims 9 and 23 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of claims 9 and 23, as well as dependent claims 11, 12, 14–16, 22,
24, 25, and 29 for the same reasons discussed with respect to claim 1.
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§ 103 Rejection— Collet, Hall, and Shaw
Claims 8 and 15 depend from independent claims 1 and 9. Shaw was
cited by the Examiner for teaching the additional features of claims 8 and
15. (Final Act. 61–62, 71–72.) However, the Examiner’s application of
Shaw does not cure the above noted deficiencies of Collet and Hall.

§ 103 Rejection—Collet, Hall, and Kumar
Claims 11, 24, and 25 depend from independent claims 9 and 23.
Kumar was cited by the Examiner for teaching the additional features of
claims 8 and 15. (Final Act. 70–71, 82–84.) However, the Examiner’s
application of Kumar does not cure the above noted deficiencies of Collet
and Hall.

§ 103 Rejection—Collet, Hall, and Knapp
Claims 6 and 16 depend from independent claims 1 and 9. Knapp was
cited by the Examiner for teaching the additional features of claims 6 and
16. (Final Act. 59–60, 72–73.) However, the Examiner’s application of
Knapp does not cure the above noted deficiencies of Collet and Hall.

CONCLUSION
The Examiner’s decision rejecting claims 1, 3, 4, 6–9, 11, 12, 14–16,
21–25, and 27–29 under 35 U.S.C. § 101 is reversed.
The Examiner’s decision rejecting claims 1, 3, 4, 6–9, 11, 12, 14–16,
21–25, and 27–29 under 35 U.S.C. § 103 is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 3, 4, 6–9, 11,
12, 14–16, 21–
25, 27–29
§ 101 1, 3, 4, 6–9, 11,
12, 14–16, 21–
25, 27–29
1, 3, 4, 6–9, 11,
12, 14–16, 21–
25, 27–29
§ 103 1, 3, 4, 6–9, 11,
12, 14–16, 21–
25, 27–29
Overall
Outcome
1, 3, 4, 6–9, 11,
12, 14–16, 21–
25, 27–29

REVERSED