MOSQUERA, LUIS D.

Patent Trials and Appeals Board

May 14, 2020

13271131 - (D) (P.T.A.B. May. 14, 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.
13/271,131 10/11/2011 LUIS D. MOSQUERA 86244-2300 1892
105024 7590 05/14/2020
The Law Office of Michael J. Scheer
5531 Murietta Avenue
Sherman Oaks, CA 91401
EXAMINER
MARTINEZ-HERNAND, EDGAR R
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/14/2020 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):
ipatent78@gmail.com
mscheer@michaeljscheer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUIS D. MOSQUERA
Appeal 2019-001260
Application 13/271,131
Technology Center 3600
Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–8, 11–18, and 21. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed October 11, 2011 (“Spec.”); Final
Office Action, mailed July 10, 2017 (“Final Act.”); Appeal Brief, filed
January 10, 2018 (“Appeal Br.”); Examiner’s Answer, mailed September 19,
2018 (“Ans.”); and Reply Brief, filed November 19, 2018 (“Reply Br.”).
2 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 Nook Digital, LLC.
Appeal Br. 2.
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2
Summary of the Disclosure
Appellant’s claimed subject matter relates to the acquisition,
downloading and opening of digital content. Spec., Title.
Illustrative claims
Claims 1 and 21, reproduced below with element labels added in
brackets and disputed limitations emphasized in italics, are illustrative of the
claimed subject matter:
1. A method for acquiring and accessing digital content on a
local electronic device comprising:
[(a)] receiving, on the local electronic device, an
indication from a user of the local device of an item of digital
content to be acquired;
[(b)] transmitting, from the local electronic device, the
indication of the item of digital content to a remote server;
[(c)] receiving, on the local electronic device, a download
of the item of digital content from the remote server;
[(d)] receiving, on the local electronic device, parameters
associated with the item of digital content, the parameters
containing a trigger indicating an application required to access
the downloaded item of digital content, wherein the parameters
are contained in metadata of the downloaded item of digital
content;
[(e)] reading, by software in the local electronic device,
the trigger contained in the metadata;
[(f)] the trigger causing the software in the local electronic
device to automatically launch the application on the local
electronic device, the trigger containing an identification of the
downloaded item of digital content; and
[(g)] automatically accessing the downloaded item of
digital content on the local electronic device using the launched
application and the identification contained in the trigger.

21. A device for acquiring and accessing digital content
on a local electronic device comprising:
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[(a)] a user interface subsystem operable on the local
electronic device to receive an indication from a user of the local
electronic device of an item of digital content to be acquired;
[(b)] an input output subsystem operable on the local
electronic device to transmit the indication of the item of digital
content to a remote server, receive a download of the item of
digital content from the remote server, and receive parameters
associated with the item of digital content, the parameters
containing a trigger indicating an application required to access
the downloaded item of digital content, the trigger containing an
identification of the downloaded item of digital content, the
parameters being contained in metadata of the downloaded item
of digital content; and
[(c)] an operating system operable on the local electronic
device to read the trigger and automatically launch the
application and automatically access the item of digital content
using the launched application and the identification contained
in the trigger.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Clark US 6,704,733 B2 Mar. 9, 2004
Kontio US 2007/0112676 A1 May 17, 2007
Heyworth US 2008/0313302 A1 Dec. 18, 2008
Hendricks US 8,429,028 B2 Apr. 23, 2013
REJECTIONS
Claim 21 stands rejected under 35 U.S.C. § 101 as directed to non–
statutory subject matter. Final Act. 2–3.
Claims 1–8, 11–18, and 21 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. Final Act. 4–7.
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Claims 1, 2, 4–8, 11–13, 15, 16, 18, and 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Clark, Kontio, and Heyworth.
Id. at 8–19.
Claims 3, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clark, Kontio, and Hendricks. Id. at 20–21.
STANDARD OF REVIEW
The Board undertakes a limited de novo review of 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).
OPINION
We agree with Appellant that the Examiner erred in rejecting claims
1–8, 11–18, and 21 under 35 U.S.C. § 101 as directed to a judicial exception
without significantly more. However, we are not persuaded the Examiner
erred in rejecting claim 21 under 35 U.S.C. § 101 as directed to software per
se or in rejecting claims 1–8, 11–18, and 21 under 35 U.S.C. § 103(a). In
connection with these latter rejections, we agree with and adopt the
Examiner’s findings and reasoning in the Final Office Action and the
Answer as our own and add any additional findings of fact appearing below
for emphasis.
35 U.S.C. § 101 Rejection – Software Per Se
The Examiner rejects claim 21 under 35 U.S.C. § 101 because the
Examiner determines the claim encompasses software per se and, thus, is not
within one of the four classes of statutory subject matter. Final Act. 2–3;
Ans. 3–4. According to the Examiner, the claimed “device” recited in the
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preamble of claim 21 “does not assert the use of hardware that provides
structure and that contains the interpreted software or computer code.” Final
Act. 3. The Examiner explains, as follows:
The device is recited to be part of the local electronic device, with
performing subsystems. The interpretation of the “device” is a
program or application residing in the local device, with program
sub-components that could perform the respective functions. The
devices recited in paragraph [22] of the Specification are
describing possible devices of the local electronic device, all of
them capable of running the application as recited. However, the
recitations of devices as stated in the Specification can also be
interpreted as software under the broadest reasonable
interpretation. The claim and the Specification lack a positive
recitation of the hardware that is capable of performing the claim
method steps.
Ans. 3–4.
Appellant contends the rejection is improper because (1) claiming the
invention as a device must be interpreted as requiring hardware in view of
Appellant’s disclosure; (2) to receive user input, the user interface
necessarily requires hardware; and (3) the input output system must also
include hardware to enable it to transmit an indication of the item of digital
content to a remote server as claimed. Appeal Br. 7. In particular,
Appellant argues
Paragraph [22] (in the application as filed) explicitly describes a
device: “[l]ocal device 130 is an electronic device such as a
personal computer, an eBook reader, a smart phone or other
electronic device that the user 105 can use to access the digital
content control server 150.” Clearly, this paragraph describes
devices that are hardware based. Any interpretation of the claim
term “device” that excludes these hardware embodiments is
unreasonable.
Id. at 7.
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Section 101 defines patentable subject matter: “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101.
In issues involving claims under examination, we interpret
Appellant’s claims according to their broadest reasonable interpretation
consistent with the specification. In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007). “Generally . . . the preamble does not
limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1346 (Fed. Cir. 2002). Nonetheless, the preamble may be construed as
limiting “if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
A preamble is not regarded as limiting, however, “when the claim body
describes a structurally complete invention such that deletion of the
preamble phrase does not affect the structure or steps of the claimed
invention.” Catalina, 289 F.3d at 809. Furthermore, the preamble has no
separate limiting effect if, for example, “the preamble merely gives a
descriptive name to the set of limitations in the body of the claim that
completely set forth the invention.” IMS Tech., Inc. v. Haas Automation,
Inc., 206 F.3d 1422, 1434–35 (Fed. Cir. 2000). See also Am. Med. Sys., Inc.
v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010).
Appellant’s arguments are unpersuasive of reversible Examiner error.
Claim 21 labels the claimed invention a “device,” not the argued “local
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device” alleged to be disclosed as hardware. Appeal Br. 5. To the extent the
“local electronic device” recited in the preamble of claim 21 corresponds to
the hardware implemented local device 130, that local electronic device is
not claimed. Instead, the “local electronic device” is recited only in
describing an intended use of the claimed device defined by the body of the
claim, i.e., “[a] device for acquiring and accessing digital content on a local
electronic device, [the device] comprising . . . .” That is, although the device
of claim 21 operates on the argued local electronic device, it is distinct from
the local electronic device. Thus, Appellant’s reliance on paragraph 22 of
the Specification as describing a hardware local device 130, which, at most,
corresponds to the local electronic device of the preamble, is not evidence
that the claimed device is also hardware.
Furthermore, we interpret the recitation of a device in the preamble of
claim 21 as not limiting. At most, the argued device moniker “merely gives
a descriptive name to the set of limitations in the body of the claim that
completely set forth the invention.” IMS Tech., 206 F.3d at 1434–35.
Likewise, the recited device functionality set forth in the preamble is an
intended use of the device that is not limiting. “[W]here a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)
(citations omitted). Still further, even if we were to consider the term device
as limiting the scope of the claim, we conclude designating an apparatus as a
device does not exclude software implementations, and this interpretation of
“device” is not overly broad or unreasonable in light of Appellant’s
Specification.
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We are also unpersuaded by Appellant’s contention that certain
constituent elements recited by the body of claim 21 necessarily include
hardware. Appeal Br. 7. In particular, Appellant argues “[t]he ‘user
interface subsystem’ is explicitly recited as receiving ‘an indication from a
user of the local electronic device of an item of digital content to be
acquired.’ As one skilled in the art understands, this interface can only
receive the user’s input through a hardware device.” Id. Even if we were to
accept Appellant’s contention that some hardware device is necessary to
initially receive user input, such hardware need not be part of the device of
claim 21 (e.g., might be part of the local electronic device) such that an
output from the hardware device supplies the claimed indication from a user
to a user interface subsystem that is implemented in software. In particular,
the user interface subsystem does not exclude receiving the indication from a
user via a hardware device nor does it require detecting user input as, for
example, by detecting a touch input using a touch-sensitive display. See,
e.g., Spec. ¶ 4.
Likewise, we are unpersuaded the input output system necessarily
includes hardware to perform the argued function of transmitting an
indication of the item of digital content to a remote server. Appeal Br. 7. As
in the case of the argued user interface subsystem, claim 21 does not exclude
the use of any required hardware to complete the transmission nor does it
necessarily include such hardware. Furthermore, to the extent hardware is
required, such hardware may be part of the platform executing the software
of claim 21. That is, just because the claimed software functionality is only
rendered operable by hardware, e.g., executed by a computer, does not save
the claim from reciting software per se. Instead, under a broad but
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reasonable interpretation, transmission may include software generation of a
transmission message. Thus, in light of the arguments and evidence on the
record before us, we are unpersuaded either the user interface subsystem or
the input output subsystem must include hardware and cannot be
implemented in software alone.
Because we agree with the Examiner that the claim does not belong to
any of the four patentable categories of 35 U.S.C. § 101—that is, process,
machine, manufacture, or composition of matter—we sustain the Examiner’s
rejection under 35 U.S.C. § 101 as directed to non-statutory subject matter.
35 U.S.C. § 101 Rejection — Judicial Exception
I. Principles of Law
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, we first determine what concept the claim is “directed
to.” See id. 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)
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(“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, 67–68 (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))).
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. “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.
(alterations in original) (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.
In January 2019, the USPTO published revised guidance on the
application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
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Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (Oct. 17, 2019) (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notice).
Under the 2019 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 of
organizing human activities 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.
Rev. 08.2017, Jan. 2018)).
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
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.
See Guidance, 84 Fed. Reg. at 56.

II. Step 2A, Prong One (Judicial Exception)
The Examiner determines claims 1, 12, and 21 are “directed to the
concept of ‘downloading and accessing digital content.’” Final Act. 5.
According to the Examiner “[t]he concept as described defines a judicial
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exception, an abstract idea, similar to certain methods of organizing human
activity (similar concepts were found by the courts to be abstract, such as
[t]ailoring content based on information about the user.” Id. at 6 (citing
Intellectual Ventures v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015)).
Claim elements (a), (c), and (d) recite receiving information, i.e.,
selection of content to be acquired, the selected content, and parameters
associated with the content. Receiving information, as claimed, is
reasonably interpreted as including an observation which is considered to be
a concept performed in the human mind or with pen and paper. Our
Guidance recognizes mental processes including observations as constituting
abstract ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Furthermore, Appellant’s Specification discloses that prior click-to-
buy user interfaces require separate user actions to select, purchase,
download (obtain), and launch software to access content. Spec. ¶¶ 3–4. To
address this problem, the Specification discloses “[i]n a preferred
embodiment [of the invention], the purchase, downloading and opening of
digital content is ideally accomplished with a single gesture (button tap).”
Id. ¶ 4. Therefore, we determine that claim 1 recites a fundamental
economic practice because it broadly relates to sales activities of product
selection, delivery, and presentation. For example, claim 1 recites
“receiving . . . an indication from a user . . . of an item of digital content to
be acquired,” “receiving . . a download of the item of digital content,”
and “automatically accessing the downloaded item of digital
content.” The 2019 Revised Guidance recognizes certain methods of
organizing human activity, including fundamental economic principles or
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practices, as constituting abstract ideas. 2019 Revised Guidance, 84 Fed.
Reg. at 52.
For these reasons, we determine that claim 1 recites subject matter
reasonably characterized as mental processes and/or a fundamental
economic practice, both of which are identified in the 2019 Revised
Guidance as abstract ideas. See 2019 Revised Guidance, 84 Fed. Reg. 52.

III. Step 2A, Prong 2 (Integration into a Practical Application)
Under the Guidance, we next determine if additional elements in the
claims integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).3
Appellant contends:
[T]he invention as recited in the claims contain[s] additional
elements that amount to significantly more than the judicial
exception. Specifically, the act of ‘reading metadata’ is actually
recited in the claims as reading “the trigger contained in the
metadata.” The claims further require “the trigger causing the
software in the local electronic device to automatically launch
the application on the local electronic device” and “automatically
accessing the downloaded item of digital content on the local
electronic device using the launched application.”
Appeal Br. 8. According to Appellant:
The functionality of the elements explicitly recited in the claims
significantly improves the functionality of the local device.
Users no longer have to separately and manually find and launch
the application required to access the downloaded content,

3 We acknowledge that some of the considerations at Step 2A, Prong 2 may
be evaluated under Step 2 of Alice (Step 2B of the Guidance). For purposes
of maintaining consistent treatment within the Office, we evaluate them
under Step 1 of Alice (Step 2A of the Guidance). See Revised Guidance, 84
Fed. Reg. at 55 n.25, 27–32.
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navigate to the library where the downloaded content was stored,
and open the content. See Specification, ¶ 7.
Id. at 9.
The Examiner responds, contending the argued trigger operates to
automatically launch an application. Ans. 7. According to the Examiner
“[A]utomatically launching” is indicative of the computer
performing a function that is a ‘certain method of organizing
human activity’, where the manual activity is the user of the local
device tapping or clicking on the file and allowing the application
to view the file load and display the file, such as clicking a pdf
file and automatically launching the PDF Viewer. Thus the
additional elements recited by the Appellant also fall under the
concept of the abstract idea and do not provide anything more
significant than the abstract idea.
Id. Addressing Appellant’s argument that the recited functionalities
constitute a technological improvement, the Examiner contends the
functions instead are part of the underlying abstract idea. Id. According to
the Examiner:
Using software as a tool to automatically perform the abstract
idea of “downloading and accessing digital content” does not
provide significantly more than the abstract idea. MPEP
2106.05(f) and (h). As it is argued, if “Users no longer have to
separately and manually find and launch the application required
to access the downloaded content, navigate to the library where
the downloaded content was stored, and open the content”, then
the claimed invention is merely managing functions that can still
be performed manually by a user at a computer or with a portable
device. Therefore, the claims still recite an abstract idea without
significantly more, and they remain patent ineligible.
Id. at 8.
Appellant’s contentions are persuasive of reversible Examiner error.
The Examiner does not explain why downloading and accessing digital
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content is an abstract concept. Moreover, the Examiner improperly
determines the argued additional elements are part of the underlying abstract
concept because the recited actions automate manual activities. However,
although recognizing mental processes (i.e., activities that can be performed
in the human mind or with pen and paper) as constituting abstract ideas, the
2019 Revised Guidance does not broadly recognize activities that can be
performed manually as constituting abstract ideas. C.f. 2019 Revised
Guidance, 84 Fed. Reg. at 52. Likewise, the Examiner fails to explain why
the disputed actions constitute methods of organizing human activity as
alleged, i.e., a fundamental economic principle of practice; commercial or
legal interaction; or managing personal behavior or relationships or
interactions. Thus, we disagree that the argued additional elements are part
of any underlying abstract idea merely because the argued functionalities
automate actions that could be performed manually.
Contrary to the Examiner’s determination, the argued additional
elements, individually and in combination, address a technical problem
arising in the context of downloading and opening of digital content by
allowing both actions to be accomplished with a single user action rather
than requiring multiple user actions. See Spec. ¶ 4. As claimed, and
explained in the Specification, the solution to this problem is a technical one.
The Specification discloses:
[The digital content] download also includes appropriate flags,
metadata or other triggers, which are captured by the user’s local
device 130. These flags, metadata or other triggers cause the
user’s local device to automatically execute the steps necessary
to launch the appropriate reader application and automatically
open the recently downloaded item for reading by the user 105.
Id. at 41.
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Because the claims overcome a problem specifically arising in the
realm of computers, “the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” and, accordingly, the claims are not directed to an
abstract idea. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014). We, therefore, conclude these limitations integrate the
recited judicial exception into a practical application. Accordingly, under
the Guidance, the claims are eligible because they are not directed to the
recited judicial exception. Thus, we need not reach step 2B of the Alice
inquiry. We reverse the Examiner’s judicial exception rejection under §
101.
Rejections under § 103
The Examiner finds that Clark teaches or suggests the majority of
claim 1 except (i) reading the trigger contained in the metadata (element (e)),
(ii) use of the identification of the digital content in the trigger to
automatically download [sic., access]4 the item (element (g)), and (iii) the
application automatically launches based on the specific indication of an
application required to access the downloaded item (element (f)). Final Act.
11, 12. The Examiner explains “[a] ‘trigger’ has been interpreted under [a
broadest reasonable interpretation] as specific written instructions written in
the metadata, prepared by the remote server.” Final Act. 10. Accordingly,

4 Claim 1 recites automatically accessing the downloaded digital content on
the local electronic device using the launched application and the
identification contained in the trigger (claim element (g)) rather than
automatically downloading as characterized by the Examiner. C.f. Appeal
Br. 11 (referencing paragraph 20 of the Final Action). However, we
determine the Examiner’s mischaracterization constitutes harmless error.
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the Examiner finds Clark’s DRM system including content identification
information contained in metadata teaches or suggests the trigger of claim 1.
Id. at 9–10. Furthermore, in interpreting the claim language, the Examiner
takes the position that reading the trigger contained in metadata (element (e))
is a necessary action included in accomplishing the step of the trigger
causing an application to launch (element (f)). Id. at 11.
Addressing the identified deficiencies of Clark, the Examiner finds
Kontio’s recovery of a content key responsive to the media ID of encrypted
content matching a reference media ID teaches reading the instructions (i.e.,
trigger) in the metadata and using the digital content identifier to access the
downloaded digital content (claim elements (e) and (g)). Id. at 11–12 (citing
Kontio ¶ 57). According to the Examiner:
It would have been obvious to a person having ordinary skill in
the art at the time the invention was made to modify the teachings
of Clark to include “reading the metadata and using the identifier
in the metadata to access the digital content”, as taught by
Kontio, where the reading of metadata is inherent and where the
use of the content identifier would further secure the reader from
opening faulty or infected files.
Id. at 12.
Addressing the trigger automatically launching an application (claim
element (f)), the Examiner finds Heyworth’s launching of download
management application 212 in response to receiving a payload file teaches
or suggests the disputed limitation. Id. (citing Heyworth ¶ 27). According
to the Examiner:
It would have been obvious to a person having ordinary skill in
the art at the time the invention was made to include in the
teachings of Clark the “indication of the application required to
access a downloaded digital item”, as taught by Heyworth, to
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provide the user with a streamlined process from purchasing the
digital content to viewing the digital content.
Id.
Appellant contends the prior art fails to teach the claimed trigger.
Appeal Br. 10. In particular, Appellant contends (i) the Examiner’s
interpretation of the trigger is overly broad (id.), (ii) Clark’s DRM system
itself, not the claimed trigger, launches an application and loads content (id.
at 12), (iii) Kontio’s voucher file is separate from the content and is not used
as a trigger to launch an application or access content (id.), (iv) Heyworth’s
launching of a download management application is based on a file type, not
on a trigger contained in metadata as claimed (id. at 13), and (v) the
Examiner’s motivation for combining the teachings of the references is
improper (id.). We address Appellant’s contentions seriatim as follows.
Appellant argues the Examiner improperly ignores the recited trigger
functionality in interpreting a trigger to broadly mean instructions written in
metadata. Id. at 10. Thus, according to Appellant, the Examiner’s statement
that Clark teaches a trigger including the required functionality is erroneous.
Id. at 9 (citing paragraph 19f of the Final Action).
The Examiner responds, finding “the claims are not specific about
what constitutes a ‘trigger’ in the metadata, which allows for the broad
interpretation.” Ans. 9. Responding to Appellant’s argument that Clark’s
metadata does not perform the recited trigger functionality, the Examiner
explains Kontio and Heyworth are applied for teaching the specific trigger
functions claimed. Id. at 9–10.
This first argument (i) of Appellant is unpersuasive of reversible
Examiner error. The Examiner finds, under a broad but reasonable
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interpretation, that Clark teaches a trigger. The Examiner does not allege
Clark teaches all of the recited functions of the claimed trigger, only that
Clark teaches a trigger. Appellant fails to explain why Clark’s metadata
does not function as a trigger other than to point out specific functions
recited by claim 1 defining a specific type or configuration of trigger. That
is, the disputed trigger functionalities are not shown to be necessary of all
triggers absent which something (e.g., Kontio’s voucher file) would not be
considered to be a trigger. Accordingly, Appellant’s argument does not
address the Examiner’s findings. Further, Appellant’s argument ignores that
the rejection is based, not on Clark alone, but on the combination of Clark,
Kontio, and Heyworth. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
In connection with argument (ii), Appellant argues “Clark is silent as
what specifically causes the launching of the [reader software] application.
However, . . . since it [is] the DRM system that performs all of the other
functions, this would suggest it is the DRM system that launches the
application.” Appeal Br. 11. Therefore, Appellant argues, Clark fails to
teach a trigger launching an application as recited by claim element (f). Id.
The Examiner responds, explaining it is the combination of Clark, Kontio,
and Heyworth, not Clark alone, that teaches or suggests the disputed
limitation. Ans. 10–12.
Appellant’s argument based on the alleged deficiencies of Clark is
unpersuasive for the reasons discussed above in connection with Appellant’s
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earlier argument. In particular, Appellant’s argument fails to address the
Examiner’s findings that Heyworth’s (not Clark’s) launching of download
management application 212 in response to receiving a payload file teaches
or suggests the disputed limitation of launching of an application. See Final
Act. 12.
In connection with argument (iii), Appellant alleges
Kontio does not discuss triggers and does not use a trigger to
launch the application or access the content. In contrast to
Kontio, claims 1, 12 and 21 explicitly require that the trigger is
contained in the content that has already been is downloaded by
the user to enable the device to automatically launch the
appropriate application and access the content.
Appeal Br. 12.
The Examiner responds, explaining:
The combination of Kontio with Clark teaches the metadata
would include instructions, including a digital content identifier,
that would be used by the main program to ensure the data is
identified correctly and prevent external programs from
launching. Heyworth is combined with Clark, in view of Kontio,
to teach digital content indicating an application required to
access the downloaded item, which supports the reference of
Kontio to include information of the specific file or application
to be launched and which is included in the metadata in order to
securely launch the requested application in accordance with the
indication (See Heyworth, ¶ [0027]).
Ans. 11.
Appellant’s argument is unpersuasive of reversible Examiner error.
Launching of an appropriate application was found to be taught by
Heyworth (Final Act. 12), not the argued Kontio, as explained above. In
connection with using the metadata of the content to identify and access the
downloaded content (see Appeal Br. 11), the Examiner finds voucher
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metadata is used to access a server and obtain encrypted content if the media
ID of the encrypted content matches the reference ID in a token. Final Act.
11. Thus, because Kontio’s media ID is used to access content, under a
broad but reasonable interpretation, Kontio’s media ID teaches or suggests
automatically accessing digital content using the identification contained in
the trigger (i.e., metadata).
In connection with contention (iv) Appellant argues “Heyworth does
not teach or suggest the trigger in the metadata of the downloaded digital
content itself for automatically launching the appropriate application and
accessing the already downloaded content.” Appeal Br. 13. According to
Appellant, Heyworth launches a download management application based
on a file type, not a trigger contained in metadata. Id. Appellant further
argues “Heyworth does not automatically launch the application required to
access the already downloaded content. It launches a download
management application that simply downloads requested content and places
it in the appropriate library based on user preferences. See Heyworth,
¶ [0047].” Id.
Appellant’s argument is unpersuasive of reversible Examiner error. In
connection with the trigger, the Examiner relies on Clark, not the argued
Heyworth, for teaching a trigger as recited by claim element (d). See Final
Act. 9–10. In connection with automatically launching an application based
on a trigger, the Examiner finds Clark’s launching of reader software
associated with a particular DRM scheme teaches the argued limitation
element (f) but for automatically launching the application. Final Act. 10.
The Examiner relies on Heyworth for automatically launching the
application. Ans. 12. Appellant fails to persuasively explain why this
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combination is deficient. Therefore, we agree with the Examiner in finding
the combination of Clark and Heyworth teaches or suggests the argued
limitation.
Finally, Appellant contends the combinations of Clark and Kontio and
Clark and Heyworth are improper for lack of motivation for making the
asserted combinations. Appeal Br. 13. In particular, Appellant argues the
Examiner’s reasoning for combining Clark and Kontio to secure the reader
from opening faulty or infected files is inadequate, alleging “[i]t is far from
clear how the FOA arrived at this motivation as neither Clark nor Kontio
teach faulty or infected files, nor is it explained how reading the metadata
would prevent the reader from opening faulty or infected files.” Id.
Appellant’s contention is unpersuasive because, other than alleged the
references fail to support the Examiner’s reason for making the combination,
Appellant fails to persuade us that the reasoning is itself erroneous. In
particular, the Examiner finds “[t]he combination of Kontio with Clark
teaches the metadata would include instructions, including a digital content
identifier, that would be used by the main program to ensure the data is
identified correctly and prevent external programs from launching.” Ans.
11. In the absence of sufficient evidence that this reasoning is faulty, the
Examiner has articulated reasoning with rational underpinnings sufficient to
justify the legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398 (2007). See Final Act. 12. To the extent Appellant is
suggesting the Examiner’s reasoning must be set forth in the cited prior art,
the motivation for combining teachings from references need not come from
the references themselves. See Ball Aerosol & Specialty Container v. Ltd.
Brands Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry
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set forth by the Supreme Court, the PTO must take account of “the
inferences and creative steps,” as well as routine steps, that an ordinary
artisan would employ); KSR, 550 U.S. at 419 (“The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents.”); see also id. at
421 (“Rigid preventative rules that deny factfinders recourse to common
sense . . . are neither necessary under our case law nor consistent with it.”).
We are likewise unpersuaded the combination of Clark and Heyworth
is improper as lacking a proper reason or motivation to combine the
references. As discussed above, the Examiner determines it would have
been obvious to automatically launch an application as taught by Heyworth
rather than require manual intervention “to provide the user with a
streamlined process from purchasing the digital content to viewing the
digital content.” Final Act. 12. Appellant fails to explain why this rationale
is erroneous. Furthermore, Appellant has not demonstrated that the
Examiner’s proffered combination in support of the conclusion of
obviousness, including automatically launching an application, would have
been “uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 419–20). See also In re Venner, 262 F.2d 91,
95, (CCPA 1958) (holding providing an automatic or mechanical means to
replace a manual activity which accomplished the same result is not
sufficient to distinguish over the prior art).
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For the reasons discussed above, we are unpersuaded the Examiner
erred and we sustain the rejection of claims 1, 2, 4–8, 11–13, 15, 16, 18, and
21 under 35 U.S.C. § 103(a) over Clark, Kontio, and Heyworth.
In connection with dependent claims 3, 14, and 17, because these claim
depend from claims 1 and 12, Appellant contends the rejection of the
dependent claims is deficient for failure of the Examiner to reapply the
Heyworth reference in rejecting the dependent claims, instead substituting
and applying Hendricks. Appeal Br. 14, c.f. Final Act. 20. The Examiner
responds “Hendricks is argued without any evidence from the reference in
comparison to the recited claims. The rejection in view of Hendricks is
supported by the responses provided . . . with respect to claims 1 and 12.”
Ans. 12.
Appellant fails to cite any authority requiring dependent claims be
rejected based on prior art that is cumulative with that used in rejecting their
base claims under 35 U.S.C. § 103(a). In the absence of substantive
argument addressing the applied combination of Clark, Kontio, and
Hendricks, Appellant’s contention amounts to little more than a general
denial that fails to address the Examiner’s findings and is, therefore,
insufficient. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). Similarly, Appellant’s contention that the
rejection is improper for lack of motivation for making the combination is
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unpersuasive in the absence of substantive argument. See Appeal Br. 14.
Accordingly, we are unpersuaded the Examiner erred and we sustain the
rejection of claims 3, 14, and 17 under 35 U.S.C. § 103(a) over Clark,
Kontio, and Hendricks.
DECISION
We affirm the rejection of claim 21 under 35 U.S.C. § 101 as directed
to non–statutory subject matter.
We reverse the rejection of claims 1–8, 11–18, and 21 under 35
U.S.C. § 101 as directed to a judicial exception.
We affirm the rejection of claims 1, 2, 4–8, 11–13, 15, 16, 18, and 21
under 35 U.S.C. § 103(a) over Clark, Kontio, and Heyworth.
We affirm the rejection of claims 3, 14, and 17 under 35 U.S.C.
§ 103(a) over Clark, Kontio, and Hendricks.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).

DECISION SUMMARY
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21 101 Eligibility —Statutory 21
1–8, 11–18,
21
101 Eligibility – Judicial
Exception
1–8, 11–
18, 21
1, 2, 4–8,
11–13, 15,
16, 18, 21
103 Clark, Kontio,
Heyworth
1, 2, 4–8,
11–13,
15, 16,
18, 21

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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
3, 14, 17 103 Clark, Kontio,
Hendricks
3, 14, 17
Overall
Outcome
1–8, 11–
18, 21

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED