NINTENDO CO., LTD.

Patent Trials and Appeals Board

Feb 9, 2021

2020005560 (P.T.A.B. Feb. 9, 2021)

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.
14/795,141 07/09/2015 Yasumasa NAKAI RYM-723-4191 1301
27562 7590 02/09/2021
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KERITSIS, DENNIS G
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/09/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YASUMASA NAKAI, EIJI TOKUNAGA, KOICHI NAKAO,
HITOSHI SAKAI, and TERUHIKO GODA
____________

Appeal 2020-005560
Application 14/795,141
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 3, 6–16, 18, 19, and 23. We have jurisdiction 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 (2019). Appellant identifies the real party in interest
as Nintendo Co., Ltd. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns content
distribution, in particular, the initial distribution of “reservation content”
(unusable data) and the subsequent distribution of a modifying program that
converts the initially distributed content to “normal content” (usable data).
Spec. 1:11–18, 2:20–21, 15:22–16:17, 49:1–11; see also id. at 16:18–25,
25:23–26:2, 29:20–22, 30:21–23, 39:24–40:2. The Specification explains
that downloading content from a content distribution server commonly
occurs “on or after the sale start date and time.” Id. at 15:17–18. The
Specification also explains that “if access concentrates” at the server on
“the sale start date and time,” downloading takes considerable time and
inconveniences a user. Id. at 15:18–21.
Hence, the invention endeavors to address those alleged deficiencies
with “a reservation content [that] is downloaded in advance and a modifying
program [that] is downloaded” at a later point, e.g., on or after the sale start
date and time. Spec. 40:22–25. According to the Specification, that
arrangement provides the following advantages: (1) “it is avoidable that
access concentrates” at the server on “the sale start date and time,” thus
dispersing server load; and (2) “it is possible to execute immediately a
reservation content by changing it to a normal content,” thus improving
user convenience. Id. at 40:22–41:4; see also id. at 1:19–24, 2:12–19,
6:15–17, 7:22–24, 16:15–17.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows:
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1. A content distribution system, comprising:
an information processing apparatus; and
a server system having processing circuitry that includes,
at least, a processor and a memory, the processing circuitry
configured to:
store second content, that corresponds to first
content, but is unable to be executed by the information
processing apparatus, the first content including normal
content that can be executed by the information
processing apparatus;
transmit the second content to the information
processing apparatus when settling an account for the
first content prior to a sale start date and start time of the
first content; and
transmit, to the information processing apparatus,
change data that comprises a modifying program
configured to modify the second content to the first
content after transmission of the second content.
Appeal Br. 41 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. §§ 102 and 103, the
Examiner relies on the following prior art:
The Rejections on Appeal
Claims 1, 3, 6–16, 18, 19, and 23 stand rejected under 35 U.S.C.
§ 112(a) for failing to comply with the written-description requirement.
Final Act. 9–10.
Name Reference Date
Downs et al. (“Downs”) US 6,226,618 B1 May 1, 2001
Essa US 2005/0177386 A1 Aug. 11, 2005
Chen et al. (“Chen”) US 7,849,329 B2 Dec. 7, 2010
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Claims 1, 3, 6–16, 18, 19, and 23 stand rejected under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter regarded as the invention. Final Act. 10–19.
Claims 1, 3, 6–16, 18, 19, and 23 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 6–8.
Claims 1, 3, 6–15, 18, and 19 stand rejected under 35 U.S.C. § 102 as
anticipated by Downs. Final Act. 20–21.
Claims 1, 3, 6–16, 18, and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Downs, Essa, and Chen. Final Act. 22–28.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we concur with
the Examiner’s conclusions concerning patent ineligibility under § 101, and
thus affirm the Examiner’s decision to reject all of the claims on appeal. See
37 C.F.R. § 41.50(a)(1). Further, for the reasons explained below, (1) we do
not sustain the rejections based on § 112, and (2) we sustain the rejections
based on the prior art except for claim 23. We provide the following to
address and emphasize specific findings and arguments.
The § 112(a) Rejections of Claims 1, 3, 6–16, 18, 19, and 23
INTRODUCTION
Section 112’s first paragraph requires that the specification “contain
a written description of the invention.” 35 U.S.C. § 112(a). The written-
description requirement serves to “clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed.” Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (alteration in original) (quoting Vas-Cath Inc. v. Mahurkar,
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935 F.2d 1555, 1563 (Fed. Cir. 1991)); see also Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016).
“[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351; Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275,
1296 (Fed. Cir. 2017). The “test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art.” Ariad, 598 F.3d at 1351. While the written-description
requirement “does not demand any particular form of disclosure” or “that the
specification recite the claimed invention in haec verba, a description that
merely renders the invention obvious does not satisfy the requirement.” Id.
at 1352. The analysis for disclosure sufficiency may consider “such
descriptive means as words, structures, figures, diagrams, formulas, etc.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
INDEPENDENT CLAIMS 1 AND 14–16:
“CHANGE DATA” AND “MODIFYING PROGRAM”
Claim 1 includes the following limitation: “transmit, to the
information processing apparatus, change data that comprises a modifying
program configured to modify the second content to the first content after
transmission of the second content.” Appeal Br. 41. Independent claims
14–16 each include the following limitation: “transmit, to the information
processing apparatus, change data that includes a modifying program
configured to modify the second content to the first content after
transmission of the second content.” Id. at 44–46.
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The Examiner determines that the Specification does not support the
limitation “change data that includes a modifying program.” Final Act. 9;
see Ans. 9–10. The Examiner explains that the Specification discloses that
“the modifying program has change data inside of it.” Ans. 10.
Appellant contends that the Specification “clearly describes” that
“the change data is data of a modifying program (patch) that can modify the
second content.” Appeal Br. 29 (quoting Spec. 2:20–21); Reply Br. 12–13.
Appellant also contends that the Specification indicates that “change data”
corresponds to a “modifying program.” Appeal Br. 29–30 (citing Spec.
29:17–30:3).
We agree with Appellant that the Specification reasonably conveys
to those skilled in the art that the inventors had possession of the claimed
subject matter as of the filing date. See Appeal Br. 29–30; Reply Br. 12–13.
The Specification explains that “the game apparatus 20 receives a modifying
program (patch) from the content server 12 according to an operation of the
user, and changes this reservation content to a normal content by applying
this modifying program to the reservation content.” Spec. 16:22–25. The
Specification similarly explains that “the game apparatus 20 accesses the
content server 12 to download the modifying program (patch) and applies
the downloaded modifying program to the reservation content,” and then
“the reservation content is changed to a normal content.” Id. at 25:23–26:2.
Thus, those skilled in the art would understand that “change data”
corresponds to a “modifying program.” See id. at 2:20–21, 16:22–25,
25:23–26:2, 29:20–22, 30:21–23, 39:24–40:2.
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INDEPENDENT CLAIM 1:
“A SERVER SYSTEM HAVING PROCESSING CIRCUITRY”
Claim 1 includes the following limitation: “a server system having
processing circuitry that includes, at least, a processor and a memory, the
processing circuitry configured to” store and transmit data. Appeal Br. 41.
The Examiner determines that the “language of processing circuitry
cannot be found” in the Specification. Final Act. 9. The Examiner also
determines that no structure disclosed in the Specification “includes both
a memory and a processor and performs each of the operations of store [the
second content], transmit [the second content], and transmit [the change
data].” Id. (emphasis by Examiner).
Appellant asserts that those skilled in the art would understand that
“any combination of a [central processing unit] CPU, [random-access
memory] RAM, communication module, or any other element” shown in
Figure 2 corresponds to the claimed “processing circuitry.” Appeal Br. 31;
Reply Br. 14. Appellant further asserts that the “hardware features that
constitute the ‘processing circuitry’ would clearly perform any of the ‘store
second content,’ ‘transmit the second content to the information processing
apparatus,’ and/or ‘transmit, to the information processing apparatus, change
data’ steps.” Reply Br. 14.
We agree with Appellant that the Specification reasonably conveys
to those skilled in the art that the inventors had possession of the claimed
subject matter as of the filing date. See Appeal Br. 31; Reply Br. 13–14.
The Specification describes a content distribution server including central
processing unit (CPU) 30, random-access memory (RAM) 32, and hard-disk
drive (HDD) 34. Spec. 10:4–8, Fig. 2. Figure 2 depicts that arrangement.
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Id. at Fig. 2. The Specification explains that “[t]he CPU 30 is in charge of
whole control of” the server and that “[t]he RAM 32 can be used as a
working memory and a buffer memory of the CPU 30.” Id. at 10:9–10. The
Specification also explains that Figures 13–15 “are flowcharts showing
content distribution processing of the CPU 30 of” the server depicted in
Figure 2. Id. at 31:4–5; see id. at 31:5–34:18, Figs. 13–15. Thus, the
Specification discloses a server system having processing circuitry
configured to store and transmit data. The written-description requirement
does not demand “that the specification recite the claimed invention in haec
verba.” Ariad, 598 F.3d at 1352.
INDEPENDENT CLAIM 15
Claim 15 recites a “non-transitory storage medium storing a content
distribution program that is executed by a content distribution server . . .
wherein the content distribution program, when executed, causes the content
distribution server to provide execution comprising” two transmitting steps.
Appeal Br. 45.
The Examiner determines that the Specification “does not disclose the
‘content server’ performing operations from another device.” Final Act. 10
(emphasis by Examiner). The Examiner explains that claim 15 “does not
spell out a single device performing the operations of ‘transmit’ and
‘transmit’” and that claim 15 “refers to some other device not found in” the
Specification. Ans. 10.
Appellant asserts that claim 15 recites a computer-readable medium
with “a program that can cause a ‘content distribution server’ to carry out”
the claimed transmitting steps. Appeal Br. 31–32; see also Reply Br. 15.
Appellant also asserts that the Specification supports a “content distribution
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server” performing the claimed transmitting steps. Appeal Br. 31–32 (citing
Spec. 26:18–27:9, Fig. 11); see also Reply Br. 15. Appellant further asserts
that the Examiner misinterprets claim 15 as requiring that a “non-transitory
storage medium” perform the claimed transmitting steps rather than a
“content distribution server.” Appeal Br. 32.
We agree with Appellant that the Examiner misinterprets claim 15
as requiring that a “non-transitory storage medium” perform the claimed
transmitting steps rather than a “content distribution server.” See Appeal
Br. 32. The Specification supports claim 15 as properly interpreted, i.e.,
as requiring that a “content distribution server” perform the claimed
transmitting steps. See Spec. 6:18–7:21, 25:23–26:1, 26:18–27:9, 28:11–14,
Fig. 11. For example, the Specification explains that “a normal content
(normal application program), a reservation content (reservation application
program) and a modifying program (patch) are read from the HDD 34” of
a content distribution server “to transmit to the game apparatus 20.” Id. at
28:11–14. The Specification also explains that the content distribution
server includes a “content transmitting program.” Id. at 26:18–27:1, Fig. 11.
DEPENDENT CLAIM 23
Claim 23 depends directly from claim 1 and specifies that “the
modifying program is a software patch that the information processing
apparatus receives from the server system and applies to the second content
to modify the second content to the first content.” Appeal Br. 46.
The Examiner determines that claim 23’s language “cannot be found”
in the Specification. Final Act. 10.
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Appellant contends that the Specification “clearly describes” that
“the change data is data of a modifying program (patch) that can modify the
second content.” Appeal Br. 29 (quoting Spec. 2:20–21); Reply Br. 12–13.
We agree with Appellant that the Specification reasonably conveys
to those skilled in the art that the inventors had possession of the claimed
subject matter as of the filing date. See Appeal Br. 29–30; Reply Br. 12–13.
The Specification repeatedly describes a “patch” as an example of a
“modifying program.” See Spec. 2:20–21, 16:22–25, 25:23–26:2, 28:11–14,
29:20–30:1, 30:21–23, 39:24–40:3. As noted above, the written-description
requirement does not demand “that the specification recite the claimed
invention in haec verba.” Ariad, 598 F.3d at 1352.
SUMMARY
For the reasons discussed above, we do not sustain the § 112(a)
rejections of claims 1, 3, 6–16, 18, 19, and 23.
The § 112(b) Rejections of Claims 1, 3, 6–16, 18, 19, and 23
INTRODUCTION
Section 112’s second paragraph requires that the specification
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as
the invention.” 35 U.S.C. § 112(b). The definiteness requirement “strikes
a ‘delicate balance’ between ‘the inherent limitations of language’ and
providing ‘clear notice of what is claimed.’” Sonix Tech. Co. v. Publ’ns
Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Nautilus, Inc. v.
Biosig Instruments, Inc., 572 U.S. 898, 909 (2014)).
Due to the need for “particular[ity]” and “distinct[ness],” claim
language that “is ambiguous, vague, incoherent, opaque, or otherwise
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unclear in describing and defining the claimed invention” warrants a
rejection under § 112(b). In re Packard, 751 F.3d 1307, 1311, 1313
(Fed. Cir. 2014); see also Ex parte McAward, Appeal 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential); In re
Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (explaining that “[t]he
legal standard for definiteness is whether a claim reasonably apprises
those of skill in the art of its scope”); In re Moore, 439 F.2d 1232, 1235
(CCPA 1971) (requiring “a reasonable degree of precision and particularity”
in claims).
DISCUSSION
The Examiner identifies numerous issues concerning a lack of clarity
in claim scope. See Final Act. 10–19; Ans. 11–14. For instance, the
Examiner determines that the term “normal” in “normal content” is “a
relative term which renders the claim indefinite” because “the specification
does not provide a standard for ascertaining the requisite degree.” Final
Act. 18; see also Ans. 13.
Appellant asserts that those skilled in the art would understand claim
scope when reading the claims in light of the Specification. See Appeal
Br. 33–39; Reply Br. 15–20. According to Appellant, the § 112(b)
rejections “boil down to nothing more than an attempt to require the
Appellant to unnecessarily further limit the claimed features.” Appeal
Br. 39; Reply Br. 20.
For the reasons articulated by Appellant, we agree that those skilled in
the art would understand claim scope when reading the claims in light of the
Specification. See Appeal Br. 33–39; Reply Br. 15–20. Hence, we do not
sustain the § 112(b) rejections of claims 1, 3, 6–16, 18, 19, and 23.
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The § 101 Rejection of Claims 1, 3, 6–16, 18, 19, and 23
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever 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 Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth
a two-step analytical framework for evaluating patent eligibility. Mayo,
566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1359 (Fed. Cir.
2020); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
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Guidance”).2 The 2019 Guidance applies to the Board. Id. at 50–51,
57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with
responsibility “for providing policy direction” for the PTO).
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for

2 In response to received public comments, the PTO issued further guidance
in October 2019 with further explanations about various aspects of the 2019
Guidance. October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019)
(available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
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an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
Patent-ineligible abstract ideas include fundamental economic
practices, mental processes, and mathematical formulas. See, e.g., Alice,
573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
(1972) (mental process of converting binary-coded-decimal representation
to binary representation). The 2019 Guidance specifies three groupings
of abstract ideas: (1) certain methods of organizing human activity,
(2) mental processes, and (3) mathematical concepts. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted that “[a]n abstract idea can generally be described
at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
Here, the Examiner determines that the claims recite an abstract idea
falling within one of the three groupings of abstract ideas specified in the
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2019 Guidance, i.e., certain methods of organizing human activity ineligible
for patenting. Final Act. 6–7; see 84 Fed. Reg. at 51–52. Specifically, the
Examiner determines that the claims recite “commercial interactions.” Final
Act. 7 (citing 84 Fed. Reg. at 52, 54).
Appellant disputes that the claims recite an abstract idea. See Appeal
Br. 24–25; Reply Br. 10–11. Appellant contends that “the claims are
specifically directed to an improvement in ‘computer functionality’ and not
on ‘commercial transactions’” or some business process. Appeal Br. 24;
Reply Br. 10. Appellant also contends that “the focus of the technology
relates directly to how content is distributed from server system(s) to various
client system(s).” Appeal Br. 24; Reply Br. 10.
We agree with the Examiner that the claims recite an abstract idea
falling within one of the three groupings of abstract ideas specified in the
2019 Guidance, i.e., certain methods of organizing human activity ineligible
for patenting. See Final Act. 6–7; 84 Fed. Reg. at 51–52. The 2019
Guidance describes those patent-ineligible methods as including
“commercial or legal interactions,” such as “marketing or sales activities
or behaviors.” 84 Fed. Reg. at 52.
Here, claim 1 recites the following limitations relating to “commercial
or legal interactions,” specifically “marketing or sales activities
or behaviors”:
● “store second content, that corresponds to first content,
but is unable to be executed by the information
processing apparatus, the first content including normal
content that can be executed by the information
processing apparatus”;
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● “transmit the second content . . . when settling an account
for the first content prior to a sale start date and start time
of the first content”; and
● “transmit . . . change data that comprises a modifying
program configured to modify the second content to the
first content after transmission of the second content.”
Appeal Br. 41. Independent claim 14 recites similar limitations. Id. at 44;
see also id. at 14, 19. Independent claims 15 and 16 recite similar “transmit”
limitations. Id. at 45–46; see also id. at 14, 19.
Each of the above-identified limitations relates to “marketing or sales
activities or behaviors” of a content seller or a content buyer. For instance,
the “store” limitation involves storing usable data that the seller will sell to
the buyer. The first “transmit” limitation involves transmitting to the buyer
unusable data related to the usable data “when settling an account” for the
usable data. And the second “transmit” limitation involves transmitting to
the buyer change data to (1) convert the unusable data to the usable data and
(2) complete the transaction between the buyer and the seller. Consistent
with this, the Specification discloses a content distribution server
“functioning as a shopping server for purchasing a content.” Spec.
12:13–14; see also id. at 14:24–15:3, 15:7–10, 41:25–42:2.
The 2019 Guidance identifies “marketing or sales activities or
behaviors” as a certain method of organizing human activity ineligible for
patenting, and thus an abstract idea. 84 Fed. Reg. at 52.
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO
Because we determine that each independent claim recites an abstract
idea, we consider whether each claim as a whole integrates the recited
abstract idea into a practical application. See 84 Fed. Reg. at 54–55. “Only
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when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components, i.e., a “server system having processing circuitry,”
a “server” comprising a “processor” and a “memory,” a “storage medium,”
and an “information processing apparatus.” Appeal Br. 41, 44–46; see also
Final Act. 7–8; Ans. 8–9.
The Examiner determines, and we agree, that each independent claim
as a whole does not integrate the recited abstract idea into a practical
application because the additional elements do not impose meaningful limits
on the abstract idea. See Final Act. 2–3, 7–8; 84 Fed. Reg. at 53–54.
Instead, the claimed computer-system components constitute generic
computer-system components that perform generic computer functions.
See Spec. 8:7–10, 10:4–12:1, 42:17–21, Figs. 2–3; Final Act. 2–3, 7–8;
Ans. 7–9.
Appellant contends that “the claimed features are directed to
improvements in content distribution systems, particularly, systems that
improve the convenience for distributing content to a multitude of client
devices.” Appeal Br. 24; see Reply Br. 10–11. Appellant also contends that
“these features improve the systems’ [sic] overall ability to manage load of
the system thereby improving communication latency.” Appeal Br. 25; see
also id. at 5–6, 10; Reply Br. 2–3, 10–11. Further, Appellant asserts that the
claims “are directed to a technical solution of a technical problem” because
“the claimed approach advantageously disperses the load of the content
server and is thus an improvement to content distribution technology as the
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overall communication latency of the system is improved.” Appeal Br.
25–26 (emphasis by Appellant); see id. at 27–28; Reply Br. 10–12.
We disagree that the claims are directed to a technical solution of a
technical problem. See Final Act. 2–3, 7–8; Ans. 3–4, 7–9. Contrary to
Appellant’s contention, the claims do not require “distributing content to a
multitude of client devices.” See Appeal Br. 24. Rather, the claims require
only that one server transmit to one client device. Id. at 41, 44–46. Further,
the claims require only two transmissions and do not specify when those two
transmissions occur relative to other server transmissions. Id. The claims
do not address a multitude of transmissions that could adversely affect a
server’s ability to manage load. Id.
On top of that, the claims do not specify the size of the “first content,”
the “second content,” or the “change data.” Nor do the claims require that
the “change data” have a smaller size than the “second content.” Hence, the
claims encompass the “change data” equaling or exceeding the size of the
“second content.” If the “change data” equals or exceeds the size of the
“second content,” the claimed approach would not disperse server load.
In short, Appellant relies on unclaimed features for patent eligibility.
See Appeal Br. 24–26; Reply Br. 9–12. But unclaimed features do not
support patent eligibility. See ChargePoint, Inc. v. SemaConnect, Inc.,
920 F.3d 759, 769 (Fed. Cir. 2019); Berkheimer v. HP Inc., 881 F.3d 1360,
1369–70 (Fed. Cir. 2018). As the Examiner properly reasons, the claims do
not capture the purported improvement. Ans. 9.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29. As
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the above analysis indicates, we have evaluated Appellant’s arguments in
light of those exemplary considerations. For the reasons discussed above,
however, we determine that each independent claim as a whole does not
integrate the recited abstract idea into a practical application. Thus, each
claim is directed to a judicial exception and does not satisfy § 101 under
Mayo/Alice step one.
MAYO/ALICE STEP TWO: PTO STEP 2B
Because we determine that each independent claim is directed
to a judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
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As discussed above, the independent claims recite computer-system
components, i.e., a “server system having processing circuitry,” a “server”
comprising a “processor” and a “memory,” a “storage medium,” and an
“information processing apparatus.” Appeal Br. 41, 44–46; see also Final
Act. 7–8; Ans. 8–9. As also discussed above, the claimed computer-system
components constitute generic computer-system components that perform
generic computer functions. See Spec. 8:7–10, 10:4–12:1, 42:17–21, Figs.
2–3; Final Act. 2–3, 7–8; Ans. 7–9.
The Specification describes the claimed computer-system components
generically and evidences their conventional nature. See Spec. 8:7–10,
10:4–12:1, 42:17–21, Figs. 2–3. For instance, the Specification states that
“[t]he content server 12 may be a general-purpose server” and that “the
management server 16 may be a general-purpose server.” Spec. 10:5–6,
10:24–25; see also id. at 8:7–8, Fig. 2. Further, the Specification states that
“the game apparatus is shown as an example of an information processing
apparatus” and that “[i]t is possible to use other information processing
apparatuses such as general-purpose PC (desktop PC, a notebook PC, a
tablet PC), PDA, a smartphone, a mobile phone, etc.” Id. at 42:17–21; see
also id. at 8:9–10, Fig. 3.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed computer-system components operate to store,
manipulate, and transmit data. Appeal Br. 41, 44–46; see Final Act. 2–3,
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7–8. Court decisions have recognized that generic computer-system
components operating to store, manipulate, and transmit data are well
understood, routine, and conventional to a skilled artisan. See, e.g., Alice,
573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple,
842 F.3d at 1234, 1241–42; Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1316–20 (Fed. Cir. 2016); Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “processor” or “processing circuitry”) with a
“communications controller” and a “data storage unit” (e.g., a “memory” or
“storage medium”). Alice, 573 U.S. at 226. The Supreme Court decided
that the system claims failed to satisfy § 101 because “[n]early every
computer” includes those generic components for performing “basic
calculation, storage, and transmission functions” and the system claims
simply implemented the same abstract idea as the method claims. Id.
at 226–27. The Court reasoned that (1) “the system claims are no different
from the method claims in substance”; (2) “[t]he method claims recite the
abstract idea implemented on a generic computer”; and (3) “the system
claims recite a handful of generic computer components configured to
implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. 41, 44–46; see also Final Act. 2–3, 7–8;
Ans. 7–9. For instance, nearly every computer system includes (1) a
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“processor” or “processing circuitry” for manipulating data and (2) a
“memory” or “storage medium” for storing data. Nothing in the claims
“requires anything other than conventional computer and network
components operating according to their ordinary functions.” See Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339, 1341
(Fed. Cir. 2017).
Hence, the claimed computer-system components do not satisfy the
“inventive concept” requirement. See, e.g., Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the
claimed “processor,” “storage device,” “programmable receiver unit,” and
“remote server” as “generic computer components”); Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(holding that “generic computer components such as an ‘interface,’
‘network,’ and ‘database’” did not satisfy the “inventive concept”
requirement); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1095–96 (Fed. Cir. 2016) (describing the claimed “microprocessor” and
“user interface” as “generic computer elements”); Prism Techs. LLC v.
T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017)
(describing the claimed “authentication server,” “access server,” “Internet
Protocol network,” “client computer device,” and “database” as
“indisputably generic computer components”).
Appellant contends that “the claims contain specific features that
are not well-understood, routine, or conventional activity in the field of
technology.” Appeal Br. 27. Appellant identifies those “specific features”
as follows:
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(1) “transmitting content data that substantially corresponds
to a full program but cannot be executed by the terminal
device”; and
(2) “[a]t a later point in time, ‘change data’ (e.g., a software
patch) is transmitted to the client devices where the
change data is applied to the previously transmitted
content data to convert the content data into a fully
executable program.”
Id.
Appellant’s argument does not persuade us of Examiner error because
Appellant relies on the recited abstract idea to satisfy the “inventive
concept” requirement. A “claimed invention’s use of the ineligible
concept,” e.g., an abstract idea, “cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); see
also Simio, 983 F.3d at 1363. Under “the Mayo/Alice framework, a claim
directed to a newly discovered” abstract idea “cannot rely on the novelty of
that discovery for the inventive concept necessary for patent eligibility.”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellant argues that the Examiner fails to show that claim elements
“are directed to ‘conventional,’ ‘well-known,’ or ‘routine’ activity as
required by Berkheimer and outlined in the Berkheimer memorandum.”3
Appeal Br. 28. But the Berkheimer memorandum explains that a “citation to
one or more” court decisions may demonstrate that additional elements are
well understood, routine, and conventional to a skilled artisan. Berkheimer

3 PTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018) (“Berkheimer Mem.”).
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Mem. 3–4. As discussed above, court decisions have recognized that
generic computer-system components operating to store, manipulate, and
transmit data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65
& n.1, 1170; Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures,
838 F.3d at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d
at 715–16; buySAFE, 765 F.3d at 1355.
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Considering the limitations as an ordered combination adds nothing to the
abstract idea that is not already present when the limitations are considered
separately. See Mayo, 566 U.S. at 79; Final Act. 2–3, 7–8; Ans. 7–9. The
ordered combination of limitations in each independent claim amounts to
nothing more than the abstract idea implemented with generic computer-
system components that perform generic computer functions. See Alice,
573 U.S. at 225–26; Final Act. 2–3, 7–8; Ans. 7–9. Hence, we conclude that
the ordered combination of limitations in each independent claim does not
supply an “inventive concept” that renders the claim “significantly more”
than the abstract idea. See Final Act. 2–3, 7–8; Ans. 7–9. Thus, each claim
does not satisfy § 101 under Mayo/Alice step two.
SUMMARY FOR INDEPENDENT CLAIMS 1 AND 14–16
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
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DEPENDENT CLAIMS 3, 6–13, 18, 19, AND 23
We also sustain the § 101 rejection of dependent claims 3, 6–13, 18,
19, and 23 because Appellant does not argue eligibility separately for them.
See Appeal Br. 23–29; Reply Br. 9–12; 37 C.F.R. § 41.37(c)(1)(iv).
The § 102 Rejection of Claims 1, 3, 6–15, 18, and 19
INDEPENDENT CLAIMS 1, 14, AND 15
AND DEPENDENT CLAIMS 3, 6–13, AND 18
Claims 1 and 14 each recite a “memory.” Appeal Br. 41, 44.
Claim 15 recites a “storage medium.” Id. at 45. Claims 3, 6–13, and 18
depend directly or indirectly from claim 1. Id. at 41–44, 46.
The Examiner determines that “the purpose of the instructions” stored
in a “memory” and a “storage medium” according to claims 1, 14, and 15 is
“intended use/functional language and does not have patentable weight.”
Final Act. 21; Ans. 5. The Examiner reasons that a “memory” and a
“storage medium” merely store instructions, “which is inherent to all
memory.” Final Act. 21; Ans. 5. The Examiner also determines that
claims 3, 6–13, and 18 include language that (1) “further describe[s] the
intended use/functional language” in claim 1 and (2) has no patentable
weight. Final Act. 21; Ans. 5. In addition, the Examiner finds that Downs
discloses a “computer with a processor” and “is sufficient in terms of art”
to anticipate claims 1, 3, 6–15, and 18. Final Act. 21; Ans. 5.
In the Appeal Brief, Appellant does not contest the Examiner’s
determinations that claims 1, 3, 6–15, and 18 include “intended use/
functional language” or that Downs anticipates the claims according to
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the Examiner’s reasoning. See Appeal Br. 14–22. Thus, Appellant has
forfeited arguments to the contrary.4
Because Appellant does not contest the anticipation rejection of
claims 1, 3, 6–15, and 18, we summarily sustain that rejection. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that “[w]hen the
appellant fails to contest a ground of rejection to the Board, . . . the Board
may treat any argument with respect to that ground of rejection as waived”);
In re Berger, 279 F.3d 975, 980, 984–85 (Fed. Cir. 2002) (holding that the
Board did not err in sustaining a rejection when the appellant failed to
contest the rejection); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (“If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it, unless the examiner subsequently withdrew the
rejection in the examiner’s answer.”).
In the Reply Brief, Appellant asserts that “the Examiner attempts to
oversimplify the claim language in order to support the baseless position that
the additional claim features do not have patentable weight.” Reply Br. 3.
In addition, Appellant contends that “the Examiner provides no legal support

4 Appellant’s forfeiture of arguments for claims 1, 3, 6–15, and 18 stands
in stark contrast to Appellant’s argument that the Examiner erred in
determining that claim 19 includes “intended use/functional language” that
has no patentable weight. Compare Appeal Br. 14–21 (failing to address the
Examiner’s determinations that claims 1, 3, 6–15, and 18 include “intended
use/functional language” for purposes of § 102), with id. at 22 (arguing that
the Examiner erred in rejecting claim 19 under § 102).
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for the position that the claims are only directed to a ‘computer with a
processor.’” Id.
Appellant advances those arguments for the first time in the Reply
Brief. Such arguments “will not be considered by the Board” unless an
appellant shows good cause. See 37 C.F.R. § 41.41(b)(2); see also Ex parte
Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative) (discussing
procedural difficulties with belated arguments).
Here, Appellant has not shown good cause for the belated arguments
in the Reply Brief. Hence, we decline to consider them. “Considering an
argument advanced for the first time in a reply brief . . . is not only unfair to
an appellee, but also entails the risk of an improvident or ill-advised opinion
on the legal issues tendered.” McBride v. Merrell Dow & Pharm., Inc.,
800 F.2d 1208, 1211 (D.C. Cir. 1986).
DEPENDENT CLAIM 19
Claim 19 depends directly from claim 1 and recites “wherein the first
content including the normal content having a resource and executable
code.” Appeal Br. 46.
The Examiner determines that claim 19 includes language that
(1) “further describe[s] the intended use/functional language” in claim 1
and (2) has no patentable weight. Final Act. 21; Ans. 5.
In the Appeal Brief, Appellant asserts that the Examiner’s
determination that claim 19 includes “intended use/functional language”
lacks legal and evidentiary support. Appeal Br. 22. Appellant also asserts
that claim 19’s “features are not at all intended use (e.g., explaining how
the content will be used) nor are they at all functional language” because
claim 19 “describes the substance of the first content.” Id. In addition,
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Appellant contends that Downs “fails to anticipate these features” because
Downs “fails to at all teach or suggest the content including normal content
having a resource and executable code.” Id.
We disagree that Downs fails to disclose the “content including
normal content having a resource and executable code” according to
claim 19. Downs concerns “the field of electronic commerce,” in particular,
the secure delivery of “digital assets, such as print media, films, games, and
music over global communications networks such as the Internet.” Downs
1:52–57; see id. at 2:31–34, 6:37–48, 81:30–34. Downs discloses
transmitting encrypted content to an end-user device and separately
transmitting a decryption key to the end-user device. Id. at 23:29–24:58,
39:14–15, Fig. 6; see Final Act. 22; Ans. 6–7. After receiving the
decryption key, the end-user device decrypts the encrypted content. Downs
24:48–58; see id. at 28:9–12; Ans. 7. The decrypted content includes
“normal content” (usable data) that permits “license watermarking,
copy/play coding, scrambling,” and further processing. Downs 24:48–58;
see id. at 28:12–15; Ans. 7.
The Specification describes “normal content” as “usable” or
“executable.” Spec. 16:1–9; see id. at 2:1–4, 6:18–21, 7:2–21. The
Specification describes a “resource” as “a major part (main data part)
of a content.” Id. at 16:21–22.
In Downs, the decrypted content at the end-user device includes
“normal content” (usable data) with a “resource” (main data part) and
“executable code,” e.g., data and code that permit “license watermarking,
copy/play coding, scrambling,” and further processing. See Downs
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24:48–58, 28:12–15; Ans. 7. Hence, we sustain the anticipation rejection
of claim 19.
The § 103 Rejection of Claims 1, 3, 6–16, 18, and 23
INDEPENDENT CLAIMS 1 AND 14–16
As noted above, the obviousness rejection of claims 1 and 14–16 rests
on Downs, Essa, and Chen. See Final Act. 22–23. Appellant argues that the
Examiner erred in rejecting the claims because the references fail to teach or
suggest the following limitation in claim 1 and similar limitations in claims
14–16: “transmit, to the information processing apparatus, change data that
comprises a modifying program configured to modify the second content to
the first content.” See Appeal Br. 14–19; Reply Br. 3–6. The Examiner
cites Downs as teaching or suggesting the disputed limitation in claims 1
and 14–16. See Final Act. 22; Ans. 6–7.
In contrast to the anticipation rejection discussed above, the Examiner
gave patentable weight to all claim language for the obviousness rejection.
See Final Act. 22–28; Ans. 5–7. Appellant does not address this
inconsistency. See Appeal Br. 14–22; Reply Br. 3–8. Because Appellant
does not address this inconsistency, Appellant has forfeited any arguments
based on this inconsistency.
For the obviousness rejection, Appellant concedes that Downs
discloses an electronic content-delivery system employing “conventional
techniques for obtaining and decrypting content data using a key obtained
via a license.” Appeal Br. 14–15 (citing Downs 23:47–58, 24:34–58, 28:4–
15, 70:4–15, 81:24–45, Fig. 1D); Reply Br. 4–5. But Appellant contends
that Downs does not disclose “change data that includes a modifying
program that modifies the content of a program” because “a key only
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unlocks the downloaded content and does not modify the content itself.”
Appeal Br. 15 (emphases by Appellant); Reply Br. 5.
We agree with the Examiner that Downs teaches or suggests the
disputed limitation in claims 1 and 14–16. See Final Act. 22; Ans. 6–7. The
Specification does not explain how a modifying program operates to convert
the “second content” (unusable data) to the “first content” including “normal
content” (usable data). See, e.g., Spec. 2:20–3:4, 16:18–25, 25:23–26:2,
29:20–22, 39:24–40:2. Thus, the Specification does not indicate how a
modifying program supposedly differs from a decryption key. To the
contrary, the Specification discloses using a decryption key to convert the
“second content” (unusable data) to the “first content” including “normal
content” (usable data). Spec. 3:8–13; see id. at 42:5–14.
Like the Specification, Downs discloses using a decryption key to
convert the “second content” (unusable data) to the “first content” including
“normal content” (usable data). Downs 23:29–24:58, 28:4–15, 39:14–15,
Fig. 6; see Ans. 6–7. Downs also discloses using a secure container to
transmit encrypted content to an end-user device. Downs 7:16–18, 7:28–34,
28:4–12. A decryption key modifies a secure container to convert unusable
data to usable data. Id. at 4:1–3, 24:48–58, Fig. 4.
For the reasons discussed above, Downs teaches or suggests the
disputed limitation in claims 1 and 14–16. See Downs 23:29–24:58,
28:4–15, 39:14–15, Fig. 6; Final Act. 22; Ans. 6–7. Hence, we sustain the
obviousness rejection of claims 1 and 14–16.5

5 For the same reasons, even if Appellant had not forfeited its arguments
regarding the anticipation rejection, we would have sustained the
anticipation rejection of claims 1 and 14–16.
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DEPENDENT CLAIM 3
Claim 3 reads as follows:
3. The content distribution system according to claim 1,
wherein
the first content includes a regular executable code;
the second content includes a dummy executable code;
and
the modifying program is configured to modify the
dummy executable code to the regular executable code.
Appeal Br. 41. The Examiner cites Downs as teaching or suggesting
claim 3’s subject matter. See Final Act. 23; Ans. 7.
Appellant argues that the Examiner erred in rejecting claim 3 because
Downs does not “describe first content including regular executable code
while second content includes dummy executable code.” Appeal Br. 20
(emphasis omitted); see Reply Br. 7. Appellant also argues that a decryption
key according to Downs does not “reasonably correspond to a modifying
program modifying dummy executable code to regular executable code.”
Appeal Br. 20–21 (emphasis omitted); see Reply Br. 7.
In response, the Examiner explains that “Downs teaches ‘regular
executable code’ and ‘dummy executable code’ because the unusable
encrypted digital content is turned into useable digital content.” Ans. 7
(emphasis by Examiner) (citing Downs 2:60–67). The Examiner also
explains that “‘dummy’ content is content that is unable to be used whereas
‘regular’ content is content that can be used.” Id.
We agree with the Examiner that Downs teaches or suggests claim 3’s
subject matter. See Final Act. 23; Ans. 7. As discussed above, Downs
discloses using a decryption key to convert the “second content” (unusable
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data) to the “first content” including “normal content” (usable data). Downs
23:29–24:58, 28:4–15, 39:14–15, Fig. 6; see Ans. 6–7. As the Examiner
explains, the unusable data corresponds to the claimed “dummy executable
code” and the usable data corresponds to the claimed “regular executable
code.” Ans. 7. Consistent with the Examiner’s explanation, the
Specification indicates that “dummy executable code” corresponds to
unusable data that “cannot be executed” and that “regular executable code”
corresponds to usable data that “can be executed.” Spec. 2:25–3:4.
Appellant fails to identify any flaws in the Examiner’s explanation. See
Reply Br. 6–7. Hence, we sustain the obviousness rejection of claim 3.6
DEPENDENT CLAIMS 6–13 AND 18
Claims 6–13 and 18 depend directly or indirectly from claim 1.
Appeal Br. 42–44, 46. Appellant does not argue patentability separately for
claims 6–13 and 18. See Appeal Br. 14–22; Reply Br. 3–8. Hence, we
sustain the obviousness rejection of claims 6–13 and 18 for the same reasons
as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).7
DEPENDENT CLAIM 23
Claim 23 depends directly from claim 1 and specifies that “the
modifying program is a software patch that the information processing
apparatus receives from the server system and applies to the second content
to modify the second content to the first content.” Appeal Br. 46. The

6 For the same reasons, even if Appellant had not forfeited its arguments
regarding the anticipation rejection, we would have sustained the
anticipation rejection of claim 3.
7 For the same reasons, even if Appellant had not forfeited its arguments
regarding the anticipation rejection, we would have sustained the
anticipation rejection of claims 6–13 and 18.
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Examiner cites Downs as teaching or suggesting claim 23’s subject matter.
See Final Act. 28; Ans. 7.
Appellant argues that the Examiner erred in rejecting claim 23
because a decryption key according to Downs does not correspond to
“a software patch that modifies the content (e.g., to usable/executable
content).” Appeal Br. 21; see Reply Br. 7–8.
In response, the Examiner explains that “Downs teaches a modifying
program since it turns unusable content to useable content via encryption.”
Ans. 7 (citing Downs 2:60–67, 7:30–35).
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Downs
teach or suggest that “the modifying program is a software patch” as
required by claim 23. As discussed above, Downs discloses using a
decryption key to convert the “second content” (unusable data) to the “first
content” including “normal content” (usable data). Downs 23:29–24:58,
28:4–15, 39:14–15, Fig. 6; see Ans. 6–7. The Examiner makes no attempt to
explain how a decryption key corresponds to the claimed “software patch.”
See Final Act. 28; Ans. 7. Hence, we do not sustain the obviousness
rejection of claim 23.
CONCLUSION
We reverse the rejection of claims 1, 3, 6–16, 18, 19, and 23 under
35 U.S.C. § 112(a).
We reverse the rejection of claims 1, 3, 6–16, 18, 19, and 23 under
35 U.S.C. § 112(b).
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We affirm the rejection of claims 1, 3, 6–16, 18, 19, and 23 under
35 U.S.C. § 101.
We affirm the rejection of claims 1, 3, 6–15, 18, and 19 under
35 U.S.C. § 102.
We affirm the rejection of claims 1, 3, 6–16, and 18 under 35 U.S.C.
§ 103.
We reverse the rejection of claim 23 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection for each claim
on appeal, we affirm the Examiner’s decision to reject all of the claims
on appeal. See 37 C.F.R. § 41.50(a)(1).
In summary:
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 3, 6–16,
18, 19, 23 112(a)
Written
Description
1, 3, 6–16,
18, 19, 23
1, 3, 6–16,
18, 19, 23 112(b) Indefiniteness
1, 3, 6–16,
18, 19, 23
1, 3, 6–16,
18, 19, 23 101 Eligibility
1, 3, 6–16,
18, 19, 23
1, 3, 6–15,
18, 19 102 Downs
1, 3, 6–15,
18, 19
1, 3, 6–16,
18, 23 103
Downs, Essa,
Chen
1, 3, 6–16,
18 23
Overall
Outcome
1, 3, 6–16,
18, 19, 23
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Application 14/795,141

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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)(iv).
See 37 C.F.R. § 41.50(f).
AFFIRMED