Yates, James M.

Patent Trials and Appeals Board

Dec 21, 2020

2018006613 (P.T.A.B. Dec. 21, 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.
10/591,416 09/01/2006 James M. Yates YATJ 8888W1 2529
1688 7590 12/21/2020
Sandberg Phoenix & von Gontard, PC
120 S. Central Ave.
Suite 1600
St. Louis, MO 63105
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/21/2020 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):
USPTO@sandbergphoenix.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES M. YATES
____________________

Appeal 2018-006613
Application 10/591,416
Technology Center 3600
____________________

Before JOSEPH L. DIXON, JUSTIN BUSCH, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant1 requests rehearing under 37 C.F.R. § 41.52 of our
Decision, mailed March 13, 2020 (“Decision”), in which we affirmed the
Examiner’s decision rejecting claims 38–56 and 60–67. In particular, we
affirmed the Examiner’s rejection of claims 38–56 and 60–67 under
35 U.S.C. § 101 and the Examiner’s rejection of claims 60–63 under pre-
AIA 35 U.S.C. § 103(a). Appellant filed a Request for Rehearing (“Req.
Reh’g”) on July 22, 2020. Although the period for Appellant’s request for
rehearing had expired, Appellant successfully petitioned for an extension of

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies the
inventor, James M. Yates, as the real party in interest. Appeal Br. 1.
Appeal 2018-006613
Application 10/591,416

2
time. See Petition to Revive (filed July 22, 2020). Appellant’s petition was
granted. See Petition Decision (mailed November 17, 2020).
Appellant’s Request for Rehearing is GRANTED.

DISCUSSION
Claims 60–63
In response to Appellant’s Appeal Brief (filed November 17, 2017),
the Examiner mailed an Answer in which the Examiner, inter alia, withdrew
then-pending rejections under pre-AIA 35 U.S.C. § 103(a) of claims 38–56
and 64–67. Ans. 2. After the withdrawal of these rejections, the only claims
that were still rejected under pre-AIA 35 U.S.C. § 103(a) were claims 60–
63.
On June 12, 2018, the same day Appellant filed the Reply Brief,
Appellant filed an amendment canceling claims 60–63 “to simplify the
issues on appeal.” Amdt 11. Moreover, in the Reply Brief, Appellant did
not reply to the Examiner’s response regarding the rejection of claims 60–63
under pre-AIA 35 U.S.C. § 103(a) other than to indicate that an amendment
cancelling the claims had been filed. Reply Br. 2.
In our Decision, we noted the Examiner had not been able to consider
Appellant’s cancelation of claims 60–63. Decision 4. As such, in view of
Appellant’s filed amendment canceling still-pending claims 60–63, we
summarily affirmed the rejection of claims 60–63 under pre-AIA 35 U.S.C.
§ 103(a). Decision 4.
In the Request for Rehearing, Appellant asserts the Board erred in
summarily affirming the rejection of claims 60–63 and that, instead, the
Board should have remanded the case back to the Examiner with instructions
Appeal 2018-006613
Application 10/591,416

3
to enter the amendment canceling claims 60–63 or else addressed
Appellant’s arguments presented in the Appeal Brief on the merits. Req.
Reh’g 3.
“If an appellant wishes to remove claims from consideration on
appeal, the appellant must submit an amendment to cancel the claims from
the application.” Manual of Patent Examining Procedure (MPEP)
§ 1215.03; see also 37 C.F.R. § 41.33(b) (admitting amendments filed
canceling claims after an Appeal Brief has already been filed, where such
cancelation does not affect the scope of any other pending claim).
Appellant’s Amendment canceling claims 60–63 is still in effect. As
such, we treat claims 60–63 as having been withdrawn from consideration
and leave it to the Examiner to cancel claims 60–63 following this decision.

Rejection under 35 U.S.C. § 101 (claims 38–56 and 64–67)
Appellant disputes our conclusion affirming the Examiner’s rejection
of claims 38–56 and 64–67 as being patent ineligible under 35 U.S.C. § 101.
See Req. Reh’g 8–14. In particular, Appellant asserts the claimed invention
“is not in any sense a fundamental economic practice” and that the Board
misconstrued the invention to be a fundamental economic practice of
transferring digital files via a commercial exchange from an authorized
seller to a buyer. Req. Reh’g 8–9.
Contrary to Appellant’s assertion, in our Decision we did not
determine the claimed invention to be a fundamental economic practice, but
rather a commercial interaction (sales activity). Decision 6 (“Transferring
digital files via a commercial exchange from an authorized seller to a buyer
is a commercial interaction (sales activity) and is a certain method of
Appeal 2018-006613
Application 10/591,416

4
organizing human activity—an abstract idea.”). As set forth in MPEP
§ 2106.04(a), commercial interactions are a distinct class of abstract ideas
within the grouping of certain methods of organizing human activity.
Because Appellant’s arguments are not responsive to the reasoning set forth
in our Decision, they are not persuasive of error.
Appellant also asserts that a “fundamental flaw” in our Decision is
that “the Board is making Appellant’s inventive concept the starting point in
analyzing whether the claims are patentable subject matter under 35 U.S.C.
§ 101.” Req. Reh’g 9 (citing Decision 12).
Contrary to Appellant’s assertion, our Decision clearly sets forth the
framework for analyzing patent eligibility under 35 U.S.C. § 101 consistent
with the Supreme Court’s two-step framework delineated in Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 217 (2014), its progeny, and the Office’s
Guidance (see, e.g., MPEP § 2106). Decision 5–6. More specifically, we
determined that, consistent with Appellant’s characterization of the claimed
invention, the claims are generally directed to “transferring digital files via a
commercial exchange from an authorized seller to a buyer,” which we
explained describes (i.e., recites) a commercial interaction and falls within
the grouping of certain methods of organizing human activity. Decision 6.
Moreover, we identified the elements of claim 38 that recite the identified
judicial exception. See Decision 6–8. Having determined the claimed
invention recites a judicial exception, we set forth detailed analysis
explaining that the claims do not integrate the judicial exception into a
practical application. Decision 8–12.
As such, we disagree with Appellant that we began our analysis of
patent eligibility under step two of the Alice framework.
Appeal 2018-006613
Application 10/591,416

5
Appellant also asserts that neither the Examiner nor the Board
supported the determination that the elements of the claim, considered as an
ordered combination, were well-understood, routine, conventional activity.
Req. Reh’g 10–13.
Contrary to Appellant’s assertion, and consistent with the MPEP,2 the
Examiner and our Decision considered the additional elements individually
and as an ordered combination and found them to be well-understood,
routine, conventional activities. See Decision 12–13 (citing Mort. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir.
2016); Alice, 573 U.S. at 226; Intellectual Ventures I LLC v. Erie Indem.
Co., 850 F.3d 1315, 1329 (Fed. Cir. 2017); Spec. 8:10–12, 17:13–29); see
also Final Act. 5; Ans. 6. Further contrary to Appellant’s assertions, as we
noted in the Decision (see Decision 10), Appellant acknowledges in the
Specification that the purchase of digital media from iTunes® (a centralized
media database) was known. See Spec. 2:19–27.
For the reasons discussed supra, we do not find Appellant’s
arguments identify with particularity points believed to have been
misapprehended or overlooked by the Board as required by 37 C.F.R.
§ 41.52, and Appellant’s arguments are unpersuasive of error in our
Decision affirming the Examiner’s decision to reject claims 38–56 and 64–
67 as being patent ineligible under 35 U.S.C. § 101.

2 Support for a finding that an element was well understood, routine, or
conventional may be shown by citation to one or more court decisions
noting the well-understood, routine, conventional nature of the element(s).
See MPEP §2106.07(a)(III).
Appeal 2018-006613
Application 10/591,416

6
In light of the discussion herein, we modify our original Decision to
withdraw claims 60–63 from consideration, consistent with Appellant’s
amendment canceling these claims, and leave it to the Examiner to cancel
claims 60–63 following this decision. We do not otherwise alter our
Decision.

CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
60–63 103(a) Fanning, Kreuzer 60–63
60–63 101 Patent eligibility 60–63
38–56, 64–
67
101 Patent eligibility 38–56,
64–67

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
38–56,
64–67
101 Patent eligibility 38–56,
64–67

GRANTED