Adobe Inc.

Patent Trials and Appeals Board

Jul 10, 2020

14081193 - (D) (P.T.A.B. Jul. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/081,193 11/15/2013 Vijay Ghaskadvi 3148US01 5060
108982 7590 07/10/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
07/10/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIJAY GHASKADVI, DANIEL C. BROTSKY,
CRISTIAN-MIHAI MARIN, SHYAMA P. PADHI, KASHYAP JOGI,
GUANSHAN YU, and DAVID POND

Appeal 2020-000569
Application 14/081,193
Technology Center 3600
____________

Before JAMES A. WORTH, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1, 2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–4, 6–8, 21, 22, 24–26, 28, 31, 32, and 35–39,

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe Inc.
Appeal Br. 3.
2 Our Decision refers to Appellant’s Appeal Brief (“Appeal Br.,” filed June
6, 2019) and Reply Brief (“Reply Br.,” filed October 28, 2019), the
Examiner’s Final Office Action (“Final Act.,” mailed January 8, 2019),
Answer (“Ans.,” mailed August 28, 2019).
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which are all pending claims. Claims 5, 9–20, 23, 27, 29, 30, 33, and 34
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

STATEMENT OF THE CASE
Background
Appellant’s application describes embodiments with “features and
concepts” related to “provisioning rules to manage user entitlements.” See
Spec. ¶ 2. The Specification discloses that “[p]roducts, such as software
applications, can be offered as subscriptions, and each subscription entitles a
user to one or more specific entitlements, such as a one-year license to use
the software application, as well as a certain amount of central data storage
space, or other entitlements.” Id. ¶ 1. The Specification discloses that
“[p]roblems with allocating and managing the entitlements can arise when
an individual user or business organization has multiple overlapping
subscriptions, which then entitles the consumer entity to various, multiple
associated entitlements and/or conflicting entitlements.” Id. In certain
implementations of the described invention, the “entitlement manager can
merge the similar fulfillable entitlements by one of adding the similar
fulfillable entitlements, deleting at least one of the similar fulfillable
entitlements, or organizing the similar fulfillable entitlements as a single
fulfillable entitlement for the consumer entity.” Id. ¶ 5.
The Claims
Claims 1, 21, and 28 are the independent claims on appeal. Claim 1,
reproduced below, is representative of the subject matter on appeal:
1. A system, comprising:
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a processor to implement an entitlement manager that is
configured to:
[(a)] associate a user identifier with purchased
entitlements that each correspond to a different product
or service purchased by a consumer entity from one or
more service groups and that are each associated with
one or more fulfillable entitlements;
[(b)] receive provisioning rules that specify, for
each of the purchased entitlements, at least one of the one
or more fulfillable entitlements that are available to the
consumer entity;
[(c)] utilize a multi-dimensional vector space
technique to generate an entitlement model that relates
the purchased entitlements of the consumer entity,
correlates the fulfillable entitlements specified by the
provisioning rules with the purchased entitlements, and
identifies resultant allocations of fulfillable entitlements
for the consumer entity;
[(d)] generate a merged fulfillable entitlement for
at least two different products or services, the merged
fulfillable entitlement comprising a single value
representing a merger of at least two fulfillable
entitlements for the consumer entity; and
[(e)] control access to the at least two different
products or services using the merged fulfillable
entitlement.

Appeal Br., Claims App.

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REJECTIONS ON APPEAL
I. Claims 1–4, 6–8, 21, 22, 24–26, 28, 31, and 32 stand rejected
under 35 U.S.C. § 101, as being directed to a judicial exception
(i.e., an abstract idea) without significantly more.3
II. Claims 1–4, 6–8, 21, 22, 24–26, 28, 31, and 32 stand rejected
under 35 U.S.C. § 102(a)(1) and/or § 102(a)(2), as being
anticipated by Selberg (US 7,748,030 B1, iss. June 29, 2010).4
III. Claims 35–39 stand rejected under 35 U.S.C. § 103(a), as being
unpatentable over Selberg and McCarty (Brad McCarty, Gmail
users: Buying extra storage will not increase your space over 25
GB (Oct. 8, 2012)).
DISCUSSION
Rejection I (Patent Eligibility)
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).

3 The Examiner states that claims 9, 27, 30, 33, and 34 also stand rejected
under § 101. Final Act. 2. However, claims 9, 27, 30, 33, and 34 have been
canceled.
4 The Examiner states that claims 27, 30, 33, and 34 also stand rejected
under § 102. Final Act. 2. However, claims 9, 27, 30, 33, and 34 have been
canceled.
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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 Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Nevertheless, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
If a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, then we consider 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
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(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.
Analysis
Claims 1–4 and 6–8
Appellant argues the rejection of claims 1–4 and 6–8 as a group. We
select claim 1 as representative such that claims 2–4 and 6–8 stand or fall
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Step 1
Applying Step 1 of the Guidance (which is unchanged from the prior
guidance) to the present case, we determine: independent claim 1 recites a
“system, comprising: a processor to implement an entitlement manager,”
which is a “machine” falling within one of the categories enumerated under
§ 101.
Step 2A, Prong One
The Examiner determines that claim 1 recites concepts relating to
certain methods of organizing human activity, a fundamental economic
practice, and an idea in itself, which the Examiner states are abstract ideas.
Ans. 4; Final Act. 5 (citing, inter alia, Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016); Smartflash, LLC v. Apple, 680 F.
App’x 977 (Fed. Cir. 2017)(non-precedential); Digitech Image Techs., LLC
v. Elecs. For Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). In reaching
this determination, the Examiner focused on five claim limitations of how
the processor is configured, i.e., to “associate a user identifier”; “receive
provisioning rules”; “utilize a multi-dimensional vector space technique to
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generate an entitlement model”; “generate a merged fulfillable entitlement
for at least two different products or services, the merged fulfillable
entitlement comprising a single value representing a merger of at least two
fulfillable entitlements for the consumer entity”; and “control access to the at
least two different products or services using the merged fu1fillable
entitlement.” Final Act. 3.
Appellant argues that the Examiner has oversimplified the claim
(citing McRO v. Bandai Namco Games America, 837 F.3d 1299 (Fed. Cir.
2016)), that the claim recites more than collecting and analyzing
information, that collecting information and “generating an entitlement
model” is not found in the Guidance nor in the USPTO’s July 2018
Eligibility Quick Reference Sheet Identifying Abstract Ideas, and that the
Examiner has not tied the clam language to the cases cited by the Examiner.
Appeal Br. 20–25. Appellant further argues that the Examiner erred by
characterizing the claim as the merging together of different products.
Reply Br. 2–4. We analyze the claim anew, giving full effect to the claim
language, and how it relates to the Guidance and case law as follows.
The Guidance instructs us first to determine whether any judicial
exception to patent eligibility is recited in the claim. The Guidance
identifies three judicially-excepted groupings: (1) mathematical concepts,
(2) certain methods of organizing human activity such as fundamental
economic practices, and (3) mental processes.
In context, claim 1 recites the idea of a processor configured to
identify a user’s entitlements and merge the entitlements for at least two
products or services into a merged entitlement. In particular, the recited
processor is configured to perform the following steps: (a) “associate a user
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identifier with purchased entitlements” that correspond to a “product” or
“service” and are “associated with one or more fulfillable entitlements”; (b)
“receive provisioning rules” that specify “one or more fulfillable
entitlements” for each purchased entitlement; (c) “identif[y] resultant
allocations of fulfillable entitlements” by utilizing a “multi-dimensional
vector space technique to generate an entitlement model” by “correlat[ing]
the fulfillable entitlements . . . with the purchased entitlements” based on
“the provisioning rules”; (d) “generate a merged fulfillable entitlement for at
least two different products or services” which is a “single value
representing a merger of at least two fulfillable entitlements”; and (e)
“control access” to the at least two “products” or “services” using the
merged fulfillable entitlement.
In other words, the processor is configured to perform the steps
recited in the following limitations. Limitation (a) converts a user identifier
to a set of purchased entitlements. Limitation (b) converts the set of
purchased entitlements to a set of fulfillable entitlements. Limitation (c)
correlates the information from limitations (a) and (b) into a model using “a
multi-dimensional vector space technique.” Limitation (d) combines
multiple fulfillable entitlements into a “merged fulfillable entitlement.”
Limitation (e) controls access to a set of products or services using the
“merged fulfillable entitlement.”
Although claim 1 recites the idea of a processor configured to identify
a user’s entitlements and merge the entitlements for at least two products or
services into a merged entitlement, under the broadest reasonable
interpretation, these steps can be performed by an entitlement manager in an
effort to organize and manage the user’s entitlements for two products or
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services. Considered together, steps (a) through (e) involve managing the
personal behavior of an entitlement manager by using rules and instructions
to manage consumer entitlements, which falls within a method of organizing
human activity under the Guidance. 84 Fed. Reg. at 52 (Certain methods of
organizing human activity including managing personal behavior by
following rules or instructions).
We observe that the steps of organizing information in limitations (a)–
(d) are similar to the claim at issue in In re Jobin, which was directed to “the
collection, organization, grouping and storage of data using techniques such
as conducting a survey and crowdsourcing.” Id., 2020 WL 2298381, at *4,
Case No. 2020-1067 (Fed. Cir. May 8, 2020) (non-precedential). In that
case, the court held that the claim was directed to a method of organizing
activity identified as being abstract. We determine that the claimed idea, in
this case, of a processor configured to identify a user’s entitlements and
merge the entitlements for at least two products or services into a merged
entitlement is, similarly, one of the certain methods of organizing activity
identified as abstract under the Guidance, i.e., because it is organizing
information related to consumer entitlements.
Further, the step to “control access” in limitation (e) is similar to the
claim at issue in Ericsson, where the claim was directed to controlling access
to resources and where the court held that such an idea was “pervasive in
human activity.” See Ericsson Inc. v. TCL Communication Technology
Holdings Ltd., 955 F.3d 1317, 1326–27 (Fed. Cir. 2020).
Under the broadest reasonable interpretation, we also determine that
this idea can practically be performed in the human mind or with pen and
paper, which is a mental process and, thus, an abstract idea. See id. (“Mental
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processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion.”). The claim includes limitation
(c) that correlates the information from limitations (a) and (b) into a model
using “a multi-dimensional vector space technique.” This type of correlation
is similar to the type of mental process at issue in In re Rudy, 956 F.3d 1379,
1384 (Fed. Cir. 2020), where there was a claim for selecting a fishing hook
based on observed water conditions.
As an example, the Specification illustrates a correlated set of
entitlement information from Figure 2:

FIG. 2 (excerpted above) illustrates an example of an entitlement
model that correlates fulfillable entitlements with purchased entitlements,
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and resultant allocations of the fulfillable entitlements in accordance with
one or more embodiments of provisioning rules to manage user entitlements.
Spec. ¶ 7.
With respect to the example of Figure 2, the Specification explains
that the entitlement manager can add an entitlement to 5 GB and an
entitlement to 10 GB to yield a merged entitlement to 15 GB of storage
space for customer 210. See Spec. ¶ 30. The entitlement manager can also
be implemented to combine an entitlement to “level 2” for product 214 with
an entitlement to “level 3” for product 222 into a resultant allocation 230 of
level 3 for all products in the merged entitlement. Id. ¶ 31. Similarly, the
entitlement manager can merge the one year product licenses for each of the
different products as one resultant allocation 234 of a one year license for all
of the products purchased by customer 210. Id.
The operations of combining entitlements can therefore be performed
using a chart and a set of rules, similar to type of chart used in In re Rudy to
perform the mental process. See Rudy, 956 F.3d at 1384.
Limitation (a) recites a mental process because the step of associating
a user identifier (i.e., a name) with an entitlement can be performed in the
human mind, particularly because the claim merely requires organizing and
managing a user’s entitlements for two products or services. Limitation (b),
i.e., receiving provisioning rules, could be performed by looking in a store
manual or in notes made with pen and paper. Limitation (c), i.e., utilizing a
multi-dimensional vector space, can be performed with pen and paper to
write a chart, or to use a predetermined chart, as discussed above with
respect to In re Rudy. Limitation (d), i.e., generating a merged entitlement,
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could be performed by looking in a store manual, as with limitations (b) and
(c).
Further, limitation (e), i.e., to “control access,” is similar to the claim
in Ericsson for “controlling access to resources,” which the court held was
also “exactly the sort of process ‘that can be performed in the human mind,
or manually by a human using a pen and paper.” 955 F.3d at 1327. Indeed,
Appellant’s Specification discloses that “any of the services, components,
modules, methods, and operations described herein can be implemented using
software, firmware, hardware (e.g., fixed logic circuitry), manual processing,
or any combination thereof.” Spec. ¶ 32 (emphasis added).
Step 2A, Prong Two
Having determined that claim 1 recites a judicial exception, our
analysis under the Guidance turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h). We use the term
“additional elements” for “claim features, limitations, and/or steps that are
recited in the claim beyond the identified judicial exception.” See Guidance,
84 Fed. Reg. at 55 n.24. When a claim recites a judicial exception and fails
to integrate the exception into a practical application, the claim is “directed
to” the judicial exception. Guidance, 84 Fed. Reg. at 51. A claim may
integrate the judicial exception when, for example, it reflects an
improvement to a technology or technical field. Id. at 55.
The only additional element recited in claim 1 is a “processor,” which
the Specification describes at a high level of generality, i.e., a generic
computer. Spec. ¶ 42 (Device 402 described as “any type of client device,
mobile phone, tablet, computing, communication, entertainment, gaming,
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media playback, and/or other type of device.”). Appellant’s written
disclosure provides that the claimed invention merely uses that generic
processor as a tool to perform the abstract idea. Spec. ¶ 45 (“The device 402
includes a processing system 410 that may be implemented at least partially in
hardware, such as with any type of microprocessors, controllers, and the like
that process executable instructions.”). To be patent eligible, software
inventions must make “non-abstract improvements to existing technological
processes and computer technology.” Koninklijke KPN N.V. v. Gemalto
M2M GmbH, 942 F.3d 1143, 1150 (Fed. Cir. 2019) (emphasis added).
“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”
DDR Holdings, 773 F.3d at 1256.
Appellant argues claim 1 is directed to addressing a digitally-rooted
challenge, which in this instance involves purchased entitlements that each
correspond to a different product or service and are each associated with one
or more fulfillable entitlements. Appeal Br. 26–27 (citing DDR Holdings v.
Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014)). As discussed, claim 1
includes “a processor to implement” the abstract idea recited in steps (a)
through (e). However, the mere presence of a processor does not necessarily
indicate a technical solution. See generally Ex parte Kimizuka, Appeal No.
2018-001081, 2019 WL 2244784, at *6 (PTAB May 15, 2019)
(informative). “Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.” Versata Dev.
Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015), quoted in
Guidance, 84 Fed. Reg. at 52 n.14. “To claim a technological solution to a
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technological problem, the patent must actually claim the technological
solution.” Dropbox Inc. v. Synchronoss Technologies, Inc., 2020 WL
3400682, at *6, Case No. 2019-1765 (June 19, 2020) (non-precedential).
Step 2B
Having determined under step one of the Alice framework that claim 1
is directed to an abstract idea, we next consider under Step 2B of the 2019
Revised Guidance, the second step of the Alice framework, whether claim 1
includes additional elements beyond the judicial exception that are not
“well-understood, routine, conventional” in the field, or merely appends
well-understood, routine, and conventional activities, specified at a high
level of generality to the judicial exception. 84 Fed. Reg. at 56. The
relevant inquiry is whether the claim includes additional elements, i.e.,
elements other than the abstract idea itself, that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217
(quoting Mayo, 566 U.S. at 79, 78).
As discussed, the only claim element beyond the abstract idea is the
claimed “processor.” The Examiner finds that the generically recited
processor is considered to be well-understood routine and conventional.
Final Act. 8–10. We agree with the Examiner that the operation of the
recited generic processor is well-understood, routine, or conventional,
because the Specification fails to indicate that the operations recited in claim
1 require any specialized hardware or inventive computer components or
that the claimed invention is implemented using anything other than generic
computer components to perform generic computer functions. For example,
the Specification indicates that the computing device “can be implemented
with various components, such as a processing system and memory, and
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with any number and combination of differing components as further
described with reference to the example device show in FIG. 4.” Spec. ¶ 11.
The example of Figure 4 states that “[t]he example device 402 can be
implemented as any of the devices and/or servers described with reference to
the previous FIGs. 1–3, such as any type of client device, mobile phone,
tablet, computing, communication, entertainment, gaming, media playback,
and/or other type of device.” See Spec. ¶ 42.
Appellant argues that “specific features recited in claim 1 are not
well-understood, routine, or conventional activity.” Appeal Br. 28.
Specifically, Appellant argues that the claimed features, i.e., “the merged
fulfillable entitlement compris[es] a single value representing a merger of at
least two fulfillable entitlements” “for the at least two different products or
services,” which is useable to control access to the at least two different
products, does not represent well-understood, routine, or conventional
activity. Id. at 29. Appellant’s argument is not persuasive because “a
claimed invention’s use of the ineligible concept to which it is directed
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).
For these reasons, we sustain the Examiner’s rejection of claims 1–4
and 6–8 under § 101.
Claims 21 and 28
Appellant’s arguments with respect to independent claims 21 and 28
are similar to those made with respect to independent claim 1. With respect
to Prong 2, claim 21 does not recite any additional elements and claim 28
recites a “computing device,” which would be similar to the “processor”
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discussed above with respect to claim 1. We, therefore, sustain the
Examiner’s rejection of claims 21 and 28 under § 101, for similar reasons as
independent claim 1.
Claims 22, 24–26, 31, and 32
Appellant does not argue claims 22, 24–26, 31, and 32 separately
from claims 21 and 28, from which they each depend. We, therefore, sustain
the Examiner’s rejection of claims 22, 24–26, 31, and 32 under § 101, for
the same reasons as independent claim 21 and 28.
Rejection II (Anticipation)
Claims 1–4, 6–8, 21, 22, 24–26, 28, 31, and 32
We are persuaded by Appellant’s argument that Selberg fails to
disclose the limitation “generate a merged fulfillable entitlement for at least
two different products or services, the merged fulfillable entitlement
comprising a single value representing a merger of at least two fulfillable
entitlements for the consumer entity,” as recited in independent claim 1. See
Appeal Br. 32. Although Selberg discloses more than one license, we find
that Selberg fails to disclose a merging of licenses. For example, Selberg’s
Figure 6 discloses an algorithm that only inquires whether there are more
content licenses (item 536), when there is no licensed use or allowed
licensed under a subscription (item 535). Similarly, Selberg’s Figure 8
discloses an algorithm that only inquires whether there are more (license)
templates in the chain (item 820) when the entitlement requirements are not
met.
The Examiner relies on the following portions of Selberg: Fig. 2,
Abstract, 5:64–7:2, 7:23–41. Final Act. 13; Ans. 7. We have reviewed these
portions of Selberg and determine that they do not disclose the disputed
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limitation. Although Selberg’s Figure 2 discloses multiple licenses, Selberg
uses these licenses in the alternative and does not disclose merging them into
a “merged fulfillable entitlement,” as recited. The other cited portions of
Selberg explain that there can be a matrix of licenses and that these can be
used to determine whether a user is entitled to a presentation (see Selberg,
Abstract, 5:64–7:2), and packaging a presentation (id. at 7:23–41). The
Examiner reasons that the ultimate decision to grant or deny use is a merger
of the licenses. See Ans. 7. However, the licenses are not necessarily
merged when Selberg’s algorithm determines whether a user has a right to
view a presentation, because the Examiner does not account for the
possibility that the licenses are being used in the alternative. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.”). Although a portion of Selberg refers to merging states (see
Selberg, 7:23–41), the context makes clear that these are states of the
process, and not entitlements that are being merged. See Selberg, 7:42–65.
Accordingly, we do not sustain the Examiner’s rejection under § 102
of independent claim 1 and its dependent claims 2–4 and 6–8.
Claims 21, 22, 24–26, 28, 31, and 32
Independent claims 21 and 28 contain similar language and
requirements as independent claim 1. We, therefore, do not sustain the
Examiner’s rejection under § 102 of independent claims 21 and 28 and their
dependent claims 22, 24–26, 31, and 32.
Rejection III (Obviousness)
Claims 35–39
Appeal 2020-000569
Application 14/081,193

19
Claims 35–39 depend from claims 1 and 28 and stand rejected under
§ 103 over Selberg and McCarty. The Examiner does not rely on McCarty
to remedy the deficiency in the rejection of claims 1 and 28 under § 102 over
Selberg. We, therefore, do not sustain the Examiner’s rejection of claims
35–39 under § 103 over Selberg and McCarty.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
1–4, 6–8, 21, 22,
24–26, 28, 31, and
32
§ 101  1–4, 6–8, 21,
22, 24–26, 28,
31, and 32

1–4, 6–8, 21, 22,
24–26, 28, 31, and
32
§ 102  1–4, 6–8, 21,
22, 24–26, 28,
31, and 32
35–39 § 103 35–39
Overall Outcome 1–4, 6–8, 21,
22, 24–26, 28,
31, and 32
35–39

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART