Ex Parte Avedissian

Patent Trials and Appeals BoardMar 27, 2019

14045235 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/045,235 10/03/2013 20995 7590 03/29/2019 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 FIRST NAMED INVENTOR Narbeh Avedissian 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 ATTORNEY DOCKET NO. CONFIRMATION NO. IN0V.001P1Cl 3203 EXAMINER NETZLOFF, ERIC R ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 03/29/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): j ayna.cartee@knobbe.com efiling@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NARBEH A VEDISSIAN Appeal2018-002993 Application 14/045,23 51 Technology Center 3600 Before MICHAEL J. STRAUSS, ADAM R. PYONIN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claim 31, the only claim pending in the application. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. We enter a new ground of rejection for claim 31 under 35 U.S.C. Â§ 112, first paragraph. 1 Appellant identifies Innovation Collective, LLC as the real party in interest. See Br. 3. 2 Claims 1-3 0 are cancelled. See Br. 21. Appeal2018-002993 Application 14/045,235 STATEMENT OF THE CASE Invention Appellant's invention relates to "select[ing] artists meeting a certain threshold of feedback and apportioning revenue derived from services based on network traffic associated with artist's performance data, and distribution of advertisement and artist's media content." See Spec. ,r 4. 3 Claim Claim 31 is reproduced below with bracketed material added. 31. A multi-channel video distribution system, compnsmg: [a] an interface to a media file data repository accessible by one or more computers over a network; [b] a system comprising one or more microprocessors, programmable digital signal processors, and an application specific integrated circuit, the system configured to: [ c] simultaneously record and stream, via the interface, to user devices at least a first video from a media submitter; [ d] receive, over a communication network via the interface, uploads of a plurality of media files comprising a plurality of media files associated with the media submitter, one or more of the media files comprising performance data; [ e] store, in the media file data repository, the plurality of media files in association with an account associated with said media submitter; [ fJ via an online profile page of the media submitter: 3 Our Decision refers to: (1) Appellant's Specification filed October 3, 2013 ("Spec."); (2) the Final Rejection mailed November 17, 2016 ("Final Act."); (3) the Appeal Brief filed August 14, 2017 ("Br."); and (4) the Examiner's Answer mailed November 9, 2017 ("Ans."). 2 Appeal2018-002993 Application 14/045,235 [g] provide access to the plurality of media files in association to one or more user device over the communication network; [h] enable users to communicate using a Voice over Internet Protocol communication mechanism; [i] provide a custom radio station comprising a streamable playlist; rn provide a search engine configured to enable users to access the custom radio station; [k] synchronize one or more of the plurality of media files of the media submitter with a remote system that provides at least one alternate system for distributing the one or more of the plurality of media files; [l] track a number of instances of advertisements associated with offline distribution of the performance data of said media submitter's performance data; [ m] track a number of views of a plurality of online items of performance data associated with advertisements; [ n] determine if a first predetermined threshold is met based on an aggregate number of views of the plurality of items of performance data associated with advertisements and the number of instances of advertisements associated with the offline distribution of the media submitter's performance data; [ o] determine the availability of at least one service; [p] based at least in part on the availability of at least one service and the first predetermined threshold being met, dynamically generate a first offer of a first level of enhanced online and offline services and automatically establish a communication between the media submitter and one other entity with respect to providing at least a portion of the first level of enhanced online and offline services; [ q] at least partly in response to acceptance of the first offer of the first level of enhanced online and offline services, enabling the provision of the first level of enhanced online and offline services; 3 Appeal2018-002993 Application 14/045,235 [ r] based at least in part on the availability of at least one service and a second predetermined threshold being met, the second predetermined threshold higher than the first predetermined threshold, dynamically generating a second offer of a second level of enhanced online and offline services; [ s] at least partly in response to acceptance of the second offer of the second level of enhanced online and offline services, enabling the provision of the second level of enhanced online and offline services. Appeal Br. 21-22. REJECTION Claim 31 stands rejected under 35 U.S.C. Â§ 101 as being directed to a judicial exception without adding significantly more. See Final Act. 2-11. DISCUSSION The Examiner determines claim 31 is patent ineligible under 35 U.S.C. Â§ 101, because the claim is directed to an abstract idea and does not include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Act. 3-1 O; Ans. 3-11; see also Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts"). After the mailing of the Answer and the filing of the Brief in this case, the US PTO published revised guidance on the application ofÂ§ 101 ("Guidance"). See USPTO's 2019 Revised Patent Subject Matter Eligibility 4 Appeal2018-002993 Application 14/045,235 Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under the Guidance "Step 2A," the office first looks to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Guidance "Step 2B") look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. The Examiner determines the claimed "concept of compensating and promoting authors and these business practices have long been organized by contractual relationship that specify various financial and promotional schemes as well as the rights of authors" and "[t ]his concept is similar to other 'certain methods of organizing human activity' found to be abstract ideas." Final Act. 3--4. Appellant argues the Examiner erred in determining the claim is directed to an abstract concept because the Examiner: (1) "fails to quote from Claim 31 in identifying an abstract idea" and thus fails to identify the specific limitations that recite the abstract idea; (2) "fail[ s] to consistently specify the alleged abstract idea"; and (3) fails to demonstrate the alleged 5 Appeal2018-002993 Application 14/045,235 abstract idea "is similar to other 'certain methods of organizing human activity found to be abstract ideas by the Supreme Court and Federal Circuit Courts."' Br. 8, 9, 10. Pursuant to the Guidance, we are persuaded of Examiner error in the rejection. Examples of certain methods of organizing human activity are enumerated in the Guidance to include "fundamental economic principles or practices ... commercial or legal interactions ... managing personal behavior or relationships or interactions between people." Memorandum, Section I (Groupings of Abstract Ideas). Further, the Guidance describes mental concepts as "concepts performed in the human mind (including an observation, evaluation, judgment, opinion)" and mathematical concepts as "mathematical relationships, mathematical formulas or equations, mathematical calculations." Id. Claim 31 recites limitations such as [ c] "simultaneously record and stream, via the interface, to user devices at least a first video," [d] "receive, over a communication network via the interface, uploads of a plurality of media files," [g] "provide access to the plurality of media files" [i] "provide a custom radio station comprising a streamable playlist," Li] "provide a search engine configured to enable users to access the custom radio station," [k] "synchronize one or more of the plurality of media files," [ m] "track a number of views of a plurality of online items," and [ n] "determine if a first predetermined threshold is met based on an aggregate number of views." Br. 21-22. The Examiner has not sufficiently demonstrated that these limitations are consistent with certain methods of organizing human activity, pursuant to the Guidance. Nor do we see, based on the record before us, any indication by the Examiner that these limitations are mathematical concepts or mental processes as enumerated 6 Appeal2018-002993 Application 14/045,235 above. See Memorandum, Section III(A)(l) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). Accordingly, we are persuaded claim 31 has not been shown to "recite a judicial exception ( a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas in Section I)," and thus "the claim is eligible at Prong One of revised Step 2A." Memorandum, Section III (Instructions for Applying Revised Step 2A During Examination). NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. Â§ 4I.50(b), we enter a new ground of rejection for claim 31 under 35 U.S.C. Â§ 112, first paragraph, as lacking written support in the originally filed Specification for the limitations shown below: [p] based at least in part on the availability of at least one service and the first predetermined threshold being met, dynamically generate a first offer of a first level of enhanced online and offline services and automatically establish a communication between the media submitter and one other entity with respect to providing at least a portion of the first level of enhanced online and offline services; [ q] at least partly in response to acceptance of the first offer of the first level of enhanced online and offline services, enabling the provision of the first level of enhanced online and offline services; [ r] based at least in part on the availability of at least one service and a second predetermined threshold being met, the second predetermined threshold higher than the first predetermined threshold, dynamically generating a second offer of a second level of enhanced online and offline services; 7 Appeal2018-002993 Application 14/045,235 [ s] at least partly in response to acceptance of the second offer of the second level of enhanced online and offline services, enabling the provision of the second level of enhanced online and offline services. Appellant relies on paragraphs 5, 20, and 24 of the Specification to provide written description support for these limitations. See Br. 5. These paragraphs are recited below: [0005] One or more embodiments of the invention are directed to a system and method for providing one or more services to an artist or a group of artists (hereinafter "artist") meeting a certain threshold of feedback and apportioning revenue derived from services associated with artist's performance, and distribution of advertisement and artist's media content. The general methodology involves obtaining information about an artist and obtaining performance data associated with the artist. In certain embodiments, the performance data is a media file ( e.g., audio, video, and/or text or any combination thereof). Once obtained this performance data is then exposed to the community for feedback in a manner that is determinative of the outcome associated with a particular artist. The community in general is formed from peers and other artists that generally have an interest in the artist's activities of genre but may also comprise users who enjoy participating in an online community where new artist content is plentiful. After meeting a certain threshold of feedback from the online community, a decision is made to extend an offer to the artist. Such offer may include one or more services to promote the artist, distribute the artist's performance data, and allow for revenue participation associated with such service. Another aspect relates to the administration and monetization of methods of use of the submitted performance data and/ or artist's performance activity. In certain embodiments, the submitted performance data may be licensed for use by third parties for distribution through offline channels such as cell phones, podcasts, cable television, satellite television, and/or broadcast television. The submitted performance data may be licensed for reproduction on DVDs, videotapes and/or other formats for sale 8 Appeal2018-002993 Application 14/045,235 by the licensee. In embodiments, the artist would be able to opt- in to any licensing program. [0020] Revenue participation and service offer is presented at 102. Embodiments of the invention that present offers to a user can be implemented using any graphical user interface or web interface configured to obtain data from a server and present the data to a plurality of users. For instance a Skypeâ„¢ or other such interface may provide a free interface between users and artist. The presentation of offers allows a selected artist to opt into one or more service. An offer may be dynamically generated prior to presentation depending on availability of one or more service and whether the service has a different threshold value or condition. For example, an additional service may be available for artist reaching a higher threshold value or condition. Services may also depend on a condition, which is recorded in a database, as set up by advertisers, sponsors, or programmers seeking a certain target audience. The selected artist is offered compensation from the revenue generated from advertisement on the artist or affiliate page and/ or sale of any media with the submitted performance data. Advertisements may be in any form and include but are by no means limited to online advertisements. Video, image and other types of ads are in keeping with the spirit of the invention. Upon accepting an offer, artist's user account is configured to associate with a revenue participation process. [0024] Fig. 2 is a flow diagram that illustrates an embodiment of revenue participation process. Processing starts at 200. Revenue participation and service offer is presented at 201. Embodiments of the invention that present offers to a user can be implemented using any graphical user interface or web interface configured to obtain data from a server and present the data to a plurality of users. The presentation of offer 201 allows selected artist to opt into one or more service. An offer may be dynamically generated during the presentation depending on availability of one or more service and whether the offer of a service has a different threshold value or condition ( e.g. sponsor looking for a winner of a music audition of a specific genre). Upon accepting offer, the user account of artist is configured at step 202 to allow a database to record on the user account and 9 Appeal2018-002993 Application 14/045,235 track scores or instances of one or a combination of revenue- generating sub processes such as online viewing of advertisement on the user's media content ( e.g., webpage) 203a, digital media download of artist's performance data 203b, and/ or online referrals initiated by the selected artist 203c. Limitations [p], [ q], [ r], and [ s] generally recite generating "a first offer of a first level of enhanced online and offline services" based on a "first predetermined threshold being met" and "generating a second offer of a second level of enhanced online and offline services" based on a "second predetermined threshold being met" and enabling the provision of both the first and second level of enhanced online and offline services at least partly in response to acceptance of the first and second offer. The paragraphs cited by Appellant do not discuss first and second offers, first and second thresholds, or first and second levels of enhanced online and offline services. In fact, the Specification is silent about levels of online and offline services and about enhanced services of any kind. The Specification as cited by the Appellant, thus, does not provide written description support for the limitations. In addition, limitation [p] recites "automatically establish a communication between the media submitter and one other entity with respect to providing at least a portion of the first level of enhanced online and offline services." The paragraphs cited by Appellant are silent about "one other entity" and "automatically establish[ing] a communication" and, thus, do not provide written support for the limitation. 4 4 In the event of further prosecution we encourage the Examiner to thoroughly review the claim for other potential issues under 35 U.S.C. Â§ 112, first, second, and sixth paragraphs. See, e.g., Examining Computer- IO Appeal2018-002993 Application 14/045,235 Accordingly, we enter a NEW GROUND OF REJECTION against claims 31 under 35 U.S.C. Â§ 112, first paragraph, as lacking written description support in the originally filed Specification. DECISION We reverse the Examiner's decision to reject claim 31 under 35 U.S.C. Â§ 101. Pursuant to our authority under 37 C.F.R. Â§ 41.50(b), we enter a new ground of rejection for claim 31 under 35 U.S.C. Â§ 112, first paragraph. Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the Appellants, within two months from the date of the Decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be Implemented Functional Claim Limitations for Compliance With 35 U.S.C. 112, 84 Fed. Reg. 57 (Jan. 7, 2019). 11 Appeal2018-002993 Application 14/045,235 reheard under Â§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv) REVERSED 37 C.F.R. Â§ 4I.50(B) 12