Ex Parte Berger

Patent Trials and Appeals Board

Mar 19, 2019

13336472 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/336,472 12/23/2011
51518 7590
MA YER & WILLIAMS PC
55 Madison A venue
Suite 400
Morristown, NJ 07960
03/21/2019
FIRST NAMED INVENTOR
Richard Berger
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.
201003740.02 9384
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/21/2019 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):
docket@mwpatentlaw.com
mwolf@mwpatentlaw.com
kwilliams@mwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD BERGER
Appeal2017-009880
Application 13/336,472
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1---6, 9-11, and 30-33. 3 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this decision, we refer to the Appellant's Appeal Brief ("Br.,"
filed Feb. 21, 2017) and Specification ("Spec.," filed Dec. 23, 2011), and to
the Examiner's Answer ("Ans.," mailed Apr. 11, 2017) and Final Office
Action ("Final Act.," mailed July 21, 2016).
2 According to the Appellant, the real parties in interest are "SONY
CORPORATION and SONY PICTURES TECHNOLOGIES INC." Br. 2.
3 Claim 34 has been withdrawn. Br. 2.
Appeal2017-009880
Application 13/336,472
STATEMENT OF THE CASE
The Appellant's invention relates to a selling service that enables
consumer promotion, sales, or gifting of content such as movies. Spec. ,r 4,
Title.
Claim 1 (Br. 18 (Claims App.)) is the only independent claim on
appeal, is representative of the subject matter on appeal, and is reproduced
below:
1. A method of operating an online marketplace for digital
content items and facilitating a sale of a digital content item from
a content item rights owner to a purchaser, comprising:
a. on a computer system including a processor
programmed to provide a selling service, configuring the selling
service to allow registrations of one or more content items by
content item rights owners, and registering at least one content
item owned by a content item rights owner;
b. configuring the selling service to allow registrations of
one or more sellers, and receiving a registration of a seller with
respect to one or more content items, the seller separate from the
content item rights owner, and wherein rights to the content item
are owned by the respective content item rights owner and not by
the seller;
c. associating the seller of step b) with a seller account, the
seller account configured to promote, offer for sale, and initiate
a transaction for a registered content item between a purchaser of
the content item and the content item rights owner;
d. causing a transmission of an audiovisual content item
from the selling service or from the content item rights owner to
the seller of step b ), wherein the seller of step b) may promote
the registered content item using the transmitted audiovisual
content item;
e. on the computer system of the selling service, receiving
a request for purchase or license of the registered content item
from a seller of step b ), the request for purchase or license caused
by the seller of step b) in response to a request for purchase or
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license, respectively, made from a purchaser to the seller of step
b);and
f. following fulfillment of the request for purchase or
license, causing transmission of rights to the purchased or
licensed registered content item to the purchaser from the content
item rights owner,
g. such that the seller of step b) is enabled to promote, offer
for sale, and initiate a transaction for the registered content item.
REJECTIONS
Claims 1---6, 9-11, and 30-33 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.
Claim 32 stands rejected under pre-AIA 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1---6, 9-11, 30, 31, and 33 stand rejected under pre-AIA
35 U.S.C. § I02(e) as being anticipated by Johnston (US 2010/0114739 Al,
pub. May 6, 2010).
Claim 32 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Johnston.
ANALYSIS
35 U.S. C. § 1 OJ - Patent-Eligible Subiect Matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. It is
undisputed that he subject matters of independent claim 1 and 11 ( and the
claims depending therefrom) fall within the "process" and "manufacture"
statutory categories of patentable subject matter, respectively.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether the claimed subject matter set forth in the
claims in this case falls within the judicially-excepted category of "abstract
ideas," 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 217 ("First, we determine whether the claims at
issue are directed to one of those patent-ineligible concepts. We conclude
that they are: These claims are drawn to the abstract idea of intermediated
settlement."). 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 (Gottschalkv. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); "tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores" (id. at 184 n. 7 ( quoting Corning v.
Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; 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."). Having
said that, 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. (internal citation omitted) (citing Benson and Flook); see,
e.g., id. at 187 ("It is now 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 tum 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 ( citation 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 First Step
Under the first step of the Mayo/Alice framework, the Examiner first
determines that "[ c ]laim 1 recites a method and is therefore directed towards
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one of the four categories of statutory subject matter." Final Act. 12. The
Examiner then determines that
claim 1 is directed towards the judicial exception regarding an
abstract idea involving the configuring of a selling service to
allow registrations of one or more content items by content item
rights owners, and registering at least one content item owned by
a content item rights owner, configuring the selling service to
allow registrations of one or more sellers, and receiving a
registration of a seller with respect to one or more content items,
the seller separate from the content item rights owner, and
wherein rights to the content item are owned by the respective
content item rights owners and not by the seller, associating the
seller with a seller account, causing a transmission of an
audiovisual content item from the selling service or from the
content item rights owner to the seller, receiving a request for
purchase or license of the registered content item from a seller,
causing transmission of rights to the purchased or licensed
registered content item to the purchaser from the content item
rights owner such that the seller is enabled to promote, offer for
sale, and initiate a transaction for the registered content item.
Id. at 14--15. The Examiner also determines that the dependent claims are
directed to the same judicial exception as they "merely add additional
limitations regarding the abstract idea." Id. at 15.
Conversely, the Appellant contends that the claims recite a method for
"allowing and enabling sellers to sell registered content ( owned by others)
along with providing them promotional material ( audiovisual content items)
with which to do so" (Br. 7) and argue that this is not an abstract idea
"considered by the courts or postulated by the PTO" (id.).
We agree with the Appellant that the claims are more concisely
characterized as reciting a method for allowing and enabling sellers to sell
registered content and providing sellers promotional material. The Title of
the Specification supports this characterization in providing for a "SYSTEM
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AND METHOD FOR ENABLING CONSUMER PROMOTION, SALE,
OR GIFTING OF CONTENT ITEMS SUCH AS MOVIES." Claim 1
further supports this characterization in providing for "[a] method of
operating an online marketplace for digital content items and facilitating a
sale of a digital content item from a content item rights owner to a purchaser,
comprising:" a) configuring the service to allow and register content items
by content rights owners, b) configuring the service to allow and receive
registrations of sellers separate from owners, c) associating the seller with an
account configured to promote, off er for sale, and initiate a transaction for
the content between a purchaser and owner, d) causing transmission of an
audiovisual content item from the service or owner, e) receiving a request
for purchase or license from the seller in response to a request by a
purchaser, f) causing transmission of rights following fulfillment of the
request to purchase or license, and g) enabling a seller to promote, offer for
sale, and initiate a transaction of the content.
These limitations, under the broadest reasonable interpretation of the
claim, recite a method for allowing and enabling sellers to sell registered
content and providing sellers promotional material. The limitations of
(a) allowing and registering items, (b) allowing and receiving registrations of
sellers, ( c) associating a seller with an account, ( e) receiving a request to
purchase, and (g) enabling a seller to promote, offer for sale, and initiate a
transaction are all activities that can be performed mentally and are
ordinarily performed in purchasing an item. The limitations of
(d) transmitting content and (f) transmitting rights as a purchase are simply
the transmitting of data, an extra-solution activity, and also ordinarily
performed in purchasing a content item.
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Whether characterized as narrowly as the Examiner does or as
concisely as the Appellant does, 4 the claimed method here of allowing and
enabling of sellers to sell registered content after purchase rights or license
to do so and to provide promotional material is similar to the claimed
method deemed abstract in Ultramercial, Inc, v. Hulu, LLC, 772 F.3d 709,
712 (Fed. Cir. 2014) of distributing products over the Internet via a
facilitator by receiving media products covered by rights protection,
selecting a sponsor message associated with the media product, providing
the media product for sale, restricting access to the media product, offering
access to the media product without charge if the user views the sponsor
message, receiving a request to view the message and in response thereto,
facilitating display of the message, allowing access to the media product,
recording the event, and receiving payment from the sponsor of the message.
See Ans. 4. The claimed method here is also similar to the concept of third -
party settlement in Alice, 573 U.S. at 219-20, of performing a sales
transaction over the Internet in to selling products in Priceplay.com, Inc. v.
AOL Advert., Inc., 83 F. Supp. 3d 577, 581 (D. Del. 2015), ajfd mem., 627
F. App'x 925 (Fed. Cir. 2016), and of coordinating loans in LendingTree,
LLC v. Zillow, Inc., 656 F. App'x 991, 996 (Fed. Cir. 2016). Accordingly,
we conclude claim 1 recites a method of organizing human activity of
commercial interactions including marketing and sales activities, as
4 We note that although the description of the abstract idea may differ
slightly between the Appellant and the Examiner, "[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). The Board's "slight
revision of its abstract idea analysis does not impact the patentability
analysis." Id. at 1241.
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identified in the 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019 Revised Guidance").
As such, we are not persuaded by the Appellant's argument that
allowing and enabling sellers to sell registered products and providing them
promotion material is not an abstract idea "considered by the courts or
postulated by the PTO." Br. 7. We also determine that the claims do not
"apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort designed to monopolize the judicial exception," i.e., the
claims do not integrate the abstract idea, i.e., judicial exception, into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54--55. 5
The computer system providing the service "may generally include a PC,
tablet or laptop computer, mobile device or the like ( e.g., devices associated
with elements 12, 14, 16, 18, 28, or 118)" (Spec. ,r 99), i.e., a generic
computing device operating in its ordinary and conventional manner (see id.
,r,r 99-108) to implement the abstract idea using the generic computing
device. None of the elements of the claims reflect an improvement to the
functioning of the generic computer or an improvement to a technology or
technical field. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Regarding the Appellant's argument that "the claims clearly do not
preempt all uses of the purportedly abstract concept and the claims are again
submitted to be patent-eligible" (Br. 8), although the Supreme Court has
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance, 84 Fed. Reg. at 55.
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described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of
preemption" (see Alice, 573 U.S. at 216), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[ fJor this reason, questions on preemption
are inherent in and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573
U.S. at 216). Although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.; see also Two-Way Media Ltd. v. Comcast Cable
Commc 'ns., LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) ("where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Alice framework, as they are in this case, preemption concerns are fully
addressed and made moot.").
Thus, we are not persuaded of error in the Examiner's determination
that the claims are directed to an abstract idea.
The Second Step
Under the second step in the Mayo/Alice framework, we find
supported the Examiner's determination that the claims "provide no
inventive concept sufficient to confer eligibility in light of the fact that the
claims are directed towards the judicial exception regarding an abstract
idea." Ans. 6-7. We are unpersuaded by the Appellant's arguments to the
contrary. See Br. 8.
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The Appellant argues that "there are numerous and significant claim
elements drawn to significantly more than the purportedly abstract concept"
and cites to the limitations requiring registering of a seller, causing
transmission of content from the service or owner to the registered seller,
"which can then be used in promotion, and so on." Br. 8. The Appellant
also argues that the dependent claims "relate to more specific
implementations that further cover more than any alleged abstract idea of
claim 1." Id. at 9. The Appellant alleges "[t]hese aspects constitute specific
technological steps of an Internet-centric method, and thus cause the claim
to amount to significantly more than the judicial exception of the stated
several abstract ideas." Id. at 8.
However, the Appellant does not provide support or reasoning as to
how the registering and transmission steps, or any of the steps of the
independent or dependent claims, cause a technological improvement or
"[ a ]dd[] a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field." 2019 Revised
Guidance, 84 Fed. Reg. at 56. The claims simply recite configuring a
computer to receive and transmit data, associating data, and enabling
promotion of an item, and the functional results to be achieved. The claims
"provide[] only a result-oriented solution with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). That
the method is "Internet-centric" (Br. 8) is not sufficient to add an inventive
concept to otherwise abstract claims. Ultramercial, 772 F .3d at 716.
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Thus, we are not persuaded of error in the Examiner's determination
that the limitations of the claims do not transform the claims into
significantly more than the abstract idea.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101, and we sustain the rejection of
claims 1---6, 9-11, and 30-34.
35 U.S. C. § 112, first paragraph - Written Description§_
The Examiner rejects claim 32 as failing to comply with the written
description requirement, because the Specification "does not provide a
disclosure of the computer and algorithm in sufficient detail to demonstrate
to one of ordinary skill in the art that the inventor possessed the invention
including how to program the disclosed computer to perform the claimed
function" of "allowing the seller to inform the content item rights owner that
a different price is to be used in the purchase of the rights such that it can be
applied to the purchase transaction." Final Act. 16-17. Specifically, the
Examiner finds that "the specification merely teaches an obtained result
without any teaching of how that result is obtained. Clearly one of ordinary
skill would not know what mechanism was being used to convey the
'arbitrary price' from the seller to the content item rights owner or even
whether the inventor had realized that a problem existed." Id. at 17-18.
Conversely, the Appellant refers to paragraph 9 of the Specification as
providing sufficient support and
submits that the very fact that the specification contemplates that
that the content item rights owner may set a 'fixed cost' or a
6 The rejections are addressed in the order presented in the Final Action.
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'floor price' implies that the content item rights owner is aware
of the fact that other prices, including arbitrary prices set by the
sellers, will be involved in transactions. A content item rights
owner would not be able to compensate a seller after the
transaction based on knowledge only of the floor price. Thus,
. . . one of ordinary skill in the art would understand that this
information about the price negotiated by the seller would be
communicated to the content item rights owner, who indeed is
responsible for consummating the transaction."
Br. 16-17.
Claim 32 depends from claim 1 and recites
wherein pricing for the content item is set by the seller, and
further comprising, upon the fulfillment, crediting a seller an
amount based on how much pricing for the content item exceeds
a floor price set by the content item rights owner, or debiting a
seller an amount based on how much pricing for the content item
is less than the floor price set by the content item rights owner.
Id. at 20 (Claims App.). Paragraph 9 of the Specification provides for
examples of the pricing being managed by the seller, of the seller raising the
price above the fixed cost set by the owner or service, and of the seller
setting any price wished, but owing the owner for sales below a defined cost.
To satisfy the written description requirement, the patent disclosure
must "reasonably convey[ ] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). The question is whether "the specification [ ] describe[ s] the
invention in sufficient detail so 'that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing
date sought.' Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) [ ]." In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008). The
Specification must describe the claimed subject matter, although it need not
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contain the exact wording used in the claim. See Lockwood, 107 F .3d
at 1572.
The Examiner's rejection is premised on an interpretation of the claim
that requires the functions of the claim be performed by a computer. See
Ans. 12; Final Act. 16-17. We do not agree with this premise. Although
independent claim 1 requires that the steps are implemented on a computer,
the steps of configuring, associating, and causing are not claimed as being
performed by a computer and can be performed manually using a computer.
See Br. 18 (Claims App.). Similarly, dependent claim 32 does not require
the setting of the price and crediting or debiting of an amount to be
performed by a computer, but can be performed manually. We agree with
the Appellant that the Specification provides sufficient support to convey to
one of skill in the art that the inventor had possession of manually setting a
price and crediting or debiting an amount based on a comparison of price
and cost.
Based on the foregoing, we are persuaded that the Examiner erred in
rejecting claim 32 under 35 U.S.C. § 112, first paragraph, and we do not
sustain the rejection.
35 U.S.C. § 102(e) -Anticipation
Claims 1-11 and 30
After careful review of the record before us, we are not persuaded of
error in the Examiner's rejection of independent claim 1.
The Appellant first contends that the Examiner's rejection of
independent claim 1 is in error because Johnston does not disclose allowing
and receiving registrations of sellers who are separate from the content rights
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owner and who do not own the content rights, as recited in limitation b. See
Br. 9. The Appellant argues that Johnston discloses the content rights
owners selling the items themselves through a hosted service, but does not
disclose registering a separate seller as claimed. See id. at 10.
The Examiner finds, in relevant part, that Johnston's "seller"
corresponds to the claimed contents right owner, and the "identification of
'one or more third party hosts to which to publish the portable widget of the
storefront"' corresponds to the claimed allowing registration of a seller as
defined by the Appellant's Specification as "permitting and configuring
sellers to initiate transactions for content items between purchasers and
content item rights owners." Final Act. 19 (citing Johnston ,r 232, Spec.
Fig. 2a "35"). Specifically, the "Examiner views the 'third-party hosts' of
Johnston to read on the 'registered seller' of the claim and that these
recitations from paragraphs 0250 and 0298-0301 read on the claimed 'seller
accounts' and recited in the claim." Ans. 8-9. The Examiner further finds
that "Johnston also discloses the ability to register content items in both the
abstract and at paragraph 0045." Id. at 9.
Johnston discloses a hosted service that can receive from a seller of
digital content, i.e., a content rights owner, items to be displayed for
purchase via a portable widget on a storefront displayed on a third party
host. Johnston ,r,r 45, 46. The owner may establish a storefront at a hosted
service across a plurality of third party hosts that are identified to the
service. Id. ,r,r 4 7, 232, 244. By using the portable widget, a purchase can
be made without traversing away from the storefront displayed on the third
party host. Id. ,r 250. The service can determine shares of revenue from the
sales between the service, owner, and hosts, such as by being based on the
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service provided and used in promotion of an item. Id. ,r,r 250, 298-301.
Each seller/owner and associated list of suppliers, i.e., third party hosts, are
stored. Id. ,r 300.
The Examiner interprets the term "registering" as "permitting and
configuring sellers to initiate transactions for content items between
purchasers and content item rights owners." Final Act. 19 ( quoting Spec.
Fig. 2a "3 5"). The Specification does not provide a specific definition for
"registering," but states that "registration with respect to a given content
item allows the seller to market the item on the Internet, initiate transactions
to the extent of a handoff of the actual purchase transaction to the content
owner or a fulfillment vendor, or the like." Spec. ,r 50. We find that the
ordinary and customary meaning of "register" as used here is to enroll or
make an official entry in a system. See Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/registering, last visited Mar. 7,
2019.
Here, although Johnston is silent as to whether the third party hosts
are "registered," Johnston discloses storing an associated list of third party
hosts identified by the seller/owner as enabled to sell the item via widget on
their storefronts. As such, the third party hosts are registered, i.e., enrolled
or made an entry in a system. Although the third party hosts are registered
by the seller/owner, claim 1 merely requires that the service is allowed to
register the sellers, i.e., third party hosts, and receive a registration of the
seller, i.e., third party host, with respect to items; claim 1 does not require
that the seller registers itself.
The Appellant's further arguments that Johnston does not disclose
( 1) the third party host selling "rights to the registered content item
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independently of the seller (content items rights owner)" (Br. 10),
(2) "a seller obtain[ing] rights to promote the sale of content items" (id.
at 11), and (3) "the seller[] driving the sale" (id. at 13), and (4) that "just
because an ability is enabled by the system and provided to the seller does
not mean that license rights to the content item are automatically implicated"
(Br. 12) are unpersuasive at least because they are not commensurate with
the scope of claim 1. Claim 1 also does not require the third-party host to
sell rights independently of the seller/content items rights owner, but merely
that the third party host is separate from the owner, does not own the rights,
and can "promote, offer for sale, and initiate a transaction for a registered
content item between a purchaser of the content item and the content item
rights owner." Br. 18 (Claims App.). Claim 1 requires registration of a
seller, associating the seller with an account configured to promote, offer for
sale, and initiate a transaction between the purchaser and content owner,
"receiv[ing] a request for purchase or license of the registered content item"
(id.), and causing a transmission of right to the purchaser from the content
owner (id.), but there is no limitation requiring a seller to obtain rights to
promote or sell and item. Although claim 1 recites the selling service
receiving a request for purchase or license of the item from the seller,
claim 1 does not require a transfer or implication of rights to the seller.
Johnston's owner-identification of third party hosts on which to display the
widget enables the third party host to promote, offer for sale, and initiate a
transaction for the item, and transferring rights from the seller/owner to the
buyer. See Johnston ,r 263. Further, the claim does not recite that a seller
drives the sale; claim 1 requires merely that the seller is enabled to and may
promote the item.
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We also find unpersuasive of error the Appellant's argument that
Johnston "does not disclose at least the step of receiving [an audiovisual
content item] from the selling service or from the content item rights
owner." Br. 12. The Examiner relies on Johnston at paragraphs 148 and
226-231 for teaching this limitation. Final Act. 20. These portions of
Johnston provide that the platform can promote the artist and the content by
providing web syndication feeds (Johnston ,r 148), an artist can upload to the
storefront a preview of a music track, video, image, podcast, or vodcast, the
actual music track, video, image, podcast, or vodcast, and a thumbnail image
(id. ,r,r 226-230). These can also be uploaded to a storefront or networking
site (id. ,r 231) and published to the third party host via the widget having the
same features as the storefront (id. ,r 246). The Appellant's argument that
Johnston does not teach this limitation "due to the different natures of'
Johnston's system and the claimed invention (Br. 12) does not explain why
Johnston's disclosure of uploading and publishing audiovisual content to the
third party host via the widget does not meet limitation d) of causing a
transmission of an audiovisual content from the service or owner to the third
party host.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 102(e), and we sustain the rejection of
claim 1 and of dependent claims 2-11 and 30, for which separate argument
is not presented. See Br. 13.
Claim 31
The Appellant contends that the Examiner's rejection of dependent
claim 31 is in error because "Johnston fails to disclose notifying the
registered seller upon the fulfillment, whereby the registered seller can
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provide a good to a purchaser as a promotion." Br. 13. The Appellant
argues that "due to the different natures of the systems[,] ... [t]he third-
party host in Johnston is providing a service to the seller, and there is no
disclosure of the third-party host driving the sale so as to provide additional
goods or the like." Id.
Claim 31 depends from claim 1 and provides a further step of
"notifying the seller of step b) upon the fulfillment, whereby the seller of
step b) can provide a good to the purchaser as a promotion." Br. 20 (Claims
App.). The Examiner cites to paragraphs 258 and 301 of Johnston as
disclosing this limitation and further finds that "no patentable weight should
be given to the whereby clause as this is not an actual method step and only
suggests a particular result of the notification." Final Act. 22-23. The cited
paragraphs of Johnston disclose that credits may be issued as a bonus, such
as for loyalty programs and special promotion events, and used as currency
(Johnston ,r 258), and that after receiving payment for a purchase, the third
party host would be credited an amount as agreed upon (id. ,r 301 ).
The Appellant's argument is unpersuasive for the reasons discussed
above with respect to claim 1. That is, the argument is not commensurate
with the scope of the claim in that claim 31 does not require the third-party
host to drive the sale. Moreover, the Appellant does not provide further
argument or reasoning why Johnston's crediting of the host's account after
payment does not meet the claimed notification, and the issuance of bonus
credits does not meet the claimed ability to provide a good as a promotion.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting claim 31 under 35 U.S.C. § 102(e), and we sustain the rejection
of claim 31.
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Claim 33
The Appellant contends that the Examiner's rejection of dependent
claim 33 is in error because Johnston does not disclose "receiving data from
a social networking site about user preferences, and then transmitting the
data to the seller, so that the seller can promote a content item based on user
preferences, e.g., directing advertising of the item at particular users who
may find such interesting." Br. 13.
Claim 33 depends from claim 1 and provides a further step of
"receiving data from a social networking site about user preferences, and
transmitting the data to a seller, whereby the seller may promote a content
item based on user preferences." Br. 20 (Claims App.). We note that the
claim recites that the seller may promote a content, but not does not
positively recite that the seller does promote a content item based on the
preferences. The Examiner cites to paragraphs 177 and 188 of Johnston as
disclosing this limitation (Final Act. 23) and further finds that there is "no
particular requirement is in the claim as what constitutes a 'social
networking site' and Johnston clearly discloses the gathering of information
from a 'personalization/recommendation service' in O 177 and the gathering
of preferences in O 188" (Ans. 11 ).
Johnston disclose that the platform server may include a
personalization/recommendation service (Johnston ,r 177) and that the
"Personalisation/Recommendation Engine" may receive statistics from the
Client agent on user activity and may include a service that collects data to
generate recommendations (id. ,r 188). However, the Examiner has not
adequately shown where or how Johnston discloses/anticipates transmitting
the collected data or recommendation data to the third party host/seller.
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Based on the foregoing, we are persuaded that the Examiner erred in
rejecting claim 33 under 35 U.S.C. § 102(e), and we do not sustain the
rejection of claim 33.
35 U.S.C. § 103(a) ~ Obviousness
The Appellant contends that the Examiner's rejection of dependent
claim 32 is in error because Johnston does not disclose "a user setting the
price, and then receiving a credit (debit) for the amount paid over (below) a
fixed cost set by the content item rights owner" (Br. 13) and is "is silent on
how such apportionment [to a third party] may occur, except to the extent
that the term 'commission' and 'percentage' is [sic] used" (id. at 14).
The Examiner acknowledges that Johnston
does not explicitly disclose wherein pricing for the content item
is set by the seller, and further comprising, upon the fulfillment,
crediting a seller an amount based on how much pricing for the
content item exceeds a floor price set by the content item rights
owner, or debiting a seller an amount based on how much pricing
for the content item is less than a floor price set by the content
item rights owner.
Final Act. 23. However, the Examiner finds that "Johnston teaches the
payments of commissions to the participants (0301) based on revenue
apportionment. As the claim merely is proportioning the revenue it is a
sufficient teaching." Id.
Claim 32 requires that the seller, i.e., Johnston's third party host, set
the price and, upon fulfillment, the third party host/seller being credited or
debited an amount based on the pricing compared to a floor price set by the
owner, i.e., Johnston's seller. Although Johnston teaches, at best, revenue
sharing based on the sale price and/or profit (see, e.g., Johnston ,r,r 300,
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301), the Examiner does not adequately explain where or how Johnston
teaches or renders obvious the third party host setting the price and crediting
or debiting the host based on a comparison of that price with the
seller's/ owner's bottom price.
Based on the foregoing, we are persuaded that the Examiner erred in
rejecting claim 32 under 35 U.S.C. § 103(a), and we do not sustain the
rejection of claim 32.
DECISION
The Examiner's rejection of claims 1---6, 9-11, and 30-33 under
35 U.S.C. § 101 is AFFIRMED.
The Examiner's rejection of claim 32 under pre-AIA 35 U.S.C. § 112,
first paragraph, is REVERSED.
The Examiner's rejection of claims 1---6, 9-11, 30, and 31 under pre-
AIA 35 U.S.C. § 102(e) is AFFIRMED.
The Examiner's rejection of claim 33 under pre-AIA 35 U.S.C.
§ 102(e) is REVERSED.
The Examiner's rejection of claim 32 under pre-AIA 35 U.S.C.
§ 103(a) is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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