Ex Parte BergerDownload PDFPatent Trials and Appeals BoardJun 27, 201912209886 - (D) (P.T.A.B. Jun. 27, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/209,886 103865 7590 Procopio - SPE 525 B Street Suite 2200 FILING DATE 09/12/2008 07/01/2019 San Diego, CA 92101 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. l 13748-023UT1 5417 EXAMINER CASEY, ALEXIS M ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 07/01/2019 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): docketing@procopio.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD BERGER1 Appeal2018-006525 Application 12/209,886 Technology Center 3600 Before CARL W. WHITEHEAD JR, JEFFREYS. SMITH and DAVID J. CUTITTA II, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant is appealing the final rejection of claims 1-4, 6, 9-11, 13-19 and 24-25 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellant identify the Sony Corporation as the real party in interest. Appeal Brief 2. Appeal2018-006525 Application 12/209,886 Introduction The invention is directed to "reviewing and developing media content, and more particularly to viewing and rating the media content, and disseminating based on the rating." Specification 1. Illustrative Claim 1. A computer-implemented method running on a computer of a service provider for developing a plurality of digital contents, the method comprising: receiving, at the computer, the plurality of digital contents submitted by media creators over a first media channel; transmitting the plurality of digital contents to reviewers over the first media channel so that the reviewers can view and rate the plurality of digital contents using a review program, and send back ratings of the plurality of digital contents to the computer; receiving the ratings of the plurality of digital contents from the reviewers; selecting, by the computer, at least one digital content from the plurality of digital contents that received the ratings above a predetermined threshold among the plurality of digital contents rated by the reviewers; determining at least one first media creator who submitted the at least one selected digital content; receiving at least one subsequent digital content from the at least one first media creator and selecting the at least one subsequent digital content without performing the review program; and disseminating the at least one selected digital content and the at least one subsequent digital content over a second media channel. 2 Appeal2018-006525 Application 12/209,886 Rejections on Appeal Claims 1, 2, 9-11, 13, 14, 17-19, 24, and 25 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent ineligible subject matter. Final Action 2-6. Claims 1-4, 6, 9-11, 13-19, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Persson (US Patent Application Publication 2008/0059564 Al; published March 6, 2008 and Speiser (US Patent 8,224,696 B2; issued July 17, 2012). Final Action 6-12. ANALYSIS Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed December 22, 2017), the Reply Brief (filed June 7, 2018), the Final Action (mailed July 27, 2017) and the Answer (mailed May 9, 2018), for the respective details. 35 U.S.C. § 101 Rejection The Examiner determines, "The claims are directed to the judicial exception of reviewing and rating of content which is considered to be an abstract idea inasmuch as such activity is considered both a method of organizing human activity and an idea of itself." Final Action 3; see Alice Corp. 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 Briefs in this case, the USPTO published revised guidance on the application of§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 3 Appeal2018-006525 Application 12/209,886 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, 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 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 § 2106.0S(a)-(c), (e)-(h) (91h ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(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. We are not persuaded the Examiner's rejection is in error. Unless otherwise indicated, we adopt the Examiner's findings and conclusions as our own, and we add the following primarily for emphasis and clarification with respect to the Memorandum. Alice/May~tep 1 (Abstract Idea) Step 2A-Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Appellant argues the pending claims are not directed to an abstract idea because "claim 1 emphasizes need to provide enough content for a broadband video channel on the web by selecting subsequent digital content from creators (who had previously been selected for receiving ratings above 4 Appeal2018-006525 Application 12/209,886 a predetermined threshold) without review" and therefore "the claim does not recite a basic concept that is similar to any abstract idea previously identified by the courts." Appeal Brief 10. Appellant's argument is not persuasive. Instead, we agree with the Examiner's determination that the claims are directed to an abstract idea. Final Action 2-6. The Specification discloses: [A] method for reviewing and developing media content is disclosed. The method includes: receiving the media content submitted by a media creator; enabling reviewers to view and rate the media content; receiving ratings of a plurality of media contents from the reviewers; selecting at least one media content from the plurality of media contents based on the ratings; and disseminating the at least one media content. Specification 2. Claim 1 recites, "A computer-implemented method running on a computer of a service provider for developing a plurality of digital contents," "transmitting the plurality of digital contents to reviewers over the first media channel so that the reviewers can view and rate the plurality of digital contents using a review program, and send back ratings of the plurality of digital contents to the computer," "receiving the ratings of the plurality of digital contents from the reviewers," "selecting, by the computer, at least one digital content from the plurality of digital contents that received the ratings above a predetermined threshold among the plurality of digital contents rated by the reviewers" and "determining at least one first media creator who submitted the at least one selected digital content"' These steps comprise fundamental economic principles or practices and/or commercial or legal interactions; thus, the claim recites the abstract 5 Appeal2018-006525 Application 12/209,886 idea of "certain methods of organizing human activity." Memorandum, Section I (Groupings of Abstract Ideas); see Specification 6-8 ("The submitted media files are then made available to a community of reviewers 130 to view and rate the media content."). Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract) and Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of ''voting, verifying the vote, and submitting the vote for tabulation,'' a "fundamental activity" that humans have performed for hundreds of years, to be an abstract idea). Therefore, we conclude the claims recite an abstract idea pursuant to Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(l) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). Step 2A, Prong Two Under Prong Two of the Revised Guidance, we must determine whether there are "additional elements that integrate the judicial exception into a practical application." See MPEP § 2106.0S(a)--(c), (e)--(h). Appellant argues: [T]he use of the specific steps of selecting subsequent digital content from creators (who had previously been selected for receiving ratings above a predetermined threshold) without review provides enough content for a broadband video channel on the web and improves content distribution over the broadband video channel on the web. Thus, when looked at as a whole, independent claim 1 is directed to a patentable, technological 6 Appeal2018-006525 Application 12/209,886 improvement over the existing content distribution over the broadband video channel on the web. Appeal Brief 11. However, as the Federal Circuit has explained, a "claim for a new abstract idea is still an abstract idea." Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was "[g]roundbreaking, innovative, or even brilliant," that would not be enough for the claimed abstract idea to be patent eligible. See Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Appellant's arguments are not persuasive because the claims merely recite a method for reviewing and subjectively rating media content wherein deference is given to creators of highly rated media content whereas subsequent media content submissions are dissimilated without being subjected to the reviewing process. See Specification 11-12. ("[T]he special review may involve automatic submission of the subsequent content to the service provider without being submitted to the reviewers."); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016): [W]e find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea . . . the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self- referential table for a computer database) or, instead, on a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. The claims do not recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to another technology or technical field. See Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we rejected the argument that 7 Appeal2018-006525 Application 12/209,886 'implement[ing] a principle in some specific fashion' will 'automatically fal[l] within the patentable subject matter of§ 101. "' ( alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))). Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). We agree with the Examiner that, on this record, claim 1 is directed to the identified abstract idea. See Final Action 3. Step 2B Alice/May~tep 2 (Inventive Concept) Step 2B identified in the Revised Guidance Next, we determine whether the claim includes additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73). Appellant identifies that, "In Section 4 of the office action dated May 18, 2017 ('the Office Action'), claims 1-15 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Appellant respectfully disagrees and traverses the rejections and the characterization of the claims." Appeal Brief 6. However, Appellant's arguments do not address why the claimed invention is not directed to a judicial exception without significantly more as the determined by the Examiner. See Final Action 4-6. Accordingly, we find the claim does not include a specific limitation or a combination of elements that amounts to significantly more than the 8 Appeal2018-006525 Application 12/209,886 judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept' cannot be the abstract idea itself'); see Final Rejection 5 ("For example, merely storing, recording, communicating, and displaying information represents little more than extra- solution activity and does not serve to provide 'significantly more' than the abstract idea."). Accordingly, we conclude claims 1, 2, 9-11, 13, 14, 17-19, 24, and 25 are directed to a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Memorandum and thus an abstract idea, and the claims do not recite limitations that amount to significantly more than the abstract idea itself. We sustain the Examiner's § 101 rejection of claims 1, 2, 9-11, 13, 14, 17-19, 24, and 25. 35 U.S.C. § 103(a) Rejection Appellant argues that, "Although the cited paragraphs of Persson state that there can be multiple websites, Persson fails to teach, suggest or disclose receiving contents from media creators and transmitting content to the reviewer over a first media channel, while disseminating the selected content over a second media channel." Appeal Brief 15; see Final Action 7- 8. The Examiner finds, "Persson discloses portable devices including phones and PDAs for viewing and rating content. Persson further discloses a network environment as well as physical memory for distributed content, which are described in Applicant's disclosure as media channels." 9 Appeal2018-006525 Application 12/209,886 Answer 4; see Persson ,i,i 19-21 ("[T]he website can be multiple websites such that the displaying and ranking/filtering can be done at one website and the selling of content can be done at a separate website that may or may not be controlled by a entity that is different from the entity/entities that controls the website that receives 205 the content, that receives feedback 215 or filters 220 the content."). The Specification discloses in support of the claim disputed limitation: In the illustrated implementation of Figure 2, the service provider 150 selects, at box 224, media items from the media content based on the ratings 160 made by the reviewers 130. The service provider 150 then obtains ownership of the submitted media content, at box 230, including the items of the media content selected by the service provider based on the ratings 160. The selected items of the media content are disseminated by: repackaging and providing access to the selected items of the media content using a media channel 180, at box 240; or selling or renting physical media 190, at box 250. Specification 12, lines 8-18; see Appeal Brief 4 ("Summary of Claimed Subject Matter"). There is no provision within the Specification that supports Appellant's narrow interpretation of the claimed media channels and therefore we do not find Appellant's argument persuasive and agree with the Examiner's findings in regard to Persson. Appellant further argues: Although the cited paragraphs of Persson state that the filter/ranking unit uses other factors in conjunction with the rating provided by the user as filters to determine a ranking [ such as] previous comments on different content by a particular visitor/user, this is not directly relevant to the above-recited limitation of claim 1. Accordingly, Persson fails to teach, suggest 10 Appeal2018-006525 Application 12/209,886 or disclose "selecting the at least one subsequent digital content without performing the review program." Appeal Brief 1 7 ( alteration in original). The Examiner indicated that Persson did not disclose "selecting the at least one subsequent digital content without performing the review program" and relied upon Speiser to teach "reviewing programs with a contest structure, where entries may be submitted and best performing contestants may be automatically entered into the next round (no review program for subsequent entry)." Final Action 8. The Examiner determines, "It would have been obvious to one of ordinary skill in the art at the time of the invention to expand the method of Persson to include a rating review program where highly rated media submissions including those in the top 10% subsequent submission are not reviewed by the review program as taught by Speiser." Final Action 9. Consequently, we do not find Appellant's argument persuasive and we sustain the Examiner's obviousness rejection of claims 1-4, 6, 9-11, 13-19, 24, and 25, not argued separately. See Appeal Brief 1 7. DECISION The Examiner's patent ineligible subject matter rejection of claims 1, 2, 9-11, 13, 14, 17-19, 24, and25 is affirmed. The Examiner's obviousness rejection of claims 1-4, 6, 9-11, 13-19, 24, and 25 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R. § l.136(a)(l)(v). AFFIRMED 11 Copy with citationCopy as parenthetical citation