Ex Parte Biswas et al

Patent Trial and Appeal Board

Mar 14, 2018

12273925 (P.T.A.B. Mar. 14, 2018)

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.
12/273,925 11/19/2008 Sanjeev Kumar Biswas 058083-0394846 (B844) 9284
72058 7590 03/16/2018
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANJEEV KUMAR BISWAS,
PRADEEP CYRIL EKKA, SURAJ RANJAN,
and VIKAS KAMATE
Appeal 2017-000019
Application 12/273,925
Technology Center 3600
Before JAMES R. HUGHES, JUSTIN BUSCH, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s decision to reject claims 1—17 and 27—36, which constitute all
the claims pending in this application. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b). Claims 18—26 were previously
canceled. We affirm.
CLAIMED SUBJECT MATTER
Appellants’ invention is generally directed to using a hierarchical
license tree, which is a tree used to manage software licenses wherein each
node in the hierarchical tree represents a software resource with associated
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Application 12/273,925
license information. Spec. 3. The claimed system and methods (1) receive
license information, (2) identify a node in the hierarchical license tree based
on that license information, then (3) store a software resource license that
indicates the software resources corresponding to that node and each node
below that node are licensed for use. See, e.g., Spec. 20-21. Claims 1 and
31—33 are the independent claims. Claim 1 is representative and reproduced
below:
1. A computer-implemented method comprising:
receiving, by a processor, license information;
identifying, by the processor, a first node in a software
resource hierarchical license tree based at least in part on the
received license information, the software resource hierarchical
license tree comprising a plurality of nodes, each of the plurality
of nodes corresponding to a respective software resource; and
storing, by the processor, a software resource license
corresponding to the first node, the software resource license
indicating that the software resource corresponding to the first
node and software resources corresponding to nodes beneath the
first node in the software resource hierarchical license tree are
licensed for use.
REJECTIONS
Claims 1—17 and 27—36 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 5—6.
Claims 1—17 and 27—36 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of fshiguro (US 2003/0159033 Al; Aug. 21, 2003), Stefik
(US 2006/0190404 Al; Aug. 24, 2006), and Markov (US 7,743,378 Bl;
June 22, 2010). Final Act. 8—26.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
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considered all evidence presented and all arguments Appellants made.
Appellants argue the claims as a group. See App. Br. 4—5, 7, 11. Therefore,
we select claim 1 as representative and decide the appeal of all claims based
on independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Arguments Appellants
could have made, but chose not to make in the Briefs, have not been
considered and are deemed waived. See id.
The § 101 Rejection
The Examiner concludes claims 1—17 and 27—36 are directed to
judicially excepted subject matter. Final Act. 4—5; Ans. 3—11. In particular,
the Examiner finds representative claim 1 merely recites receiving,
identifying, and storing information and, accordingly, concludes that claim 1
is directed to data recognition and storage. Ans. 5. The Examiner concludes
the claimed concept of “enforcing digital rights management restrictions
based upon a hierarchical tree architecture” is judicially excepted subject
matter and the particular elements recited in the claims are merely generic
computer components performing generic computing functions, without
imposing meaningful limits on the claims. Id. at 6—10 (quoting Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d
1343 (Fed. Cir. 2014) (finding claims directed to collecting data, recognizing
certain data within the collected set, and storing that data in memory to be no
more than an abstract idea)).
Prima Facie Case
Appellants argue the Examiner failed to state a prima facie rejection
under 35 U.S.C. § 101 in the Final Rejection. App. Br. 5—6. Appellants
further contend the Examiner’s additional explanation of the rejection under
§ 101 in the Answer “is too late.” Reply Br. 2—3.
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The Examiner has a duty to give notice of a rejection with sufficient
particularity to give Appellants a fair opportunity to respond to the rejection.
See 35 U.S.C. § 132(a). To the extent that the Examiner’s additional
explanation and citation to case law should have been designated as a new
ground of rejection, that would be a matter addressed by petition. 37 C.F.R.
§ 41.40 (“Any request to seek review of the primary examiner’s failure to
designate a rejection as a new ground of rejection in an examiner’s answer
must be by way of a petition to the Director under §1.181 of this title filed
. . . before the filing of any reply brief’). “Failure of appellant to timely file
such a petition will constitute a waiver of any arguments that a rejection
must be designated as a new ground of rejection.” Id. Accordingly, for
purposes of this Appeal, we consider the Examiner’s findings and
conclusions from both the Final Rejection and the Examiner’s Answer.
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that the claims include limitations similar to the
identified abstract idea of collecting, identifying, and storing data, and that
the remainder of the claims do not include significantly more than the
abstract idea because the generically recited routine use of a computer does
not add meaningful limitations to the abstract idea. Final Act. 4—5; Ans. 3—
11. The Examiner set forth the statutory basis for the rejection (i.e.,
35 U.S.C. § 101) and concluded the claims are directed to a judicial
exception to § 101 (i.e., an abstract idea), adding too little to the abstract
idea to render the claims patent eligible. Thus, the Examiner explained the
rejection in sufficient detail to permit Appellants to respond meaningfully.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
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In fact, Appellants specifically argue against the Examiner’s findings
and conclusions relating to what Appellants’ claims are directed to, whether
that is an abstract idea, and whether the claims recite significantly more than
the abstract idea itself. App. Br. 6—9; Reply Br. 3—5. Accordingly, we
conclude that the Examiner set forth a prima facie case of ineligibility.
Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. There is no dispute in this
Appeal that the pending claims are directed to one of these categories.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 70 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that § 101
“contains an important implicit exception” for laws of nature, natural
phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185
(1981). In Mayo and Alice, the Court set forth a two-step analytical
framework for evaluating patent-eligible subject matter: (1) “determine
whether the claims at issue are directed to” a patent-ineligible concept, such
as an abstract idea; and, if so, (2) “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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Step one in the Mayo/Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power, 830 F.3d at 1353. For an inventive concept, “more is required
than ‘well-understood, routine, conventional activity already engaged in’”
by the relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
Step One of Alice Framework
Turning to step one of the Alice framework, the Examiner finds the
claims are directed to the concept of managing digital rights using a
hierarchical tree architecture, which is merely the receipt, identification, and
storage of information. Ans. 5—6. The Examiner finds Content Extraction’ s
claims, which were found to be directed to abstract ideas, are similar to
Appellants’ claims. Ans. 8—10 (citing Content Extraction, 776 F.3d at
1343).
Appellants assert “there is nothing ‘fundamental’ to the general
practice of licensing that requires the practice of the method recited in
claim 1,” and the claims do not preempt the entire field of licensing. App.
Br. 7. Appellants also contend the Examiner’s characterization of claim 1
views the claim at too high a level of abstraction and reads out details of the
claim. Reply Br. 3. In particular, Appellants argue the Examiner’s
characterization ignores the data structure recited in the claims and how the
recited “data structure provides the licensing (or lack thereof) of one [or
more] software applications.” Id. at 4. Appellants contend the recited data
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structure provides a technical improvement. Id. (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336-38 (Fed. Cir. 2016)).
We are not persuaded by Appellants’ arguments. Rather, we agree
with the Examiner that claim 1, as a whole, is directed to receiving
information, recognizing or identifying other data (in a hierarchical tree
structure) based on the received information, and storing additional
information.
The Federal Circuit has “treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Elec. Power, 830 F.3d
at 1353—54 (emphasis added) (finding collecting, analyzing, and displaying
information, regardless of particular content, is an abstract idea); Content
Extraction, 776 F.3d at 1347 (finding collecting, recognizing, and storing
information is an abstract idea); see also Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1348-49 (Fed. Cir. 2015); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Appellants’ assertion regarding pre-emption is unpersuasive, because
although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility ....
Where a patent’s claims are deemed only to disclose patent ineligible subject
matter under the Mayo framework, as they are in this case, preemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“And
[the fact] that the claims do not preempt all price optimization or may be
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limited to price optimization in the e-commerce setting do[es] not make
them any less abstract.”).
Finally, Appellants’ argument that claim 1 recites a technological
improvement is also unavailing. In Enfish, the Federal Circuit found the
self-referential table recited in the claims was a new data structure; on the
other hand, Appellants’ claim 1 merely recites populating an existing data
structure with specific data, namely licensing information.
For the above reasons, we are unpersuaded the Examiner erred in
concluding the claims are directed to an abstract idea.
Step Two of Alice Framework
Next, we turn to step two of Alice to determine whether the
limitations, when considered both “individually and ‘as an ordered
combination’” contain an “inventive concept” sufficient to transform the
claimed “abstract idea” into a patent-eligible application. Alice, 134 S. Ct. at
2355—58. The Examiner finds the claims merely recite using generic
computer elements performing generic computer functions without imposing
meaningful limits or improving the functioning of the computer itself or any
other technology. Ans. 7. Thus, the Examiner concludes the claims do not
recite significantly more than the abstract idea itself sufficient to transform
the claim into a patent-eligible invention. Id.
Appellants argue the Examiner has not shown the claims fail to recite
significantly more than the abstract idea itself because the claims recite a
software resource hierarchical license tree. App. Br. 7—8. Appellants allege
the recited tree can be used for managing software licenses, which is “a
result that overrides the routine and conventional use of the Internet or a
conventional computer.” Id. (citing DDR Holdings, LLC v. Hotels.com,
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L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014)). Appellants analogize their
claims to those in DDR and contend “[cjhanging the typical operation of a
conventional computerized process is sufficient for patent-eligibility.” Id.
at 8—9 (citing DDR, 773 F.3d at 1258—59).
We are unpersuaded the Examiner erred in concluding the claims do
not recite significantly more than the abstract idea itself. Appellants’
claim 1 merely recites receiving information, identifying a data structure
(a node in a hierarchical tree) based on the received information, and stores
information that can be used for managing licenses in the identified node.
As discussed above, Appellants’ use of a known hierarchical tree
structure to store particular information is nothing more than the routine use
of a conventional computer. See Enfish, 822 F.3d at 1335—36 (“[T]he first
step . . . asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.”); see also Alice, 134 S. Ct. at 2358—59. Here, the focus of the claims
is not on an improvement in computers as tools or upon an innovative way
to use computers or other devices, but is focused on an independently
abstract idea that uses generic and routine equipment as tools.
More specifically, hierarchical tree structures are designed to store
data or data structures at each node of the tree. The fact that the particular
information stored in that node could be used to determine whether or not a
particular computer or user is licensed to use the software resource affiliated
with that node does not change how the computer or the data structure
functions. Thus, Appellants’ analogy to DDR is misplaced and not
persuasive.
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For the above reasons, Appellants have not persuaded us of error in
the rejection of the claims under 35 U.S.C. § 101.
The § 103 Rejection
The Examiner finds Ishiguro teaches or suggests the receiving and
identifying steps other than “a software resource.” Final Act. 9 (citing
Ishiguro 17, Figs. 8—9, 12—14, 21—22, 30, 38, and accompanying text). The
Examiner appears to rely on Stefik for teaching the software resource,
stating Stefik “discloses a hierarchical tree structure for associating digital
rights to digital works.” Id. (citing Stefik | 55). Finally, the Examiner finds
Markov teaches or suggests the storing step because Markov “discloses
hierarchical node characteristics.” Id. at 10 (citing Markov 3:15—27, 4:3—7,
4:30-38).
Of particular note, Markov is directed to methods for scheduling
computing jobs in a system having multiple computing nodes, wherein the
computing jobs have required resources. Markov Abstract. Markov’s
computing nodes may be arranged in a hierarchical tree structure, such that
nodes may have parent-child relationships to other nodes. Id. at 3:5—27.
Markov describes each node as having both fixed and floating resources that
may be used to execute computing jobs. Id. at 3:40-42. “One example of a
floating resource is a software license.” Id. at 4:3. When Markov’s
computing nodes are arranged in a tree structure, a software license available
to a particular node may also be available to any child node of that particular
node. Id. at 4:4—7.
Among other arguments, Appellants contend the Examiner finds only
that Markov discloses hierarchical node characteristics, not the “a software
resource license corresponding to the first node, the software resource
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license indicating that the software resource corresponding to the first node
and software resources corresponding to nodes beneath the first node in the
software resource hierarchical license tree are licensed for use” (the
“disputed limitation”), as recited in claim 1. App. Br. 11 (citing Final
Act. 10). Appellants assert the Examiner merely concludes (without
explaining what a hierarchical node characteristic is, how it teaches the
disputed limitation, or any supporting rationale) that, because Markov
teaches a hierarchical node characteristic, Markov teaches the disputed
limitation. Id. at 11—12.
Appellants further argue Markov describes a software license as a
floating resource that may be assigned to, or available for use by, a particular
computing node in the node hierarchy and any of that particular node’s
children. App. Br. 12. Appellants contend Markov’s floating resource
concept that allows multiple computers to share a single license to a single
software resource is unrelated to the disputed limitation that indicates which
particular software resources within the software resource hierarchical
license tree are licensed for use (by a particular computer or user). Id.
at 12-13.
The entirety of the Examiner’s response is: (1) quoting a portion of
Appellants’ argument; (2) stating disagreement; (3) identifying essentially
the same portions of Ishiguro, Stefik, and Markov referenced in the Final
Action; and (4) stating that “it appears as if the Appellant is attacking the
references in a piecewise fashion, instead of in combination, as intended by
the Examiner and as shown above in the rejections under 35 USC § 103(a).”
Ans. 12.
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We agree with Appellants that the Examiner has not demonstrated the
combination of Ishiguro, Stefik, and Markov teaches the disputed limitation.
As pointed out by Appellants, the Examiner appears to rely on Markov’s
“hierarchical node characteristics” as teaching the disputed limitation.
However, the Examiner provides no explanation regarding how the fact that
Markov discloses a hierarchical tree architecture for arranging its computing
nodes teaches the disputed limitation. Furthermore, even to the extent the
Examiner relies on Markov as teaching the disputed limitation, we agree
with Appellants’ that Markov’s computing node arrangement and
availability of a software license as a floating resource fails to teach or
suggest the disputed limitation, which relates to identifying software
resources licensed to a particular user or computer. To the extent the
Examiner relies on Ishiguro and/or Stefik, alone or in combination (with or
without Markov), the Examiner fails to provide a clear mapping and
explanation sufficient to determine whether such a proposed combination
teaches or suggests the disputed limitation.
For the reasons discussed above, we are persuaded the Examiner
erred. Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). For similar reasons, we also
do not sustain the Examiner’s rejection of independent claims 31 and 32,
which also recite the disputed limitation, or claims 2—17, 27—30, 35, and 36,
which ultimately depend from claim 1.
Claims 33 and 34 do not recite the disputed limitation and, therefore,
Appellants’ arguments are not commensurate with the scope of claims 33
and 34. Accordingly, we summarily affirm the Examiner’s rejection of
claims 33 and 34, which are not argued separately with particularity.
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DECISION
We affirm the Examiner’s decision to rejection claims 1—17 and
27—36 as directed to ineligible subject matter under 35 U.S.C. § 101.
We affirm the Examiner’s decision to reject claims 33 and 34 under
35 U.S.C. § 103(a).
We reverse the Examiner’s decision to reject claims 1—17 and 27—32,
35, and 36 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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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