Ex Parte Fadell

Patent Trial and Appeal Board

Oct 27, 2017

12075831 (P.T.A.B. Oct. 27, 2017)

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.
12/075,831 03/14/2008 Anthony Fadell 521073- P5587US1 3864
77970 7590 10/31/2017
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 2400
San Francisco, CA 94111
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY FADELL
Appeal 2016-005040
Application 12/075,8311
Technology Center 3600
Before JAMES R. HUGHES, TERRENCE W. McMILLIN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1,3, and 6—33. Appellant has canceled claims 2, 4, and 5. App.
Br. 14—15. We have jurisdiction over the remaining pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Apple Inc. as the real party in interest. App. Br. 3.
Appeal 2016-005040
Application 12/075,831
STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention is directed to “an
application for providing access to media streams ... in exchange for
purchasing media items.” Spec. Tflf 2, 6.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A method for providing a user with access to a media stream,
comprising:
receiving a request from an electronic device to access the media
stream;
in response to the receiving a selection from the electronic
device, determining whether the electronic device is authorized to
access the selected media stream without having a media provider insert
advertisements therein through determining whether an account that is
associated with the electronic device has sufficient credit to authorize
the electronic device to access the selected media stream;
in response to determining that the electronic device is not
authorized to access the selected media stream, prompting the
electronic device to purchase at least one available media item of a
plurality of available media items in exchange for adding credit to the
account that can be used in exchange for access to the selected media
stream;
after the prompting the electronic device, receiving, from the
electronic device, a request to purchase of the at least one available
media item of the plurality of available media items; and
in response to the receiving the request to purchase, providing
the electronic device with advertisement-free access to the selected
media stream.
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Application 12/075,831
The Examiner’s Rejection
Claims 1,3, and 6—33 stand rejected under 35U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 4—6.2
Issue on Appeal
Did the Examiner err in concluding Appellant’s claimed invention is
directed to an abstract idea and the recited claim limitations do not provide
meaningful limitations to transform the abstract idea into patent-eligible
subject matter?
ANALYSIS3
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 6—13; Reply Br. 1—8. In particular, Appellant asserts the Examiner did
not follow the Interim Guidelines on Patent Eligibility and, therefore, did not
establish a prima facie rejection. App. Br. 6—13; Reply Br. 1—8. More
2 We note the heading statement of the rejection inadvertently omits claim
33. Final Act. 4. The Examiner corrects this omission in the Answer.
Ans. 3. We determine it was clear that all of the pending claims were
rejected under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. Cf. Final Act. 1 (identifying all claims as being rejected). Further,
Appellant does not claim to have been prejudiced by this error.
Accordingly, we find the omission of claim 33 from the heading statement
of rejection to be harmless error.
3 Throughout this Decision, we have considered the Appeal Brief, filed
October 2, 2015 (“App. Br.”); the Reply Brief, filed April 18, 2016 (“Reply
Br.”); the Examiner’s Answer, mailed March 4, 2016 (“Ans.”); and the Final
Office Action, mailed May 28, 2015 (“Final Act.”), from which this Appeal
is taken.
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Application 12/075,831
specifically, Appellant contends “the Examiner fails to analogize the claims
to any case in support of the theory that the claims are directed to a judicial
exception that would cause them to be considered an abstract idea.” App.
Br. 7; Reply Br. 3^4. Appellant argues the claims are not directed to a
fundamental economic practice. App. Br. 10. Further, Appellant asserts that
even if the claims are directed to an abstract idea, the claims involve
“significantly more” than the abstract idea and provide a new and non-
obvious method “for modifying a media stream containing advertisements
into an advertisement-free media stream.” App. Br. 12.
Guidelines governing the agency’s internal practice, such as the
Interim Guidance and the Manual of Patent Examining Procedure (“MPEP”)
are not binding on the Board. Enzo Biochem, Inc. v. Gen-Probe Inc., 323
F.3d 956, 964 (Fed. Cir. 2002) (citing Molins PLC v. Textron, Inc., 48 F.3d
1172, 1180 n.10 (Fed. Cir. 1995)). Rather, we follow legal precedent in
evaluating whether the Examiner erred in rejecting the claims as lacking
patent eligibility. Accordingly, our analysis below focuses on whether the
Examiner has properly applied the two-step test set forth by the Supreme
Court in Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014).
In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services, v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012),
for “distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. If
a claim falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter), then the first step
is to determine whether the claim is directed to one of the judicially
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Application 12/075,831
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 134 S. Ct. at 2355. If so, the second step is to
determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. Alice, 134 S. Ct. at 2355.
Although independent claims 1, 10, 17, 21, and 33 each broadly fall
within the statutory categories of patentability, the Examiner determines the
claims are directed to a judicially-recognized exception—i.e., an abstract
idea. Final Act. 4—6; Ans. 3—6. In particular, the Examiner finds the claims
“are directed to purchasing media items which is considered to be an
abstract idea inasmuch as such activity is considered both a fundamental
economic practice and a method of organizing human activity.” Final
Act. 4.
Instead of using a definition of an abstract idea, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord United States Patent
and Trademark Office, July 2015 Update: Subject Matter Eligibility
(July 30, 2015), p. 3,
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing examiners that “a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea.”). As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
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Application 12/075,831
Affinity Labs, of Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016).
Here, Appellant’s claims generally relate to providing media content
to an electronic device in exchange for purchasing media items. This is
consistent with how Appellant describes the claimed invention. See Spec.
12 (“This invention is directed to an application for providing access to
media streams ... in exchange for purchasing media items.”), see also Spec.
| 6 (“This invention is directed to systems and methods for providing access
to media streams using pay model features.”). More particularly, in claim 1
(and as commensurately recited in independent claims 17, 21, and 33), a
determination is made whether a requesting device has sufficient credit (i.e.,
is authorized) to access a selected media stream. If not, an offer to purchase
at least one media item in exchange for adding credit that may be used in
exchange for accessing the selected media stream is presented and, if
accepted, access to the selected media stream is provided. Independent
claim 10 similarly provides access to a media stream in exchange for
purchasing a first media item in exchange for credit that may be used to
access the media stream. Contrary to Appellant’s assertions (see, e.g., App.
Br. 12), the claims do not recite modifying a media stream containing
advertisements into an advertisement-free media stream, but rather recite
providing access to a selected media stream that is advertisement-free.
Our reviewing court has said that abstract ideas include creating a
contractual relationship. BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (noting the creation of a contract is “beyond question
of ancient lineage”); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359 (Fed. Cir. 2015) (finding claims directed to price optimization on a
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Application 12/075,831
generic computer to be an abstract idea). Additionally, the collection of
information and analysis of information (e.g., recognizing certain data
within the dataset) are also abstract ideas. See Elec. Power, 830 F.3d at
1354; see also Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Further, the use of
“advertising as an exchange or currency” to access selected media is also an
abstract idea. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014). Also, more recently, our reviewing court has also found providing
restricted access to a resource is an abstract idea. Prism Techs. LLC v. T-
Mobile USA, Inc., Nos. 2016-2031, 2016-2049, 2017 WL 2705338 *2 (Fed.
Cir. June 23, 2017). See also In re TLI Commc ’ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea ... to another
abstract idea . . . does not render the claim non-abstract.”); see also
Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS,
2015 WL 1739256 *11 (N.D. Cal. Apr. 14, 2015), aff’d, No. 2015-1898,
2016 WL 3742816 (Fed. Cir. July 13, 2016).
Here, the determination of whether the electronic device is authorized
to access the selected media is similar to the abstract idea of collecting and
analyzing information (i.e., credit amount) and comparing (i.e., a
mathematical function) the credit amount to a determined value (i.e.,
sufficient credit to access the selected media stream). If the electronic
device does not have sufficient credit, a contractual relationship may be
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Application 12/075,831
created (i.e., a fundamental economic practice) to purchase additional credit
or media items to allow access to the selected media stream (i.e., restricted
access to a resource). Thus, we agree with the Examiner that the claims are
directed to an abstract idea of providing media content to an electronic
device in exchange for purchasing media items. Notably, this
characterization is consistent with Appellant’s description of the claimed
invention. See Spec. ]Hf 2, 6.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two (of Alice) to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 134
S. Ct. at 2357. The implementation of the abstract idea involved must be
“more than performance of ‘well-understood, routine, [and] conventional
activities previously known to the industry.’” Content Extraction, 776 F.3d
at 1347-48.
Here, we agree with the Examiner that the additional limitations,
separately, or as an ordered combination, do not provide meaningful
limitations (i.e., do not add significantly more) to transform the abstract idea
into a patent eligible application. Final Act. 5. Additionally, the Examiner
determines, and we agree, the computing device and apparatuses to
implement the process are generic computers performing functionalities that
are well-understood, routine, and conventional activities previously known
to the industry. Final Act. 5—6. “[T]he use of generic computer elements
like a microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter.” FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR
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Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
In particular, the Examiner finds the “electronic device performs computing
functions such as sending requests [and] making determinations. These
additional elements are generic computer components claimed to perform
basic computer functions of receiving determining, [and] providing.”
Ans. 4. Indeed, Appellant’s Specification indicates that “any suitable device
for receiving media or data” may serve as the claimed electronic device.
Spec. 119.
Appellant also asserts the claims do not attempt to preempt every
application of purchasing media items. App. Br. 12.
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, 839 F.3d at 1098 (quoting Arioso Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
788 F.3d at 1362—63 (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). Further, “[w]here 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, 788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly we sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 10, 17, 21, and 33, which recite similar limitations and
were not argued separately. See App. Br. 12; see also 37 C.F.R.
§ 41.37(c)(l)(iv). Additionally, we sustain the Examiner’s rejection of
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claims 3, 6—9, 11—16, 18—20, and 22—32, which depend therefrom and were
not argued separately.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, and 6—33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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