Ex Parte Fenley

Patent Trial and Appeal Board

Dec 27, 2017

11608165 (P.T.A.B. Dec. 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.
11/608,165 12/07/2006 John Fenley 2289.2.1 8864
128660 7590
Joseph Shapiro
Strong & Hanni
102 South 200 East, Suite 800
Salt Lake City, UT 84111
12/29/2017 EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
j shapiro @ strongandhanni.com
patentadmin@ strongandhanni.com
cbecerra@ strongandhanni.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN FENLEY
Appeal 2016-006467
Application 11/608,1651
Technology Center 3600
Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1—28. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies VidAngel, Inc. as the real party in interest. Br. 1.
Appeal 2016-006467
Application 11/608,165
THE INVENTION
Appellant claims a remote media ownership management method and
system (Spec, f 1).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
receiving a physical media unit ("PMU") and ownership information
corresponding to the PMU, the PMU and the ownership information
received from a media owner, the PMU comprising a storage medium for
media content;
storing the PMU in a physical media storage facility in response to
receiving the PMU and ownership information;
updating an ownership register to associate the PMU with the media
owner and with digital media content, the digital media content one or more
of derived from media content of the PMU, equivalent to media content of
the PMU, stored on the PMU, and copied from the PMU;
receiving, with an authentication module, authentication information
input from a current user;
authenticating, with the authentication module, the current user as the
media owner for the PMU according to the authentication information
received from the current user and the ownership register;
managing, with a content control module, first ownership rights for
the current user in response to authenticating the current user as the media
owner, the first ownership rights comprising one or more of a right of the
current user to use the PMU, a right of the current user to dispose the PMU,
and a right of the current user to possess the PMU; and
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managing, with a content control module, second ownership rights for
the current user in response to authenticating the current user as the media
owner, the second ownership rights comprising a right of the current user to
use the digital media content associated with the PMU.
THE REJECTION
The following rejection is before us for review.
Claims 1—28 are rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1—28 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[wjhat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
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Application 11/608,165
Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps of representative claim 1 result in:
managing, ..., first ownership rights for the current user in response
to authenticating the current user as the media owner, the first ownership
rights comprising one or more of a right of the current user to use the PMU,
a right of the current user to dispose the PMU, and a right of the current
user to possess the PMU; and
managing,..., second ownership rights for the current user in
response to authenticating the current user as the media owner, the second
ownership rights comprising a right of the current user to use the digital
media content associated with the PMU. ”
The Specification further states,
A consumer also has a relatively difficult time
obtaining and disposing of PMUs compared to
digital media formats. For example, a consumer
can subscribe to a news website from their
computer while sitting at home. However, to
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obtain access to a PMU, the consumer must travel
to the store, or at the very least order the PMU
online or over the phone and await shipping of the
PMU. Further, there are various transaction costs
to current mechanisms of selling and trading
PMUs, including the shipping costs and waiting
times for remotely purchased PMUs, and the travel
cost, risk, and time for store-bought PMUs. These
costs continue to be incurred when much of the
media is in a format that could be easily accessible
purely by remote if the media were in digital
format — for example over the internet.
Specification f 4. The Specification describes the sale of PMU rights in the
context of an auction stating:
The controller 116 may further comprise a buying
module 226 configured to accept a buyer-bid 228
comprising a buyer-specified PMU. The user
placing the seller-bid 224 and the user placing the
buyer-bid 228 may comprise a first user 108A and
a second user 108B, and the bids may be placed at
any point in time relative to each other (e.g. buyer
first, seller first, and/or simultaneous).
Specification f 53. Thus, this evidence shows that claim 1 is directed to
authenticating and selling rights in PMUs from one party to another. It
follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S.
63 (1972) in particular, that the claims at issue here are directed to an
abstract idea. Insuring the transfer of rights in authenticated licensed content
between a willing seller and a willing buyer is a fundamental economic
practice because it is a legal transaction which promotes stability in the
marketplace. The patent-ineligible end of the 35 U.S.C. § 101 spectrum
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includes fundamental economic practices. See Alice Corp. Pty. Ltd., 134 S.
Ct. at 2355—1257. Also, we find the steps of: updating an ownership
register; authenticating the current user as the media owner for the PMU
according to the authentication information; managing first ownership rights
for the current user; and managing second ownership rights for the current
user, each constitute “analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.” Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). See also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, authenticating and selling rights to PMUs from one
party to another is an “abstract idea” beyond the scope of § 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of authenticating and selling rights in PMUs from one party to another, at
issue here. Both are squarely within the realm of “abstract ideas” as the
Court has used that term. That the claims do not preempt all forms of the
abstraction or may be limited to PMU transactions, does not make them any
less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360-61 (Fed. Cir. 2015).
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The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
amounts to electronic data query and retrieval—some of the most basic
functions of a computer. All of these computer functions are well-
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understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s claims simply
recite the concept of authenticating and selling rights in PMUs from one
party to another. The claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than instructions to authenticate and sell rights
in PMUs from one party to another. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
We have reviewed all the arguments (Appeal Br. 3—8) Appellant has
submitted concerning the patent eligibility of the claims before us which
stand rejected under 35 U.S.C. § 101. We find that our analysis above
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substantially covers the substance of all the arguments which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues, “Sending DVDs to a central repository, tracking
ownership of the DVDs, facilitating virtual buying and selling of DVDs, and
allowing for consuming the content on the DVDs—is not an abstract idea.”
(Appeal Br. 5).
We disagree with Appellant, because each of these steps has its base
in human thought/activity which is not subject eligible under 35 U.S.C. § 35
U.S.C. § 101.2 Furthermore, each of these steps constitutes organized
human activity which is not patent eligible. See Alice Corp., 134 S. Ct. at
2356.
Appellant also argues,
Unlike the claims courts have rejected, these
claims are not an abstract idea merely
implemented on a computer. Instead, these claims
are a novel idea—remote management (ownership,
buying/selling, and consuming associated digital
content) of physical media—that use a computer as
a part of the solution provided in the claims.
(Appeal Br. 6).
We disagree with Appellant. The question in step two of the Alice
2 Section 101 of Title 35 U.S.C. sets out the subject matter that can be
patented: 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.
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framework is not whether an additional feature is novel, but whether the
implementation of the abstract idea involves “more than the performance of
‘well-understood, routine, [and] conventional activities previously known to
the industry.’” Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Assn, 776 F.3d 1343, 1347-48 (quoting Alice, 134 S.Ct. at
2359).
Appellant argues, “Like the exemplary analysis in Example
Worksheet 2, the Pending Claims recite subject matter ‘particular to the
Internet’ (using the Internet to remotely manage ownership, buying/selling,
and consumption of physical media and associated digital content).”
(Appeal Br. 9). Similarly, Appellant argues,
[l]ike the patent-eligible claims in DDR Holdings, the Pending
Claims “do not generically recite ‘use [a computer]”’ to provide
access to content based on user authentication and rights, but
instead “recite a specific way” for storing physical media and
allowing owners of the physical media to buy, sell, trade, and
consume the media.”
(Appeal Br. 7).
In light of the breadth of the claim, Appellant’s argument is not
persuasive as to error in the rejection because first, for example, claim 1
does not even require an internet connection. Second, in DDR, the claims at
issue involved, inter alia, “web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants” (claim 1 of US 7,818,399). There
is no such claim element with this degree of detail here before us. All that is
required by the claims are generically recited “modules”. The Specification
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supports the view that the modules are conventional. See, e.g., Specification
ff 36—38.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—28 under
35U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1—28 is affirmed.
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.
§ 1.136(a)(l)(iv).
AFFIRMED.
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