Ex Parte FenleyDownload PDFPatent Trial and Appeal BoardDec 27, 201711608165 (P.T.A.B. Dec. 27, 2017) Copy Citation 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 2 Appeal 2016-006467 Application 11/608,165 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.” 3 Appeal 2016-006467 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 4 Appeal 2016-006467 Application 11/608,165 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 5 Appeal 2016-006467 Application 11/608,165 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). 6 Appeal 2016-006467 Application 11/608,165 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- 7 Appeal 2016-006467 Application 11/608,165 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 8 Appeal 2016-006467 Application 11/608,165 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. 9 Appeal 2016-006467 Application 11/608,165 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 10 Appeal 2016-006467 Application 11/608,165 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. 11 Copy with citationCopy as parenthetical citation