Ex Parte Fickle et al

Patent Trial and Appeal Board

May 30, 2014

10718376 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/718,376 11/19/2003 Richard C. Fickle 9305-100112-US 9538
22242 7590 05/30/2014
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
05/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD C. FICKLE, JOSE A. ROYO, and
TIMOTHY BRUCE ARON
____________

Appeal 2011-007587
Application 10/718,376
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Examiner finally rejected claims 1-55. Appellants appeal from
the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

INVENTION
This invention relates to "video-on-demand (VOD) management
system and methods." (Spec. 1, Title). Claim 25, reproduced below, is
representative of the claimed subject matter:
25. A method comprising:
[a] ingesting content and metadata associated with the content
provided by a content provider;
[b] [b1] coordinating distribution of the metadata and the
content, the distribution using a pitcher and a catcher, [b2] the
pitcher transferring the content to a multiple service or systems
operator (MSO) and [b3] the catcher receiving the content; and
[c] coordinating uploading the metadata and the content to a
server for delivery to an end user according to scheduling and
business rules provided by the MSO.
(Steps lettered and disputed limitations emphasized).

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REJECTIONS
R1. Claims 1-40 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
R2. Claims 25-33, 38-43, 46-48, 51, and 53-55 stand rejected under
35 U.S.C. § 102(e) as being anticipated by US Patent Application
Publication No. 2002/0143565 A1 published Oct. 3, 2002 ("Headings").
R3. Claim 52 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Headings and
US Patent Application Publication No. 2002/0104093 A1 published Aug. 1,
2002 ("Buehl").
R4. Claims 1-24 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Headings and US Patent Application Publication No. 2002/0078174 A1
published June 20, 2002 ("Sim").
R5. Claims 35-37, 44, 45, 49, and 50 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combined teachings and suggestions
of Headings and U.S. Publication No. 2003/0020744 A1 published Jan. 30,
2003("Ellis").

GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of the § 101
rejection R1 of claims 1-40 on the basis of representative claims 1, 20 and
25. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 1

1 Appellants filed a Notice of Appeal on September 23, 2010. The date of
filing the Notice of Appeal determines which set of rules applies to an Ex
Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the
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Based on Appellants' arguments, we decide the appeal of the § 102
rejection R2 of claims 25-27, 30-33, 38-43, 46-48, 51, and 53-55 on the
basis of representative claim 25. (Id.).
We address the § 102 rejection R2 of claim 28 separately, infra.
We address the § 102 rejection R2 of claim 29 separately, infra.
We address the § 103 rejection R3 of claim 52 separately, infra.
Based on Appellants' arguments, we decide the appeal of the § 103
rejection R4 of claims 1, 2, 9-24, and 34 on the basis of representative
claim 1. (Id.).
We address the § 103 rejection R4 of claims 3-8 separately, infra.
Based on Appellants' arguments, we decide the appeal of the § 103
rejection R5 of claims 35-37, 44, 45, and 49-50 on the basis of
representative claim 35. (Id.).

ANALYSIS
We disagree with Appellants' contentions regarding the Examiner's
rejections of the claims. We adopt as our own: (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons set forth by the Examiner in the Answer in response to
arguments made in Appellants' Appeal Brief. (Ans. 35-54). We highlight
and address specific findings and arguments below.

2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also MPEP Rev. 8, July 2010.
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R1.
Regarding the § 101 rejection of claims 1-40, Appellants contend
Accordingly, "a claim that purportedly lacks any 'physical steps'
but is still tied to a machine or achieves an eligible
transformation passes muster under §101." In re Bilski,
545 F.3d 943, 88 U.S.P.Q.2d 1385 (2008).
...
The Bilski court articulates the machine-or-transformation test
as a two-branched inquiry. The Bilski court states that an
applicant may show that a process claim satisfies § 101 either
by showing that his claim is tied to a particular machine, or by
showing that his claim transforms an article, citing Gottschalk
v. Benson, 409 U.S. 63, 70 (1972). Applicant submits that
claims 1-40 not only satisfy one but both tests as analyzed
below.
(Emphasis added; App. Br. 17).
Appellants' contentions are not persuasive because the machine-or-
transformation test is no longer dispositive and Appellants' claims are
directed to a non-statutory abstract idea under the Federal Circuit's guidance
in Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1372, 1373 (Fed.
Cir. 2011).
We begin our analysis by noting that the case law regarding § 101
continues to evolve. After reviewing the respective arguments made by the
Appellants and the Examiner,2 we apply the intervening guidance of our

2 The Examiner and the Appellants both refer to the "machine-or-
transformation" test associated with In re Bilski, 545 F.3d 943, 959-960
(Fed. Cir. 2008) (en banc). (App. Br. 16-21; Ans. 35-38). The Supreme
Court clarified in Bilski v. Kappos that the machine-or-transformation test
"is not the sole test for deciding whether an invention is a patent-eligible
'process' under § 101;" however, it remains a "useful and important clue or
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reviewing courts. Our reviewing court clarified that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cybersource
Corp., 654 F.3d at 1373. The Cybersource Court held that it is "clear that
the basic character of a process claim drawn to an abstract idea is not
changed by claiming only its performance by computers, or by claiming the
process embodied in program instructions on a computer readable medium."
Id. at 1375-76 (citing In re Abele, 684 F.2d 902 (CCPA 1982)).
Following the Federal Circuit's approach in Cybersource, we conclude
that the steps of independent method claims 1, 20, and 25, "could be
performed by a human writing on a piece of paper"3 or by mental process
(e.g., "receiving metadata . . . ," "tracking distributing," "providing usage
reports," "setting pricing," "receiving metadata . . . ," "receiving business
rules," "coordinating uploading . . . ," "ingesting content," "coordinating
distribution . . . ," and "coordinating uploading"). None of the claimed steps
are recited as actually being performed by a machine. We conclude under a
broad but reasonable interpretation, each step may be accomplished by a
human operator, and “merely claiming a software implementation of a
purely mental process that could otherwise be performed without the use of

investigative tool." Bilski v. Kappos, 130 S. Ct. 3218, 3221 (2010); see also
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296
(2012).
3 “Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” In re Ferguson, 558 F.3d 1359, 1363
(Fed. Cir. 2009) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
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a computer does not satisfy the machine prong of the machine-or-
transformation test.” Id. at 1375-76.
In following the recent guidance of our reviewing courts, we concur
with the Examiner’s legal conclusion that the scope of claims 1-40 covers
non-statutory subject matter (abstract mental processes). Appellants have
not pointed to any language in the associated dependent claims (not argued
separately) that cures the aforementioned deficiencies of the respective
independent claims. For these reasons, we sustain the Examiner’s rejection
R1 under § 101 of claims 1-40.

R2.
I. Claim 25
A.
Regarding the claim 25 limitation "[b2] the pitcher transferring the
content to a multiple service or systems operator (MSO) and [b3] the catcher
receiving the content;" Appellants contend:
A Digital Content Services function of DESP 100 merely
receives and archives media assets from a content supplier
(Headings, paragraph [0027], lines 1-3; Fig. 1.). There is no
pitcher to transfer the content to the MSO and there is no
catcher to receive the content.
(App. Br. 22-23 (emphasis added)).
Appellants' contentions are not persuasive because Appellants do not
address the specific findings relied on by the Examiner. (Ans. 40-41).
Regarding limitation [b2], the claim functionally defines "pitcher" as
any element that "[b2] . . . transfer[s] the content to a multiple service or
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systems operator (MSO)."4 The Examiner finds Headings' interface/web
portal (¶ [0028]) or supplier console 142 (¶ [0030]) discloses the "pitcher"
that transmits media assets ("content") to service platform 108 ("MSO") in
limitation [b2]. (Ans. 41; Headings ¶ [0030]).
Regarding limitation [b3], the claimed functionally defines "catcher"
as an element that "receiv[es] the content." The Examiner finds Headings'
element (interface, ¶ [0028], or service interface ¶ [0030]) within the service
platform that received the media ("receives the content") discloses the
claimed [a3] "catcher." (Ans. 41; Headings ¶ [0030]; Fig. 1). Appellants do
not rebut these findings.
Appellants further contend that "[a] mere interface is not an appliance
or a server." (App. Br. 23). Appellants' contention is not persuasive because
the claim does not recite the “pitcher” and “catcher” are an appliance or a
server. (Claim 25).
B.
Regarding the claim 25 limitation: "[c] coordinating uploading the
metadata and the content to a server for delivery to an end user according to
scheduling and business rules provided by the MSO," (emphasis added)
Appellants contend:
In addition, Headings merely discloses the content to be
electronically delivered to the consumer upon consumer's
ordering, NOT coordinating uploading the metadata and the

4 Of course, anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910
F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U. S. Int'l Trade
Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory
reference . . . need not duplicate word for word what is in the claims."
Standard Havens Prods. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed.
Cir. 1991).
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content to a server for delivery to an end user according to
scheduling and business rules provided by the MSO. . . . The
system in Headings is designed for a consumer to select a
content to purchase as if he or she walks into a video store.
(App. Br. 24).
We are not persuaded by Appellants' contentions because Appellants
do not address the specific findings relied upon by the Examiner. (Ans. 41).
Specifically, Headings' service platform's ("MSO") delivery of content to the
end user according to the "time frame available for offering the media
content to the consumers" (¶ [0012]) discloses the claimed scheduling and
business rules provided by [the MSO]." (Ans. 41). Appellants fail to rebut
the Examiner's findings.
For these reasons, on this record we are not persuaded the Examiner
erred. We therefore sustain the anticipation rejection R2 of representative
claim 25, and of claims 26, 27, 30-33, 38-43, 46-48, 51, and 53-55, which
fall therewith.
II. Claim 28
Regarding the claim 28 limitation "assigning a globally unique
identifier to the content based on the provider identifier and a provider asset
identifier," Appellants contend:
In rejecting claims 28, the Examiner contends that
Headings discloses assigning a global unique identifier (Final
Office Action, page 18.) Applicant respectfully disagrees.
Headings merely discloses the unique identification and naming
of media assets, business rules, and related metadata, which are
bundled to create an item (Headings, paragraph [0035], lines 1-
4). Accordingly, the identification and naming are merely
combined to create an item. This is not equivalent to a global
unique identifier based on the provider identifier and a provider
asset identifier. In addition, H782 merely discloses creating a
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unique identifier or internal title used to track the item data
structure for further use (H782, paragraph [0032], lines 3-4.),
NOT assigning a globally unique identifier to the content based
on the provider identifier and a provider asset identifier. There
is no evidence that the unique identifier mentioned in H782 is
based on the provider identifier and a provider asset identifier.
In the Final Office Action, the Examiner contends that
the "title, or unique identifier of the asset must be assigned
based on the provider identifier and a provider asset identifier in
order of keep track of the usage of the asset and to provide
royalty payment on the asset to the content supplier." Applicant
respectfully disagrees. Providing royalty payments may be
made on the basis of a group of media assets belonging to the
content supplier without specifically assigning the global
unique identifier to the asset.
(App. Br. 24-25, emphasis added).
Appellants' contentions are unpersuasive. Once the Examiner has
made a finding of inherency, the burden of proof then shifts to the applicant
“to prove that the subject matter shown to be in the prior art does not possess
the characteristic relied on.” In re Best, 562 F.2d 1252, 1254-55 (CCPA
1977); In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that
once the Examiner established a prima facie case of anticipation, the burden
of proof was properly shifted to the inventor to rebut the finding of
inherency).
Here, Appellants have not met that burden. The Examiner finds, and
we agree, that Headings teaches "assigning a globally unique identifier to the
content based on the provider identifier and a provider asset identifier"
because Headings describes assigning unique identification for particular
assets (¶ [0035]) and Headings must inherently provide global unique
identification because Headings reports on the usage of individual assets to
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only the providing content supplier. (Ans. 44; Headings ¶ [0044]).
Appellants' argument that royalties might be based on groupings of assets
without unique identification of individual assets (App. Br. 25) is not
persuasive because Headings explicitly discloses the assets are uniquely
individually identified (Ans. 44; Headings ¶ [0035]), and these unique asset
identifications must inherently also be based on the identification of the
supplier in order to track and report usage of that asset to the supplier.
(Ans. 44; Heading ¶ [0044]). Further, the Appellants' Reply Brief fails to
rebut the Examiner's explanation in the Response to Arguments. (Ans. 44).
For these reasons, on this record, we are not persuaded that the
Examiner erred. We therefore sustain the Examiner's anticipation rejection
R2 of claim 28.
III. Claim 29
Regarding the claim 29 limitation "validating the metadata and the
content using the business rules," Appellants contend:
In the Final Office Action, the Examiner contends that
"the metadata and the content must be validated in accordance
with/using the business rules in order to manage, control,
distribute or to keep track of usage of particular media asset in
accordance with business rules" (Final Office Action, page 11,
lines 1-4. Emphasis added.) Applicant respectfully disagrees.
Managing, controlling, distributing, or keeping track of usage
of particular media asset may be carried out without validating
the metadata and/or the content.
(App. Br. 25).
Appellants' contentions are not persuasive because Appellants'
contentions are not commensurate with the broadest reasonable
interpretation of the claims. We adopt the Examiner's broad but reasonable
interpretation of "validating the metadata and the content using the business
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rules" of claim 29 as including analyzing and preparing content and
associated metadata based on business rules. (Ans. 44-45). Appellants'
Specification fails to more narrowly define "validating." The Examiner
further finds, and we agree, that this claim is anticipated by Headings’
description which allows the MSO or platform operator to enter or edit
business rules (e.g., Ans. 8; Headings ¶¶ [0029]-[0030]) and prepare and
process the content and associated metadata according to entered rules.
(Ans. 44-45; Headings ¶¶ [0030]-[0034]).
For this reason, on this record, we are not persuaded that the Examiner
erred. We therefore sustain the Examiner's anticipation rejection R2 of
claim 29.
R3.
I. Claim 52
Regarding the dependent claim 52 limitation of "wherein the
distribution channel comprises a satellite uplink facility and the downlink
channel comprises a satellite downlink facility," Appellants contend:
Furthermore, Buehl merely discloses a high speed distribution
network 25 for transmission to subscribers downstream in the
network (Buehl, paragraph [0026], lines 18-21.), not a satellite
uplink facility as recited in the rejected claim.
(App. Br. 27).
Appellants' contentions are not persuasive because Appellants do not
address the Examiner's findings. Specifically, the Examiner finds, and we
agree, that Buehl teaches or suggests the contested limitation "satellite
uplink facility" because Buehl teaches a system that uploads to a headend
within a satellite distribution network including "one or more satellite and/or
fiber optic components and links." (Ans. 46; Buehl ¶ [0026]). For these
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reasons, on this record, we are not persuaded the Examiner erred. We
therefore sustain the Examiner's § 103 rejection R3 of claim 52.

R4.
I. Claim 1
Regarding the claim 1 limitation of "metadata related to at least
accuracy of delivery of the multimedia asset data file," Appellants contend:
Headings merely discloses metadata may include such
descriptive information like copyright information, titles,
authors, and abstracts (Headings, paragraph [0033], lines 5-6)
or intelligent media may include license tracking information
(Headings, paragraph [0033], lines 12-13), NOT the metadata
related to at least accuracy of delivery of the multimedia asset
data file. Descriptive information is merely related to the
content and license tracking information is merely related to the
distribution rights. None of these is related to the accuracy of
delivery.
(App. Br. 28)
Appellants' contentions are not persuasive because Appellants'
contentions are not commensurate with the broadest reasonable
interpretation of the contested limitation. We conclude the broadest
reasonable interpretation of "metadata related to at least accuracy of delivery
of the multimedia asset data file" includes any nexus or correspondence, no
matter how attenuated, between the metadata and the accuracy of delivery.
(Claim 1). Because "[a]pplicants may amend claims to narrow their scope, a
broad construction during prosecution creates no unfairness to the applicant
or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted). We agree with the Examiner that Headings'
descriptive metadata (e.g., “copyright information, titles, authors, and
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abstracts” ¶ [0033]) ensures the accuracy of the delivery of the multimedia
asset by ensuring the correct multimedia delivery. (Ans. 16). The Examiner
also finds, and we agree, that Headings would have taught or suggested
"metadata related to at least accuracy of delivery of the multimedia asset
data file" because Headings teaches metadata that includes specifying a
"method of delivery" which one of ordinary skill would have recognized is
"related to at least accuracy of delivery." (Ans. 48; Headings ¶ [0012]). We
further agree with the Examiner's additional findings. (Ans. 48).
Appellants' contentions regarding the validating step are unpersuasive
for the same reasons described above regarding dependent claim 29. (App.
Br. 28).
For these reasons, on this record we are not persuaded the Examiner
erred. We therefore sustain § 103 rejection R4 of independent claim 1, and
of claims 2, 9-24, and 34, which fall therewith.
II. Claims 3-8.
Regarding claims 3-8, Appellants contend:
For example, regarding claims 3-8, the Examiner contends that
Sim discloses tracking receipt (e.g., ack/notification) (Final
Office Action, page 29, lines 9-10). Applicant respectfully
disagrees. Sim merely discloses the file management primitives
necessary to transfer, store, and manipulate provider files (Sim,
paragraph [0093], lines 1-3). The put_ack packet is used
merely to indicate successful transmission (Sim, paragraph
[0094], lines 25-27). It does not track receipt of the media data
file. Furthermore, Sim merely discloses various
commands/packets (put, distribute, replicate, get, prepare,
search, remove, clean, etc.) (Sim, paragraphs [0094] - [0106]),
not receiving an identification of the MSOs scheduled to
receive the data file. Moreover, Sim does not disclose a catcher
or a pitcher and therefore cannot disclose receiving an alarm
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signal if one of the elements is not successfully received by the
catcher appliance as recited in claim 8.
(App. Br. 30).
Appellants' contentions are unpersuasive. We adopt the Examiner's
findings with respect to claims 3-8, as set forth in the Examiner's Answer.
(Ans. 50). The claimed tracking is taught or suggested by the
acknowledgement packet indicating successful transmission. (Id.). Further,
the receiving of an alarm as claimed in Claim 8 would have been taught or
suggested by Sim, as described by the Examiner in the Answer, because
Sims teaches an error notification when a portion of the content is missing.
(Id.).
For these reasons, on this record we are not persuaded that the
Examiner erred regarding the § 103 rejection of dependent claims 3-8. We
therefore sustain the § 103 rejection R4 of claims 3-8.
R5.
Claim 35
Regarding the claim 35 limitation of "providing an asset locator to the
server in response to the metadata locator," Appellants contend:
[N]one of the user profiles, customized user guide schedule
contains an asset locator. It is noted that receiving a schedule
request from a server is recited as part of the coordinating
uploading. Since Ellis '744 does not disclose coordinating
uploading, none of what Ellis '744 discloses can be used to
combine with Headings.
The Examiner contends that Ellis '744 discloses an asset locator
such as channel source, time, etc. (Final Office Action, page 14,
lines 7-10; lines 17-19.) Applicant respectfully disagrees. An
asset locator is used to locate the asset, or the content. Here, the
channel source or time can only refer to the channel on the
television. It does not identify the location of the asset.
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(App. Br. 31).
Appellants' contentions are unpersuasive. The Examiner finds, and
we agree, that Ellis would have taught or suggested the contested limitations
of claim 35, because Ellis teaches an interactive program guide which
provides locators such as channel links, time links, titles, etc. which allow
the user or locate the content for playback. (Ans. 52). Further, Appellants
fail address the Examiner's findings and rationale. (Id.). We therefore adopt
the Examiner's rationale for the proposed combinations as detailed in the
Answer. (Id. at 53).
For these reasons, on this record we are not persuaded the Examiner
erred. Accordingly, we sustain § 103 rejection R5 of representative claim 35
and of claims 36, 37, 44, 45, 49, and 50, which fall therewith.

DECISION
We affirm the Examiner's rejection R1 of claims 1-40 under 35 U.S.C.
§ 101.
We affirm the Examiner's rejection R2 of claims 25-33, 38-43, 46-48,
51, and 53-55 under 35 U.S.C. § 102.
We affirm the Examiner's rejections R3-R5 of claims 1-24, 34-37, 44,
45, 49, 50, and 52 under 35 U.S.C. § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED

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