Ex Parte MacDonald et al

Patent Trial and Appeal Board

Jan 31, 2019

14525969 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/525,969 10/28/2014
46363 7590 02/04/2019
Tong, Rea, Bentley & Kim, LLC
Nokia
12 Christopher Way
Suite 105
Eatontown, NJ 07724
FIRST NAMED INVENTOR
J. Andrew MacDonald
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
801221-US-CNT 1089
EXAMINER
HOSSAIN, FARZANA E
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
docketing@trbklaw.com
Nokia.IPR@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. ANDREW MACDONALD, JARED D. MCNEILL,
AND MARTIN C. BECKWITH 1
Appeal2017-003251 2
Application 14/525,969
Technology Center 2400
Before JEFFREYS. SMITH, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1---6, 10-18, and 21. App. Br. 5. Claims 7-9, 19, and 20
1 Appellants indicate the real party in interest is Alcatel Lucent, "which is
now part of Nokia." Appeal Br. 3.
2 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
Sept. 19, 2016) and Reply Brief ("Reply Br.," filed Jan. 3, 2017), and the
Examiner's Answer ("Answer," mailed Nov. 2, 2016), Final Office Action
("Final Action," mailed Jan. 1, 2016), and Advisory Action ("Adv. Action,"
mailed June 20, 2016).
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Application 14/525,969
are canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b)(l). We
REVERSE.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method, comprising:
obtaining, from a plurality of high bandwidth programming
subscribers to which programming can be delivered via a high
bandwidth network, cumulative statistics of recordings initiated by
said subscribers for programming delivered during a period of time
via the high bandwidth network, wherein the cumulative statistics
provide a ranking of programs from a most recorded program to a
least recorded program;
determining a programming schedule for a period 'T' in
response to the obtained statistics; and
periodically broadcasting, after every said period 'T',
programming to constrained bandwidth programming subscribers via
a constrained bandwidth network having less bandwidth assets than
the high bandwidth network, according to the programming schedule,
wherein the constrained bandwidth network comprises 'n' channels
where 'n' is an integer, and wherein determining a programming
schedule comprises:
populating the first of the 'n' channels with programs in
successive order of most recorded through least recorded,
including as many programs as will temporally fit within the
period 'T' and
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populating successive channels by resuming at the
beginning of the temporal period 'T', with the next program in
successive order of most through least recorded programs, after
the last one that was able to temporally fit within the period 'T'
on the previous of the 'n' channels, wherein each respective
channel is populated with as many programs from the
respectively continuing successive order of most through least
recorded programs that will temporally fit within the period 'T'
on each channel.
Rejections
1. The Examiner rejected claims 1---6, 10-18, and 21 3 under 35 U.S.C.
§ 101 as not directed to statutory subject matter. Final Action 4--5
2. The Examiner rejected claims 1---6, 10-18, and 21 4 under
35 U.S.C. § 112(a)as failing to comply with the written description
requirement. Final Action 5-6.
3 We select claim 1 as representative. The Examiner does not present
separate findings or conclusions relating to non-statutory subject matter for
any individual claim, nor do the Appellants address the claims separately.
Except for our ultimate decision, the § 101 rejection of claims 2---6, 10-18,
and 21 is not discussed further herein.
4 We select claim 1 as representative. The Examiner does not present
separate findings or conclusions relating to written description for any
individual claim, nor do the Appellants address the claims separately.
Except for our ultimate decision, we do not discuss further herein the
§ 112(a) rejection of claims 2---6, 10-18, and 21.
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Issues on Appeal
I. Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
II. Did the Examiner err in finding claim 1 fails to comply with the
written description requirement?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
I. Did the Examiner err in rejecting claim 1 as being
directed to non-statutory subject matter?
A. Section 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Memorandum.
B. Examiner's Rejection - Alice/Mayo - Steps 1 and 2
Applying step 1 of the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea because:
The gathering of data or obtaining of data - the cumulative
statistics where the statistics are ranking of programs (the most
recorded versus to the least recorded). The combining of data is
the obtained data of cumulative statistics ( cumulative is defined
as formed by or resulting from accumulation or addition of
successive parts or elements). There is comparing of data as
obtained cumulative statistics are used to determine most
recorded to least recorded. Also, there is organization of
information through mathematical relationships or correlations
( mutual relation of two or more things) as the addition of data of
most recorded to least recorded statistics are used to be compared
- cumulative statistics (new and stored information) and using
rules to identify options for the determined schedule ( what is
most recorded and what is least recorded that fits the time T).
Further the organization is further provided by populating of data
for a schedule by entering data in the schedule in successive
order of most to least by a period of time T ( a schedule for an
[ electronic programming guide] is provided for a time period i.e.
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two hours or three hours). Therefore, there is gathering of data,
combining data, comparing data, organizing data to manipulate
existing information to generate additional information in the
form of a programming schedule. These steps describe the
concept of determining [] programming schedules, which
corresponds to concepts identified as abstract ideas by the courts,
such organizing data in Dietgoal [Innovations LLC v. Bravo
Media LLC, 599 Fed. App'x 956 (Fed. Cir. 2015)], processing
information through a clearinghouse in Dealertrack, [Inc. v.
Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012),] comparing new
and stored information and using rules to identify options in
SmartGene, [Inc. v Advanced Biological Labs., 555 Fed. Appx.
950 (Fed. Cir. 2014),] using categories to organize, store and
transmit information in Cyberfone [Systems, LLC v. CNN
Interactive Group, Inc., 558 Fed. App'x 988 (Fed. Cir. 2014)],
organizing information through mathematical correlations in
Digitech [ Image Techs., LLC v Electronics for Imaging, Inc., 7 58
F.3d 1344 (Fed. Cir. 2014)], managing a game of bingo [in]
Planet Bingo [, LLC v VKGS LLC, 576 Fed. App'x 1005 (Fed.
Cir. 2014)]. Therefore, the claim is directed to an abstract idea.
Advisory Action 2 (italicization added); Final Action 4--5; Answer 9.
The Examiner then concludes that additional elements of the claim
"do not provide meaningful limitation(s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself." Final Action 5; Advisory
Action 2; Answer 11-12. "[B]roadcasting programming over a network to
subscribers according to a schedule is well understood and routine in the
art." Answer 10.
The claims merely amount to the application or instructions to
apply the abstract idea (i.e. facilitating a financial transaction)
using computers, and is considered to amount to nothing more
than requiring generic computer systems ( e.g. a computer system
comprising a generic database; a generic element for providing a
network based communications; a generic element for receiving
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and transmitting information; and a generic element to allow the
parties to complete a transaction after authentication) to merely
carry out the abstract idea itself. As such, the claims, when
considered as a whole, are nothing more than the instruction to
implement the abstract idea (i.e. facilitating a financial
transaction) in a particular, albeit well-understood, routine and
conventional technological environment.
Final Action 4; see also Answer 4.
C. Appellants 'Arguments and Our Findings and Conclusions
Appellants contend the Examiner erred in the § 101 rejection of claim
1 by failing to identify additional elements of the claim, to consider whether
the additional elements amount to significantly more than non-statutory
subject matter, and that Examiner's assertions that the additional elements of
the claim do not amount to significantly more than the purported abstract
idea were general and did not take into account the specifics of the
additional elements. Appeal Br. 21-26; Reply Br. 5-7.
We conclude that the additional elements of the claim, including at
least "periodically broadcasting ... programming to constrained bandwidth
programming subscribers via a constrained bandwidth network having less
bandwidth assets than the high bandwidth network, according to the
programming schedule," integrate the elements identified by the Examiner
as a judicial exception into a practical application. The additional element of
periodically broadcasting programming according to the determined
programming schedule to a subset of subscribers does not merely apply the
Examiner-identified abstract idea to one technological environment or field
of use. Instead, we conclude that claim 1 's additional element imposes a
meaningful limit on the identified judicial exception, such that it is more
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than a drafting effort designed to monopolize the exception. See Diamond,
450 U.S. at 192. Thus, we do not sustain the§ 101 rejection.
Appellants raise additional arguments with respect to this rejection.
Because the practical application issue is dispositive of the appeal, with
respect to this rejection, we do not address the merits of those additional
arguments.
II. Did the Examiner err in finding claim 1 fails to comply with the
written description requirement?
A. Examiner's Rejection - 35 U.S.C. § l 12(a)
The Examiner rejects the claims, apparently finding that "periodically
broadcasting, after every said period 'T', programming to constrained
bandwidth programming subscribers" fails to comply with the written
description requirement. Final Action 6. The Examiner finds that the
specification supports the broadcasting of programming but only supports
"periodically broadcasting" the programming schedule. Final Action 6.
In the Answer, the Examiner finds that the claim limitation relating to
periodic broadcasting of a programming implies recurring broadcasting of a
program during a time period 'T.' Answer 18-19. The Examiner
determines that "[p ]eriodically means to be sent every period or interval"
and since the programs may not be repeated "these programs are not
periodically sent[,] as the next programs that may be sent [ on a given
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channel] will not be the same two program [that have just been sent] but
rather the programs that fit [in the next time slot]." Answer 19.
B. Appellants' Arguments and Our Findings and Conclusions
Appellants contend the Examiner erred in the rejection of claim 1
because the specification supports broadcasting of programming in
accordance with the programming schedule. Appeal Br. 27-28; Reply
Br. 10-11. Appellants argue that according to the specification
"programming identified in the programming schedule may be broadcasted
periodically based on the period 'T' of the programming schedule." Reply
Br. 11. Appellants contend that the specification and claims "do not require
that the same set of programs are broadcast within each period 'T' ." Id. at
10.
We note that the claim includes references to individual programs
( e.g. "a most recorded program") and indicates that successive periods could
include different programs, based on the "ranking of programs" provided in
the "cumulative statistics."
We agree with Appellants that that no requirement for repeated
programs be broadcast within a period 'T' appears in the specification, and
that "periodically broadcasting ... programming," in its broadest reasonable
interpretation, would not require such repetition. Thus, we do not sustain the
§ 112 rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-6, 10-18, and
21 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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We reverse the Examiner's decision rejecting claims 1---6, 10-18, and
21 under 35 U.S.C. § 112 as failing to comply with the written description
requirement.
REVERSED
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