Ex Parte O et al

Patent Trial and Appeal Board

Aug 23, 2017

12688001 (P.T.A.B. Aug. 23, 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.
12/688,001 01/15/2010 Clint H. O'Connor DC-17940 2681
33438 7590 08/25/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
tmunoz @ tcchlaw. com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLINT H. O'CONNOR, GARY D. HUBER, MICHAEL HAZE,
and WILLIAM A. CURTIS
Appeal 2016-004610
Application 12/688,0011
Technology Center 3600
Before MAHSHID D. SAADAT, CARL L. SILVERMAN
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—5, 7—11, 13—17, 19, and 20, which are all claims
pending. Claims 6, 12, and 18 are cancelled. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Dell Products L.P. as the real party in interest. (Br. 1.)
Appeal 2016-004610
Application 12/688,001
THE INVENTION
Appellants’ disclosed and claimed invention is directed to managing
the entitlement of digital assets. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A system for managing the entitlement of digital
assets, comprising:
a storage medium comprising a repository of system
identifier data, digital assets data, and digital assets
entitlement data; and
a processor, the processor being operable to:
receive input data comprising system identifier
data associated with a target system;
receive input data comprising digital assets
selection data, wherein the digital assets selection data
corresponds to digital assets data;
process the input data to generate digital assets
entitlement data, wherein the digital assets entitlement
data is associated with the target system identified by the
system identifier data and with digital assets
corresponding to the digital assets selection data; and
provide the digital assets data and the digital assets
entitlement data to a personalization agent associated
with the target system, wherein the personalization agent
processes the digital assets entitlement data and the
digital assets data for installation on the target system;
and wherein
the digital assets data comprises system
personalization data, the system personalization data
corresponding to a personalization option, the
personalization option comprising a personalized feature,
capability or function to be applied to the target system,
the personalization option being applied to the target
system via the personalization agent.
2
Appeal 2016-004610
Application 12/688,001
REJECTIONS
The Examiner rejected claims 1—5, 7—11, 13—17, 19, and 20 under 35
U.S.C. § 101 as directed to unpatentable subject matter. (Final Act. 2—3.)
The Examiner rejected claims 1—5, 7—11, 13—17, 19, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Kobata (US 2002/0077986 Al,
pub. June 20, 2002) and Di Luoffo, et al. (US 2004/0250066 Al, pub. Dec.
9,2004). (Final Act. 4—6.)
ISSUES ON APPEAL
Appellants’ arguments in the Appeal Brief present the following
issues2:
First Issue: Whether the pending claims are directed to unpatentable
subject matter. (Br. 3—5.)
Second Issue: Whether the pending claims are obvious over the
combination of Kobata and Di Luoffo. (Br. 5—7.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner erred. We disagree with Appellants’ arguments,
and we adopt as our own (1) the pertinent findings and reasons set forth by
the Examiner in the Final Office Action from which this appeal is taken
(Final Act. 2—6) and (2) the corresponding findings and reasons set forth by
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Sep. 23, 2015); the Final
Office Action (mailed Apr. 23, 2015); and the Examiner’s Answer (mailed
Feb. 3, 2016) for the respective details.
3
Appeal 2016-004610
Application 12/688,001
the Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief (Ans. 2—6). We concur with the applicable conclusions reached by the
Examiner, and emphasize the following.
First Issue
The Examiner concludes the pending claims are invalid under
35 U.S.C. § 101, because the claims “are directed to managing the
entitlement of digital assets, which is considered to be an abstract idea.”
(Final Act. 2.) In addition, the Examiner concludes:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims do not amount to an improvement
to another technology or technical field; the claims do not
amount to an improvement to the functioning of a computer
itself; the claims do not move beyond a general link [sic] of the
use of an abstract idea to a particular technological
environment; the claims merely amount to the application or
instructions to apply the abstract idea on a computer; and the
claim amounts to nothing more than requiring a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
(Final Act. 2—3.)
Appellants rely on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), and argue “the claims of the present application
provide a substantial improvement over the art in the field of managing the
entitlement of digital assets,” and the claims “are necessarily rooted in
computer technology rather than simply implement old ideas on a
computer.” (Br. 4—5.)
We are not persuaded by Appellants’ arguments. We adopt the
Examiner’s findings and conclusions provided in the Final Office Action
4
Appeal 2016-004610
Application 12/688,001
and Answer. (Final Act. 2—3; Ans. 2—4.) The Supreme Court has long held
that “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355. The first step in the analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “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.’” Id. (brackets in original) (quoting Mayo, 566
U.S. at 73.) The prohibition against patenting an abstract idea “‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
5
Appeal 2016-004610
Application 12/688,001
Appellants’ arguments focus on claim 1 — accordingly we select
claim 1 as representative in evaluating whether the claims are patent-eligible
under Section 101. See 37 C.F.R. § 41.37(c)(l)(iv). Turning to the first step
of the Alice inquiry, we agree with the Examiner that Appellants’ claim 1 is
reasonably characterized as directed to an abstract idea of “managing the
entitlement of digital assets.” (Final Act. 2.) All the components recited in
claim 1 — including: (i) storage of data; (ii) receipt of target system
identifier data; (iii) receipt of digital assets data; (iv) generation of digital
assets entitlement data; (v) installation of entitlement data; and (vi) applying
personalization options — are consistent with the Examiner’s correct
characterization of the “managing the entitlement of digital assets” abstract
idea that is the subject of the claims, which is a fundamental conventional
business practice.
There is no definitive rule to determine what constitutes an “abstract
idea.” Rather, the Federal Circuit has explained that “both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous cases.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see
also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (explaining that, in determining whether claims are patent-
eligible under § 101, “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”).
The Federal Circuit also noted that “examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
6
Appeal 2016-004610
Application 12/688,001
concepts previously found abstract by the courts.” Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
We are not persuaded DDR Holdings, involving subject matter which
changed how interactions operated on the Internet, is applicable to the
pending claims. DDR Holdings, 773 F.3d at 1257. The storage and
processing functions recited in the claims involve routine data gathering and
storage of target system and digital assets identification, followed by
generation and installation of entitlements and personalization options. The
data gathering and processing subject matter of the claims can be performed
either mentally or with . . pencil and paper.’” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (internal
citation omitted.) “[A] method that can be performed by human thought
alone is merely an abstract idea and is not patent-eligible under § 101.” 654
F.3d at 1373. In this regard, the claims are similar to the claims that the
Federal Circuit determined are patent ineligible in Elec. Power Grp., LLC v.
Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting information
and “analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category”). The Federal Circuit has also held
similar data manipulation claims to be directed to patent-ineligible abstract
idea — see OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015) (offer-based price optimization); Intellectual Ventures I
LLCv. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(tailoring information presented to a user based on particular information);
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014 (employing mathematical algorithms to manipulate
7
Appeal 2016-004610
Application 12/688,001
existing information); Accenture Global Servs., GmbHv. Guidewire
Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an
insurance organization); and Versata Dev. Grp. v. SAP Am., 793 F.3d 1306,
1333—34 (Fed. Cir. 2015) (price-determination method involving arranging
organizational and product group hierarchies).
Moreover, such “insignificant postsolution activity” as installing
entitlements and personalization options does not circumvent the prohibition
against patenting an abstract idea. Parker v. Flook, 437 U.S. 584, 590
(1978); Bilski v. Kappos, 561 U.S. 593, 610-11 (2010).
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything “significantly more” to transform the abstract
concept of task monitoring. Alice, 134 S. Ct. at 2357. Beyond that abstract
idea, the claims merely recite “‘well-understood, routine, conventional
activities],’” either by requiring conventional computer activities or routine
data-gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. at
73.) Considered individually or taken together as an ordered combination,
the claim elements fail “to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Id. at 2357 (quoting Mayo, 566 U.S. at 72—73,
78.) For example, claim 1 recites a storage medium and a processor. This is
similar to the circumstances of Alice, where “[such] computer functions are
‘well-understood, routine, conventional activities],’ previously known to
the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. at 73); see
also buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”); Bancorp Servs., L.L.C. v. Sun LifeAssur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only
8
Appeal 2016-004610
Application 12/688,001
for its most basic function . . . does not impose meaningful limits on the
scope of those claims”). The broadly recited computer implementation
limitations of the claims do little to limit their scope. Indeed, the
Specification makes clear that the memory and processor may be “any
instrumentality or aggregate of instrumentalities” to carry out the claimed
functions. (Spec. 118.)
Because Appellants’ claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s 35 U.S.C. § 101
rejection of the pending claims.
Second Issue
Appellants argue the Examiner errs in finding the combination of
Kobata and Di Luoffo teaches or suggests the independent claim 1
requirement:
the digital assets data comprises system personalization
data, the system personalization data corresponding to a
personalization option, the personalization option comprising a
personalized feature, capability or function to be applied to the
target system, the personalization option being applied to the
target system via the personalization agent;
and commensurate requirements of independent claims 7 and 13. (Br. 6.)
For this limitation, the Examiner relies on the disclosure in Di Luoffo
of a secure data transmission system including use of “[pjersonalized
entitlement data and available option information.” (Final Act. 5; Di Luoffo
1 80.) Appellants argue:
[N]owhere within the cited portion of Di Luoffo (nor anywhere
else within Di Luoffo) is there any disclosure or suggestion of
the digital assets data comprising system personalization data
where the system personalization data corresponds to a
9
Appeal 2016-004610
Application 12/688,001
personalization option, much less where the personalization
option is applied to the target system via the personalization
agent, all as required by claims 1, 7 and 13.
(Br. 6.) This conclusory attorney argument is unpersuasive. See In re Lovin,
652 F.3d at 1357 (We note that “the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
Appellants also argue Di Luoffo fails to teach or suggest the
independent claim 13 limitation, “the personalization agent comprising a
unique identifier associated with the system identifier data associated with
the target system.” (Br. 6.)3 This conclusory argument is also unpersuasive,
and, in addition, fails to account for the Examiner’s reliance for this aspect
of the claim on the disclosure in Kobata of unique identifiers. (Final Act. 5;
Ans. 5; Kobata 46, 157.)
Accordingly we sustain the Examiner’s obviousness rejection of
independent claims 1, 7, and 13 over Kobata and Di Luoffo, as well as of
claims 2—5, 8—11, 14—17, 19, and 20, which are not argued separately with
particularity.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 7—11, 13—17,
19, and 20.
3 Appellants indicate independent claims 1 and 7 include this limitation.
(Br. 6.) However, this limitation only appears in claim 13.
10
Appeal 2016-004610
Application 12/688,001
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See C.F.R.
§ 41.50(f).
AFFIRMED
11