Ex Parte Raley et al

Patent Trial and Appeal Board

Jan 11, 2017

10388161 (P.T.A.B. Jan. 11, 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.
10/388,161 03/14/2003 Michael Raley 10-545-US (cg370100) 9473
98804 7590
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230
EXAMINER
ZELAS KIEWICZ, CHRYSTINA E
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/13/2017 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):
ptoipinbox @reedsmith.com
mskaufman @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL RALEY, THOMAS DEMARTINI,
CHARLES P. GILLIAM, MANUEL HAM, GUILLERMO LAO,
and BIJAN TADAYON
Appeal 2015-0002591
Application 10/388,1612
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, 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—14 and 31. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 4, 2014) and Reply Brief (“Reply Br.,” filed October 1, 2014), and the
Examiner’s Answer (“Ans.,” mailed August 1, 2014) and Final Office
Action (“Final Act.,” mailed November 8, 2013).
2 Appellants identify ContentGuard Holdings, Inc. as the real party in
interest. App. Br. 1.
Appeal 2015-000259
Application 10/388,161
CLAIMED INVENTION
Appellants’ claimed invention “generally relates to controlling use of
content, or other items, through rights expressions associated with the
content or other items, and more particularly to a system and method for
profiling rights expressions” (Spec. 12).
Claim 1, reproduced below, is the sole independent claim and
representative of the subject matter on appeal:
1. A computer-implemented method executed by one
or more computing devices for creating an encoded rights
expression for association with an item of digital content for use
in a digital rights management system for controlling use of the
item of digital content in accordance with the encoded rights
expression, the method comprising:
specifying, by at least one of the one or more computing
devices, a raw rights expression, the raw rights expression
indicating a manner of use of an item of digital content, the raw
rights expression including at least one rights expression
language element, the at least one rights expression language
element including a variable field and expressing a
corresponding value for the variable field;
generating, by at least one of the one or more computing
devices, a profile of the raw rights expression by removing, from
the raw rights expression, the value for the variable field of the
at least one rights expression language element, the profile
including the raw rights expression including the variable field
without the corresponding value;
generating, by at least one of the one or more computing
devices, an identification for the profile; and
creating, by at least one of the one or more computing
devices, an encoded rights expression by combining the
identification for the profile and the value for the variable field.
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Appeal 2015-000259
Application 10/388,161
REJECTIONS
Claims 1—14 and 31 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1—14 and 31 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
Here, the Examiner bases the written description rejection on the
alleged failure of claim 1 to “recite limitations as to how the functions” of
‘specifying, by at least one of the one or more computing devices, a raw
rights expression . . . field’ or ‘generating, by at least one of the one or more
computing devices, a profile of the raw rights expression . . . value’” are
performed, and on the alleged failure of Appellants’ Specification to
“identify a way of performing the claimed functions such as with a specific
type of microprocessor or specific algorithm” (Final Act. 4; see also Ans. 3—
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Application 10/388,161
4). The Examiner, thus, seemingly confuses the enablement provision of
35 U.S.C. § 112, first paragraph, with the written description requirement,
which is a separate requirement.
To satisfy the written description requirement, Appellants need only
demonstrate original descriptive support in the Specification for the subject
matter recited in claim 1. The Examiner has not established that the
Specification, as filed, lacks the requisite descriptive support. As such, the
Examiner has not established a prima facie case of unpatentability.
Therefore, we do not sustain the Examiner’s rejection of claims 1—14
and 31 under 35 U.S.C. § 112, first paragraph.3
Non-Statutory Subject Matter
Appellants argue claims 1—14 and 31 as a group (Reply Br. 1 4). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
3 We note for the record that the Board’s earlier January 9, 2013 Decision in
application Serial No. 10/388,161 (affirming the Examiner’s rejection of
claims 15—30 and 32 under 35 U.S.C. § 112, second paragraph, as indefinite)
is not relevant to the written description rejection here of claims 1—14 and 31
under 35 U.S.C. § 112, first paragraph.
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Appeal 2015-000259
Application 10/388,161
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” id., e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “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.” Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
found that claims 1—14 and 31 are directed to the abstract idea of licensing
digital content; that the claims do not add any meaningful limitation beyond
linking the use of the abstract idea to a particular technological environment;
and that the claims require no more than a generic computer performing
generic computer functions that are well-understood, routine, and
conventional activities previously known in the industry (Ans. 3).
Appellants argue that limitations of claim 1 recite a number of
physical steps performed by one or more computing devices and that the
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Appeal 2015-000259
Application 10/388,161
claims, therefore, are not directed to an abstract idea but rather to a physical
process (Reply Br. 2). Yet there is no indication in claim 1 that any
specialized hardware is required. And “after Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.”
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (internal citations and quotation marks omitted).
Appellants also charge that the Examiner’s assertion that the claims
are “generic computer functions that are well-understood, routine, and
conventional activities previously known in the industry’ is completely
unsubstantiated, unsupported by any evidence or argument, and wholly
incorrect” (Reply Br. 3). But Appellants present no evidence to establish
otherwise. And to the extent Appellants contend that the Examiner is
required to provide such evidence, the law is clear that there is no such
requirement. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(holding that the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the notice requirement of 35 U.S.C.
§ 132).
Appellants further contend that claim 1 is patent-eligible because the
claimed method is tied to a particular machine or apparatus and transforms a
particular article into a different state or thing (Reply Br. 4; see also App.
Br. 9—11). Yet claim 1 is not tied to any particular novel machine or
apparatus; instead, the claim merely recites a general purpose computer, i.e.,
“one or more computing devices.”
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Appeal 2015-000259
Application 10/388,161
Moreover, although the Supreme Court noted in Bilski v. Kappos that
the machine-or-transformation test is a “useful and important clue” for
determining patent eligibility, 130 S. Ct. 3218, 3227, the Court, in Mayo,
emphasized that satisfying the machine-or-transformation test, by itself, is
not sufficient to render a claim patent-eligible, as not all transformations or
machine implementations infuse an otherwise ineligible claim with an
“inventive concept.” See Mayo, 132 S. Ct. at 1301 (“[Sjimply implementing
a mathematical principle on a physical machine, namely a computer, [i]s not
a patentable application of that principle.”) (describing Gottschalk v.
Benson, 409 U.S. 63, 64 (1972)). And, as described above, it could not be
clearer from Alice that the recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.
We also cannot agree with Appellants that claim 1 satisfies the
transformation prong of the machine-or-transformation test. The method, as
claimed, involves “generating ... a profile of the raw rights expression by
removing, from the raw rights expression, the value for the variable field of
the at least one rights expression language element.” But this generating
step effects no meaningful transformation. Instead, it merely creates a
profile, i.e., a separate entity, which is the raw rights expression including
the variable field without the corresponding value.
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 as directed to non-statutory subject
matter. Therefore, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101. We also sustain the rejection of dependent claims 2—14
and 31, which fall with claim 1.
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Appeal 2015-000259
Application 10/388,161
DECISION
The Examiner’s rejection of claims 1—14 and 31 under 35 U.S.C.
§112, first paragraph, is reversed.
The Examiner’s rejection of claims 1—14 and 31 under 35 U.S.C.
§ 101 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)(l)(iv).
AFFIRMED
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