Ex Parte Rourk

Patent Trials and Appeals Board

Mar 22, 2019

13043373 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/043,373 03/08/2011 Christopher J. Rourk
25555 7590 03/22/2019
JACKSON WALKER LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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.
999956.00007 8728
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
03/22/2019 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 CHRISTOPHER J. ROURK
Appeal2017-003576 1
Application 13/043,373 2
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 21-23 and 40-56. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing in this appeal was held on March 13, 2019.
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
January 13, 2016) and Reply Brief ("Reply Br.," filed December 20, 2016),
and the Examiner's Answer ("Ans.," mailed October 20,216) and Final
Office Action ("Final Act.," mailed July 14, 2015). The record includes a
transcript of the March 13, 2019 oral hearing.
2 Appellant identifies the inventor, Christopher John Rourk, as the real party
in interest. App. Br. 4.
Appeal2017-003576
Application 13/043,373
CLAIMED INVENTION
Appellant's invention "relates to an audiovisual programming
selection system and method of use that allows a user to select between
receiving the content free with commercials or paying for the content to
receive it commercial-free" (Spec. ,r 2).
Claims 21 and 40, reproduced below, are the independent claims on
appeal and representative of the claimed subject matter:
21. A method performed by a content service for
generating revenue from supplied content without establishing
contracts with, or receiving payments from, a plurality of
consumers, the content service linking one or more content
providers to one or more network operators that use the content
service to supply content to the consumers via one or more
respective networks, the method comprising:
using at least one computer to perform the steps of:
[(a)] licensing the content from the one or more
content providers;
[ (b)] allowing the consumers to select content
available from the one or more content providers;
[(c)] directly supplying the selected content to the
consumers via the one or more respective networks of the
one or more network operators without the content service
or the one or more content providers charging the
consumers;
[ ( d)] charging the one or more network operators
for the content supplied to the consumers through the one
or more respective networks; and
[( e )] forwarding a portion of payments received
from the one or more network operators for the supplied
content to the content provider that licensed the supplied
content to the content service.
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40. A method for providing content comprising:
controlling delivery of content from two or more content
providers using a processor;
generating content suggestions for a user at a content
management system operating on a processor as a function of a
viewing history of the user and a plurality of viewing histories of
other users;
receiving a user selection from a user device to select
content available from the two or more content providers at the
processor;
directly supplying the selected content to the user device
via one or more networks without charging the user;
generating compensation data for the selected content
provider for the content supplied to the user device based on a
charge structure selected by the content provider; and
generating payment data at a revenue tracking system
operating on a server as a function of the compensation data.
REJECTIONS
Claims 21-23 and 40-56 are rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
Claims 21-23 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 21, 22, and 40-56 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Stefik et al. (US 5,634,012, iss. May 27, 1997) ("Stefik")
and Cannon et al. (US 2002/0016736 Al, pub. Feb. 7, 2002) ("Cannon").
Claim 23 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Stefik, Cannon, and Knepper et al. (US 2001/0042249 Al, pub. Nov. 15,
2001) ("Knepper").
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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (App. Br. 11-18). We
select independent claim 21 as representative. The remaining claims stand
or fall with claim 21. See 37 C.F.R. § 4I.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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., 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." Id. ( quoting Mayo,
566 U.S. at 79, 78).
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, 566 U.S. at 71. Therefore, the Federal Circuit has
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instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "the abstract idea of allowing
consumers to choose content" (Final Act. 5---6), and that the additional
elements or combination of elements, other than the abstract idea per se,
amounts to no more than "providing consumers with the content they have
chosen and charging the consumers for the provided content" (id.). The
Examiner further determined that"[ v ]iewed as a whole, these additional
claim element( s) 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) amount to significantly more than the abstract idea itself' (id.).
Focusing on step one of the Mayo/Alice framework, we are not
persuaded that the Examiner erred in determining that claim 21 is directed to
an abstract idea. The Federal Circuit has explained that "the 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
[S]pecification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It
asks whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an "abstract idea" for
which computers are invoked merely as a tool. See id. at 1335-36. Here,
the Specification, including the claim language, make clear that the claims
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focus on an abstract idea, and not on any improvement to computer
technology and/or functionality.
The Specification is entitled "AUDIOVISUAL PROGRAMMING
SELECTION SYSTEM AND METHOD OF USE," and discloses that the
present invention "pertains to the field of audiovisual programming selection
systems." (Spec. ,r 2). The Specification, thus, describes that the present
invention allows users to select audiovisual programs for viewing based on
content, "how well the programs have been enjoyed by others, the cost or
incentives for the program, or other suitable criteria" (id. ,r 9).
Understood in light of the Specification, claim 21 is directed to a
method for generating revenue from supplied content comprising:
(1) licensing content from a content provider, i.e., "licensing the content
from the one or more content providers" (step (a)); (2) supplying selected
content to consumers via one or more networks, i.e., "allowing the
consumers to select content available from the one or more content
providers" and "directly supplying the selected content to the consumers via
the one or more respective networks of the one or more network operators"
( steps (b) and ( c) ); (3) charging the network operators for the supplied
content, i.e., "charging the one or more network operators for the content
supplied to the consumers through the one or more respective networks"
(step (d)); and (4) forwarding a portion of the payments received from the
network operators to the content provider, i.e., "forwarding a portion of
payments received from the one or more network operators for the supplied
content to the content provider that licensed the supplied content to the
content service" (step (e)). Simply put, claim 21 is directed to supplying
licensed content of choice to consumers via a computer network, and
compensating the content provider with a portion of the proceeds received
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from the network operator who supplied the content. In other words,
claim 21 is directed to a commercial interaction, which is a method of
organizing human activity and, therefore, an abstract idea, see 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52
(Jan. 7, 2019) ("Revised Guidance"), substantially similar to other concepts
that the courts have held abstract. See, e.g., buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1353-54 (Fed. Cir. 2014) (creating contractual
relationships); Smartjlash LLC v. Apple Inc., 680 F. App'x 977, 982 (Fed.
Cir. 2017) ( claims directed to the abstract idea of "conditioning and
controlling access to data based on payment").
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in claim 21 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[ A ]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
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claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the Revised Guidance. 3
Appellant argues that the rejection under§ 101 cannot be sustained
because the Examiner has provided no evidence to support the rejection;
therefore, according to Appellant, the Examiner has failed to establish a
prima facie case of patent-ineligibility (App. Br. 11). Appellant notes that
the Supreme Court, in Bilski v. Kappas, 561 U.S. 593 (2010), and also in
Alice, cited specific references ( e.g., three finance textbooks in Bilski), to
substantiate its finding in Bilski, that "hedging," and in Alice, that
"intermediated settlement," is a fundamental economic practice (id. at 14).
And Appellant ostensibly maintains that the Examiner is likewise required to
3 We note that Appellant's briefs were filed, and the Examiner's Answer
mailed, before the USPTO issued the Revised Guidance, which, by its terms,
applies to all applications, and to all patents resulting from applications, filed
before, on, or after January 7, 2019. In accordance with the Revised
Guidance, a claim is generally considered "directed to" an abstract idea if (1)
the claim recites subject matter falling within one of the following groupings
of abstract ideas: (a) mathematical concepts; (b) certain methods of
organizing human activity, e.g., fundamental economic principles or
practices, commercial or legal interactions; and ( c) mental processes, and (2)
the claim does not integrate the abstract idea into a practical application i.e.,
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the clam is more than a
drafting effort designed to monopolize the judicial exception. See Revised
Guidance, 84 Fed. Reg. at 54--55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") §§ 2106.05(a}-(c)
and ( e }-(h) in describing the considerations that are indicative that an
additional element or combination of elements integrates the judicial
exception, e.g., the abstract idea, into a practical application. Id. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
"directed to" the judicial exception.
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cite authority here in order to establish a prima facie case of patent-
ineligibility (id.). We disagree.
As an initial matter, we find nothing in Bilski or Alice that requires the
Office to identify specific references to support a finding that a claim is
directed to an abstract idea. Nor, contrary to Appellant's assertion (id.), did
this Board hold in PNC Bank v. Secure Axcess, CBM2014-00100, 2014 WL
4537440 (PTAB Sept. 9, 2014) that an examiner must provide evidentiary
support in every case before a determination can be made that a claim is
directed to an abstract idea. 4 Appellant also has not articulated sufficiently
Appellant's assertion that the USPTO's "2014 Interim Guidance on Patent
Subject Matter Eligibility"5 and/or the Administrative Procedure Act impose
any such requirement (id. at 11 ). Evidence may be helpful, e.g., where facts
are in dispute, but it is not always needed. See Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016)
("[I]t is also possible, as numerous cases have recognized, that a § 101
analysis may sometimes be undertaken without resolving fact issues.").
Appellant's bare assertion that evidence is needed here, without any
supporting reasoning as to why, is insufficient to require the Examiner to
provide evidentiary support. 6
The Federal Circuit, moreover, has observed repeatedly that "the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369
4 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
5 79 Fed. Reg. 74618 (December 16, 2014).
6 We note that Appellant has put forward no rebuttal evidence showing the
claims are not directed to an abstract idea.
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(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection,
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application." See In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus,
what is required of the Office is that it sets forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132
(see Final Act. 5---6). And, in doing so, the Examiner set forth a prima facie
case of patent-ineligibility. See "July 2015 Update: Subject Matter
Eligibility,"7 p. 6 (setting forth a general notice requirement to establish a
prima facie rejection under 35 U.S.C. § 101); May 4, 2016 Memorandum to
the Patent Examining Corps on "Formulating a Subject Matter Eligibility
Rejection and Evaluating the Applicant's Response to a Subject Matter
Eligibility Rejection,"8 p. 2 ("[T]he rejection ... must provide an
7 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
8 Available at https://www.uspto.gov/sites/default/ files/ documents/ ieg-
may-2016-memo.pdf.
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explanation ... which [is] sufficiently clear and specific to provide applicant
sufficient notice of the reasons for ineligibility and enable the applicant to
effectively respond.") ( emphasis added). Appellant does not contend that
the Examiner's rejection was not understood or that the Examiner otherwise
failed to comply with the notice requirements of§ 132.
We also do not agree with Appellant that the Examiner has
mischaracterized the claims as directed to "allowing consumers to choose
content" (App. Br. 12-13). Appellant argues that, in characterizing the
claimed invention as an abstract idea, the Examiner omits and also misstates
material limitations of claim 21 (id. at 12). Yet, there is no requirement that
the Examiner's formulation of the abstract idea must copy the claim
language. That claim 21 includes more words than the phrase the Examiner
used to articulate the abstract idea to which the claim is directed is an
insufficient basis to persuasively argue that the claim language has been
mischaracterized or that the Examiner has otherwise failed to consider all of
the limitations of the claim. See Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016) ("An abstract idea can generally be described at
different levels of abstraction. As the Board has done, the claimed abstract
idea could be described as generating menus on a computer, or generating a
second menu from a first menu and sending the second menu to another
location. It could be described in other ways, including, as indicated in the
specification, taking orders from restaurant customers on a computer.").
Turning to step two of the Mayo/Alice framework, Appellant argues
that the claims, when considered as a whole, "contain additional limitations
that are not 'well understood, routine, and conventional in the field,' and
thus provide an inventive concept" (App. Br. 15). Yet, the features that
Appellant identifies as providing the inventive concept, i.e.,
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licensing the content from the one or more content providers;
allowing the consumers to select content available from the one
or more content providers; [and] directly supplying the selected
content to the consumers via the one or more respective networks
of the one or more network operators without the content service
or the one or more content providers charging the consumers,
as recited in claim 21 (id.), are part of the abstract idea itself. They are not
additional elements to be considered in determining whether claim 21
includes additional elements or a combination elements that is sufficient to
amount to significantly more than the judicial exception.
Addressing step two of the Mayo/Alice framework in Berkheimer, the
Federal Circuit held that the question of whether a claim element or
combination of elements is well-understood, routine, and conventional to a
skilled artisan in the relevant field is a question of fact. Berkheimer v. HP,
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). But, it could not be clearer from
Alice, that under step two of the Mayo/Alice framework, the elements of
each claim are considered both individually and "as an ordered
combination" to determine whether the additional elements, i.e., the
elements other than the abstract idea itself, "transform the nature of the
claim" into a patent-eligible application. Alice Corp., 573 U.S. at 217. See
Mayo, 566 U.S. at 72-73 (requiring that "a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an 'inventive concept,' sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself' ( emphasis added)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
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It is clear from Mayo that the "inventive concept" cannot be the
abstract idea itself, and Berkheimer ... leave[ s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged "inventive concept" is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). See also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290-91 (Fed. Cir. 2018) ("Our precedent has consistently employed this
same approach. If a claim's only 'inventive concept' is the application of an
abstract idea using conventional and well-understood techniques, the claim
has not been transformed into a patent-eligible application of an abstract
idea.").
The only claim elements in claim 21 beyond the abstract idea are the
claimed "computer" and one or more "networks." Appellant cannot
reasonably contend, nor does he, that there is a genuine issue of material fact
regarding whether operation of these components is well-understood,
routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 21 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic components operating in their normal,
routine, and ordinary capacity.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that the claims are patent-eligible because there is no
risk of preemption (App. Br. 15-17). Although the Supreme Court has
described "the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption," Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. "The Supreme Court has made clear that the principle of
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preemption is the basis for the judicial exceptions to patentability" and "[ fJor
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 21 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 21, and claims 22, 23, and 40-56, which fall
with claim 21.
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, Appellant was in
possession of the claimed invention. See id.
In rejecting claims 21-23 under§ 112, first paragraph, the Examiner
determines that the Specification does not provide adequate written
description support for "charging the one or more network operators for the
content supplied to the consumers through the one or more respective
networks," as recited in claim 21 (Final Act. 7-8). The Examiner explains
that although claim 21 suggests that network operators are being charged for
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the content as well as supplying the content, this is not disclosed in the
Specification (id. at 7-8).
We are not persuaded by Appellant's argument that the Specification,
in paragraph 36, 9 provides the requisite written description support (App.
Br. 19; see also Reply Br. 3). There, the Specification discloses, with
reference to Figure 3, that charge structure system 302 allows the content
provider to select a charge structure for the audiovisual content. The
Specification further describes that, in one exemplary embodiment, the
content provider can elect to allow the content to be provided "on a free
basis with commercial insertion, to be included in conjunction with flat fee
billing structures, to be provided on a pay-per-view basis only, to be
provided with incentives such that viewers that watch the content will
receive compensation, or on other suitable charge structures." But, we find
nothing in that paragraph, nor did the Examiner, that discloses that network
operators are charged for the audiovisual content (Final Act. 3--4 ).
Appellant argues, as best understood, that by disclosing that the
content provider can elect to allow the content to be provided in conjunction
with ajlatfee billing structure, the network operator is necessarily placed
between the consumer and the content provider such that the network
operator is required to collect funds from the consumer and to pay the
charges submitted by the content provider as part of the flat fee structure
(Reply Br. 3). But Appellant does not adequately explain why, and we fail
to see why, election of a flat fee structure necessarily requires that the
network operator be charged for program content.
9 Appellant references paragraph 36 of US 2011/0161997 Al, published
June 30, 2011. The same language appears in paragraph 35 of the original
Specification.
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In view of the foregoing, we sustain the Examiner's rejection of
claims 21-23 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. 10
Obviousness
Independent Claim 21 and Dependent Claim 22
In rejecting claim 21 under 35 U.S.C. § 112, first paragraph, the
Examiner determined, as described above, that the Specification lacks
written description support for "charging the one or more network operators
for the content supplied to the consumers through the one or more respective
networks," as recited in claim 21 (Final Act. 7). And the Examiner stated
that claim 21 would be interpreted, "[f]or purposes of examination," as
reciting "charging the consumers for the content supplied to the consumers
through the one or more respective networks" (id. at 8). The Examiner, thus,
chose to interpret and examine claim 21 as though it were directed to the
allegedly "disclosed invention" rather than to the "claimed invention," as
recited in claim 21. This is not appropriate at least because it does not
comport with the requirements for examiner's action, as set forth in
37 C.F.R. § 1.104(a)(l). 11
10 We need not, and do not, address the Examiner's further rejection of
claims 22 and 23 as lacking written description support for the term
"playlist," as recited in claim 22, and for the terms "playlist," "profile," and
"like/dislike," as recited in claim 23 (Final Act. 8).
11 37 C.F.R. § 1.104(a)(l) reads:
(a) Examiner's action.
(1) On taking up an application for examination or a patent in a
reexamination proceeding, the examiner shall make a thorough
study thereof and shall make a thorough investigation of the
available prior art relating to the subject matter of the claimed
invention. The examination shall be complete with respect both
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The Examiner must examine the "invention as claimed" by the
applicant even when there is an alleged conflict with the disclosure.
Because the Examiner admits claim 21, as it appears before us on appeal,
has not been examined, the Examiner has failed to establish a prima facie
case of obviousness.
Therefore, we do not sustain the rejection of claim 21 under 35 U.S.C.
§ 103(a). For the same reason, we also do not sustain the rejection of
dependent claim 22.
Dependent Claim 23
Claim 23 ultimately depends from independent claim 21. The
rejection of claim 23 does not cure the deficiency in the Examiner's
rejection of claim 21. Therefore, we do not sustain the Examiner's rejection
of claim 23 for the same reason set forth above with respect to claim 21.
Independent Claim 40 and Dependent Claims 41-56
We are persuaded by Appellant's argument that the Examiner erred in
concluding, based on the March 23, 2015 Decision on Petition, that
claims 21 and 40 are not patentably distinct, and that the patentability of
claims 40-56, therefore, stands or falls with claim 21 (App. Br. 25-26; see
also Final Act. 2). As Appellant accurately observes, the Decision on
Petition does not indicate that independent claims 21 and 40 define "the
same disclosed invention" (App. Br. 26). Instead, the Decision states that a
"comparison of claim 21 and claim 40 shows that both claims define the
to compliance of the application or patent under reexamination
with the applicable statutes and rules and to the patentability of
the invention as claimed, as well as with respect to matters of
form, unless otherwise indicated.
(Emphasis added).
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Appeal2017-003576
Application 13/043,373
same disclosed invention of varying degrees in scope" (id.). Claims 40-56
clearly include limitations that are not recited in claims 21-23.
The Examiner admittedly has not examined claims 40-56 and, as
such, has not established a prima facie case of obviousness with respect to
these claims. Therefore, we do not sustain the Examiner's rejection of
claims 40-56 under§ 103(a).
DECISION
The Examiner's rejection of claims 21-23 and 40-56 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejection of claims 21-23 under 35 U.S.C. § 112, first
paragraph, is affirmed.
The Examiner's rejections of claims 21-23 and 40-56 under
35 U.S.C. § 103(a) are reversed.
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
18