Ex Parte Wang

Patent Trial and Appeal Board

Mar 18, 2019

14010497 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/010,497 08/26/2013
128144
RimonPC
7590
One Embarcadero Center
Suite 400
San Francisco, CA 94111
03/20/2019
FIRST NAMED INVENTOR
Xin Wang
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.
10-554-US-l-C 1924
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/20/2019 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):
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN WANG
Appeal2018-001734 1
Application 14/010,4972
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, 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 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
July 22, 2017) and Reply Brief ("Reply Br.," filed December 7, 2017), and
the Examiner's Answer ("Ans.," mailed November 2, 2017) and Final Office
Action ("Final Act.," mailed December 14, 2016).
2 We note that the pages of Appellant's Appeal Brief are not numbered; we
refer to the title page as page 1 and treat the pages that follow as though
consecutively numbered. Appellant identifies ContentGuard Holdings, Inc.
as the real party in interest. App. Br. 2.
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Application 14/010,497
CLAIMED INVENTION
Appellant's claimed invention "generally relates to systems and
methods for Digital Rights and Contracts Management," and more
particularly to "a system and method for specifying and processing legality
expressions, such as contracts, within a Digital Rights and Contracts
Management system" (Spec. ,r 2).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method executed by one
or more computing devices for updating a legality expression for
use in a system for processing the legality expression, the method
compnsmg:
[ (a)] selecting, by at least one of the one or more
computing devices, a digital data element of a legality
expression, the digital data element being from a legality
expression language, the digital data element including at least
one of,
a duty element specifying an obligation that a
principal must perform an act, and
a claim element specifying an assertion that a
principal does perform an act;
[(b)] selecting at least one of an updated obligation or
assertion for the data element;
[ ( c)] determining, by at least one of the one or more
computing devices, at least one attribute value for the updated
obligation or assertion;
[ ( d)] transforming, by at least one of the one or more
computing devices, digital data element to include the updated
attribute value to thereby update the legality expression; and
[ ( e)] recording, by at least one of the one or more
computing devices, the updated legality expression in a form that
can be enforced by a computing device.
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REJECTIONS
Claims 1-21 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-21 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Biddle et al. (US 2002/0107809 Al, pub. Aug. 8, 2002) ("Biddle") and
Ginter et al. (US 6,253,193 Bl, iss. June 26, 2001).
Claims 1-21 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1--48 of
U.S. Patent No. 8,543,511.
ANALYSIS
Patent-Ineligible Subject Matter
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
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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
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)).
The USPTO recently published revised guidance on the application of
§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 3 In accordance with
that guidance, a claim will generally be 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 interactions, e.g., a fundamental economic practice;
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
3 The Revised Guidance is effective as of January 7, 2019, and applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019.
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monopolize the judicial exception. See Revised Guidance, 84 Fed. Reg.
at 54-55. The Revised Guidance references 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 5 5. 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.
In rejecting the pending claims under § 101, the Examiner determined
that the claims are directed to "updating a data element of a legality
expression," which the Examiner concluded is an abstract idea, similar to
other concepts that the courts have held abstract (Final Act. 3--4 ). The
Examiner also determined that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because "the claim limitations simply describe the abstract idea" (id. at 4 ).
In this regard, the Examiner concluded that "[t]he limitations 'transforming
... to include the updated attribute value' and 'recording ... the updated
legality expression' are well-understood, routine, and conventional in the
field; thus, they do not add significantly more to the abstract idea" (id.).
We are persuaded that, even if the claims are directed to an abstract
idea, the Examiner improperly concludes that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. The Examiner concluded, as described above, that
the "transforming" and "recording" steps, as recited in independent claim 1,
and similarly recited in independent claims 8 and 15, are well-understood,
routine, and conventional in the field. Yet, the Examiner provides no
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analysis in the rejection to support that position. See Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination.").
The Specification is entitled "SYSTEM AND METHOD FOR
SPECIFYING AND PROCESSING LEGALITY EXPRESSIONS," and
describes that one of the most important issues concerning the widespread
distribution of digital content via electronic means, and the Internet, in
particular, is the ability to enforce intellectual property rights during the
distribution and use of the digital content and, thereby, prevent unauthorized
copying, modification, and redistribution of the digital content (Spec. ,r,r 3,
4). The Specification discloses that many attempts to provide hardware-
based solutions to prevent unauthorized copying have proven unsuccessful;
meanwhile the deployment of broadband communications technologies is
making it more convenient to distribute large documents, e.g., full length
motion pictures, and, thus, easier to proliferate unauthorized copying (id.
,r 5).
The claimed invention is intended to address the "need for systems
and methods that enable one or more parties to easily and securely manage,
exchange, interpret, enforce, and the like, legality expressions information,
such as contracts-related information" and, thus, control the distribution of
digital content (id. ,r 6). The Specification, thus, describes that, in one
embodiment of the present invention, a legality expression language (i.e., a
machine readable language for expressing contractual agreements between
participants regarding the distribution and use of digital content) is provided
(id. ,r,r 8, 31, 32). A legality expression (including at least one of a duty
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element specifying an obligation that a principal must perform an act, a ban
element specifying a prohibition that a principal must not perform an act, an
intent element specifying an intention that a principal wants to perform an
act, and a claim element specifying an assertion that a principal does
perform an act) is specified using the legality expression language. And this
legality expression is interpreted and processed to control the distribution
and use of the subject digital content (id. ,r,r 8-10).
Understood in light of the Specification, claim 1 is, thus, directed to a
method for updating a legality expression for use in a system for processing
the legality expression by, inter alia, manipulating the legality expression
(i.e., contract terms specified using a machine-readable legality expression
language) to reflect, e.g., modifications in the contract terms, and recording
the updated legality expression in a form that can be enforced by a
computing device i.e., "transforming, by at least one of the one or more
computing devices, [the] digital data element to include the updated attribute
value to thereby update the legality expression" and "recording, by at least
one of the one or more computing devices, the updated legality expression in
a form that can be enforced by a computing device."
Given the functionality of Appellant's "transforming" and "recording"
limitations, there is insufficient articulated reasoning to support the
Examiner's finding that the claims do not include additional elements that
are sufficient to amount to significantly more than the judicial exception.
Therefore, we do not sustain the Examiner's rejection of claims 1-21 under
35 U.S.C. § 101.
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Obviousness
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1, 8, and 15 under 35 U.S.C. § 103(a) because
Ginter, on which the Examiner relies, does not disclose or suggest "a claim
element specifying an assertion that a principal does perform an act," as
recited in claim 1, and similarly recited in claims 8 and 15 (App. Br. 12-13).
Ginter is directed to systems and methods for secure transaction
management and electronic rights protection, and describes that electronic
appliances, e.g., computers, equipped in accordance with the subject
invention help to ensure that information is accessed and used only in
authorized ways (Ginter Abstract). Ginter discloses that these electronic
appliances provide a distributed virtual distribution environment ("VDE")
that may enforce a secure chain of handling and control, e.g., monitor use of
electronically stored or disseminated information, and that this virtual
distribution environment also may be used to protect the rights of various
participants in electronic commerce and other electronic or electronic-
facilitated transactions (id.).
Ginter discloses, at column 20, lines 27--47, cited by the Examiner
(see Final Act. 6), that the VDE ensures that certain prerequisites necessary
for a given transaction to occur are met ( e.g., that required load modules are
executed and required data is available). Ginter, thus, discloses that if, for
example, a content provider required metering the number of copies of a
software program made for distribution to employees, a metering method
would have to be executed each time a copy was made for another
employee. However, we agree with Appellant that this does not disclose or
suggest "a claim element specifying an assertion that a principal does
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perform an act," as called for in the independent claims (App. Br. 16). In
other words, counting whenever a party makes a copy of a document, is not
an assertion that a principal performs an act; instead it, i.e., the counting, is
an act performed by the digital rights management system (id.).
The Examiner, in responding to Appellant's argument, asserts in the
Answer that, "under the broadest reasonable interpretation, the principal in
the contract may be the system and not necessarily an individual person"
(Ans. 8 (citing Spec. ,r,r 87, 120)). However, we agree with Appellant that
the "principal," as described in the Specification, is an entity, i.e., a party to
the contract, and not the enforcement system, e.g., the DRM system, as the
Examiner ostensibly maintains (Reply Br. 10-11 ).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 8, and 15 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 2-7, 9-14,
and 16-21. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("dependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
Double Patenting
Non-statutory obviousness-type double patenting is a judicially
created doctrine intended to prevent improper timewise extension of the
patent right by prohibiting the issuance of claims in a second patent which
are not "patentably distinct" from the claims of a first patent. See In re
Langi, 759 F.2d 887, 892 (Fed. Cir. 1985). The doctrine has also been
phrased as prohibiting claims in the second patent which define "merely an
obvious variation" of an invention claimed in the first patent. In re Vogel,
422 F.2d 438,441 (CCPA 1970).
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In evaluating obviousness-type double patenting, the Federal Circuit
has "endorsed an obviousness determination similar to, but not necessarily
the same as, that undertaken under 35 U.S.C. § 103 in determining the
propriety of a rejection for double patenting." In re Braat, 937 F.2d 589,
592-93 (Fed. Cir. 1991). Thus, in making an obviousness-type double
patenting rejection, the Examiner must show that a claimed invention is "a
mere variation of [ the patented invention] ... which would have been
obvious to those of ordinary skill in the relevant art ... [ and] there must be
some clear evidence to establish why the variation would have been obvious
which can properly qualify as 'prior art."' In re Kaplan, 789 F.2d 1574,
157-80 (Fed. Cir. 1986). Accordingly, in Kaplan, the Federal Circuit
reversed an obviousness-type double patenting rejection "because there
[was] no proper evidence to show that the claim [was] for a mere obvious
variation of what is claimed in the Kaplan patent relied on to support the
rejection." Id. at 15 81.
Here, as Appellant observes, the Examiner compares some, but not
all, of the elements of the claims on appeal to some, but not all, of the claim
elements of the cited patent, i.e., U.S. Patent No. 8, 543,511 (App. Br. 13;
see also Final Act. 10). The Examiner then summarily concludes that "the
instant application would have been obvious to one of ordinary skill in the
art in light of US patent 8,543,511" because "both encompass selecting a
digital data element; determining at least one attribute value for the data
element; transforming the data element and attribute to create a legality
expression; and recording said legality expression" (Final Act. 10).
The Examiner has failed to provide an adequate explanation as to why
the appealed claims would have been obvious over the patent claims. For
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example, there is no analysis of the differences between the inventions
defined by all the conflicting claims, and no reasons given as to why a
person of ordinary skill in the art would conclude that the invention recited
in the pending claims would have been an obvious variation of the patented
invention.
The Examiner, in our view, has not met the burden required to show
that the pending claims would have been obvious in view of the patented
claims. Therefore, we do not sustain the Examiner's double patenting
rejection of claims 1-21.
DECISION
The Examiner's rejection of claims 1-21 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejection of claims 1-21 under 35 U.S.C. § 103(a) is
reversed.
The Examiner's rejection of claims 1-21 on the ground of
nonstatutory obviousness-type double patenting is reversed.
REVERSED
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