Google LLC

Patent Trials and Appeals Board

Feb 1, 2022

2021002816 (P.T.A.B. Feb. 1, 2022)

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. 16/256,515 01/24/2019 Andrej Cedilnik 0715150.146-US2 6577 104433 7590 02/01/2022 Byrne Poh LLP/Google LLC 400 Rella Blvd Ste 165, #106 Suffern, NY 10901 EXAMINER MARCUS, LELAND R ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): info@byrnepoh.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREJ CEDILNIK and ROBERT BENEA Appeal 2021-002816 Application 16/256,515 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s final decision to reject claims 1-15.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Google LLC as the real party in interest. Appeal Br. 3. Appeal 2021-002816 Application 16/256,515 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to “creating an atmosphere suited to a social event” (Spec., para. 2). Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A method for presenting content, comprising: determining, at a first time instance, a first set of characteristics of a location; determining, at a second time instance, a second set of characteristics of the location, wherein the second set of characteristics comprises a detection of a presence of a user device at the location, and wherein the user device was not present at the location at the first time instance; based on the presence of the user device at the second time instance, retrieving a previously presented play list of a plurality of media content items; and causing the play list of media content items to be presented using a playback device associated with the location. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Cliff US 2003/0033600 A1 Feb. 13, 2003 Lyrics to “Get the Party Started,” written by Linda Perry, performed by Pink, recorded June 2001; Retrieved from https://genius.com/Pink‐get‐the‐party‐started‐lyrics on 24 June 2018 (hereinafter “Pink”). REJECTIONS Claims 1-15 rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter without significantly more. Claims 1-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Cliff and Pink. Appeal 2021-002816 Application 16/256,515 3 OPINION The rejection of claims 1-15 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter without significantly more. The Appellant argues these claims as a group. See Appeal Br. 12-16. We select claim 1 as the representative claim for this group, and the remaining claims 2-15 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” In that regard, claim 1 covers a “machine” and is thus statutory subject matter for which a patent may be obtained.2 This is not in dispute. However, the 35 U.S.C. § 101 provision “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In that regard, notwithstanding claim 1 covers statutory subject matter, the Examiner has raised a question of patent eligibility on the ground that claim 1 is directed to an abstract idea. Alice identifies a two-step framework for determining whether claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217. 2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which requires determining whether “the claim is to a statutory category.” 84 Fed. Reg. at 53. See also id. at 53-54 (“consider[] whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101.”). Appeal 2021-002816 Application 16/256,515 4 Alice step one - the “directed to” inquiry According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Abstract Idea3 The Examiner determined that, “but for the recitation of generic computer components,” the “claims recite a mental process of a DJ monitoring the environment of a location to assess the social environment of the location.” Final Act. 3. Accordingly, the Examiner determined that all the subject matter of claim 1 but for the recitation of “generic computer components” falls within, inter alia, the enumerated “[m]ental processes” grouping of abstract ideas set forth in the 2019 Revised 101 Guidance.4 The Answer expands the characterization of what the claim is directed to by including recitation of all the claimed steps: 3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A determines “whether a claim is ‘directed to’ a judicial exception,” such as an abstract idea. Step 2A is two prong inquiry. 4 This corresponds to Prong One [“Evaluate Whether the Claim Recites a Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: . . . (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section 1 of the [2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates subject matter grouping “(b):” “(b) Certain methods of organizing human activity-fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” Id. at 52. Appeal 2021-002816 Application 16/256,515 5 With regard to independent claim 1, the first “determining” step is abstract because it measures the characteristics of a location. This step is limited to determining information, an abstract concept. The second “determining” step, is a repetition of the first step but at a later time. Thus, step two also is limited to determining information, a further abstract concept. The third element of “retrieving” information based on the previously determined information is again limited to retrieving information, again an abstract concept. The final step of “causing” is, at best, extra-solution activity of a well understood, routine, and conventional nature, as presenting information to a user is required for that user to understand the information. Ans. 5. Appellant argues that the Examiner’s characterization of what claim 1 is directed to as set forth in the Final Action is incorrect. Appeal Br. 8-10. (A Reply Brief addressing the characterization that the Examiner provided in the Answer was not filed.) Appellant presents no other arguments challenging the determination that the claimed subject matter is directed to an abstract idea without significantly more and, as a result, patent-ineligible. Since, for the following reasons, we disagree that the Examiner’s characterization of what the claim is directed to is so far afield from what is claimed that Appellant was not put on notice of the Examiner’s position, the rejection will be sustained. Appellant argues, inter alia, that “because Appellant's claim 1 does not recite a DJ, monitoring an environment of a location, or assessing the social environment of a location, Appellant respectfully disagrees that ‘a DJ monitoring [an] environment of a location to assess the social environment of the location’ is an accurate summary of the entirety of Appellant’s claim 1, as asserted by the Examiner.” Appeal Br. 9. Appeal 2021-002816 Application 16/256,515 6 We agree with Appellant that the Examiner’s initial characterization does not follow the 2019 Revised Guidance which states that [t]o determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) identify the specific limitation(s) in the claim under examination (individually or in combination) that the Examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) fall within the subject matter groupings of abstract ideas. 2019 Revised 101 Guidance 17. (This was corrected in the Answer wherein there is provided a characterization of what claim 1 is directed to that identifies specific limitations in the claim.) The Examiner argued that “there is no in haec verba requirement. The identified abstract idea is a summary of the entirety of the claim and gives Applicant sufficient notice to understand the nature of the rejection, as the elements of the rejection map onto the elements the claim.” Final Act. 9. Needless to say, the case law is replete with examples of determinations under step one of the Alice framework where the characterizations of what a claim is directed to are not copied verbatim from the claim. See, e.g., Alice, 573 U.S. 593 at 219 (“[T]he concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk”) and at footnote 2 (representative claim 33 of US 5,970,479). That being said, the concern here is about the nature of the patent examination process. It is incumbent on the Examiner to provide “reasons … and such information … as may be useful in aiding the applicant … to judge the propriety of continuing the prosecution.” 37 CFR 1.14 (a)(2). Straying from the wording of a claim in characterizing what a claim is directed to can invite confusion, hampering an applicant’s ability to respond appropriately. Appeal 2021-002816 Application 16/256,515 7 For that reason, following the Guidance’s mandate to identify the specific limitation(s) in the claim is essential if the patent examination process is to proceed in a just and efficient manner. Turning to the characterization itself. The Examiner stated that “but for the recitation of generic computer components,” the “claims recite a mental process of a DJ monitoring the environment of a location to assess the social environment of the location.” Final Act. 3. We first observe that the Examiner points to “the recitation of generic computer components.” Appellant does not address this but based on our review of claim 1, we do not see that the claimed subject matter necessarily involves computers. No computer component is recited and the recitation of a “user device” and a “playback device” reasonably broadly covers non- electronic devices. “[C]ausing [a] play list of media content items to be presented,” for instance, does not require an electronic device, let alone a computer. In this regard, the claim is broader in scope than the Examiner’s characterization. While the claimed method does not preclude the use of generic computer components, they are not required to practice what is claimed. As for “a DJ monitoring the environment of a location to assess the social environment of the location,” this, too, is not commensurate in scope with what is claimed. There is no mention of a “DJ,” “monitoring,” “environment,” and/or “assess[ing] [a] social environment.” The claim is much broader than that. “A DJ monitoring the environment of a location to assess the social environment of the location” is but one example of subject matter covered by the claim. Appeal 2021-002816 Application 16/256,515 8 Claim Analysis We consider the claim5 as a whole6 giving it the broadest reasonable construction7 as one of ordinary skill in the art would have interpreted it in light of the Specification8 at the time of filing. The first step calls for “determining, at a first time instance, a first set of characteristics of a location.” No technical detail about how the determination is to be performed is provided. This step is not connected to any device; it could be performed mentally. Also, the step does not indicate what precisely is being determined. It indicates that “a first set of characteristics of a location” are determined but what those characteristics are is left open. A location’s environment, as the Examiner exemplified, could be “a first set of characteristics of a location” as this step calls for. 5 “[T]he important inquiry for a § 101 analysis is to look to the claim.” Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that ‘claim construction is not an inviolable prerequisite to a validity determination under § 101.’ However, the threshold of § 101 must be crossed; an event often dependent on the scope and meaning of the claims.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347-48 (Fed. Cir. 2015). 6 “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). 7 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a claim, under its broadest reasonable interpretation.”) (emphasis added). 8 “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, it is important to read the claims ‘in light of the specification.’” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others. Appeal 2021-002816 Application 16/256,515 9 Furthermore, there is no requirement that the determining be done at the “location.” It could be done from afar. The second step calls for “determining, at a second time instance, a second set of characteristics of the location.” According to the claim, “the second set of characteristics comprises a detection of a presence of a user device at the location, and wherein the user device was not present at the location at the first time instance.” This step is also not connected to any device; it could be performed mentally. This step indicates that what is being determined is “a detection of a presence of a user device at the location” that “was not present at the location at the first time instance.” But that could be done mentally by simply observing a user device at the location that was not observed from afar. The third step calls for “retrieving a previously presented playlist of a plurality of media items” based on the presence of the user device. This step is also not connected to any device; it could be performed manually, for example, by a DJ pulling out a paper with a written playlist. The last step calls for “causing the play list of media content items to be presented using a playback device associated with the location.” This step is also not connected to any device; it could be performed manually, for example, by the DJ projecting the written playlist on a screen at the location. Putting it together, claim 1 reasonably broadly covers a scheme for presenting a playlist when a user device becomes present and is detected at a location. Appeal 2021-002816 Application 16/256,515 10 Above, where we reproduce claim 1, we identify in italics the limitations that recite an abstract idea. 9 10 Based on our claim analysis (above), we determine that the identified limitations direct the claim to a scheme for presenting a playlist when a user device becomes present and is detected at a location. This scheme could be performed mentally and therefore we agree with the Examiner that claim 1 is directed to an abstract idea falling within the enumerated “[m]ental processes” grouping of abstract ideas set forth in the 2019 Revised 101 Guidance. We note that Appellant does not dispute that the claimed method could be performed mentally, however it is characterized as being “directed top.” The Examiner’s initial characterization is an example that the claimed method covers. The Specification provides some support. See para. 48 (“In a more particular example, process 100 [a DJ] can detect the general mood [an environment] of the participants and generate a play list of media content based on the general mood.”) In that regard, the Examiner’s characterization of what the claim is directed to is not so far afield from what is claimed that Appellant was not put on notice of the Examiner’s position. We are satisfied that the Examiner provided sufficient “reasons . . . and such information . . . 9 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A determines “whether a claim is ‘directed to’ a judicial exception,” such as an abstract idea. Step 2A is a two prong inquiry. 10 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101 Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea.” 84 Fed. Reg. at 54. Appeal 2021-002816 Application 16/256,515 11 as may be useful in aiding the applicant . . . to judge the propriety of continuing the prosecution.” 37 CFR 1.14 (a)(2). Our characterization of what claim 1 is directed to (“for presenting a playlist when a user device becomes present and is detected at a location”) is more general than that initially articulated by the Examiner. In doing so, we have described the abstract idea at a level of abstraction that is more consistent with the general nature of the subject matter claimed; that is, at a higher level of abstraction than that of the Examiner’s. The difference is a matter of degree rather than of substance. “An abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“The Board’s slight revision of its abstract idea analysis does not impact the patentability analysis.”). We note that Appellant does not argue that the claim presents a technical-improvement solution.11 Nor have we been able to point to any claim language suggestive of an improvement in technology. The steps as claimed d are not focused on improving technology. At best, the claim provides a reason for presenting a playlist (i.e., when a user 11 Such an argument would correspond to Prong Two [“If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. at 54. One consideration, implicated here, that is “indicative that an additional element (or combination of elements) may have integrated the exception into a practical application” is if “[a]n additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.” Id. at 55. Appeal 2021-002816 Application 16/256,515 12 device becomes present and is detected at a location). 12 Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims are focused on providing information to traders in a way that helps them process information more quickly, ’556 patent at 2:26-39, not on improving computers or technology.”). By so broadly defining the inventive method, that is, by setting out what it is aspiring to accomplish without any means for achieving it, let alone any purported technological improvement, the claim is in effect presenting the invention in purely result-based functional language, strengthening our determination under Alice step one that the claim is directed to an abstract idea. Cf. Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claim 1 recites a method for routing information using result-based functional language. The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303, 1308 (Fed. Cir. 2020): The claims we held ineligible in Two-Way Media similarly failed to concretely capture any improvement in computer functionality. In Two-Way Media, the claims recited a method of transmitting packets of information over a communications network comprising: converting information into streams of digital packets; routing the streams to users; controlling the routing; and monitoring the reception of packets by the users. 12 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed. Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid of any implementation details or technical description that would permit us to conclude that the claim as a whole is directed to something other than the abstract idea identified by the district court.”). Appeal 2021-002816 Application 16/256,515 13 874 F.3d at 1334. Two-Way Media argued that the claims solved data transmission problems, including load management and bottlenecking, but the claimed method was not directed to those improvements. Id. at 1336-37. We therefore held the claims ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,” “monitoring,” and “accumulating records”) using “result-based functional language” without the means for achieving any purported technological improvement. Id. at 1337. Accordingly, as Examiner argues, claim 1 is directed to an abstract idea that falls within the enumerated “[m]ental processes” grouping of abstract ideas set forth in the 2019 Revised 101 Guidance. For the foregoing reasons, the record supports the Examiner’s determination that claim 1 is directed to an abstract idea. We do not reach step two of the Alice framework because Appellant has not addressed it. No persuasive arguments having been presented, we conclude that no error has been committed in the determination under Alice step two that claim 1 does not include an element or combination of elements circumscribing the patent-ineligible concept it is directed to so as to transform the concept into a patent-eligible invention. We have considered all of the Appellant’s arguments and find them unpersuasive. Accordingly, because we are not persuaded as to error in the determinations that representative claim 1, and claims 2-15 which stand or fall with claim 1, are directed to an abstract idea and do not present an “inventive concept,” we sustain the Examiner’s conclusion that they are directed to patent-ineligible subject matter for being judicially-excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x Appeal 2021-002816 Application 16/256,515 14 991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s remaining arguments and have found them unpersuasive. Accordingly, because the asserted claims of the patents in suit are directed to an abstract idea and do not present an ‘inventive concept,’ we hold that they are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). The rejection of claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over Cliff and Pink. We have reviewed the positions taken by the Examiner and Appellant and find the record favors Appellant. All the claims require detection of a presence of a user device at a location at a time different from a time “wherein the user device was not present at the location.” According to the Examiner, “Cliff does not explicitly teach a first and second time for sensing the crowd.” Final Act. 6. The Examiner relies on lyrics of a song (Pink reference) as evidence that the singer herself (Pink) and her user device, in fact, “is not at present at the venue at the first time and is present at the venue at the second time instance.” Final Act. 6. Setting aside the sheer speculation that the lyrics establish, as a matter of fact, a first and second time, the lyrics do not in fact show the absence and presence of a user device at the two instances as claimed. Appeal 2021-002816 Application 16/256,515 15 The rejection is not sustained on the ground that a prima facie case of obviousness has not been made out in the first instance for the claimed subject matter. CONCLUSION The decision of the Examiner to reject claims 1-15 is affirmed. More specifically: The rejection of claims 1-15 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter is affirmed. The rejection of claims 1-15 under 35 U.S.C. § 103(a) as being unpatentable over Cliff and Pink is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-15 101 Eligibility 1-15 1-15 103(a) Cliff, Pink 1-15 Overall Outcome 1-15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED